Patent Requirements - Nonobviousness

To be patentable, the subject matter must be useful, new and nonobvious.

The nonobvious condition on a patent grant is set out in 35 U.S.C 103. This condition is outlined below.

Under the statutory provision, a patent may not be obtained if:
- the differences
- between the subject matter sought to be patented and
- the prior art
- are such that
- the subject matter as a whole would have been obvious
- at the time the invention was made
- to a person having ordinary skill in the art to which said subject matter pertains.

A rejection on obviousness either
- nodifies a prior art reference or
- combine two or more prior art references.

The term "obvious" applies to this modification/combination. If the modification/combination is obvious, then the rejection is proper.

To determine if a modification/combination is obvious, it must meet three basic criteria.

First, there must be some suggestion or motivation, either in the references themselves or in the knowledge generally available to one of ordinary skill in the art, to modify the reference or to combine reference teachings.

Second, there must be a reasonable expectation of success.

Finally, the prior art reference (or references when combined) must teach or suggest all the claim limitations.

More information in the MPEP section 2142. This is the Manual of Patent Examination Procedures, and a copy can be downloaded at the USPTO's website at www.uspto.gov