Obviousness is perhaps the most challenging obstacle to overcome while substantiating the patentability of an invention. This is due to its ambiguous and subjective nature. Rejection of an application due to obviousness could be a grave dissatisfaction for an inventor, whose brilliant idea was rendered unpatentable due to an indistinct concept. Obviousness rejections are based on prior art references and the interpretations derived from them. That is why it becomes imperative to understand the concept of Obviousness and identify ways to overcome it. This article is an attempt in the same direction.

So what makes an invention obvious?

An invention is declared as obvious if the differences between the claims and the prior art(s) are apparent to a person with ordinary skill at the time of filing of the patent application. In short, if an invention is obvious to an average person, it cannot be patented. Thus, as the concept is entirely subjective, a significant part of the patent prosecution process is related to arguing with the examiner for the invention being not apparent,and it is not based on the prior arts cited by the examiner. In many cases, it has been seen that the examiner has used a combination of prior arts to reject a claim (one or more prior art references to interpret). Moreover, when we compare the concept of Novelty with the idea of Obviousness, the subjectivity of the latter becomes even more evident as we will see in the sections below. 

Novel vs. Obvious in Patent Law

Novelty is defined under Section 102 of United States Code Title 35 – Patents of the U.S. Patent Act. A claim lacks novelty if each component has been described or discovered in a single prior art.

On the other hand, “Obviousness” is defined under Section 102 of United States Code Title 35 – Patents of the U.S. Patent Act, and a claim is not patentable if all the elements of the claim can be arrived at either by combining elements of the two or more prior arts or by combining the elements of the one or more prior arts with the knowledge of the person ordinarily skilled in the art. Moreover, the classification of the underlying claim as ‘Obvious’ leans more towards the legal aspect of the process rather than being a technical question. USPTO has provided various guidelines for rejecting a claim under obviousness. These guidelines arrange the cases in the following groups of obviousness rationales:

1. A simple substitution of one known element with another element to determine the same result.
2. Uses of known techniques for improving the same devices (methods, or products).
3. “Obvious to try”—choosing from a finite number of identified predictable solutions, with a reasonable expectation of success.
4. Some teaching, suggestion, or motivation available in the prior art led a person with ordinary skill to modify or by combining the prior art references to arrive at the same claimed invention.
5. Known work in one field may prompt variations for use in either the same field or a different field if the variations are predictable to one of ordinary skill in the art.
6. Combination of prior-art elements according to known methods to yield predictable results.

Ways for overcoming the Patent Rejection from Obviousness

While protecting the patent application from being rejected on arbitrary and unrelated bases, it is essential to know how to tackle when such situations arrive. The following points will help in avoiding the obviousness rejections:

•  Any unsupported conclusions or reliance on only common sense by the examiner should always be challenged by arguing that the rejection is conclusory and unsupported.
• One must challenge the conclusion of Obviousness by explaining how the problem was not known in the prior art or other pieces of evidence related to the solution.
• If an examiner rejects the claim based on patents or published patent applications, it is suggested to have a closer look at the patent’s prosecution history. The takeaways from it may be used to dispute any assertion made by combining different references.
• Assumptions by the examiner about the finite number of solutions with anticipated success can be targeted by showing the examiner the number of choices and how uncertain the outcomes of each alternative could be.
• The examiner’s analysis can also be challenged on the grounds that the prior art failed to suggest any solution to the problem solved by the invention.
•  The unpredictability and variables of the Obviousness suggested by the examiner should be explained, and, if possible, the unexpected results can be demonstrated.
• Lastly, if still the examiner is not convinced, amendments to the claims can be made and specific elements that were not shared in the prior art references can be added. 

Additionally, while responding to the obviousness rejection, the applicant must use the above arguments (as applicable). Even, in case, if the examiner is not persuaded, the statements may be persuasive on an appeal.

Conclusion

SAn invention is not just a new idea. It represents hard work put in by the inventor in the form of time, energy, and resources. The biggest challenge is not just creating something new but also protecting what has been created. Understanding the concept of Obviousness and knowing ways to protect against its related rejections helps you protect your valuable invention from being denied unjustifiably. Moreover, a well-drafted patent application can even minimize the occurrence of obviousness rejection in the first place itself. It helps in saving resources and achieving the intended results. Learn more about our patent drafting services and how they can help you reduce such obstacles.
– Yojit Bhugra (Engineering Drafting and Prosecution Team) and the Editorial Team

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