Patent It Yourself - PDF Archive

ChaPter 5 | Is It PATENTABLE? | 117
way it was made or the qualifications or competence of the
applicant are never considered by the PTO.
G. The Patentability Flowchart
To get a better grasp of the admittedly slippery concept of
unobviousness and the role it plays in the patent application
process, consider Fig. 5C—The Patentability Flowchart. This
flowchart is like a computer programmer’s flowchart, except
that all blocks have been made rectangular to use space
more efficiently. In addition to presenting all of the criteria
used by the PTO and the courts for determining whether an
invention is unobvious, the chart also incorporates the first
three tests (statutory class, usefulness, and novelty) of Fig. 5A.
I strongly advise that you study this chart and the following
description of it well, since it sums up the essence of this
crucial chapter. Also, you’ll want to use this chart when
making your search (next chapter) and when prosecuting
your patent application (Chapter 13). This chart has been
designed to cover and apply to anything you might come
up with, so you can and should use it to determine the
patentability of any utility invention whatever. I go through
the chart using a real invention and real references in
Chapter 6, Section G.
Box A (Statutory Class): Assuming that you’ve made an
invention, first determine, using the criteria discussed above,
whether you can reasonably classify your invention in one
of the five statutory classes indicated. If not, take the “No”
output of Box A to the Box X on the left bottom of the chart.
As indicated in Box X, the PTO will probably refuse to
grant you a patent, so see if you can gainfully use another
form of coverage (such as trade secret, copyright, design
patent, trademark, or unfair competition, as discussed in
Chapters 1 and 7). If this possibility also fails, you’ll have to
give up on the creation and invent something else. If the
invention can be classified within a statutory class (“Yes”
output of Box A), move on to Box B.
Box B (Utility): Now determine, again using the criteria
above, whether the invention has utility, including
amusement. If not, move to Box X. If so, move on to Box C.
Box C (Novelty): Here’s the important novelty
determination. If an invention has any physical features
that aren’t present in any single prior-art reference, or if it
is a new combination or rearrangement of old features, or
a new use of an old feature or old hardware, no matter how
trivial, it will clear Section 102—that is, it has novelty: take
the “Yes” output to Box D. If not, it lacks novelty, so take the
“No” output and go to Box X again.
Box D (Unobviousness Due to New and Unexpected
Results): This is the heart of the chart. You should now
determine whether the novelty of your invention would be
unobvious to a PHOSITA, that is, does the novelty produce
any new and unexpected result (“N&UR”)? Use the criteria
and examples presented in Sections F1 through F4, above. If
you definitely feel that your invention does not provide any
N&UR, take the “No” output from Box D to Box X. On the
other hand, if your answer is a clear “Yes” (you’re sure you
have N&UR), it’s likely you’ll be able to get a patent. While
not mandatory, I recommend that you obtain additional
reasons for patentability to boost your confidence by taking
the “Yes” output to Box E to consider the “secondary” factors.
If, however, at this point you can’t come up with a clear
“Yes” or “No” as to N&UR—that is, your invention falls
somewhere between these two extremes—it can still qualify
for a patent if it has one or more secondary factors. In this
case, follow the broken-lined “Possibly” output of Box D to
Box E to determine whether your invention qualifies for a
patent, even though it doesn’t produce any N&UR. From
here on, if you took the “Yes” output of Box D, you’ll follow
a solid-line route, but if you took the “Possibly” output,
you’ll follow the broken-line route.
Boxes E, F, and G (Other Factors): No matter whether you
take the “Yes” = solid line or “Possibly” = broken line route
from Box D, you should next answer all of the questions in
Box E. Then move to Box F, which tells you to answer all of
the questions in Box G if you have a combination invention,
or to go directly to the end of Box G if it’s not a combination
invention. The more questions in Boxes E and G to which
you can answer “Yes,” the better your chances will be. No
matter how you go through Boxes E to G, there are four
possibilities, identified below as 1 (A&B) and 2 (A&B).
1. N&URs exist (“Yes” from Box D—solid-line route):
A. If you answered “Yes” to Box D and to one or more
questions in Boxes E and G (there are N&URs and
one or more secondary unobviousness factors),
take the “Yes”/solid-line output from Box G to Box
H, where you’ll see that the PTO is very likely to
grant you a patent.
B. If you were not able to answer “Yes” to any
question in Boxes E and F (there are N&URs, but
no secondary unobviousness factors), take the
“No”/solid-line output from Box G to Box I, where
you’ll see that you’ll still be likely to get a patent,
based on your N&URs (Box D).
2. Possible N&URs (“Possibly” from Box D—brokenline
route):
A. If you answered “Possibly” to Box D and “Yes” to
one or more questions in Boxes E and G (you’re
unsure about N&URs but you have one or more
secondary unobviousness factors), take the “Yes”/
broken-line output from Box G to Box J, where