What Is An Obvious Invention (Section 103 Rejection)?
Obviousness
It means anything which is easy to understand or visualize. In patents, non-obviousness is one of the criteria used for granting a patent to an invention or to be patentable. In US patent law, this criterion is governed under 35 U.S. Code § 103 (conditions for patentability; non-obvious subject matter) patent law.
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Difference Between Novelty and Non- Obviousness
For a subject invention to be patentable, it must be both novel and non-obvious. Novelty is defined as anything which is new, or which is not available in the past. It can be a product, method, technology, or process which is not disclosed in past or prior to the filing of the subject invention. It should not be presented in any form such as online publication, product, apparatus, or process in usage, etc.
On the other hand, an invention should be non-obvious, i.e., if someone of ordinary skill in a relevant field could easily make the invention, then it is obvious, and therefore not patentable.
Identification Of Obviousness In Patents
The subject invention must pass the obviousness criteria, based on factual inquiries.
These factual inquiries are as follows:
- Identifying and researching relevant prior art
- Comparing the claimed invention to the identified prior art
- Evaluating the level of expertise and knowledge in the relevant field or industry
- Understanding the distinctions between the claimed invention and the prior art found
- Determining the significance of any differences between the claimed invention and the prior art in relation to patentability.
Rejection Under 35 U.S.C. 103 Law
When the claims are rejected under obviousness by the patent office, it means that the examiner did not find all elements of the subject claims in a single prior art.
Hence, the examiner may use a combination of prior art references to reject a claim to prove it an obvious invention.
Reasons For Rejections Under 35 U.S.C. 103 During Examination
The examiner examines the subject invention and judges the invention based on the following conditions: –
- Use Of Similar Prior Technology.
- Suggestion Or Motivation To Combine; and
- Advantages of Using The Combined Components/Elements/Parts
The absence of any of the above conditions can help the inventor/applicant/assignee of the subject invention to provide strong arguments for the non-obviousness of rejected claims.
Examples of Obviousness in Patents
The given below examples are limited or general in nature, and can add more to the list, based on the obvious nature of the subject inventions:
- Increase/Decrease The Number Of Steps In A Process/Method
- Minor Change In Functionality Of A Component
- Conversion Of Manual Step To Automation
- Changes In Dimensions Of The Device Or Components
- Changes In Composition/Concentration
- Changes In Portability Of Device/Apparatus
- Integration Of Different Components
- Rearrangement Of Components
How Inventor Can Overcome the Obviousness Rejection
The inventor can overcome the obviousness rejection of the patent office by showcasing or arguing based on the following factors: –
- Commercial Viability of Product/Technology: It refers to the business potential of a specific product i.e., how relevant, and interesting the product will be to a targeted market region.
- Competitive Vulnerability: It refers to how the product is prone to copy by competitors working in a similar technology domain.
- Necessity of the Product: It refers to the product’s need to solve a significant problem or meet a specific requirement.
Example Cases on 35 U.S. Code § 103 Rejections
- Case Name: – Graham v. John Deere Co., 383 U.S. 1 (1966)
Date(s): – Argued October 14, 1965, | Decided February 21, 1966
Case Brief: – This case involved the validity of subject patents considering the Patent Act of 1952.
- In the case of Graham v. John Deere Co., Graham filed a lawsuit alleging that the defendant had infringed on a patent for a device that was designed to absorb shock from plow shanks in rocky soil to prevent damage to the plow. The patent consisted of a combination of pre-existing mechanical elements.
- The Fifth Circuit originally ruled that the patent was valid, stating that a combination can be considered patentable if it leads to an “old result in a cheaper and more advantageous way.”
- However, in 1964, the Eight Circuit overturned this decision and ruled that since the patented combination did not produce a new result, the patent was not valid.
- The District Court and the Court of Appeals also upheld this decision, stating that the patent did not meet the requirements of being “non-obvious” to a person skilled in the relevant field, as outlined in 35 U.S. Code § 103 of the Patent Act of 1952, and was therefore invalid.
- Case Name: – KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007)
Date(s): – Argued November 28, 2006 | Decided April 30, 2007
Case Brief: – Teleflex sued KSR International, claiming that one of KSR’s products infringed Teleflex’s patent on connecting an adjustable vehicle control pedal to electronic throttle control.
- The argument put forth by KSR was that the combination of two elements was so obvious that it was not eligible for a patent.
- On April 30, 2007, the Supreme Court judgment states that the disputed claim 4 of the patent was obvious under the requirements of 35 U.S.C. §103.
- The Court of Appeals examined the matter in a strict and restrictive way and found it to be in conflict with 35 U.S.C. §103 by using the “teaching-suggestion-motivation” (TSM) test.
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