How to Respond to Obviousness Rejections - An Introduction. Episode 47
- Adam Diament
- Mar 19
- 4 min read
The Challenge of Obviousness Rejections
I have been dreading this episode for a long time, and the reason is that responding to obviousness rejections is probably the most complex and nuanced part of a patent attorney’s work. It is not that I am trying to withhold information, but rather that an obviousness rejection is highly fact-specific and depends on the particular invention at hand.
How you write a response when the examiner says that your new mechanical pencil is obvious over other existing mechanical pencils will be entirely different from how you write a response if an examiner claims that your new cancer drug treatment is obvious over existing treatments.
Although the laws governing obviousness apply broadly, the specific arguments needed to overcome an obviousness rejection will differ significantly depending on the field of invention.
Because I could probably do 50 or more episodes just on responding to different obviousness rejections, I will provide a broad overview in this episode. In later episodes, I will go into depth on some of the more common types of obviousness arguments that arise frequently.
What is an Obviousness Rejection?
If you recall from one of the earliest podcast episodes, to obtain a patent, your invention must be new, useful, and non-obvious.
The usefulness standard is fairly easy to meet—almost everything has some utility. Then, your invention must be new. This is what I discussed in the last episode: the novelty standard, also known as a Section 102 rejection. If something identical to your claimed invention already exists, then your invention lacks novelty because it is anticipated by prior art.
Now we are left with the non-obviousness requirement.
Under 35 U.S.C. §103, even if no single prior art reference exactly matches your invention, you can still be denied a patent if the differences between your invention and prior art are obvious to a person having ordinary skill in the art.
The Graham v. John Deere Test
Determining obviousness is a legal analysis based on the Graham v. John Deere case, which established a three-step process:
Determine the scope and content of the prior art.
Identify the differences between the claimed invention and prior art.
Assess the level of ordinary skill in the art.
Step One: Determining the Scope and Content of Prior Art
The examiner will first look for prior art that is most similar to your invention. If your invention relates to mechanical pencils, the examiner will primarily search for existing mechanical pencils, but they might also consider related writing instruments, such as pens.
For example, let’s say you claim a mechanical pencil with the following features:
A long cylindrical body
A button on the top to advance the lead
An eraser
A hole at the tip for the lead to emerge
Even if this exact mechanical pencil does not already exist, let’s assume that all prior mechanical pencils have their button on the side instead of the top. The examiner cannot reject your invention for lack of novelty, because your specific claimed invention does not exist in a single reference.
However, the examiner finds a pen that has a clickable button on the top to extend and retract the writing tip.
They might combine these references—one showing a mechanical pencil with a side button and one showing a pen with a top button.
Step Two: Identifying Differences Between Prior Art and the Claimed Invention
The examiner will analyze how your invention differs from prior art. In this example:
Your mechanical pencil has a button on the top.
The closest prior art mechanical pencil has a button on the side.
A prior art pen has a button on the top, but it is used to retract a pen tip rather than advance lead.
Step Three: Assessing the Level of Ordinary Skill in the Art
The next step is determining what a person having ordinary skill in the art (PHOSITA) would know. This is a hypothetical person with a typical level of skill in the field.
In this case, the PHOSITA might be a mechanical engineer specializing in writing instruments with a few years of experience. The key question becomes: Would it have been obvious to modify the existing mechanical pencil by moving the button from the side to the top, given that pens already use top buttons?
The examiner may argue that relocating the button is an obvious design choice because pens already have a similar feature.
You could counter this by arguing that a button on a pen works differently than on a pencil. In a pen, the button retracts and extends the tip, whereas in a mechanical pencil, it advances the lead without retraction.
How Obviousness is Determined Today
Historically, there was a bright-line test for obviousness called the TSM test—which required the examiner to find a Teaching, Suggestion, or Motivation (TSM) in the prior art to justify combining references.
However, in 2007, the Supreme Court ruled in KSR v. Teleflex that the TSM test is not the only way to determine obviousness. Instead, obviousness is now evaluated using the Graham v. John Deere framework, which makes it more subjective.
The Challenge of Arguing Against Obviousness
One of the hardest aspects of overcoming an obviousness rejection is convincing the examiner that something that seems obvious in hindsight was not actually obvious at the time of invention. There are many ways to argue against obviousness, and these are known as secondary considerations of non-obviousness.
There are at least 20 different arguments that can be used, but not all will apply to every case. In the next episode, I will introduce some of the most common and effective ways to argue that your invention is not obvious.
Conclusion
This episode provided a basic overview of obviousness rejections. The key takeaway is that if no single prior art reference discloses all elements of your invention, but all elements exist in multiple references, the question is whether it would have been obvious to a person of ordinary skill in the art to combine those elements.
If the answer is yes, you will not get a patent. If the answer is no, you should be able to get a patent. In the next episode, I will go through some of the main arguments you can use to persuade the examiner that your invention is not obvious.
I’m Adam Diament, and until next time—keep on inventing!
