When your invention is a new combination
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When your invention is a new combination Video Transcript
So I am going to talk about what are some secondary factors that you might be able to use to overcome an obviousness rejection when your invention is really a combination of things that previously existed. The basic thing and one of the good ways to help is to explain to the examiner one thing that you have that is something that synergistically applies to the things that previously were used and developed in a new way. So if there are four things that made up your idea, each one of those things may not be new and may function for a particular function, but when put together to become your invention they still do not alone solve the problem. They have to work synergistically to do the fifth idea, which is only possible when all those things are put together in one place. So taking existing things and making something new, if it is done in a way that now we can explain to the examiner that even though everything that we have was old, we put it together in a way that has created a new utility, a new function, new invention. So that is one way to show synergism - two plus two does not equal to five. The other way is to say that it was unsuggested. The prior art does not even suggest anything about what we are doing. It is something that is contrary to what the prior art says. We have something that is unsuggested by any of the individual components of our idea. Each one may have a totally different purpose and we have taken it together to solve an unsuggested new purpose. The third way is it is impossible to combine this prior thing. These prior things, if you put them together, they still would not work. Furthermore you cannot put them together because you need some modifications to make that thing work together. So that glue that takes these existing things and brings them into one place is exactly what we are claiming as our invention. If that is the case, you should amend your claims and make sure claims are protecting that glue that brings everything together. One strategy, if their claims already have that, is to argue that that glue is what we are claiming that takes this existing thing and puts them together. The other way to overcome an obviousness rejection using secondary factors is it is a different combination of the prior art and the invention. The combination that we put together includes things that are old and things that are brand new. We have certain things that are brand new and we are claiming those things as our invention. You only need to just have one of those things, each claim could have a bunch of old stuff, only one thing in your claim has to be new and you can say to the examiner we have this one thing that is new and not obvious because it was never even disclosed by anything in the past. The last way that you can use the secondary factor is to say that the references are from an entirely different field. If you have an invention in the electrical field and someone comes up with an invention and the Patent Office says it is obvious because there is a pet food invention that was supposedly doing what you are doing. We can say this has got nothing to do with it. We are in a totally different field. The people with ordinary skill in the art in our field would not look to the pet food field to make this invention. These are some ways to use secondary factors to overcome an obviousness rejection when your invention is a combination of things that exist.