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I'm a guy in a garage inventor. This is my first time trying to get a patent. I've got a provisional patent and I've done a fairly extensive patent search and I've done some research on how to to fill out a non-provisional patent application properly.

My invention is fairly simple. My main method claim would be like two or three steps. There are existing devices that perform the same function as my invention but they're more complicated. My invention is actually dumber and easier. So I'm worried about getting an obvious rejection.

Is there anything I can do when drafting my patent application to argue that my invention is non-obvious or does that have to be inferred from the claims?

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    Just to be clear, you don't have a provisional patent. You have a provisional application. There is no such thing as a provisional patent as provisional applications do not get granted as patents. I'm not trying to be picky here, it's important to understand this. – Eric S Jun 9 at 14:17
  • Ah, I see. Thank you for pointing that out. – user875234 Jun 9 at 18:30
  • If you plan on writing and filing an application on your own I suggest you have a lot of information to learn, besides the answer to this question, if you want to have much of a chance at success. It is a large and complex field that is always changing. – George White Jun 10 at 0:52
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The last paragraph of the Background section should broadly describe the challenges found in the prior art that are addressed by the inventor. The first few paragraphs of the Detailed Description should concisely explain how the inventor solved those challenges.

The Background should explain the problem to be solved, and state that the prior methods were complicated, cumbersome, difficult, or whatever is true. (See MPEP 608.01(c) "Where applicable, the problems involved in the prior art or other information disclosed which are solved by the applicant’s invention should be indicated. See also MPEP §608.01(a), § 608.01(p) and § 707.05(b).") Successful Applicants rarely describe extensive detail about prior art in the Background. A simple statement of the business area and challenges is enough. Background statements generally avoid too much insight into how the inventor solved these challenges.

The Detailed Description should then show the reader how, through insight and experimentation, the inventor solved the problems described in the Background. The Detailed Description can include the questions asked by the inventor that allowed the realization of a solution to the problems facing others. If the invention specifically does not do certain steps, the Detailed Description should list each of the steps that the inventor realized were unnecessary. Any new steps or modifications used to avoid the unnecessary steps should be listed.

As George and Eric have noted, arguments about non-obviousness can be made in response to the Examiner's rejection (if any). The Application need not list all possibly related prior art. It's notoriously difficult to know what the Examiner will choose for making a rejection.

However, the Application should include details that will support arguments of non-obviousness. If the novelty of the invention is that is does not include certain features, the Detailed Description should specifically state the commonplace features that the invention does not include.

A feature in a claim that explains what is not done or not included is called a negative limitation. Negative limitations should be supported by explicit description in the disclosure as originally filed.

I hope this helps. A patent agent or attorney could help answer questions related to your specific situation.

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    Thanks for providing information helpful to the OP, particularly about negative limitations - often overlooked until it is too late. – George White Jun 10 at 16:03
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The time to argue non-obviousness is after you get an obviousness rejection. The rejection will cite specific prior art and provide logic as to why they should be combined. You need to attack the argument presented by the examiner, not "obviousness" in general.

The patent appliation describes the invention and how to make and use it. You can mention advantages over previous solutions but do it carefully. Disparaging an aspect of the prior art can lead to narrowing the interpretation of your claims, if granted.

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You can, extensively, if you want, mention any prior art in the introduction, say what drawbacks there are and how your product is better.

Or you reply to the rejection when and if you get it.

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  • Pointing out differences from prior art is more of an novelty argument. Non-obviousness is a bit trickier, I think. One can point out that no one, skilled in the art or not, has yet thought of the invention I suppose. – Eric S Jun 9 at 18:41

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