The nonobviousness requirement is set forth in 35 U.S.C. § 103. A single reference or a combination of references can render an invention obvious when those references teach or suggest the claimed invention. The nonobviousness requirement is often referred to as the “inventive step” in foreign prosecution.

The test for nonobviousness is a three-part test.

The first part of the test requires a party to determine whether the reference or combination of references disclose or suggest all of the elements of the claimed invention. The second part requires a party to determine the difference between the elements disclosed in the references and the claimed invention. The final part requires a party to determine whether it would have been obvious to a person skilled in the art to make the claimed invention.

This blog entry will address various aspects of the nonobviousness test.

The first aspect is the level of skill in the art. The test is intended to be applied with reference to a hypothetical person with reasonable skill in the art. This does not mean an extremely highly skilled person in most cases.

Another aspect of the test is timing. The test should be applied with reference to the state of the art at the time of the patent application. In other words, the test should not be applied with hindsight. This is a subtle, often-misunderstood principle of patent law.

Another aspect is whether or not the reference in question is analogous art. An examiner cannot simply pick and choose various features from many different references. The references must come from a closely related or analogous art.

Also, the applicant should keep in mind that: (1) the invention “as a whole” must be considered; (2) an inventor is not required to establish synergy; and (3) an inventor is not required to prove a new or different result.