Tombstone: Obviousness Part 4

The next test  of obviousness for implementation in the United States patent office is the teaching away test. In the last article I explained the test wherein the references on which the examiner relies must disclose all the features in your claim sentence description of the invention. The more features are designated in your claim the less likely it is that all these features appear in the references. Of course the more feature are designated in your claim, the narrower the scope of your protection by that claim will be. Therefore, as a business person you can readily conclude that often the final result, if any, is a negotiated tradeoff with the examiner. The advantage of the all features in the claim test is its relative ease in application.

Similarly, the teaching away test generally does not require documents other than your claim sentence that was rejected. It also requires the full disclosures of the references on which the examiner relied for rejection of that claim sentence. The patent advocate reads the references very carefully to determine if they disclose features that suggest diametrically opposing features to those in the claim sentence. If these exist, then the patent advocate replies that these particular references suggest a totally different approach to arriving at an improvement in the claim sentence. As an example, suppose we revisit the situation from my previous on-line article as follows:

A storage unit storage unit comprising reversibly attached shelves, two reversibly attached vertical support posts, and a physically separate base made of several metal sheets.

Let’s suppose that the examiner’s first reference discloses permanently attached shelves, two reversibly attached vertical support posts, and a base made of several metal sheets. There is also a second reference with reversibly attached shelves, two reversibly attached vertical support posts, but no base. Your patent advocate may assert that the first reference actually teaches that shelves be not reversibly attached, and the reversible nature of this attachment is a key feature of your pending invention. Your patent advocate may also reply that the second reference does not even address the importance of a base made of metal sheets, and that is another improved feature of your new storage unit. Because your features are not addressed or disclosed in even a generic manner in these references shelf, then there is no obviousness on this basis.

In understanding the above analysis, the business owner should be aware that obviousness is a legal conclusion based upon specific situations. Also if subject matter is sufficiently similar to previously existing inventions, the law will not protect differences that are not crucial or critical to purported later developed improvements. Furthermore, although there may be features that are new in your invention, this newness does not necessarily merit United States patent protection. For example, someone may develop a manually portable cat carrier. This cat carrier could be almost identical to a previously existing cat carrier as to the handle, dimensions, thickness and shape. The more recently developed portable cat carrier may also contain pockets in which to carry the cat’s grooming utensils. These pockets may be entirely new to the cat carrier business, but whether they are sufficiently critical to merit patent protection is another question entirely.

© 2011 Adrienne B. Naumann

Ms. Naumann does not endorse or sponsor the advertisements at


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