If A+B+C already exists, would it be argument for obviousness if someone attempts to patent A+B?
Why or why not? Or does it depend on circumstances? If so, can you give examples?
asked Sep 8, 2022 at 16:27
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2 Answers
No, it would not be an argument for obviousness because it is an argument for (lack of) novelty.
You can easily see that by drawing Venn diagrams. When the scope (area) of what you are trying to patent includes at least part of an existing area, there is lack of novelty. A+B+C is part of the area of A+B, thus A+B is not novel. This is what is called genus and species, A+B+C is the species of genus A+B (A+B is, at the same time, the species of genus A and/or genus B). You have some more information about this here.
Venn diagrams can be extended to obviousness as well. The area of the prior art is not included in the area of what you are attempting to patent. The question is whether the area of the prior art can be enlarged sufficiently due to obvious developments by the skilled person for the enlarged area to be at least partially included in the area of what you are attempting to patent.
The above explanation regards A, B and C as technical limitations of a claimed object/process, so they may be steps, structural features or definitions of how different parts of the claimed invention interrelate. In this regard, please read George White's answer where he clearly sets out an example.
answered Sep 8, 2022 at 19:26
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There is a subtlety the OP might not see from the answer - if someone discovers a new way to combine A and B, possibly achieving what could only previously be done with A + B + C it could avoid a novelty problem. Maybe a non standard notation might be A+B existed but A&B did not.– George White ♦Sep 8, 2022 at 21:21
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1@GeorgeWhite Your example, like in your answer, is in fact novel. The thing is, should we still talk about A+B instead of A+B+D? If there is a different way of combining the claimed features, the combination itself is a feature on its own. For example, the 3rd wheel between the front 2 wheels is like a wherein clause that I also regard as a feature. Perhaps it shall be clarified in my answer that A and B are not necessarily structural features but technical limitations. Sep 12, 2022 at 12:49
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This discussion has been helpful. When I asked this question, I wasn't aware that you cannot patent a subset of prior art. Now this all make sense. Sep 12, 2022 at 16:03
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@theEuropeist based on your comment, it seems that you may know the answer to patents.stackexchange.com/questions/24911/… could you write an answer? thanks Sep 12, 2022 at 16:09
Image a 4-wheel car exists and what everyone knows is that to be stable a car needs 4 wheels in a rectangular arrangement.
Someone invents a 3-wheel car be realizing stabilization can be achieved by only one rear wheel I’d if located between the front two.
The four wheel car had three wheels but it isn’t a 3-wheeled car. The claim for the 3 wheeled invention needs to not say a car having 3-wheels. That already exists. But a car balanced as a working 3-wheeled car could be claimed.
answered Sep 10, 2022 at 21:55
