I am referencing the case of how PTAB invalidated Molly Metz's patent because they decided that combining one jump rope invention with another jump rope invention is obvious:


But inventions are pretty much always a matter of combining what is known to form something else, no?

So the question is, when is combining prior art obvious and when is it not obvious? In specifically Molly Meltz's invention, why is it obvious in her case?

2 Answers 2


I think the standard is whether someone with ordinary skill in the field would find the combination obvious. In this case it's a mechanical assembly so perhaps a mechanical engineer. I looked at the patent and what I see is that the invention is adding a ball joint to the handle in addition to the rotating joint to get extra flexibility. Since they are using metal cable rather than conventional rope the extra flexibility is desirable. The rotating bearing is old news and used in conventional jump ropes. Ball joints are very common and have been used for perhaps hundreds of years. As a mechanical engineer I think it is a pretty obvious combination and a predictable solution to their problem. The issue isn't that the inventor was trying to improve upon an existing device, it is that the improvement is simple and lacks any sort of cleverness. The article calls the ball joint "pivoting eye technology" but its just a ball joint, easily obtained from many suppliers.

The article also says infringers were making and selling her invention in China and India. Of course a US patent provides no protection in other countries so they aren't infringers until they start selling in the US. In any case the patents got challenged and evidently found invalid. Many complain of the USPTO giving patents to "obvious" things and this was deemed to be one of them. My own, non-lawyer opinion on avoiding obviousness is demonstrate there is some unexpected improvement. Say if A has X output and B has X output but the combination of A and B gives 10X output. Or perhaps you are improving invention A with a mechanism C which is entirely new or at least sufficiently obscure that someone skilled in the field would be unlikely to think of the combination.

As always, I will point out that I am not a lawyer so this is not a legal opinion.


The law is

(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.

Unfortunately, in practice, I think it has often been subjectively determined. It is not, or should not be, “seems obvious to me”. Hindsight bias is a strong force. Once you know something it is almost impossible to put yourself in the shoes of someone who does not know it. Non-obviousness does not actually require a great improvement in a product nor does it require a flash of genius (at least since the laws were changed in the early 1950s). The requirement for nonobvious was not put in place to eliminate non-brilliant inventions it was to acknowledge that something might technically be novel but only be an “obvious” step beyond what had been already done.

Until a few famous SCOTUS cases ago there were safeguards against hindsight bias in place. An examiner needed to find references that, collectively, contained all of the elements in a claim, as is still the case. Then they had to find something in the prior art record that showed that, before the filing date, there was a public record of a teaching, suggestion or motivation to make the combination - the TSM test. The TSM test was said to exclude the examiner or judge from using “common sense” in the KSR case.

In that SCOTUS case TSM was downgraded to a “nice to have” and common sense is allowed to be used in filling in missing pieces in an obviousness argument, at least by judges.

This is KRS v Teleflex https://en.m.wikipedia.org/wiki/KSR_International_Co._v._Teleflex_Inc. and this article explains the revolutionary effect of two cases from the early 2000s. https://www.msk.com/newsroom-alerts-2514

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