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35 USC 103

35 USC 103

by patentbar on November 28, 2007 · 8 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

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