Inventive Step or Nonobviousness

 Another requirement for patentability is that the invention must have an “inventive step” or is “nonobvious.” 

An inventive step or nonobviousness means that an invention must not have been obvious to a “person skilled in the art” or one “of ordinary skill in the art.” It can be said obviousness means that if any person of average skill in the scientific or technical field of the invention could have put together different pieces of known information and arrive at the claimed invention, then that invention is not patentable. (WIPO, 2022) (page 19 paragraph 2.2)

Figure 1: Person Skilled in the Art.

In the United States, the inventive step or nonobviousness is governed by 35 U.S. Code section 103.35U.S. Code § 103 - Conditions for patentability; non-obvious subject matter

"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.”

In the United States obviousness is a question of law based on underlying factual inquiries. The factual inquiries are as follows:

(A) Determining the scope and content of the prior art;

(B) Ascertaining the differences between the claimed invention and the prior art; and

(C) Resolving the level of ordinary skill in the pertinent art.

Figure 2: Xerox Photocopy Maschine with Founder Joe Wilson. 

Xerox Machine Filling a Long-Felt Unsolved Need and being a Commercial Success.

Objective evidence relevant to the issue of obviousness must be evaluated. Such evidence, is sometimes referred to as "secondary considerations." Secondary considerations may include evidence of commercial success, long-felt but unsolved needs, failure of others, and unexpected results. The evidence relevant to nonobviousness may be included in the specification as filed, accompanying the application on filing. The evidence may also be provided in a timely manner at some other point during the prosecution. (MPEP, 2020)

 

Figure 3: Slinky Discovered by Accident.

A Person Skilled in the Art

A person skilled in the art is a hypothetical person. He is presumed to have access to all publicly available prior art information. He has the capacity to understand all technical matters in the scientific or technical field relevant to the claimed invention. He also has the general knowledge and ordinary practical skills common to the field. This person will also have the capacity for routine experimentation to, for example, clarify ambiguities on known technology. The person skilled in the art does not, however, have inventive capabilities beyond the capacity to exercise the usual faculties of logic and reason to combine the knowledge. This person is not expected to exercise inventive imagination, or to add knowledge to the prior art and to advance the technology.

 

Figure 4: Person Skilled in the Art can be a Group of Persons.

Sometimes, this hypothetical “person” should be presumed to be a group of persons or a team of specialists, each of whom has a particular skill. The level of skill and knowledge of a person skilled in the art may vary depending on the particular technical field involved. In general, the level of knowledge and skill of the person skilled in the art is not the average of a layperson (i.e., the minimum knowledge and skill) or a leading specialist’s skill (i.e., the maximum knowledge and skill). The person skilled in the art is rather the skill expected of an ordinary, duly qualified practitioner in the relevant field.  (WIPO, 2022) (page 20 paragraph 2.2)

 Reasoning That May Support a Conclusion of Obviousness

The following may conclude that the purported invention is obvious:

(A) Combining prior art elements according to known methods to yield predictable results;

(B) Simple substitution of one known element for another to obtain predictable results;

(C) Use of a known technique to improve similar devices (methods, or products) in the same way;

(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;

(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;

(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art;

(G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention. (MPEP, 2020)

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 MPEP. (2020, 06 25). 2141 Examination Guidelines for Determining Obviousness Under 35 U.S.C. 103 [R-10.2019]. Retrieved 08 24, 2022, from Manual for Patent Examining Procedure: https://www.uspto.gov/web/offices/pac/mpep/s2141.html

WIPO. (2022). WIPO Patent Drafting Manual (Second ed.). Geneva, chemin des Colombettes, Switzerland: World Intellectual Property Organization. doi:10.34667/tind.44657