An experienced patent attorney wrote:

In the US, it is not wise to try to point out, in the application, which aspect of your invention is the part that makes it non-obvious.

Why is it unwise to communicate the aspect of the invention that makes it non-obvious? What pitfall does this create?

  • 1
    In the US the claim - as a whole - must be non-obvious. It may be that nothing is new, but the way a bunch of old things are put together makes a whole new thing.
    – George White
    Commented Mar 6, 2018 at 18:53

1 Answer 1


Essentially by saying "feature X is the non-obvious bit", you're saying everything else is obvious. You can't later go back on that.

This means you've made the job a lot easier for the examiner (or an opponent when you try to enforce) to craft their obviousness argument. That's no benefit to you. So why do it?

In addition, you might get it wrong. Even if you think a feature is obvious, that doesn't mean it's necessarily obvious to someone else (for example, a judge). Again, there's no benefit to you to admitting some is obvious, so why do so?

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