Patent It Yourself - PDF Archive

ChaPter 5 | Is It PATENTABLE? | 113
solution will be a heavy weight in your favor on the scales of
patentability.
Factor 12. Contrary to prior art’s teaching
If the prior art expressly teaches that something can’t
be done or is impractical—for example, humans can’t
fly without artificial propulsion motors—and you prove
this teaching wrong, you’ve got it made. For example,
one inventor realized that packaging potato chips in
inexpensive bags (compared to more expensive boxes)
actually decreased the amount of breakage. This contrarian
discovery militated strongly in favor of nonobviousness.
5. Secondary Factors in Determining
Unobviousness of Combination Inventions
Inventions that combine two or more elements known in
the prior art can still be held patentable, provided that the
combination can be considered unobvious—that is, it’s a
new combination and it produces new and unexpected results.
In fact, most patents are granted on such combinations
since very few truly new things are ever discovered. So let’s
examine some of the factors used especially to determine
the patentability of “combination inventions” (that is,
inventions that have two or more features that are shown in
two or more prior-art references).
Skip ahead
The following material is conceptually quite
abstract and difficult to understand, even for patent attorneys.
I’m presenting it in the interest of completeness. However, if
you wish, you can safely skip it for now and proceed directly to
Section 7. If the PTO or anyone else suggests that two or more
prior-art references, taken together, teach that your invention is
obvious, come back and read it then.
Factor 13. Synergism (2 + 2 = 5)
If the results achieved by your combination are greater than
the sum of the separate results of its parts, this can indicate
unobviousness. Consider the pistol trigger release (Chapter
2) where a magnetic ring must be worn to fire the pistol.
The results (increased police safety) are far in excess of what
magnets, rings, and pistols could provide separately.
EXAMPLE: For another example, suppose that a chemist
combines, through experimentation, several metals
that cooperate in a new way to provide added strength
without added density. If this synergistic result wasn’t
reasonably foreseeable by a metallurgist, the new alloy
would almost certainly be patentable.
Generally, if your invention is a chemical mixture, the
mixture must do more than the sum of its components. For
this reason, food recipes are difficult to patent unless an
ingredient does more than its usual function or produces a
new and unexpected result. Or, if you come up with a new
technique of cooking that produces a new and unexpected
result—for example, a cookie that is chewy inside and
crisp outside—you’ve got a good chance of prevailing.
Similarly, if you combine various mechanical or electrical
components, the courts and the PTO will usually consider
the combination patentable if it provides more than the
functions of its individual components.
As an example of an unpatentable combination without
synergism, consider the combination of a radio, waffle
iron, and blender in one housing. While novel and useful,
this combination would be considered an aggregation and
obvious, since there’s no synergism or new cooperation: the
combination merely provides the sum of the results of its
components and each component works individually and
doesn’t enhance the working of any other component. On
the other hand, the combination of an eraser and a pencil
would be patentable (had it not already been invented)
because the two elements cooperate to increase overall
writing speed, a synergistic effect. The same would hold
true for mounting loudspeakers in a plastic insulating
picnic box, where new cooperation results: the box holds the
food and provides a baffle for the speakers.
Factor 14. Combination unsuggested
If the prior art contains no suggestion, either expressed
or implied, that the references should be combined, this
militates in favor of patentability. Examiners in the PTO
frequently are assigned to pass on patent applications
for combination inventions. To find the elements of the
combination claimed, they’ll make a search, often using a
computer, to gather enough references to show the respective
elements of the combination. While the examiners frequently
use such references in combination to reject the claims of
the patent application on unobvious grounds, the law says
clearly that it’s not proper to do so unless the references
themselves, or the prior art in general rather than an
applicant’s patent application, suggests the combination or
that the results are predictable.
EXAMPLE: Arthur B. files a patent application on a
pastry-molding machine. The examiner cites (or your
search reveals) one patent on a foot mold and another