Limitations to Patentability
In addition to being new and non-obvious, there are other limitations to patentability. For example, abstract ideas may not be eligible for patent protection. Further, certain methods of medical treatment, mathematical equations and elements of nature may not be eligible for patent protection. What are the requirements for patentability?
For an invention to be patentable, it must be new and non-obvious. That is, it must have at least one feature that was not previously known or obvious in light of that which was previously known. These are the requirements that the invention is not anticipated (i.e., new) and inventive (i.e., not obvious).
The test for novelty is one where there is no prior art (i.e., no prior patent, prior device described in a public document, among other sources of prior art) that shows the elements of the invention. There typically will be a number of prior art references in the same field of endeavor, or the same field of invention, trying to solve the same problem, and some may have a majority of or most of the same elements. Showing most of the elements is not sufficient, the prior art must (with very few exceptions directed to inherency) show all of the elements.
The more difficult to understand test is the test of non-obviousness. The test for non-obviousness centers on an analysis of whether the invention would have been obvious to one of ordinary skill in the art (i.e., a worker that is of ordinary skill in the field of the invention). This hypothetical person of ordinary skill in the art (commonly abbreviated PHOSITA or POSITA) has the knowledge of the prior art, and therefore the analysis is done as if such a person is aware of the prior art (i.e., prior inventions and discoveries) of the field.
To address this inquiry, one can look to the scope and content of the prior art, the level of ordinary skill in the art and the differences between the claimed invention and the prior art. From this analysis of factual considerations, a judgment can be made as to whether a prior art reference or combination of prior art references would yield obviousness of an invention.
There are also secondary considerations, such as a long felt need for a solution that has been recognized, the failure of others, significant efforts and high cost in developing the invention, skepticism that the invention would work, or disbelief, copying, commercial success, and unexpected advantages that are also a part of the analysis if they are properly raised.
Furthermore, the USPTO examiner can look to other factors that point to obviousness. For example, a combination of prior art elements according to known methods to yield predictable results are indicative of obviousness. Alternatively, a simple substitution of one known element for another to obtain predictable results is also a basis indicative of obviousness. Further, use of known technique to improve similar devices in the same way is indicative of obviousness. Similarly, applying known techniques to a known device ready for improvement to yield predictable results is indicative of obviousness.
Also, if the invention seems “Obvious to try” in that the inventor was just making a choice from a finite number of identified, predictable solutions, with a reasonable expectation of success, an invention seems to be obvious.
If a known solution 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, this may be an indicator that an invention is obvious.
Additionally, if there is some teaching, suggestion, or motivation 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, then the invention may be deemed obvious.
The foregoing guidelines leave much to interpretation and subjectivity. And, non-obviousness tends to be the most subjective and difficult area to determine. Thus, when such rejections are made by the USPTO, there is substantial work to be done to counter these types of rejections and to offer reasons as to why inventions are non-obvious in light of the prior art.
These are the types of arguments that patent attorneys, including our patent attorneys make on an ongoing basis.