When it comes to patent applications, inventors often focus on novelty. Yes, an invention must be new in order to be granted patent rights. But novelty alone isn’t enough. United States patent law imposes another critical requirement—nonobviousness. Even if an invention has never been seen before, the U.S. Patent and Trademark Office (USPTO) can still reject it if the invention would have been “obvious” to someone skilled in the art.
Obviousness is one of the most common—and most frustrating—grounds for patent rejections and litigation disputes. Understanding how patent examiners and courts define obviousness, and learning ways to overcome it, can make the difference between a granted patent and a dead-end application.
What Does “Obviousness” Mean?
Obviousness is codified in 35 U.S.C. § 103, which says that an invention cannot be patented if the differences between it and the prior art would have been obvious to a “person having ordinary skill in the art” (often shortened to PHOSITA).
This “ordinary skill” standard doesn’t look at what the foremost name in a field might think up, but rather what a typical person in the field would find predictable or routine.
Graham v. John Deere: The Framework
The Supreme Court’s landmark decision in Graham v. John Deere Co. (1966) established the foundation for evaluating obviousness. Courts and patent examiners apply the following Graham factors:
- Scope and content of the prior art – What technology already existed?
- Differences between the prior art and the claims – How does the invention improve or differ?
- Level of ordinary skill in the art – What would a typical practitioner know?
- Secondary considerations – Evidence like commercial success, solving a long-felt need, industry praise, or failure of others can all show that the invention was not obvious.
This structured approach remains the starting point for any obviousness analysis today.
KSR v. Teleflex: A Less Rigid Test
In KSR International Co. v. Teleflex Inc. (2007), the Supreme Court revisited obviousness and reshaped the standard. Before KSR, both the USPTO and federal courts often relied on a “teaching, suggestion, or motivation” (TSM) test, which required that prior art specifically suggest combining known elements in the claimed way.
In KSR, the Supreme Court rejected such a rigid test, instead endorsing a more flexible, common-sense approach with emphasis placed on the earlier ruling in Graham v. John Deere. In a nutshell, the Court explained:
- A combination of familiar elements that yields predictable results may be obvious.
- If there are a finite number of identified solutions, and it’s “obvious to try” them, the invention may be obvious.
- Market demands and design incentives can point toward obvious combinations.
KSR broadened the scope of what may be deemed obvious, making it harder in many cases to secure patent protection.
Why This Matters for Inventors and Businesses
Obviousness is not just a legal technicality—it is a long established barrier that shapes how patents are written, prosecuted, and defended.
- During prosecution: Most office actions from the USPTO involve an obviousness rejection. Overcoming these requires strong argumentation and sometimes creative claim strategies.
- In litigation: Competitors frequently attack patents as “obvious” to invalidate them. A patent that can withstand this scrutiny is far more valuable.
Overcoming Obviousness
So, how can inventors and businesses strengthen their case for nonobviousness?
- Tell the invention’s story: Explain current technical challenges and why the solution was not predictable. Be sure to demonstrate a long-felt need for such an invention in today’s marketplace.
- Highlight unexpected results: If your invention achieves more than anyone thought possible, make that clear.
- Leverage secondary considerations: Show that the invention solved a long-standing problem, enjoyed commercial success, or gained industry recognition.
- Work with a patent attorney early: A well-drafted patent application can anticipate and address obviousness rejections before they arise.
We Can Help
The fight for a patent is oftentimes less about an invention being new—it’s about whether it is obvious. From Graham v. John Deere to KSR v. Teleflex, the law on obviousness has evolved into a complicated, fact-intensive inquiry that only rewards inventors who can show why their idea was more than just the “next logical step.”
For inventors and businesses alike, the lesson is simple: A strong patent strategy isn’t just about having a new idea—it’s about demonstrating that idea isn’t obvious. For more information, contact us for a free consultation.