🤯 Mind-Blown: 3 Ways "Obviousness" in Patent Law is Crushing Your Invention!
So, You Have a "Million-Dollar Idea"... Or Do You?
You've done it.
After countless sleepless nights, scribbling on napkins, and guzzling more coffee than should be humanly possible, you've finally perfected your invention.
It's brilliant. It's novel. It's going to change the world (or at least make a tidy profit).
You march down to the patent office, your application clutched in your triumphant hand, only to be met with a soul-crushing rejection letter.
The reason? Your groundbreaking invention has been deemed "obvious."
Obvious? To whom?!
It certainly wasn't obvious to you while you were pulling your hair out in your garage at 3 AM.
Welcome, my friend, to one of the most frustrating, subjective, and downright maddening hurdles in all of patent law: the concept of "obviousness."
It's a silent killer of brilliant ideas, a legal minefield that has tripped up even the most seasoned inventors.
But don't despair. I've been in the trenches of patent prosecution, and I'm here to be your guide.
We're going to pull back the curtain on this nebulous concept, arm you with knowledge, and give you the fighting chance you deserve.
Think of this not as a dry legal textbook, but as a conversation with someone who's seen it all.
Let's dive in and decode this beast together.
The "Duh" Test: What Exactly is "Obviousness" in Patent Law?
Alright, let's get down to brass tacks.
In the United States, to get a patent, your invention needs to clear three main hurdles: it must be useful (utility), new (novelty), and not obvious.
Utility is usually an easy bar to clear.
Novelty, under 35 U.S.C. § 102, is also pretty straightforward. It means your exact invention hasn't been publicly disclosed before your filing date. If someone already built the exact same mousetrap, you're out of luck.
But "obviousness," governed by 35 U.S.C. § 103, is a different animal entirely.
This is where the patent examiner gets to play armchair quarterback with your invention.
Obviousness doesn't ask if your invention already exists.
Instead, it asks: "Would your invention have been *obvious* to a person of 'ordinary skill' in your specific field at the time you invented it?"
It’s the legal system’s way of saying, “Sure, nobody has made *exactly* this before, but it’s just a simple mash-up of things that were already out there. No real spark of genius here.”
Imagine you invent a pencil with an eraser on the end.
Let's say, for the sake of argument, no one had ever done this before. Pencils existed. Erasers existed.
The patent examiner might argue that combining a pencil and an eraser is an obvious solution to the common problem of making mistakes while writing. It’s a logical, predictable combination.
That's the core of an obviousness rejection. The examiner isn't calling you dumb; they're saying the inventive *step* you took was too small, too predictable, too… well, obvious.
They will typically find multiple existing patents or publications (called "prior art") and argue that someone with a basic understanding of the field could have easily pieced them together to arrive at your invention.
It’s like they're saying, "Look, Reference A shows a pencil, and Reference B shows a rubber eraser. Combining them to make writing more convenient would have been obvious!"
This prevents people from getting a 20-year monopoly on every tiny, incremental improvement. It's meant to ensure that patents are only granted for genuine leaps in innovation, not for baby steps.
But as you can imagine, what's "obvious" to one person can be a stroke of genius to another. This subjectivity is what makes it such a tough nut to crack.
Meet PHOSITA: The Invisible Genius Judging Your Invention
So who is this mysterious person who gets to decide if your invention is obvious?
In patent law, we have a hypothetical figure called the "Person Having Ordinary Skill In The Art," or PHOSITA for short (sometimes pronounced "foe-see-tah").
This isn't a real person. You can't call them up or get their opinion. They're a legal fiction, an imaginary expert who represents the average knowledge and capability in a particular field.
The PHOSITA is not a genius, but they're not a novice either. They are presumed to know all the relevant prior art in their field, no matter where it was published.
Let that sink in for a moment.
This imaginary person has perfect knowledge of every patent, every scientific paper, every textbook, and every public product that existed in their field anywhere in the world before you filed your patent.
Talk about pressure!
The characteristics of the PHOSITA can change dramatically depending on the technology.
For a simple mechanical device, the PHOSITA might be a journeyman machinist or an engineer with a bachelor's degree and a few years of experience.
For a complex biotechnology invention, the PHOSITA could be a Ph.D. scientist with a team of researchers and extensive post-doctoral experience.
The level of skill attributed to the PHOSITA is crucial. If the skill level is set too high, almost any invention will seem obvious. If it's set too low, you could get patents for very simple advancements.
A big part of arguing against an obviousness rejection is defining who the PHOSITA is and what they would (or wouldn't) have known or been motivated to do.
Crucially, the PHOSITA is not supposed to have any creativity or inventive spark. They are a logical but unimaginative plodder. They can connect the dots if the path is clearly laid out, but they won't make surprising leaps of intuition.
The big question the patent examiner tries to answer is: "Looking at all the existing knowledge (the prior art), would the PHOSITA have been motivated to combine these pieces in the way you did, and would they have had a reasonable expectation of success in doing so?"
If the answer is yes, your invention is deemed obvious.
The Supreme Court's Golden Rules: Deconstructing the Graham Factors
For a long time, determining obviousness was a bit of a "gut feeling" exercise for courts and the patent office. It was messy and inconsistent.
Then, in 1966, a landmark Supreme Court case came along that changed everything: *Graham v. John Deere Co.*
This case gave us a structured, factual framework for analyzing obviousness. It's the bedrock of every single obviousness argument made today. They are known as the "Graham factors."
Whenever a patent examiner rejects your claims as obvious, they *must* perform this analysis. And when you argue back, you'll be using this framework too.
Let's break them down:
The Graham Factors Infographic
1. Scope & Content of Prior Art
What does the existing technology (patents, publications) already teach us in this field?
2. Differences Over Prior Art
What is the specific improvement or change your invention makes compared to what's already known?
3. Level of Ordinary Skill
Who is the PHOSITA? What would this average person in the field know and be able to do?
4. Secondary Considerations
Are there real-world clues (commercial success, long-felt need) that suggest the invention wasn't obvious?
Let’s unpack these a bit more.
Factor 1: Scope and Content of the Prior Art. This is the detective work. The examiner (and you) must identify the relevant prior art references. What patents, articles, or products are most similar to your invention? What do they disclose?
Factor 2: Differences Between the Prior Art and the Claims at Issue. This is where you draw a line in the sand. You compare what's in the prior art to what your patent claims actually cover. The game here is to identify the "gap" – the specific thing your invention does that the prior art does not.
Factor 3: The Level of Ordinary Skill in the Pertinent Art. As we discussed, this involves defining our buddy, the PHOSITA. What is their educational background? What is their experience level? This sets the bar for what is considered "obvious."
After analyzing these first three factors, the ultimate question is asked: "Is the subject matter as a whole obvious to the PHOSITA?"
But wait, there's more! The Supreme Court also gave us a powerful fourth factor.
Factor 4: Secondary Considerations. These are often called "objective indicia of non-obviousness." This is your real-world evidence. Think of it as circumstantial evidence that your invention was, in fact, not obvious. We'll dedicate a whole section to these secret weapons later on because they are just that important.
The Graham framework is designed to prevent hindsight bias. It's easy to look at an invention *after* it's been made and say, "Oh, of course!" The invention itself becomes a roadmap. The Graham factors force the analysis to be grounded in the facts and perspective of someone *before* the invention was made.
The KSR Revolution: How Common Sense Shook Up the Patent World
For decades after the *Graham* case, the courts developed a relatively rigid test to support an obviousness finding. It was called the "teaching, suggestion, or motivation" (TSM) test.
Under the TSM test, a patent examiner had to find some explicit or implicit suggestion in the prior art itself that would have motivated the PHOSITA to combine the references in the way the inventor did.
This was often a high bar. You had to find a specific sentence in a patent that said, "It would be desirable to combine the gizmo from Reference A with the widget from Reference B."
Inventors and their attorneys got very good at arguing that there was no "TSM" to combine references, and many patents were granted on that basis.
But the world of innovation was changing. Technology was moving faster. The U.S. Supreme Court felt the TSM test had become too rigid and was allowing patents on inventions that were, well, pretty obvious.
So, in 2007, another blockbuster case dropped: *KSR International Co. v. Teleflex Inc.*
*KSR* didn't get rid of the Graham factors, but it significantly changed the obviousness analysis. The Supreme Court essentially said that the TSM test was too restrictive and that "common sense" should also play a role.
The Court reasoned that the PHOSITA is a creative problem-solver. If there's a known problem in a field and the market is putting pressure on people to solve it, the PHOSITA would be motivated to look at a range of known solutions and try predictable variations.
The *KSR* decision introduced a more flexible, common-sense-driven approach. It outlined several situations where a combination might be obvious even without an explicit suggestion in the prior art:
Combining prior art elements according to known methods to yield predictable results. (The pencil and eraser example).
Simple substitution of one known element for another to obtain predictable results. (Using a screw instead of a nail).</
Use of a known technique to improve similar devices, methods, or products in the same way.
Applying a known technique to a known device ready for improvement to yield predictable results.
"Obvious to try." This is a big one. If there was a known problem and a finite number of identified, predictable solutions, it might be obvious for a PHOSITA to simply try them all.
Known work in one field 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.
The aftermath of *KSR* was significant. It became easier for patent examiners to reject applications on obviousness grounds and harder for patent holders to defend their patents in court.
The key takeaway from *KSR* is that the "why" behind the combination matters. Why would a PHOSITA have been motivated to do this? The reason no longer has to be written down in a dusty old patent; it can be based on common sense, market demands, or the general knowledge in the field.
Your Secret Weapons: Using Secondary Considerations to Fight Obviousness
Okay, so the patent examiner has cited a couple of dusty old patents and made a case, based on *KSR*'s common sense, that your invention is obvious. Are you doomed?
Not so fast. Remember the fourth Graham factor? The "secondary considerations"? This is where you get to fight back with real-world evidence. This is your chance to show the examiner that their hindsight-fueled analysis is wrong.
These objective clues can be incredibly persuasive because they tell a story about the invention in the marketplace, not just on paper.
Let's look at the most powerful ones:
Commercial Success: This is a big one. If your invention is a huge hit and selling like hotcakes, that's strong evidence it wasn't so obvious. The logic is simple: if it were obvious, someone else, driven by the same profit motive, would have made it already. You have to be careful here, though. You must show a "nexus," meaning the success is due to the novel features of your invention, not just slick marketing or brand recognition.
Long-Felt but Unsolved Needs: Has the industry been struggling with a particular problem for years, and your invention finally solves it? This is compelling evidence. If people were actively trying to solve a problem and failing, it suggests the solution was not obvious. The longer the problem existed, the stronger your argument.
Failure of Others: This is closely related to the last point. Can you show that other companies or researchers tried to solve the same problem and failed or gave up? This is powerful proof that the path to the solution was not predictable or straightforward. You're essentially showing the littered battlefield of those who tried and failed before your brilliant success.
Unexpected Results: Did your invention produce a surprising or unexpectedly superior result? For example, perhaps combining two known chemicals was thought to produce a modest 10% increase in efficiency, but your method of combining them resulted in a 500% increase. That "synergy" or unexpected outcome is a strong indicator of non-obviousness.
Skepticism of Experts: Did the experts in the field initially dismiss your idea as unworkable or foolish? If you can prove that the very people who are considered PHOSITAs thought your invention would fail, it's a fantastic argument that it wasn't obvious. The fact that the experts were skeptical and you proved them wrong is the definition of an inventive leap.
Copying by Competitors: Are your competitors falling all over themselves to copy your invention (or design around it)? This is like them paying you a compliment. It shows that they see value in your specific solution and couldn't come up with it on their own.
Laudatory Statements & Industry Praise: Has your invention won awards? Has it been praised in trade journals? This kind of recognition from the industry can serve as objective evidence that you've created something special, not just another predictable step.
Presenting this kind of evidence can completely turn an obviousness rejection around. It grounds the legal argument in economic and marketplace reality, which can be much more compelling than simply arguing about the interpretation of old patents.
War Stories: Real-World Examples of Obviousness in Action
Theory is great, but let's look at how this plays out in the real world.
Example 1: The Adjustable Wrench
Imagine someone invents the first-ever adjustable wrench. Before this, you needed a whole set of different-sized wrenches. The prior art consists of (A) a standard fixed-size wrench and (B) a screw mechanism used in a vise grip to adjust clamping pressure.
An examiner might say it's obvious to combine the wrench head from A with the screw mechanism from B to create an adjustable wrench. The motivation? To solve the known problem of needing multiple tools. This seems like a classic *KSR* "predictable combination" case.
How would you fight it? You might argue that while both parts existed, no one had successfully created a slim, strong, and reliable mechanism suitable for a handheld wrench. You could present evidence of the "failure of others" who tried to make adjustable tools that were too bulky or weak. You might show that the specific way you integrated the screw mechanism yielded an "unexpected result" in its strength and compactness.
Example 2: A New Drug Formulation
A pharmaceutical company discovers that an existing drug, which is usually unstable in liquid form, can be made stable by using a specific, known preservative agent. The drug is known. The preservative is known.
The examiner rejects the patent, arguing it would be "obvious to try" a range of known preservatives to solve the known stability problem.
The company's attorneys could fight back with "unexpected results." They could present data showing that 20 other known preservatives were tried and failed to stabilize the drug, or even made it worse. They could show that the chosen preservative not only stabilized the drug but also unexpectedly increased its absorption into the bloodstream by 50%. That secondary effect is not predictable and points away from obviousness.
Example 3: The KSR Case Itself
The actual case in *KSR v. Teleflex* involved an adjustable accelerator pedal for a car. The invention combined an adjustable pedal with an electronic sensor. Prior art showed adjustable pedals (using mechanical cables) and also showed electronic sensors being placed on non-adjustable pedals.
The Supreme Court found it obvious. They reasoned that the market was demanding adjustable pedals for driver comfort, and the auto industry was shifting to electronic sensors to simplify manufacturing. The Court said a person of ordinary skill (an automotive engineer) would see the market pressure and the available components and would have found it obvious to put them together. It was a predictable solution to a known problem.
These examples show how the battle over obviousness is fought on the specifics. It's about the details of the prior art, the definition of the PHOSITA, and the real-world story behind the invention.
Final Thoughts: Don't Let Obviousness Be Your Kryptonite
Navigating the choppy waters of patent obviousness is one of the toughest challenges an inventor faces. It’s a gray area where legal standards, technical facts, and common sense collide.
The key takeaway is this: "obviousness" is not about whether your invention is simple. Some of the most brilliant inventions are elegant in their simplicity. It’s about whether the *path* to your invention was a predictable, straightforward march from what was already known.
To protect yourself and your ideas, you need to think like a patent examiner from day one.
Document your process. Record the failures and the dead ends you encountered. Why did you choose this path and not another? These notes can be invaluable in proving your inventive journey was not obvious.
When you do your own prior art search, don't just look for an exact match. Look for the building blocks of your idea. Think about how an examiner might try to stitch them together.
And most importantly, if you do get an obviousness rejection, don't give up. It's often the first move in a long chess match. Analyze the examiner's reasoning, gather your real-world evidence (those secondary considerations!), and prepare to tell the story of why your invention is a true leap of ingenuity, not just a predictable next step.
It's a tough fight, but for a truly innovative idea, it's a fight worth winning.
Keywords: Obviousness, Patent Law, 35 U.S.C. § 103, PHOSITA, KSR v. Teleflex
