Patexia Blog
Kyle HoellgerNov 20, 2013
Crafting a 103 Argument: A How To Guide

What is Obviousness?

35 U.S.C. 103 covers the conditions for patentability of an invention, specifically as it relates to the requirement that an idea satisfy a non-obviousness criteria, and reads as follows:

A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.

Plainly stated, for a patent to be valid the idea needs to be something that would not be obvious to someone who is skilled in the art. Even more plainly stated, for an invention to satisfy a non-obviousness criteria someone who was working in the field or was interested in the technology shouldn't be able to put two existing ideas together to come up with the same invention. Bottom line the patentable subject matter needs to be significantly different from the prior art for a patent to be valid.

How Can We Take Advantage?

Understanding that a patent can be invalidated by proving that the patentable subject matter was obvious at the time of invention is powerful. For the purposes of a Patexia prior art study this type of argument can be enough to win a contest, provided that the argument is made in the correct fashion. While we have asked that our community members try to find a single reference that answers all of the contest questions, we accept that in certain situations the combination of two or more references can make a powerful 103 argument against the patent's validity. To make sure that your argument is clearly understood by our research team we would ask that you follow these guidelines when entering a contest:

  • Clearly state which questions are answered by each reference (e.g. reference 1 answers questions 1-4 while reference 2 answers questions 1 and 5-10).
  • Do not simply use all of the references to inaccurately answer all of the questions.
  • Include in your explanation the specific location of each answer and highlight the fact that you are incorporating this information into a 103 argument.
  • All contest questions should be answered by at least one reference and any unanswered questions will lower your score (average relevancy score will be multiplied by the number of questions answered/total contest questions).
  • Note: all references need to meet the date criteria, which is typically covered in question 1.

By partitioning your answers accordingly we will be able to give each of your references the score that it deserves. For example:

  • Reference 1 answers questions 1-4, all 4 were correct for a score of 4/4 = 100%
  • Reference 2 answers questions 1 and 5-10, 5 of 7 were correct for a score of 5/7 = 71.4%
  • Average relevancy score for the submission: (100%+71.4%)/2 = 85.7%

On the other hand, if you were to use both references to answer all of the questions your score would be calculated in the following way:

  • Reference 1 answers questions 1-10, only 4 were correct for a score of 4/10= 40%
  • Reference 2 answers questions 1-10, only 5 were correct for a score of 5/10 = 50%
  • Average relevancy score for the submission: (40%+50%)/2 = 45% 

By using two or more references to answer the questions in combination your average relevancy score, and your likelihood of winning a contest, will significantly increase.

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