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116 | Patent it YOURSELF
Factor 20. Awkward, involved combination
Suppose that to make your inventive combination, it takes
the structures of three prior-art patents, one of which must
be made smaller, another of which must be modified in
shape, and the third of which must be made of a different
material. These factors can only help you.
Factor 21. References from a different field
If the references show structures that are similar to your
invention, but are in a different technical field, this militates
in favor of unobviousness and hence of patentability. I used
this argument successfully to get a food mold patented over
a similarly shaped device for molding a horse’s foot.
Factor 22. Easier to assemble or manufacture
If the novel feature(s) of your invention make it easier or
cheaper to assemble or manufacture, this is an important
advantage which can be used to prove unobviousness.
6. How Does a Patent Examiner
Determine “Unobviousness”
Because it’s usually helpful to understand how a bureaucracy
operates when you’re dealing with it over significant issues,
let’s take a minute to examine how a patent examiner proceeds
when deciding whether or not your invention is obvious.
When patent examiners turn to the question of whether
an invention is unobvious, they first make a search and
gather all of the patents that they feel are relevant or close to
your invention. Then they sit down with these patents (and
any prior-art references you’ve provided with your patent
application) and see whether your invention, as described
in your claims (see Chapter 9), contains any novelty (novel
physical features, new combination, or new use) that isn’t
shown in any reference. If so, your invention satisfies
Section 102—that is, it is novel.
Next they see whether your novelty produces any unexpected
or surprising results. If so, they’ll find that the invention
is unobvious and allow your patent application. If not (this
usually occurs the first time they act on your case), they’ll
reject your application (sometimes termed a “shotgun” or
“shoot-from-the-hip” rejection) and leave it to you to show
that your new features do indeed produce new, unexpected
results. To do this, you can use as many of the reasons listed
above that you feel are relevant. If you can convince the
examiner, you’ll get your patent.
If a dispute over unobviousness actually finds its way
into court, however, (a common occurrence) both sides will
present the testimony of patent lawyers or technical experts
who fit, or most closely fit, the hypothetical job descriptions
called for by the particular case. These experts will testify
for or against obviousness by arguing that the invention
is (or isn’t) new and/or that it does (or doesn’t) produce
unexpected results.
Again, because the question of whether an invention
is unobvious is clearly crucial to whether a patent will
issue and because Sections 102 and 103 are widely
confused, I have made the two-step evaluation Inventor’s
Commandment #7 at the beginning of this chapter.
7. Weak Versus Strong Patents
Although in this section I’ve covered the basic legal
requirements for obtaining a patent on an invention,
there is, in reality, an additional practical requirement.
If the claims in your patent are easy to design around or
are so narrow as to virtually preclude you from realizing
commercial gain, it’s virtually the same as if a patent had
been denied you in the first place. I’ll come back to this
point when I cover how to conduct a patent search (Chapter
6) and how to draft your claims (Chapter 9).
8. The Inventor’s Status Is Irrelevant
You may have noticed that in discussing the requirements
for obtaining a patent, I didn’t mention the inventor’s
status or personal qualifications (such as, the applicant
should be an engineer, over 21, and so on). That is because
status and personal qualifications are totally irrelevant. An
invention need merely meet the four legal criteria (Section
B, above). The applicant must qualify as a true inventor of
the invention (discussed in Chapter 10), but his, her, or their
age, sex, citizenship, country of residence, mental competence,
health, physical disabilities, nationality, race, creed,
religion, state of incarceration, degree of education, amount
or time spent inventing, and so on, are irrelevant. The PTO
recently issued a patent to a death row inventor (U.S. Pat.
No. 6,260,795). Even a dead or insane person can apply
(through a legal representative, of course).
The manner of making the invention is also irrelevant, as
we’ll see by the next Common Misconception.
Common Misconception: If a person invents something
by accident, the law won’t consider it to be as good an
invention as if a genius had come up with it through years
of hard, brilliant work.
Fact: The mental abilities of the inventor and the manner of
making an invention are totally irrelevant to patentability.
The invention is looked at in its own right as to whether
or not it would be obvious to one skilled in the art; the