Is a product patentable that combines items available for sale in different products? 3 Answers as of April 21, 2011

Say Craft Kit A includes an item (X) that makes it easier to collect objects to complete the craft (and this craft kit is available for public sale). And, Craft Kit B includes items Y and Z that offer options for decorating crafts (and this craft kit is available for public sale). If there is no prior art that contains all of the items X, Y and Z in a craft kit, is a craft kit that includes items X, Y and Z patentable? Thank you.

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DANIEL NESBITT
DANIEL NESBITT | Hasse & Nesbitt
The patent law requires that an invention be both novel and non-obvious. The new product with all the items is novel. The examiner can reject the new product as obvious, by combining the elements of A from Kit A with the elements of B and C from Kit B. This "prima facie" rejection assumes that it would be obvious to try combining these items, or predictable to do so. The inventor can argue against the rejection, based on a lack of predictability, teaching away, or other basis, and can also offer evidence of surprising results or other evidence that may overcome a prima facie obvious rejection.
Answer Applies to: Ohio
Replied: 4/21/2011
Malhotra Law Firm, PLLC
Malhotra Law Firm, PLLC | Deepak Malhotra
It is possible that the combination will be patentable depending on a variety of factors such as how long the craft kits have been on sale. The main issue is likely to be whether or not the combination is "obvious." The concept of obviousness is complex and has recently been re-defined in a Supreme Court case called KSR v. Teleflex. That case made it easier to find combinations to be obvious. Generally speaking, if you use components for something other than their normal use, or if there is some reason why it would be difficult or non-intuitive to combine the components (something that teaches away from the combination), you would have an argument against obviousness. You could read the KSR v. Teleflex case or discussions and come to your own conclusion, or see a patent attorney for advice.
Answer Applies to: Washington
Replied: 4/19/2011
Michael M. Ahmadshahi
Michael M. Ahmadshahi | Michael M. Ahmadshahi, Ph.D., Esq.
This is probably the most contested issue that arises during the examination of a patent application, and it is referred to as the obviousness rejection. In particular, when an idea combines elements from two prior art, such as your examples Craft Kit A and Craft Kit B, the question to be answered is whether or not it would be obvious to an artisan of ordinary skill (someone who is knowledgeable in that field) to combine the two prior arts to arrive at your invention. There are several factors that are considered in the analysis and you may want to consult a patent attorney or a patent agent to at least give you an idea about the degree of obviousness, if any, and the degree of difficulty to defend your invention against a potential obviousness rejection by the examiner.
Answer Applies to: California
Replied: 4/18/2011
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