Determining Unobviousness

6. How Does a Patent Examiner Determine “Unobviousness” 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. ——《Patent it yourself》