We worry most about obviousness when an invention claims an incremental improvement over the existing technology. Obviousness is less of an issue where we have a revolutionary new direction in the technology or a fairly unpopulated art area where there are few inventions.  But, exactly what is “obviousness?” It is an elusive concept that even the most experienced practitioners tend to reply, ”I can’t define it, but I know it when I see it.” Great, that is very helpful, huh?

Let me try to give you some guidance on how a patent professional performs an obviousness examination. The outcome is very subjective based on our individual educational and professional experience, but the methodology and how we go about it is fairly standard.

The first step is always to identify and look at the technology involved. For example, are we in biotechnology, microelectronics, or aerodynamic machines? What kinds of devices exist already and what kinds of features do they have? This establishes the state of the art for this technology.

What is the closest known technology? When designing devices in this area, where would someone look for inspiration? (For example, someone designing cars might look to plane designs for inspiration for aerodynamic design features.) What features exist in that related technology? This establishes our analogous arts.

This collective grouping of features is “elements known in the art.” This is the starting point for our comparison.

What problems are typically trying to be solved with this device? What solutions exist for solving that problem? If there are only a few solutions to a known problem, then these solutions are likely to be considered obvious. The law finds that solutions most anyone would come up with to be predictable technology—not an inventive concept. There is no flash of genius involved.

What problem(s) was the instant invention trying to solve? How do the features of the invention deviate from the elements known in the art?

It is important to point out these differences in your patent application disclosure. It will provide the necessary subject matter to argue against an obvious rejection raised by the Examiner during patent prosecution.

If your invention is in arguably familiar or simple technologies, what can you do to increase your chance of being awarded a patent? There are arguments that can successfully overcome an obviousness rejection. An inventor can argue that:

• the claimed invention was not predictably successful
• the claimed invention addresses a problem that was not previously recognized
• the claimed invention creates new and unforeseen benefits over the existing technology

Can your invention support one or more of these arguments? If so, you may be able to overcome an obviousness rejection.  An experienced patent practitioner can help you position your invention with the best chance of being allowed and being granted a patent.