What does “obvious” mean in patent language?
The everyday colloquial use of the term “obvious” is so simple that it can be hard to define. Both dictionary.com and Merriam-Webster share a common definition of easily seen or understood. You can say that obviousness refers to something that is evident or recognizable. In the patent world, “obvious” has a particular meaning that is, frankly speaking, not so obvious. Patent obviousness refers to a quality or characteristic of a claim that makes it insufficiently unique over the prior art. In laymen’s terms, a claim rejected as being obvious means that the claim is not sufficiently different to be protectable. Also known as a Section 103 rejection, obviousness is one of the most common types of patent rejections. It is also a more difficult rejection to overcome. So let’s dive into what would make a claimed invention nonobvious.
If I were to explain patent obviousness to a 5-year old, I might say something like: You take something that is already known, and you tweak it a little bit. That’s obviousness, and you’re not supposed to be able to get a patent for something that is obvious.
What does nonobvious mean?
So does nonobvious simply mean not obvious? Yes, but its meaning is more specific with respect to patents. Patent nonobviousness is all about the degree or sufficiency of “newness” in an invention. A nonobvious invention is one that is more unique, more different, more improved, more special. Nonobvious inventions should not cause others to say “Well, of course” or “Duh, anyone could’ve made that change.”
When a claim covers something that is identical to a description in a prior art patent, for example, the claim is not novel. Such a claim is “anticipated” under Section 102. So if a claim contains at least one feature that is not in a prior art reference, then the claim may be novel. In other words, a claim is novel if it is not identical to the prior art.
Novelty alone, however, is not enough to make an invention patentable. A claimed invention must also be nonobvious. Think of novelty as a lower hurdle whereas nonobviouness is a higher bar that your claims must overcome to be patentable.
What makes a claimed invention novel and nonobvious?
A claim that is novel and nonobvious has overcome two hurdles. The novelty requirement is met when the claimed invention is not identical to what is described in existing prior art. The claim that meets the higher nonobviousness requirement has something further besides being nonidentical.
To be nonobvious, the claim must go above and beyond a mere tweak of the prior art. If a range of dimensions is claimed for example, then the applicant should show that the claimed range is critical. If a step or part is omitted, then the applicant should show that the function of the eliminated element still remains. If the patent-pending product contains a counterintuitive feature, then the applicant should show why others in the space would avoid using such a feature.
Whatever changes are included in the invention, the inventor should provide ample details on why such changes are significant.
Why does the patent examiner reject my invention as obvious when it is different from the prior art?
If your utility patent application claims have been rejected under Section 103 as being obvious, both the cited prior art combinations and your current claims should be carefully analyzed. It is possible that the unique features of your invention are not adequately recited in your claims. Consider claim amendments to capture those differences or specify those differences in greater detail. If your claims sufficiently recite the unique features, it is possible that the examiner might have overlooked or misunderstood your claims. Use remarks in your Office Action response and possibly an Examiner Interview to educate the patent examiner on how your claimed invention is quite distinguishable from the prior art.
Pay particular attention to specific excerpts of the prior art references cited in the Office Action rejections. Does each reference actually show what the examiner is alleging? What might be missing in the prior art reference that the examiner claims to exist? How is your invention different from the cited prior art references in terms of structure or process? Are those differences sufficiently recited in your claims? If not, your Office Action response may require a combination of claim amendments and arguments.
Can commercial success prove a nonobvious invention?
Commercial success might be one way to show that a claimed invention is nonobvious. However, there must a be nexus between the claimed invention and evidence of commercial success. Nexus means that there is a factually and legally sufficient connection between commercial success evidence and the claimed features that make the invention nonobvious.
A supporting declaration from the applicant should explain the significance of the sales numbers and the connection to the claimed invention.
Can evidence of copying help show nonobviousness?
In addition to commercial success, additional secondary considerations can help show that a claimed invention is nonobvious. Evidence of copying by competitors is another factor that can help tip the scales towards nonobviousness. While copycat evidence is generally insufficient by itself to show that an invention is not obvious, such evidence of copying by others combined with other factors can lead to a successful result.