Patent It Yourself - PDF Archive

ChaPter 5 | Is It PATENTABLE? | 107
basically your new way of manipulating old hardware. Any
novel step or steps whatever in this regard will satisfy the
physical novelty requirement.
b. New Combinations
Many laypersons believe that if an invention consists
entirely of old components, it can’t be patented. A moment’s
thought will show that this couldn’t be true since virtually
all inventions are made of old components. Thus, the
PTO will consider your invention novel even if two or
more prior-art references (actual devices or published
descriptions) together account for all of your invention’s
physical characteristics. That is, if your invention is a new
combination of two old features, the law will consider it
novel. (Note that for two or more old references to be legally
combinable to prevent your invention from being patented,
the actual hardware or parts of the references don’t have to
be physically combinable: only the concepts inherent in the
parts need be usable together.) For example, suppose you
invent a bicycle having a frame made of a new carbon-fiber
alloy and the prior art includes a patent from 1870 showing
your exact bicycle and a magazine article from Technology
Today from 2005 showing your exact carbon-fiber alloy:
Even though these two references taken together show every
feature of your invention, your invention still is considered
to be novel under Section 102 of the patent laws since you’re
the first to “combine” the two old concepts. That is, your
bicycle would clearly be considered novel since it has a new
physical feature: a frame that is made, for the first time, of
a carbon-fiber alloy. For your invention to be considered
as lacking novelty and thus subject to rejection under
Section 102, all of its physical characteristics must exist
in a single prior-art reference. This is often referred to as
the “single document rule”; in other words if two separate
documents are necessary to show your invention, it is novel
under Section 102. But keep in mind, just because it’s novel,
useful, and fits within a statutory class, doesn’t mean the
bicycle is patentable. It still must surpass the tough test of
nonobviousness (covered in the following section).
Another type of new combination which inventors
frequently overlook is the new arrangement: If you come up
with a new arrangement of an old combination of elements,
the PTO will consider this a new combination that will
satisfy the novelty requirement. For example suppose you
invent an automatic transmission where, for the first time,
the torque converter is placed after the gears, rather than
before; the PTO will consider that this new arrangement
has novelty over the previous arrangement.
“Invention consists in avoiding the constructing of useless
combinations and in constructing the useful combinations
which are in the infinite minority. To invent is to discern,
to choose.”
—Henri Poincaré
c. New Use
As stated in Section C5, above, if you’ve invented a new use
for an old item of hardware, or an old process, the new use
will satisfy the novelty requirement, no matter how trivial
the newness is. For example, Dorie invents a new vegetable
cooker that, after a search, she discovers is exactly like a
copper smelter invented by one Jaschik in 1830. Dorie’s
cooker, even though identical to Jaschik’s smelter, will
be considered novel, since it’s for a different use. (If your
invention involves novel physical hardware, technically it
can’t be a new-use invention.)
If you’re the type of person who thinks ahead, you’re
probably asking yourself, “Why is he bothering with novelty—
isn’t this requirement inherent in unobviousness—that
is, if the invention is found to be unobvious won’t it also
be found to be novel?” Well, you’re 100% correct. If an
invention is unobvious, a fortiori (by better reason) it must
be novel. However, the law makes the determination in two
steps (Sections 102 and 103), and most patent professionals
have also found it far easier to first determine whether and
how an invention satisfies the novelty requirement and
then determine if it can be considered unobvious. This
two-step process is so important that I’ve made it Inventor’s
Commandment #7. See the first page of this chapter.
F. Requirement #4: Unobviousness
We’re now entering what’s probably the most misunderstood
and difficult-to-understand, yet most important, issue
in patent law—that is, is your invention unobvious? Let’s
start with a “common misconception.”
Common Misconception: If your invention is different from
the prior art, you’re entitled to get a patent on it.
Fact: Under Section 103 of the patent laws, no matter how
different your invention is, you’re not entitled to a patent
on it unless its difference(s) over the prior art is considered
“unobvious” by the PTO or the courts.
Because Section 103 is the heart of all patent laws, I
am reproducing the first paragraph—the essence of the
section—here: