What are the other factors?

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What are the other factors? Video Transcript

I am going to talk about secondary factors that can be used to challenge an obviousness rejection. Your primary goal, if you get an obviousness rejection of a patent application, is to really tell the examiner that the prior references still do not disclose something that is in your claims. But there are some secondary factors that you might be able to get the examiner to consider. Previous failures of the prior art in solving the problem you have; it could be a crowded space, but all that crowded prior art landscape or prior invention still failed to solve your problem. It is contrary to what the prior art teaches. The prior art might teach something that is different and you are taking a logic that is something that is different than what conventional logic would hold and the prior art in fact teaches away from doing what you are doing. That is an argument that used to work in the patent rules and still sometimes does. The Patent Office is re-evaluating that particular secondary consideration. It solves an unrecognized problem. People did not even know the problem existed. So you were taking a new approach that nobody even knew this problem even existed in the world. Now even though there is a lot of close prior art, you are solving a brand new problem that was unrecognized. It was a previously unsolvable problem and there is a long felt need to solve that problem. So even though the space was crowded, you have really come up with something that has commercial value. You could also show something that is a secondary factor that says there has been a tremendous commercial success of my idea and that is a secondary factor which shows why it is not obvious. All these ideas are secondary factors that we are discussing here to prove why your invention is not obvious when you get an office action are substitutes for the best arguments. The best argument is to distinctly point out something in your claim that is not disclosed. It solves a prior inoperability problem that was not workable. The previous idea is not workable and now they are. So these are other things that you could show. There is an underappreciated advantage. The ancient idea was there but now we have implemented that idea in the form of an invention that actually works. So these are some of the additional secondary arguments that you can consider when you are looking at overcoming obviousness rejection.

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