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Obvious Combinations?
Understanding and Avoiding Prior Art Combinations
One thing that inventors find particular confusing when confronted by an "Office Action" from the patent office is the use of "obvious combinations".
Most inventors think that the prior art cited against their invention should at least look like it. And they never give much thought to the fact that a patent examiner can draw information from several prior art patents and make the argument that in combination, those inventors anticipated the inventors patent.
The reason for this confusing turn of affairs is that patents are argued and examined on the basis of patent "Claims". It is those several carefully crafted sentences (hopefully) arrayed at the end of a patent application that the examiner actually studies to determine if an invention meets the criteria of Novel, Useful and Unobvious.
Thus a patent examiner may draw from the claims of several different patents when deciding on the obviousness of an invention.
Lets consider one famous case. A company [lets call it Acme], invented a road building machine. The machine did what is usually required to lay pavement. It put down stone, it covered it with tar and it rolled the mixture to create macadam pavement. The machine did all these three steps together and thus had a substantial advantage in the time and cost of roadbuilding over doing these steps separately.
Yet , the patent applications was ruled obvious. Why was that? The reason given was that each of the three steps was known, and machinery to perform them was known and that all the inventor did was combine those 3 machines into one machine. Thus forming what the examiner ruled an "obvious combination".
Given that most inventions combine known concepts with new materials, how does one defeat such an argument.
The answer lies in things an inventor seldom considers important and usually views as nuisances and roadblocks. Its those problems that arise when tries to combine known elements and finds that for some reason or another they don't work together.
For example, if the builder of the road-laying machine found that in his first try of combining elements, the road was of poor quality because of some internal factor such as the deposition rate of the tar, and then had to solve that problem. The solution of the problem being unobvious becomes a way to defeat the examiners argument that the elements can be combined without new inventions being made.
Thus inventors should always take good notes about problems they encounter and solve in the creation of their invention. It is the solutions of those problems that will provide the novel inventive features needed to defeat an "obvious combination"
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