What I understand about novelty requirement of an idea is that,

The idea is required to be new from the existing prior arts.

And by the non-obviousness requirement of the idea is that,

The idea is required to be unexpected/unpredictable even by the experts on the related field

And by usability requirement of the idea is that,

The idea must be useful

Now, I was trying to generate some hypothetical ideas which have non-obviousness and usability but not novelty. When I failed to generate such examples, I came to a gut feeling that if an idea is really non-obvious and also usable than novelty is already supposed to be covered by these two properties. What's the wrong in my understanding? Could you please provide any counter example of hypothetical idea that has non-obviousness and usability but not novelty?

The rationale of my confusion is:

Any usable unexpected/ unpredictable idea by any one is already new

2 Answers 2


Novelty was long the key to patentability until cases kept coming up that were novel but considered not a substantial leap forward. Courts said it isn't really new if it could have been thought of by someone else and other very fuzzy thinking. Non-obviousness was added to try to draw a line in a theoretically non-subjective way. Section 103 requiring non-obviousness came in with the patent act of 1952. By the mechanics and details of section 102 (novelty) and section 103 they are different things requiring different showings.

The definition of obviousness in the question is incorrect, by the way. The text of section 103 is

A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102 , if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.

As written the definition of non-obviousness dovetails with the section above (102) on novelty. To flesh out the statue are regulation promulgated by the patent office threw the Federal Register. CFR Tile 37 XYZ.

Over the years the criteria changed and was muddled. In 1941 the SCOTUS policy was

held that an inventive act had to come into the mind of an inventor in a "flash of genius" and not as a result of tinkering.

In 1948 we have SCOTUS saying the device utilized in that case

"may have been the product of skill, [but] it certainly was not the product of invention"

All of this was changing and very subjective. In order to put some clear criteria in this process the 1952 Patent Law introduced the novelty requirement and the non-obvious requirement, each with some definition. A claim in a patent application can be rejected as not novel (section 102) if every element in that claim is fulfilled by a single embodiment contained in a single document that qualifies as prior art.

To reject based on being obvious (section 103) the examiner must find one or more documents that, collectively, have all of the elements in a claim. And argue that someone of ordinary skill in the art would have thought to combine them the way they are combined in the rejected claim. Furthermore, to try to limit hindsight bias there was the doctrine of requiring the examiner to find a teaching, suggestion, or motivation written in the prior art that would show that the combination, although not in the prior art was not out of the blue.

A rejection can be countered in many ways. One is to show that in making the combination, the primary prior art cited would be changed in a way that made it useless for its original purpose. If, to make a new invention starting with a bucket, the first step was make a big hole in the bottom, or turn it upside down, then the rejection would not stand.

Another is related to predictability/surprising result but that is not the core definition of non-obviousness. Or it would take undue experimentation to find the benefit of the combination. Others are a long felt need that was not satisfied previously - if it was so obvious and the result was needed, why hadn't it been done before? Commercial success and evidence of copying are also markers of non obviousness.

The TSM requirement died with the KSR case in 2007. And other cases have weakened and confused patentability questions since then but the framework is reasonably set up so it is not a matter of an examiner saying "seems obvious to me".

Could this set of criteria be reformulated without the separate concepts of novelty and obviousness? Probably - but the way the law developed got us here and there are many more important issues regarding patents for Congress to solve, like defining what "abstract" means. It has always been the case that something abstract can't be patented, but the current trend is for more and more subject matter to be considered abstract. A recent ruling was that a garage door opener was abstract.


An important issue I forgot about. Something published but not accessible - a thesis filed by author not subject matter is not usable as prior art but if has all elements of the claim then there is no novelty.

———- Additionally the intended use of a device is not important in a novelty analysis. Is it a very small rake or a large backscratcher? For novelty it doesn’t matter as long as the claimed structure is anticipated. In an obviousness analysis it does matter. We ask would someone combine two teachings to accomplish some result so intended use is a key to obviousness but not to novelty.

  • Thanks for your time George. Just a little confusion, you said about novelty, “ every element in that claim is fulfilled by a single embodiment contained in a SINGLE document“ and about non obviousness, “ONE or more documents that, collectively, have all of the elements in a claim” - now think if many documents together cannot seem to produce the idea then its also true that no single document produced the idea so why cant USPTO reject all the non novel idea by the clause of obviousness? Putting one or two examples might be helpful for me. Thank you so much. Dec 18, 2021 at 6:35
  • The “notwithstanding” in 103 is taken to mean - first check for novelty. If not novel reject for lack of novelty but if novel then check for obviousness and reject if found obvious. 102 and 103 could be probably combined and rewritten into a single section that erased the line between the two criteria. When a rejection is made and being rebutted it is a useful distinction. Does the rejection say “your thing, as claimed, has already exactly been done” or “your thing could have been thought of based on a combination of existing things”. There is no example as speculated in the comments.
    – George White
    Dec 18, 2021 at 16:45
  • 1
    @Sazzad Hussain Kahn - I just remembered a very important distinction and edited my answer. A published document that is practically inaccessible to the hypothetical expert (thesis indexed by author is the usual example), if unearthed, can kill novelty, it’s been done, but is not allowed to be used in an obviousness analysis.
    – George White
    Dec 18, 2021 at 17:18
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    Wonderful read. Thank you. Dec 18, 2021 at 18:51

I do not see anything wrong with your understanding, but I would describe novelty and inventiveness in a way, that it can be acted upon, for example in an examination.


A subject-matter of an application happens to be novel, if there is no previous single disclosure of the very same subject-matter.

Inventiveness (non-obviousness):

A subject-matter of an application happens to be inventive or non-obvious, if there is no combination of previous disclosures and of a common general knowledge resulting in the very same subject-matter.

That is, if an application is not novel, it won't be inventive either. And if an application is inventive it is also novel.

Please note, that the definition of "previous disclosure(s)" can differ in examining the question of novelty from the examining the question of inventiveness. Basically the types of previous disclosure(s) are: the documents known by the examiners (such as previous applications) and the documents known by the "public". There might be, for example, non-published (or not yet published) previous applications known by the examiners, which can be used in a novelty-examination, but not in an inventiveness-examination.

The requirement of usability has a different meaning from country to country. It could mean, that the subject-matter of an application has to be an improvement compared to the prior art. Another meaning might be it has to be just an alternative to the prior art. Or it has to be just physically functioning as described (not just a nice, non-working design). Maybe there are further meaning as well.

  • 2
    The distinction in what is or is not prior art for novelty and obviousness does not exist in U.S. law. And nothing can be cited as prior art before it is published. So there is no "known by the examiner but not the public" in the US. If such a thing was cite-able after the application in question was published it would mean the public could not follow the process since they couldn't see the earlier application.
    – George White
    Dec 18, 2021 at 3:24
  • You made my confusion stronger by saying “if an application is not novel, it won't be inventive either. And if an application is inventive it is also novel” - The question is why then we have two requirements, novelty and inventiveness when only inventiveness already covers novelty? Dec 18, 2021 at 6:46
  • @SazzadHissainKhan. It is like filtering. If not novel, application fails on both counts. No need for the examiner to search all around (inventiveness) to make the application fail. Saves time for the examiner, I believe. Dec 19, 2021 at 16:37
  • @ADAdhikary How come it helps examiner to save time. Hypothetically, as soon as they find the exact idea in a prior art (novelty check fails) they have the right to reject immediately (with non obviousness clause) without even looking for its non obviousness. Because logically violation of novelty is also a violation of inventiveness as I understood. Dec 19, 2021 at 21:10
  • @SazzadHissainKhan "they have the right to reject immediately (with non obviousness clause) without even looking for its non obviousness." - Doesn't that save time? Dec 20, 2021 at 6:15

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