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Understanding the Non-Obviousness (35 USC 103) Patent Requirement


In order to obtain a patent your invention has to be useful (35 USC 101), novel (35 USC 102), and non-obvious (35 USC 103).  The goal of this post is to explain the non-obviousness requirement in terms that are clear to engineers and scientists.

Patent law describes every invention as a combination of elements and connections.  For instance, a bicycle would be described as combination of a frame, connected to wheels by axles and a transmission system between one the wheels and set of pedals.  Under patent law your invention is defined by the “claims.”  A claim is a written definition of your invention, such as the description of a bicycle above.  Note it may be helpful to review the rules on Novelty before proceeding.  Under patent law each element and connection must be known.  This makes sense since you cannot create something from nothing – conservation of matter (energy).

Non-obviousness is defined as a claim that defines a set of elements and connections that two or more relevant prior art references do not show the same elements and connection combined in the same manner.  The key part of this statement is “relevant” prior art.  Because of conservation of matter it is always possible to find a group of references that show the elements and connections.  If this keeps an invention from being patentable, then nothing patentable has ever been invented and we might as well close down the patent office.  In the words of the law, “Its logic is the fallacious logic which leads to the conclusion that since each of the words in Lincoln’s ‘Gettysburg Address’ were individually old and well known at the time he used them, it would have been obvious for anyone of ordinary skill with a dictionary before him, to have written it.”  In re Dailey and Eilers, 357 F.2d 669, 149 USPQ 47 (CCPA 1966).

A relevant prior art reference is one that is directed to the same problem or at least in the same area of technology.  In the words of the law, “In order to rely on a reference as a basis for rejection of the applicant’s invention, the reference must either be in the field of the applicant’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned.”  In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443, 1445 (Fed. Cir. 1992).  Note prior art is defined in patent law as a written reference with a publication date earlier than the filing date of your patent application.

Non-obviousness allows the patent office or someone challenging your patent to combine two or more references to find the elements and connections in your claims.  However, the references have to be relevant.  This means they must either be in the same area of technology or related to the same problem you are trying to solve.


  1. [...] is my second post on the nonobviousness standard for patents (35 USC 103).  The earlier post focused on the practical questions that an inventor and his attorney face when negotiating with [...]

  2. [...] step” in Europe) has caused all sorts of mischief by the courts.  For more information see Understanding the Nonobviousness Requirement and Obviousness – Flow [...]

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