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Why novelty of the idea is required when non-obviousness apparently already covers the requirement?

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 ...
George White's user avatar
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3 votes
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Full Scope Non-Obviousness?

I agree with Maca that, by definition, if any specific example that falls under the scope of a claim is obvious, the claim is obvious. Examiners do not need to find "full scope" obviousness, ...
George White's user avatar
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3 votes

What questions does an examiner ask when determining if an application is non obvious?

What concrete steps can be taken / avoided to convey that the invention is not obvious? I would avoid writing that you used "existing technology". Most inventions are improvements on something that ...
George White's user avatar
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3 votes

How does this particular patent satisfy the tests of obviousness and novelty?

Many if not most patents are improvements on existing technology. While US5005266 patents a particular method of self-locking carabiner, it by no means patents the general idea of self-locking ...
Eric S's user avatar
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3 votes
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Examiner ignores inventor's arguments against his owns

First, call the supervisor (SPE). His/her name and number should be listed at the end of each office action. Most likely the SPE will set up an interview with you, the examiner and the SPE. During ...
Riccati's user avatar
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3 votes

Can the examiner's use of more than 3 prior art refs in combination be successfully argued as "nonobviousness"?

It is unfortunately common for US examiners to combine 3 or more documents to argue obviousness. I recall once having 6 documents cited in combination (which, predictably, we did not react kindly to). ...
Maca's user avatar
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3 votes
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Using usefulness to prove non-obviousness

Yes - but do not use the word usefulness - "unexpected results" and "teaching away" are both patent law factors in determining obviousness. Teaching away means repeated and ...
George White's user avatar
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2 votes
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Question about the Non-obviousness Requirement of 35 U.S.C

Obviousness is a tricky concept with respect to patentability. In my experience it is a common reason for rejection. The threshold I see generally applied is would someone with "ordinary skill in the ...
Eric S's user avatar
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2 votes

Patentability of a specific method of web content filtering

Like any patent, one has to study the claims to know what is protected by the patent. In the case of the linked Israeli patent, I can't read the patent so there is no way to comment on the claims. ...
Eric S's user avatar
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2 votes

Why novelty of the idea is required when non-obviousness apparently already covers the requirement?

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. Novelty: A subject-matter of an ...
picibucor's user avatar
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2 votes

How is obviousness assessed?

It is not a clear science but fortunately an examiner can't just say "seems obvious to me" In the U.S., first the examiner must find a base reference with an embodiment that has some of the ...
George White's user avatar
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2 votes

How is obviousness assessed?

In Europe the problem-and-solution approach is used most of the times because it is said to be an objective assessment of inventive step/non-obviousness. Below I reproduce some points about it. The ...
the Europeist's user avatar
2 votes
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Since PTAB has been formed, what percentage of patents have been invalided due to being retroactively deemed "Obvious"?

The easy statistics for me to find were based on finding one or more claims invalid. That might be due to subject matter, novelty or obviousness issues. A group called US Inventors, who are very ...
George White's user avatar
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2 votes

Why did Molly Metz's attorney cite this statistic to prove non obviousness?

It is called “secondary considerations”. This is from an important SCOTUS case from the 1960s was called John Deer V Graham. It was about an innovation reading plows. In the decision was a quote from ...
George White's user avatar
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2 votes

If A+B+C already exists, would it be argument for obviousness if someone attempts to patent A+B?

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 ...
George White's user avatar
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2 votes
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specific example of patentability

*The artificialness of the question makes a direct answer useless. I will try to explain some basic principles. If any aspect at all in a claim can’t be found in the prior art then the claim is to ...
George White's user avatar
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2 votes
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When is combining prior art to invent something new obvious and when is it not obvious?

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 ...
Eric S's user avatar
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2 votes
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can a bucket full of rocks ever be patented?

You can not patent just a bucket full of rocks. People have been using buckets to transport rocks for centuries. There is plenty of prior art and it is obvious to anyone who wants to move rocks that ...
Eric S's user avatar
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2 votes

Statutory, regulatory, or other bases for the "all elements test" in obviousness responses

I do not think the fear expressed in the 2008 blog post came to pass. I can speculate on the motivation for the change in the MPEP but I have not heard any subsequent outcry that 103 rejections that ...
George White's user avatar
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1 vote

How is non-obviousness determined?

First, law is not science and people and the situations they get themselves into are infinitely complicated. In the US for an obviousness rejection to hold water on it face the examiner needs to find ...
George White's user avatar
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1 vote

How is non-obviousness determined?

I'm answering this not as a lawyer, but as an inventor who has faced obviousness rejections. It is very common for an examiner to find a couple of related patents and raise a rejection based on ...
Eric S's user avatar
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1 vote
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Can someone explain how PTAB invaliated Molly Metz's jump rope patent?

From one article “But the board disagreed, saying in its decision on Jump Rope Systems' U.S. Patent No. 7,789,809 that it was persuaded by the testimony of Rogue Fitness' expert that a skilled artisan ...
George White's user avatar
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1 vote

Can an improvised device made of used packaging be patented?

To obtain a patent, an invention needs to be useful, novel and non-obvious to a person skilled in the technical area. To me, your description doesn't meet the non-obviousness requirement since you are ...
Eric S's user avatar
  • 11.5k
1 vote

Claimed Invention "As a Whole"

As DonQuiKong said - “as a whole” means the whole claim needs to be considered rather than looking at it piecemeal or neglecting an element. A claim to something with an A a B and a C can’t be ...
George White's user avatar
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1 vote
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Is claiming priority with a different inventor essentially madness?

Consider the following scenario: Prov1 - Filed on 1 July 2016 NP1 - Filed on 1 June 2017, claiming priority to Prov1 NP2 - Filed on 1 July 2017, claiming priority to Prov1 Once NP1 is published, it is ...
Maca's user avatar
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