As mentioned in our earlier post, there are three types of patents granted in the US: utility, design, and plant.  The subject matter of a patent must fall into one of the four patent-eligible subject matter categories: process, machine, manufacture, or composition of matter, as outlined by the USPTO.  Additionally, an improvement on any one of the aforementioned subjects may be allowed.  If the subject matter falls into one of these categories, it must prove both novel and non-obvious.  

For an invention to be novel, the invention cannot have been previously disclosed in “prior art.”  To clarify, according to the European Patent Office website, “prior art does not need to exist physically or be commercially available.  It is enough that someone, somewhere, sometime previously has described or shown or made something that contains a use of technology that is very similar to your invention.”  In other words, if the idea exists in the public realm, it can be prior art.

For an invention to be non-obvious, it must adhere to Title 35 of the U.S. Code, Section 103(a) by demonstrating a proverbial leap in product design development and not just a shuffle.  In other words, to a person of ordinary skill in the art (POSITA), would your invention/improvement be obvious?  Conventionally, the teaching, suggestion, and motivation (TSM) test is used to reject patents for obviousness only when factual teaching, suggestion, or motivation from prior art demonstrates the proposed patent combination.  That’s right, if it would be obvious to do so, references that show individual elements of a patent can be combined to reject a patent.

The interpretation of what constitutes non-obvious has been evolving in recent years, as the courts grapple to define what characteristics a POSITA possesses.  In the landmark case KSR International Co. v. Teleflex Inc., the Supreme Court unanimously reversed a lower court ruling in favor of Teleflex, who originally sued KSR for allegedly infringing on its patent for connecting an accelerator pedal with an electronic control throttle.  KSR’s appeal to the Supreme Court claimed that it would have been obvious to combine an accelerator pedal with an electronic throttle control, thereby invalidating the claim all together. The Supreme Court’s ruling in favor of KSR challenged the lower court’s rigid interpretation of the TSM test, and Supreme Court Justice Kennedy’s opinion included the statement that “a person of ordinary skill is also a person of ordinary creativity, not an automaton.”  By setting the precedent that a POSITA may possess a certain level of creativity, the waters of what constitutes obviousness got a bit murkier.

With that being said, having a qualified patent law professional perform a search of the prior art for all elements of a proposed patent is important in determining whether your patent can withstand the tests of novelty and non-obviousness.