35 USC 103

by patentbar on November 28, 2007 · 11 comments

in 35 USC 103, MPEP 2100

Obviousness” – Conditions for patentability; non-obvious subject matter

35 USC 103(a) “A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.”

  • Combining references – there must be some motivation to combine; the suggestion does not have to be explicit; the reason the reference suggests for combining can be different from the actual reason
  • Invention as a whole must be considered; not an element by element analysis
  • Objective Considerations – affidavits or declarations containing evidence of: commercial success, unexpected results, failure of others, long felt need, skepticism of experts, copying by others
  • 102(e, f, g) cannot be used as a reference (New AIPA) for obviousness when the reference subject matter and the patent app subject matter were owned by the same person or assignable to the same entity at the time invention was made

{ 11 comments… read them below or add one }

1 patentbarNo Gravatar December 4, 2007 at 11:48 pm

On the exam: Prior art exclusion 103(c). “Subject matter developed by another person, which qualifies as prior art only under one or more of subsections (e), (f), and (g) of section 102 of this title [35 USC 102], shall not preclude patentability under this section where the subject matter and the claimed invention were, at the time the claimed invention was made, owned by the same person or subject to an obligation of assignment to the same person.”


2 Lucifer JohnsonvilleNo Gravatar December 2, 2009 at 5:40 pm

A 103 ref is applied against my claims. It is a PCT, published on March 8, 2001, priority to September 1, 1999, filed on August 24, 2000. Inventors are BILL and TED.

My application was filed as a PCT on March 6. 2003, with priority to a US application filed on March 7, 2002. Inventors are BILL and TED.

Question: is the 103 rejection proper? Why or why not?


3 EmilyNo Gravatar December 29, 2009 at 1:23 pm

I would say the 103 rejection is not proper, since the inventors are the same. (Someone please correct me if this is wrong!)


4 SolNo Gravatar February 2, 2012 at 3:07 pm

to Lucifer Johnsonville,

the PCT pbulication iteself is NOT a qualified 102 prior art against your app.
the 102 reference dates of the PCT
(a) March 8, 2001, but not by another, so disqualifed
(b) March 8, 2001, but within one year from March 7, 2002, so disqualifed
(c) n/a
(d) n/a
(e) n/a because it is filed before November 29, 2000
(f) n/a
(g) n/a


5 randomexNo Gravatar December 31, 2009 at 4:34 pm

Only if the prior art qualifies under 102 e, f, or g. See 103(c). I don’t think Lucifer’s question has enough information.


6 RxnNo Gravatar March 21, 2012 at 6:00 pm

Does anyone know if the KSR ruling is tested on the exam? If it is, does anyone have any examples?


7 PrometricEarphonesNo Gravatar April 17, 2012 at 9:16 pm

I got KSR questions. The interim guidelines have everything.

I can’t recall the questions, but one required knowledge of the KSR factors, and another asked about the continued applicability of Graham — t/s/m.

It is pretty straightforward


8 Gato GuapoNo Gravatar April 26, 2012 at 4:15 pm

Can a summary of the relevant interim KSR guidelines be found anywhere on this site?


9 DeaterNo Gravatar December 16, 2014 at 12:28 pm

See MPEP 2143 for an outline of the KSR guidelines:

(A) Combining prior art elements according to known methods to yield predictable results;
(B) Simple substitution of one known element for another to obtain predictable results;
(C) Use of known technique to improve similar devices (methods, or products) in the same way;
(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
(E) “Obvious to try” – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art;
(G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention.

10 littleyellowduckNo Gravatar December 17, 2014 at 11:11 am

provisional application for patent

Provisional application won’t be examined; won’t be published. If the inventor did not file non-provisional application, would the application preclude a patent application by another inventor?


11 DeaterNo Gravatar December 19, 2014 at 6:02 pm

From what I have studied, if a provisional is not converted to a non-provisional or used to claim priority in a non-provisional, then it goes abandoned. Just like an abandoned non-provisional that is not published, it will not be available as prior art unless it is referred to by a patent that does publish/issue. If it is not referred to and is abandoned, then it is not available as prior art because it was never available to the public and won’t qualify under pre-AIA or post-AIA 102 rejection standards.


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