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FAQ: Isn't It Obvious?
by Scrupulous » Mon Nov 26, 2007 2:50 pm
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Scrupulous - Black Belt
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"I've included everything I know about my invention, and the examiner is still rejecting it for obviousness...what's up with that?" 
by Scrupulous » Mon Nov 26, 2007 2:50 pm
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Scrupulous - Black Belt
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Sometimes people think that the obviousness requirement for patentability means that the applicant must make the disclosure detailed enough so that his/her invention is obvious to the examiner. That’s not what it means. What it means is that the applied invention must not be considered obvious to the examiner, when the examiner takes prior art into account. This prior art can be in the form of one or more existing patents, publications, etc.
It is up to the examiner to apply PTO guidelines, when making a determination of obviousness. Traditionally, what is known as the MST method was used (motivate, suggest, teach) to make that determination. If an examiner thought that some prior art either motivated one to create the applied invention, suggested the applied invention, or actually taught the applied invention, then the applied invention was to be considered obvious.
This may seem unfair to some that a single examiner can use their own discretion as to what would motivate someone to create an invention. However, it is unfortunately the examiner’s determination to make. Now, with a recent US Supreme Court decision over a case regarding the question of obviousness, the guidelines for determining obviousness are expected to become even stricter.
It is up to the examiner to apply PTO guidelines, when making a determination of obviousness. Traditionally, what is known as the MST method was used (motivate, suggest, teach) to make that determination. If an examiner thought that some prior art either motivated one to create the applied invention, suggested the applied invention, or actually taught the applied invention, then the applied invention was to be considered obvious.
This may seem unfair to some that a single examiner can use their own discretion as to what would motivate someone to create an invention. However, it is unfortunately the examiner’s determination to make. Now, with a recent US Supreme Court decision over a case regarding the question of obviousness, the guidelines for determining obviousness are expected to become even stricter.
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