How is non-obvious different from novel?

You may have heard that an invention has to be both novel and non-obvious in order to be patentable. While the two terms may seem similar, non-obviousness has a different meaning than novelty, which we’ve discussed here.

When a patent examiner is unable to find a single prior art reference that shows all elements of a particular claim, the examiner may combine multiple prior art references to arrive at the claimed invention. The examiner will then reject the claimed invention under 35 USC Section 103 stating that the invention is obvious over the cited prior art.

Therefore, it’s possible for a claimed invention to be novel, but obvious at the same time.

Hypothetical

In an Office Action with Section 103 rejections the examiner will identify a primary prior art reference that typically shows the majority of the claim elements. For example, if your claim covers an invention with three elements – A, B & C – and the examiner found a primary reference disclosing A and B only, then the examiner will not reject your claim as lacking novelty under Section 102.

Instead, the examiner may look for a secondary reference disclosing C and then reject your claim as being obvious. In other words, it would have been obvious to someone of ordinary skill in the art of your invention to take the prior art invention of the primary reference (AB) and modify it with the teaching of the secondary reference (C) to arrive at your claimed invention –> ABC.

How to argue against a Section 103 obviousness rejection

There are several ways to counter an obviousness rejection. Here are some of the more common ways:

Amend Claims & Argue

If the combination of prior art really does show all the elements of a particular claim, you can amend the claim to clarify a feature or to add an element. In the above example, you can add element D to the claim which would now comprise ABCD. In conjunction with the claim amendment, you can argue that the combined prior art references altogether fail to show the new claimed combination. Of course, it’s possible that the examiner may search the prior art further and find a third reference that discloses D.

Motivation to Combine

Another way of arguing against a Section 103 rejection is to analyze the prior art references closely and find a reason why there would be no motivation to combine the references as suggested by the examiner. For example, if the primary reference expressly states that certain features should be avoided, there would be no motivation to combine the primary reference with a secondary reference disclosing the very feature to be avoided.

Related to this principle is the issue of analogous art. The combined references should come from the same general field. Otherwise, why would it be obvious to combine a primary reference in one particular sector with a secondary reference in a completely different sector?

Evidence of non-obviousness

If the facts exist, an applicant may submit a written declaration with evidence of certain factors showing non-obviousness such as commercial success, copying by competitors, satisfaction of a long-felt need, etc.

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Vic Lin

Vic Lin

Startup Patent Attorney | IP Chair at Innovation Capital Law Group
We love working with startups and small businesses. I help entrepreneurs protect their intellectual property so they can reach their business goals.