Patent Search-Non-Obviousness

A patent examiner searches not just subject matter but also disclosed features that are claimed in an application-both are used to cite prior art that shows obviousness (or lack of non-obviousness). In order to discover if an invention is truly new and nonobvious, patent examiners at USPTO conduct a comprehensive prior art (all that is already public knowledge in the areas of science and technology) search including not only U.S. patents and published applications; but also foreign patents, journal and magazine articles, books, manuals, catalogs, websites, databases, conference proceedings, scientific papers, among other things.


In addition, the knowledge of a POSITA can be combined with any prior art to define what is obvious:

“[T]he focus when making a determination of obviousness should be on what a person of ordinary skill in the pertinent art [POSITA] would have known at the time of the invention, and on what such a person would have reasonably expected to have been able to do in view of that knowledge.” http://www.uspto.gov/web/offices/pac/mpep/documents/2100_2141.htm

Prior art can be either in the field of applicant's  invention or be in a field reasonably pertinent to the particular problem with which the applicant was concerned. Multiple prior arts may be combined against a single claim in an invention if there is a rationale to do so.


A USPTO Examination Guide takes into account the recent the Supreme Court in KSR International Co. v. Teleflex Inc. (KSR), 550 U.S. ___, 82 USPQ2d 1385 (2007). Rationales from this guide that may support a conclusion of obviousness from combining prior arts include:

(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 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 [TSM test] 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.

http://www.uspto.gov/web/offices/pac/mpep/documents/2100_2141.htm.


Contact Not Just Patents  at 1-651-500-7590   for assistance in creating and protecting Intellectual Property Rights (IPR). See PatentSearchSteps.com for information on how to do a quick patent search and why it is important to go beyond that quick search  


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