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I read somewhere that attempts to make the distinction of novel and obvious by

If you combine two or more existing things in a way that would make sense to one of skill in the art to accomplish a predictable result, then that idea is obvious and also not patentable.

However, this statement to me seems to be very subjective. A lot of these novelty seemed obvious after it is being discovered and could be easily duplicated by someone skilled in the art.

For example, I was watching shark tank and one company was making a polyester fiberfill designed to prevent items from falling between a car's front seats and center console. I am pretty sure that someone thought about this idea before. It seems so obvious and sure enough someone skilled in the art can reproduce this easily hence all the similar products being available in China. Yet this company still get the patent for this idea granted.

What is the line between obvious and novel?

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Novelty just means a method is new/original, and has not been disclosed (with certain caveats, dependent on region.) Novelty is distinct from obviousness.

Novelty is defined in the US as follows:

[a] person shall be entitled to a patent unless— (1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; or (2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
35 U.S. Code § 102 - Conditions for patentability; novelty


"Obviousness" is more cloudy and there is no simple answer. However, you may find this IPWatchdog review article helpful: When is an Invention Obvious?

The cited article begins with an issue relating to the determination:

"...unfortunately the law of obviousness can be quite subjective and difficult to understand. At times obviousness determinations almost seems arbitrary."

It then presents the analytical framework for the determination:

In order to determine whether an invention is obvious one must work through this analytical framework: (1) Determine the scope and content of the prior art; (2) Ascertain the differences between the claimed invention and the prior art; (3) Resolve the level of ordinary skill in the pertinent art; and (4) Consider objective indicia of non-obviousness (i.e., are there secondary considerations of non-obviousness that suggest a patent should issue despite an invention seeming to be obvious).

Case Law and precedent becomes important:

"Prior to the Supreme Court’s decision in KSR v. Teleflex obviousness was rather mechanical. With obviousness we are asking whether there is any combination of prior art references that when put together would be the invention in question. In other words, could an ordinary mechanic create your invention or was there some kind of non-obvious innovation.."

Six KSR rationales are listed:

  1. If the invention a product of combining prior art elements according to known methods to yield predictable results the invention is obvious.
  2. If the invention is created through a substitution of one known element for another to obtain predictable results the invention is obvious.
  3. If the invention is achieved by using a known technique to improve a similar device in the same way the invention is obvious.
  4. If the invention is created by applying a known improvement technique in a way that would yield predictable results the invention is obvious.
  5. If the invention is achieved from choosing a finite number of identifiable, predictable solutions that have a reasonable expectation to succeed the invention is obvious.
  6. If known work in one filed of endeavor prompts variations based on design incentives or market forces and the variations are predictable to one of skill in the art the invention is obvious.

The article goes on to state:

"...what is obvious to some large degree is in the eye of the beholder."

and notes that most applications will receive at least one pro forma non-obviousness rejection. The article concludes that:

"...we don’t have a useful test for obviousness at the moment, which can make it exceptionally difficult to advise clients in cases where it could go one way or another depending on one’s particular point of view."


See Also:

Understanding Obviousness: John Deere and the Basics | IP Watchdog
KSR the 5th Anniversary: One Supremely Obvious Mess | IP Watchdog
KSR's Effect on Patent Law | U. Michigan Law Review
Predictability and Nonobviousness in Patent Law After KSR | U. Michigan Law Review

  • 1
    I would argue that all new inventions are a combination of prior art. Calling device + internet + touchscreen = smartphone. Wheels + engine = car. It always looks obvious to us after someone discovered the combination but somehow we are always not the guy that discovered that combination. Also it's a bit sad that "...what is obvious to some large degree is in the eye of the beholder." – user3667089 Sep 25 '17 at 19:45
  • The only certainty in patent law that I can see is uncertainty. But as Eric Shain notes, with a decent attorney, a solid patent can navigate non-obviousness. The real problem imo is wholly abstract patents that only describe a process in general, as opposed to specific implementations. – DukeZhou Sep 25 '17 at 19:51
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    I like this answer. One thing that usually avoids an obviousness argument is when the combination yields a surprising result. Perhaps step A yields 1x, step B yields 1x but combining step A and step B yields 7x. – Eric Shain Sep 25 '17 at 20:07
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DonQuiKong's answer is a good one and should be accepted. As an inventor, I thought I might share a few other insights. Obviousness really is vague and subjective. It is thrown out by examiners almost by reflex now a days. My experience is the examiner does a prior art search, finds some related patents and then rejects pretty much everything based on obviousness. What this really is doing is asking the applicant to explain what is in the cited art and why the invention is not obvious. Usually if you have a good patent attorney or agent, and a good invention, you can convince the examiner of the ideas merit, perhaps with careful tailoring of the claims. This process can take quite a while with some cases. Having a good attorney is essential in my opinion.

As much as this seeming laziness on the examiners part is annoying, I highly prefer it to an examiner allowing a bad patent.

  • We used to sometimes traverse an obviousness rejection by arguing that "if it were obvious to make such a combination prior to the Applicant's filing, it would have already been done, but the Examiner cites no evidence that it was..." Does that not work any more? – Upnorth Sep 26 '17 at 15:05
  • @Upnorth Perhaps it might work with certain examiners, but my experience is you want to give them some additional reason. The "unexpected advantage" argument is often persuasive. – Eric Shain Sep 26 '17 at 21:36
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For prosecution not novel means all features of the claim are described in a single document.

Obvious means the combination of a first document with a second document or otherwise documented knowledge the person skilled in the art has leads to the invention.

There are some highly theoretical edge cases relevant in one of a million cases where something might be not new but not obvious, but there is no complete theoretical basis for those, it's more a question of case law, so the edge is sometimes blurry and changes with examiners/judges.

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