Share on Facebook
Share on Twitter
Share on LinkedIn
By J.D. Houvener
Patent Attorney and Founder

When it comes to patent requirements, non-obviousness seems like it should be, well, obvious. However, it’s one of the most common reasons for patent denials. When the examiner is considering these criteria, they are faced with a very subjective question:  

Could someone with an ordinary skill level in a relevant field conceive of and build the invention based on prior art?

 If the answer is yes, the patent is rejected. 

However, how is “ordinary skill level defined when it comes to establishing the non-obviousness requirement? That’s where it gets tricky. On top of that, you’ll have to contend with any prior art that may not have been disclosed in your patent search

The best way to avoid patent disqualification on these grounds is to work with an attorney. 

Understanding the Patent Requirement of Non-Obviousness 

If an examiner wants to cite non-obviousness in a patent rejection, it’s on them to prove that your product is “obvious.” This principle dates to 1966, in Graham v. John Deere Co. In this case, the court set the precedent that the examiner must have a prima facie case that shows obviousness. 

This is just a fancy Latin way of saying that the examiner must show clear evidence to support the contention that the design is obvious. The examiner needs to make a good faith effort to investigate the claim and provide findings that support it.

Broadly speaking, examiners are trying to answer three questions when they evaluate patents:

  1. Does this invention fulfill an unmet need in its intended field? 
  2. Have any other patent applications been filed for inventions meant to fulfill the same need, and how does this invention differ from them? (In industry lingo, this is “prior art.”) 
  3. Could this invention be conceived of and designed by anyone in the same field who is reasonably skilled? 

Say, for example, someone has an idea to make shoehorns specifically for children’s shoes. The patent examiner could easily meet the criteria to show a prima facie case of obviousness. There are thousands of pages of prior art out there. Anyone in the industry could easily use it to make a smaller shoehorn and would be motivated to do so as it would be commercially viable. As a result, it’s a “clear and unmistakable” design that can’t be patented. 

Of course, not every case is that simple. Even if the patent examiners prove their position, it’s possible to challenge the decisions on several fronts. 

Overcoming a Denial for Patent Obviousness 

If you’re dealing with a denial from the patent office, you’re in good company: most patent applications are initially rejected. If you can, though, it’s best to avoid one in the first place. There are a few steps you can take: 

  • Do your homework: Most of the denials for patent obviousness are rooted in prior art. If your invention’s functions overlap with or duplicate an existing patent, the USPTO will cite this in its denial of your application. A thorough prior art search will help you avoid this. You can also anticipate potential issues and come prepared to defend your application.  
  • With more than 10 million patents in the US alone, this is a daunting task. Luckily, there are tools out there: the USPTO’s patent database lets you search for preexisting patents, and you can also check Google Patents
  • Call expert witnesses: Because the patent examiner’s argument will center around a skilled person’s ability to create the item, expert witnesses can make compelling counterarguments. For example, they could testify that as an expert in the field, they would not be able to create a design like the design in the application. 
  • Get a lawyer: It’s an investment, but it’s worth it. Obtaining a patent is a little like climbing a mountain. Yes, you can do it alone, but it’ll take you longer, and you’ll have more trouble reaching the summit. A good patent attorney will guide you through every step of the patent process and help you ensure that your application is airtight. 

The better your initial patent application, the more likely you’ll be able to meet the patent requirement of non-obviousness. An expert legal opinion can be your preemptory strike that heads off denials at the pass so you can protect your intellectual property. 

Bold Patents can help you meet the patent requirement of non-obviousness by providing a detailed patent search and the guidance to argue against adverse decisions. To schedule a free Discovery Call, call 800-849-1913 or visit our contact page

About the Author
J.D. Houvener is a Registered USPTO Patent Attorney who has a strong interest in helping entrepreneurs and businesses thrive. J.D. leverages his technical background in engineering and experience in the aerospace industry to provide businesses with a unique perspective on their patent needs. He works with clients who are serious about investing in their intellectual assets and provides counsel on how to capitalize their patents in the market. If you have any questions regarding this article or patents in general, consider contacting J.D. at