Perhaps the most common type of rejection and one of the most frequent questions we get from our clients. Along with novelty and utility, non-obviousness is one of the three core requirements required of an invention to secure a patent. While novelty and utility are relatively straightforward, the concept of “obviousness” is often contentious and misunderstood in patent law. Under 35 U.S.C. §103, an invention is deemed obvious, and thus unpatentable, if it would have been obvious to a person of ordinary skill in the relevant field at the time of filing, based on prior art and general knowledge. The evaluation of whether an invention is “obvious” under patent law rests on several critical factors that examiners analyze during patent prosecution. The goal of this analysis is to reward true innovation while preventing the patenting of trivial or incremental advances.
A central consideration is whether existing prior art references, when combined, logically produce the claimed invention. For instance, if two separate patents describe components of a new device, and combining them would solve a problem in a predictable way, the resulting invention may be deemed obvious. However, if the combination produces unexpected results or solves a problem in a non-obvious manner, the invention might still qualify for protection.
Prior art used in an obviousness rejection must relate to the same field as the invention or address problems similar to those the invention aims to solve. For example, a patent application for a medical imaging tool would not be rejected based on prior art about automotive sensors unless those sensors directly address analogous technical challenges.
Examiners must establish a clear and well-reasoned argument for obviousness rejections. This includes explaining how each element of the invention is taught by prior art, why combining references would be obvious to a person of ordinary skill in the field, and what evidence supports this conclusion. Vague or boilerplate rejections can be challenged for lacking sufficient detail.
The hypothetical “person of ordinary skill in the art” serves as a benchmark for obviousness. Said individual is assumed to have average knowledge and experience in the relevant field at the time of the invention. If such a person would find the invention obvious based on available prior art and common practices, the application may be rejected.
An obviousness rejection can be difficult to overcome, but there are several established lines of argumentation that may be successfully used in response. In addition, if prior art is known at the beginning of the patenting process that may lead to an obviousness rejection, the patent application can be written in such a way to highlight the non-obviousness of the invention in relation to the prior art.
If obviousness is holding back your hard-earned invention at the patent office, reach out to us at colton@mypatentguys.com for a breakthrough!