Novelty v. Non-Obviousness (Patent law)

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rsox5000

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Novelty v. Non-Obviousness (Patent law)

Postby rsox5000 » Sat Mar 10, 2018 4:29 pm

Are both of these elements really needed for something to be patentable? I feel like being "non-obvious" and a sufficiently big advancement over the prior art will, by definition, make it novel as well.

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trmckenz

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Re: Novelty v. Non-Obviousness (Patent law)

Postby trmckenz » Sat Mar 10, 2018 8:28 pm

You're pretty much correct.

In practice, the USPTO uses the novelty requirement under 102 to reject a patent application based on one prior art reference only. So if there is one reference that teaches everything in your application's claims, you will receive a 102 rejection. At that point, your claimed invention is clearly not novel because that reference has disclosed your invention before you did.

Getting over 102 rejections is normally a piece of cake. You just gotta throw into the claims another (i.e., any) element that is not taught in that lone prior art reference.

The USPTO uses the nonobviousness requirement under 103 when rejecting a patent application based on multiple prior art references. So if your claimed invention does A and B, and prior art reference 1 discloses A but not B, and prior art reference 2 teaches B not but A, prior art references 1 and 2 can be combined as disclosing your claimed invention. The USPTO has to make an argument that combining the two prior art references is obvious, and sometimes you can push back on that, but most of the time it works. In some cases, only one prior art reference can be used with an obvious improvement that isn't necessarily taught in second prior art reference, but it would be obvious to one of ordinary skill to make that improvement. Thus, no second prior art reference is necessary.

Getting over 103 rejections is a little more complicated because you have to distinguish from multiple prior art references. Still not so bad though. Just add element C into your claims, where C is not disclosed in prior art references 1 and 2, and you're golden. You could also argue that either element A or B is not disclosed in the prior art references, or do some wordsmithing to show how your combination is unique.

If the USPTO says your invention is nonobvious, then it is implied that it is also novel.

FWIW, I'm not in a patent law class, but I am a patent agent and have practiced for four years. Hope this helps.

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trmckenz

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Re: Novelty v. Non-Obviousness (Patent law)

Postby trmckenz » Sat Mar 10, 2018 9:14 pm

Also, to add a little more as to the theory behind your question...

"If the USPTO says your invention is nonobvious, then it is implied that it is also novel" ***with respect to those references cited by the USPTO. The invention still must be novel and nonobvious in light of every other prior art reference out there. That's why the novelty requirement still exists, even after overcoming obviousness.



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