I have got some questions regarding the "non-obvious" condition of getting a patent. Would like some help.?

[winwood]

Ok, I have been reading about how to go about applying for a patent and I am not sure I get this "non-obvious" condition. Basically, according to patent laws, an inventor is given a patent for his invention if his invention is not obvious to someone with skills in the invention's field.

Once an invention is made and the technology is ready, wouldn't the technology be obvious to someone with skills in the field? I mean, suppose power factor correction of an electric supply line using parallel capacitors hadn't been thought of, but people were aware of the fact that a capacitor provides reactive power and hence, can be used to bring down the total reactive power of an inductive load. The first guy who thought of the idea and implemented it would be innovative and if it were not for him, mankind would have to wait longer for that technology. But then, others might claim that the math is simple and that it's not a non-obvious invention. How does one figure that out? Ultimately, who makes the decision about what is and what isn't obvious? And is there any chance of an appeal if the patent office rules that the patent cannot be given for failing the non-obvious clause?

Sorry for using an example which not everyone might understand... Here's another example (again related to technology, so sorry if it still isn't completely inconvenient for someone from a non technical background)... Suppose machines A, B and C exist and are very common in life. These machines have been studied in depth and have been perfected over the years. Now someone comes along and by using machines A, B, C and some other parts, he makes up a system which is useful for mankind and is novel (as in no one has done it before). The question is, is the system non-obvious? It might be argued that any engineer could have rigged up the 3 machines and come up with the idea. But the fact remains, that no one before him did. Doesn't it mean that the idea wasn't so obvious after all?

[taillefer]

Non obvious is decided by the patent examiner. Most patents are almost automatically rejected in their first submission for a variety of reasons. The applicant then appeals and then often gets the patent. I've had a couple rejected because there was no obvious difference or improvements from the "prior art" in patent lingo. They were approved when resubmitted explaining the difference.

[ahanu]

The fact that a new invention combines (or even consists entirely of) something that was already known, does not necessarily make it obvious. You might, for instance, discover that a previously known compound has some completely unknown use as, say, a pesticide. Its use as such may be patentable, notwithstanding that the compound itself was already known and was already used for some unrelated purpose.

On the other hand, the fact that no one has done something before doesn't necessarily mean it isn't obvious. I've never heard of, say, a wallet with a digital clock display on the front. But if you wanted to make a wallet that tells the time, that's a pretty obvious way of doing it, right?

It's important to avoid relying on hindsight here, because pretty well everything seems obvious in hindsight. A significant factor is often whether the new invention solves some known problem. Say the invention combining machines A, B and C produces the effect X. People have been trying to do X for years, but they couldn't find a good way. That's a pretty strong indication that combining A, B and C in this way was not obvious.

[syvwkh]

Chaos:

Both examples demonstrate non-obvious art! This is the essence of patents.. IMPROVEMENTS.. YES.. others would figure it out.. This is why they have the "Enabling disclosure".. where you DISCLOSE, to sone skilled in the art, HOW to invoke hyour inventive idea.. Of course you will sa OF COURSE! I should have thought of that!

So, of YOU have something then check out the provisional application for patent here..

http://provisionalpatentvideo.com/patent-instructions/Provisional_Patent/Patent.html


Good luck.. PM me with other questions.. I am an ME and EE with over 20 patents in crazy technical things!

[tiernan]

There are numerous standard arguments for a rejection under § 103 "obviousness". For example, you could point out that the examiner must show (under MPEP rules) that the prior art at least "suggests" the combination exactly as claimed in the application, i.e., every single element.

Another is that there would not be an existing pent-up demand for the improvement "if the claimed invention had been obvious", meaning that "others would have already done it, but nobody did", resulting in the reductio ad absurdum conclusion that it must NOT be obvious, absent a rejection on teachings of the prior art.

Similarly, a popular argument is that nothing in the prior art has been cited as providing any reason or rationale to combine or modify the existing art into the claimed invention, therefore making it decidedly NOT obvious. In other words, if there were no reason to make the alleged combination, then why would anyone (skilled in the art) other than the present inventor have even tried it?