What does nonobvious mean in terms of patentability? 6 Answers as of May 14, 2015

On the USPTO website, they list criteria to determine the patentability of a product. What seems obvious to me (the inventor) may not be obvious to others. Does this negate the 'Its so simple, why didn't I think of that? Scenario?

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Barton Barton & Plotkin
Barton Barton & Plotkin | Maurice Ross
Books are written on this subject. Lawyers take two semester courses on obviousness in law school. Google KSR (a famous Supreme Court case) and obviousness and you can read dozens of articles on the subject. Basically, unless an invention substantially advances the art, it is obvious. If an invention involved only routine experimentation to solve a problem, it is obvious. Common sense solutions to problems are obvious in most cases.
Answer Applies to: New York
Replied: 5/14/2015
DANIEL NESBITT
DANIEL NESBITT | Hasse & Nesbitt
Your question is an excellent one. A well-considered and thorough answer that runs on for several pages would not make the answer completely clear and understandable. Patent attorneys and patent examiners both wrestle with issue, and often do not agree even when given the same fact pattern - the attorney's written claim and the examiner's cited prior art. In short, "why didn't I think of that", even if said by the author of the primary prior art, is not determinative. The one word that I have seen often in the Examiner's Manual of Examination Practice (MPEP) and recent court decisions is "predictability". For example, based on the teaching of the prior art, would it be predictable that the combination used in a claim would work.
Answer Applies to: Ohio
Replied: 5/14/2015
Mark Torche | Mark Torche
This is the question that has no definitive answer. The patent office is not supposed to use "impermissible hindsight" which renders almost all inventions obvious. This is the kind of thing that happens when you see an good answer to a problem and think to yourself - "Why didn't I think of that?" That would be an example of impermissible hindsight. Of course getting to the "right" kind of obviousness is the patent office's job. It is difficult to say exactly what is permissible and what is not. The letter of the law is written so that if it would be obvious to one skilled in the art of whatever your invention is - the so-called PHOSITA - (person having ordinary skill in the art) then you are not entitled to a patent. If your invention would be deemed obvious to a person skilled in the field of knowledge related to your invention, then it is not patentable but if would take experimentation, etc. to come up with your solution, then it should be patentable. It is anything but clear and that is the way it is with most things in the law. You have the black letter and then you have to decide the individual case based on the particulars. Since most patents are for improvements over things that already exist (very few patents are for brand new areas of invention) the answer to the question of what is obvious is a tough problem and one that no patent professional can answer with absolute surety.
Answer Applies to: Iowa
Replied: 5/13/2015
Banner & Witcoff, Ltd. | Ernie Linek
Obvious or not obvious - that is the question. To be patentable your invention must be (1) new, (2) useful, and (3) not obvious to persons have ordinary skill in the field of the invention. Patent attorneys fight obviousness rejections issued by the patent examiner on a daily basis for their clients. How different is you invention from the prior art? A small difference - is more likely to be an obvious change. A large difference - is more likely to be not obvious. Many inventions fall in the middle - so we fight about obviousness. The Supreme Court case known as "KSR" goes into detail about how to study this issue. It has a Wikipedia page. GOOD LUCK!
Answer Applies to: Massachusetts
Replied: 5/13/2015
Microtechnology Law & Analysis | Daniel Flamm
It means that a person having ordinary skill in the art would not have known to do what is claimed, based on all of the prior art in existence before the earliest priority date of the application.
Answer Applies to: California
Replied: 5/13/2015
    Law Office of Kirk Buhler
    Law Office of Kirk Buhler | Kirk A Buhler
    Non-obvious is in terms of "one skilled in the art". Would one skilled in the art look at the invention and think that the invention would be "obvious". It is not for the average person, but would be from the perspective of a person who has knowledge of similar inventions. There is some subjectivity to what is obvious because all people skilled in the art (usually technically skilled people like engineers or people with four-year technical degrees) have different perspectives of what is obvious. "Simplicity" does not make something non-obvious. It must be viewed in comparison to all prior art including thinks someone else (not I) thought of.
    Answer Applies to: California
    Replied: 5/13/2015
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