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The non-obviousness requirement of 35 U.S.C. 103 states that a patent may not be obtained if it contains only obvious differences from prior art.

Consider the following:

  • A is known prior art.
  • B is known prior art.
  • An inventor has an 'invention' that improves A by using B in conjunction with A to extend the usefulness of A. The inventor files a utility patent application that claims an improved version of A based on the use of B with A to improve A. The inventor is the first to file a patent application with such a claim, and there are no known examples of prior art indicating that anyone else had conceived or practiced such an 'invention' prior to the filing of the application - even though A and B have both been known for several years.
  • To someone familiar with A but not familiar with B, it would not be obvious that A could be improved by using B with A.
  • However, to someone familiar with both A and B, it would be obvious that A could be improved by using B with A.

Based on the above, would you expect the USPTO to deem that the non-obviousness requirement has been satisfied? Or, would you expect the USPTO to reject the application based on failure to meet the non-obviousness requirement?

  • You might want to read up on the person “skilled in the art“. – DonQuiKong Oct 5 '17 at 17:06
  • Non-obviousness is a fuzzy concept [See this question] Uncertainty is part of the patent process--no one can predict with absolute certainty what an examiner will decide. – DukeZhou Oct 5 '17 at 19:41
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Obviousness is a tricky concept with respect to patentability. In my experience it is a common reason for rejection. The threshold I see generally applied is would someone with "ordinary skill in the art" find the combination of the two ideas obvious to implement. Since you state:

However, to someone familiar with both A and B, it would be obvious that A could be improved by using B with A.

Given that statement, I would say that the application would be rejected. You can attempt to persuade the examiner that the combination would not be obvious to someone with ordinary skill in the art. My experience is that the argument "Hey, no one else thought of it so it must be non-obvious" won't fly.

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    Someone skilled in the art may be a multitude of persons skilled in the different arts. There's something like that in mpep or european equivalent, I don't remember right now. But that would prove what you say. – DonQuiKong Oct 5 '17 at 19:18
  • Thanks Eric, this is helpful. But applying this logic, it's hard to fathom how Gillette was granted a patent on a razor that has 3 blades instead of 2 (bit.ly/2xl8fjI), or how another inventor was granted a patent claiming the process of scanning & emailing a document (bit.ly/2nswTZN), or how countless other patents have been granted for seemingly trivial A+B improvements (bit.ly/1kL21IM). How do you explain this lack of consistency, and how can inventors avoid getting into an expensive game of 'rolling the dice' when it comes to filing patent applications of this nature? – weaver Oct 6 '17 at 13:22
  • @weaver I'd have to look at the Gillette patent. I believe with the Mach3 razor they introduced a really neat laser welding technique which allowed mounting much thinner blades. That would be clearly novel. The point is you have to actually inspect the patents. Some people trivialize this by over simplifying. – Eric Shain Oct 6 '17 at 14:36

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