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I have invented something that achieves an important new performance metric that overcomes an existing video communications issue and will have large commercial value. My invention is comprised of available components, some of which are used in entirely new ways. The intellectual property law firm I retained to prepare a patentability opinion said there is less than a 50-50 chance a patent will be granted because a patent examiner will reject it for obviousness because all of the components are currently available. Period. He said that secondary considerations could lead to the granting of a patent if persuasive enough.

Are there examples of inventions comprised of available components that have been patented and, if so, what were the key reasons why?

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All inventions are some novel/non-obvious combination and/or configuration of existing components/methods. Even if you come up with a new chemical element, it is merely a new combination of well-known subatomic particles. Further, even if you discover a new physical force, you can't patent it over 35 USC 101, as it is a "judicially recognized exception".

The point being, there are no truly "new" inventions.

Therefore, the question is "to what degree is this combination distinct from all pre-existing combinations in the solution space".

Practically speaking, you want something distinct enough such that two prior art references in combination do not essentially teach what you disclose. If it takes more than two references, it starts to be a stretch for an examiner/challenger to make an obviousness rejection. The "glue" between the explicit prior art references is the "ordinary skill" of someone who works in this field, so probably someone with an MS/PhD in EE/CS in this case. For example, if the invention was to compress video using neural network auto-encoders with a Fourier transform input, then two research papers individually showing the benefits of auto-encoders and Fourier transforms for efficient lossy compression would probably make that invention obvious, especially since all the sub-components are known in relation to the problem at hand.

Secondary considerations are generally a fairly weak way of proving non-obviousness, especially in front of examiners, who are more likely to stick with the status quo (unlike litigation scenarios, which may offer a more open-minded consideration of the facts). You will at least need an expert affidavit/declaration backing up your secondary consideration argument. Your best secondary consideration arguments would likely be identification of the problem to be solved (which is a core prong of the obviousness inquiry alongside solution to the problem), or teaching away by the prior art (e.g. prior authoritative publication says "this isn't possible for so-and-so reasons", and you prove otherwise).

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I am not a lawyer, but I do have a fair number of patents. What you are fighting against is called "obviousness". Many patents are comprised of the combination of two or more different components. The patent examiner may indeed challenge the issuing of the patent citing the separate components by suggesting it would be obvious for someone skilled in the art to combine them. A persuasive argument around this is when the two components combined produce an unexpected result. For example, say chemical A can treat headaches with 1X effectiveness. Similarly chemical B can also treat headaches with 1X effectiveness. But if you combine them and get 5X effectiveness, you may be able to claim that the combination has a non-obvious synergistic effect. Even better is when the two components don't perform the same function. The combination would then be even more surprising to produce an improvement.

Do not be surprised if the patent examiner initially rejects your application, citing lack of novelty or obviousness. This seems to almost always happen on my patents. I think examiners do this as a matter of course. Most of the time, they are asking you to interpret cited prior art and to describe why your patent is different and patentable. I don't know of any "less than 50-50 chance" probability of success. Patentability really is based on the specific technology you are trying to patent and the related prior art. In my opinion a good patent attorney is important in this process. It would help if they have specific experience in the field.

  • The problem is that the USPTO - my opinion - just takes feature a from doc. 1 and feature b from document 2 and tells you that a + b is not not obvious even if feature a is actually part of the combination a+c+d which makes no sense if separated and document 2 has nothing to do with document 1, nor has b with a. Which makes it extremely hard to argue unexpected results or non-obvious combinations because - in my limited experience - they simply don't care. Which is generalizing a lot, but that might be the reason for the less than 50-50 statement. – DonQuiKong Sep 20 '17 at 16:38
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    @DonQuiKong This is exactly why I always recommend an experienced patent attorney. The really good ones write better applications and get more granted. – Eric Shain Sep 20 '17 at 16:46
  • Yes, the trick, if any, is to have enough fallback positions to deal with rejections by adding little features to the claims. – DonQuiKong Sep 20 '17 at 17:16
  • When I was a patent attorney, the goal was to broaden the claims as much as possible, once you overcome their idiotic "novelty" rejections and pump out several arguments against any conclusion of "obviousness", without actually insulting the examiners. You have, in theory, a "constitutional right" to obtain a patent, giving the USPTO the burden of proving you don't deserve it. Narrowing claims might give your client file-wrapper estoppel problems down the road. – Upnorth Sep 21 '17 at 18:40

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