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?