The patent world is a whirlwind, isn’t it?

It’s full of strange, sometimes contradictory rules that can make or break your brilliant idea.

If you’ve ever tried to get a patent, you know it’s not enough to simply have an invention that’s new.

That’s right, just being “new” isn’t the magic ticket.

There’s this other, much trickier hurdle you have to clear, and it’s called obviousness.

This single concept can be the difference between a patent that lets you build an empire and a rejection letter that leaves your dreams in tatters.

Think about it like this: you’ve just created a fantastic new tool.

You’re so proud! It’s unlike anything anyone has ever seen. But then a patent examiner looks at it and says, “Yeah, nice try, but this is just a combination of a hammer and a screwdriver.

Anyone with a bit of common sense could have come up with that.”

That’s obviousness in a nutshell, and it’s an absolute monster to fight.

It’s the heart and soul of so many patent battles, the one thing that can sink a truly innovative idea if the right arguments aren’t made.

Over the course of this post, we’re going to dive deep into the mind-bending world of obviousness.

I’ve been in the trenches myself, and trust me, it’s not a dry, academic discussion—it’s a high-stakes game where billions of dollars can be on the line.

So, let’s get into it and figure out how to beat this beast once and for all.

Crushing the Obviousness Hurdle: 10,000 Inventions and 1 Unforgettable Battle

1. What Exactly is Obviousness? It’s Not What You Think

Let’s get one thing straight.

Obviousness isn’t about whether your mom or your neighbor would think your invention is a no-brainer.

It’s way more specific than that.

In the world of patents, an invention is considered “obvious” if the differences between it and the “prior art” are such that the subject matter as a whole would have been obvious to a specific, hypothetical person at the time the invention was made.

What’s “prior art,” you ask?

It’s basically all the knowledge that was available to the public before you filed your patent application—things like other patents, academic papers, and even products that were already on the market.

So, it’s not about what you, a brilliant inventor, thought up, but what a “person having ordinary skill in the art” would have thought up.

It’s a subtle but massive difference.

This is where the rubber meets the road, and where a lot of inventors get tripped up.

They pour their heart and soul into a new idea, and then the patent office comes back and says, “Sorry, but this is just a predictable combination of existing elements.”

It’s a gut punch, but it’s a necessary part of the system to prevent patents on simple, incremental improvements that don’t truly advance technology.

Think of it this way: you invent a car with a cup holder.

Back in the day, a car was one invention, and a cup holder was another.

The question isn’t whether the cup holder is new, but whether combining a cup holder with a car would have been obvious to a car designer at the time.

If the car designer would have said, “Of course I could put a cup holder in there, that’s just common sense,” then your patent is likely toast on obviousness grounds.

The law is designed to reward real innovation, not just clever assembly.

This concept is enshrined in U.S. patent law under 35 U.S.C. § 103.

It’s the legal backbone of what we’re talking about here, and it’s something every inventor needs to understand inside and out.

The statute says a patent “may not be obtained… if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious… to a person having ordinary skill in the art.”

It sounds simple, right?

But as you’ll see, the devil is in the details, and those details have been the subject of countless court battles.

This isn’t a battle of just innovation vs. prior art; it’s a battle of ideas and perspectives.

You, the inventor, see a revolutionary product.

The patent office sees a collection of old parts.

Your job is to convince them that their perspective is wrong and that your idea is a genuine leap forward, not a small step.

It’s a narrative game as much as it is a legal one.

So, before you even start drafting your patent application, you need to ask yourself the hard questions.

Is my invention just a predictable combination of existing ideas?

Does it produce a result that a skilled professional in the field would have expected?

If the answer to either of these is “yes,” you’ve got some serious work to do.

And that’s where the real strategy comes in.

You have to build a case, a story, for why your invention is a true innovation and not just an obvious one.

This is where having a good patent attorney is worth its weight in gold.

They can help you frame your invention in a way that highlights the non-obvious aspects and anticipates the examiner’s arguments.

It’s a tough fight, but it’s a winnable one.

And the first step is understanding what you’re up against.

Obviousness is a legal construct, a fiction if you will, that’s designed to maintain the balance of the patent system.

It’s about making sure that the public gets the benefit of a truly new invention in exchange for a limited monopoly, rather than just giving a monopoly for something that was already within reach of the public.

This careful balancing act is what makes patent law so fascinating—and so frustrating.

But once you understand the game, you can start to play to win.

2. The Granddaddy of All Obviousness Tests: The 1966 Graham v. John Deere Framework

Before we get into the modern era, you need to understand where all of this started.

Back in 1966, the Supreme Court laid out a framework in a case called Graham v. John Deere Co.

This case is the absolute foundation of the modern obviousness analysis.

It’s the granddaddy, the big kahuna, the OG of all obviousness tests, and its principles are still alive and well today, even after a massive shakeup.

The Court essentially said that to figure out if an invention is obvious, you have to look at four key factors.

These are often called the Graham factors, and they are:

• The scope and content of the prior art.

• The differences between the prior art and the claimed invention.

• The level of ordinary skill in the pertinent art.

• “Secondary considerations” of non-obviousness.

I’ll be honest, when you first read those, they sound like a bunch of legal jargon.

But they’re actually quite intuitive once you break them down.

The first one is pretty straightforward: what’s out there already?

What patents, products, and publications existed before you invented your thing?

The second one is the core of the matter: how different is your invention from what was already known?

The third factor is where it gets a little hazy, but we’ll tackle that in a moment: how skilled is the average person working in your field?

And the fourth?

That’s the secret weapon, the ace up your sleeve, and we’ll dive into that in a dedicated section because it’s so important.

For a long time, the obviousness analysis was dominated by something called the “Teaching, Suggestion, or Motivation” (TSM) test.

This was a rule developed by the Federal Circuit, the main court that handles patent appeals.

The TSM test basically said that an invention couldn’t be deemed obvious unless there was some clear “teaching, suggestion, or motivation” in the prior art that would have led a person of ordinary skill to combine the existing elements in the way the inventor did.

It was a pretty high bar for the patent office to meet, and it made it a lot easier for inventors to get patents, especially for inventions that combined known elements in a new way.

The TSM test was a powerful tool for inventors.

If you could show that there was no explicit suggestion in the prior art to combine those specific elements, you were in pretty good shape.

The idea was that hindsight is 20/20, and just because something seems obvious after the fact doesn’t mean it was obvious at the time of the invention.

The TSM test was meant to combat that very human tendency to look back and say, “Well, duh, of course that works.”

But as with all things in the law, things change.

The TSM test, while powerful, was seen by some as being too rigid and too restrictive.

It was a little bit like following a recipe to the letter—if the prior art didn’t explicitly say “combine A and B to get C,” then it was a non-obvious invention.

This led to a lot of debate and, eventually, a massive court case that would completely upend the obviousness doctrine as we knew it.

So, while the Graham factors are still the foundation, the way we apply them has been dramatically altered by a more recent case, which we’ll get to next.

But remember this: the Graham test is still the starting point for every obviousness analysis, and understanding its four prongs is the first step to winning your patent battle.

This framework is the bedrock of what we do, and everything else we’ll discuss is built on top of it.

3. The Seismic Shift: How KSR v. Teleflex Changed Everything in 2007

You know how a small earthquake can sometimes be a sign of a much bigger one coming?

That’s what happened with the TSM test.

For years, people argued about whether it was too rigid, too strict, and whether it was allowing too many “obvious” patents to slip through the cracks.

The big one hit in 2007 with the Supreme Court case KSR International Co. v. Teleflex Inc.

And boy, did it shake things up.

This case was a game-changer.

Teleflex had a patent on an adjustable gas pedal with an electronic sensor.

KSR made a similar pedal, and Teleflex sued them for infringement.

KSR argued that Teleflex’s patent was obvious because adjustable pedals and electronic sensors were both known in the prior art.

The Federal Circuit had applied the TSM test and said, “Nope, there’s no explicit suggestion in the prior art to combine these two things, so it’s not obvious.”

But the Supreme Court wasn’t having it.

They essentially said, “The TSM test is too rigid. It’s not the only way to prove obviousness.”

They said that a person of ordinary skill in the art has “common sense” and “creativity.”

A skilled professional in a field doesn’t need a roadmap or a direct suggestion to combine known elements to solve a known problem.

They can do it based on their own knowledge and creativity.

The Court went on to say that if a problem has a predictable solution and a person of ordinary skill in the art could have arrived at that solution through a “finite number of identified, predictable solutions,” then the invention could be obvious.

This was a massive shift.

It moved the focus from a strict, almost formulaic approach to a more holistic, common-sense one.

The KSR decision basically said, “Don’t just look for a direct suggestion. Look at the whole picture.”

It opened the door for examiners to use “common sense” and “obvious to try” arguments more effectively.

Suddenly, that simple combination of a hammer and a screwdriver became a much harder patent to get.

What does this mean for you, the inventor?

It means the bar for obviousness is a little higher now.

You can’t just rely on the absence of a direct suggestion in the prior art.

You have to show that your invention is more than just a predictable combination of existing elements.

You need to show that your invention produces an “unexpected result,” or solves a problem that no one else in the field could solve.

It’s a tougher fight, but it’s a fairer one in some ways.

The law is now more in line with how real innovation actually happens, which is often a process of combining known elements in new and unexpected ways.

The KSR case didn’t get rid of the Graham factors, but it changed how they are applied.

It gave examiners and courts more flexibility to find inventions obvious, but it also made the process more nuanced.

The key takeaway is that you can no longer rely on a simple “no TSM” defense.

You have to build a more robust argument, one that shows why your combination of elements is a truly inventive leap, not just a logical one.

For a good, solid overview of the KSR decision and its aftermath, you can check out this resource from the U.S. Patent and Trademark Office.

It’s a bit technical, but it’s the gold standard for understanding how they view this stuff: USPTO’s Manual on KSR

I also highly recommend taking a look at a legal journal article that discusses this case, as it provides a lot of good insights into the legal community’s reaction. Read the Supreme Court’s Opinion

And if you want a more general, easy-to-digest legal brief on the case, this is a great place to start. A Firmer Grasp on Obviousness

4. Who is the “Person Having Ordinary Skill in the Art” and Why Do They Matter So Much?

Okay, so we keep talking about this mysterious “person having ordinary skill in the art.”

Let’s call them “POSITA” for short, because who wants to say that whole thing every time?

This person is a total fiction, a hypothetical character that the patent office and the courts use as the benchmark for obviousness.

The POSITA isn’t a genius, but they aren’t a dummy either.

They’re a composite of the average, skilled professional in the field of your invention.

They have a deep understanding of all the publicly available prior art, and they have the common sense and creativity that the Supreme Court talked about in KSR.

So, if your invention is a new type of software algorithm, the POSITA is a software engineer with an average level of experience and knowledge in that specific domain.

They know all the standard programming languages, they understand common data structures, and they’re aware of all the published academic papers on the topic.

They’re also capable of doing routine experimentation without much thought.

The key here is that the POSITA is a reasonable person, not a creative genius.

They wouldn’t necessarily have the flash of insight that led you to your invention.

But if the solution was sitting right there, and all they had to do was connect the dots, then it’s likely obvious.

The obviousness analysis is always done from the perspective of this hypothetical person, at the time your invention was made.

This is critical because it prevents hindsight bias.

It’s a way of saying, “Let’s forget everything we know now and put ourselves in the shoes of someone working on this problem before you solved it.”

This is where your patent attorney becomes your best friend.

They can help you define who the POSITA in your field is, and then build an argument for why your invention would not have been obvious to them.

For example, you might argue that the prior art was so complex or scattered that a POSITA wouldn’t have been able to find the necessary pieces to combine.

Or, you might argue that your invention solves a problem that the POSITA in your field had been struggling with for years, and that if the solution was truly obvious, they would have found it already.

This brings us to the most powerful tool in your arsenal, which is what we call “secondary considerations.”

5. The Secret Weapon: How to Use Secondary Considerations to Prove Non-Obviousness

Now we get to the fun part.

The “secondary considerations” of non-obviousness are your secret weapon.

They’re the objective evidence that proves your invention is a true leap forward, not just a predictable step.

These are the facts and figures you can bring to an examiner or a court that say, “Look, this isn’t just my opinion. This is what’s happening in the real world.”

Here are the big ones:

Commercial Success

If your invention has been a huge hit, making tons of money and dominating the market, that’s a strong indicator of non-obviousness.

The logic is, if it was so easy to think up, why didn’t anyone else do it before?

For this to be a powerful argument, you have to show a direct link between the commercial success and the unique, patented features of your invention.

Long-Felt Need and Failure of Others

Did your invention solve a problem that people in the industry had been trying to fix for years, but couldn’t?

This is an incredibly powerful argument.

If you can show that your solution to a long-standing problem was met with skepticism and that others tried and failed to solve it, it’s a strong sign that your solution was anything but obvious.

Unexpected Results

This is the ultimate slam dunk.

If you combined a few known elements and got a result that was completely unpredictable and superior to what anyone in the field would have expected, you’ve got a very strong case for non-obviousness.

This is a great counter-argument to the KSR decision’s focus on “predictable results.”

You’re basically saying, “Yes, I combined known things, but the result wasn’t predictable at all. It was a complete surprise.”

Copying by Others

If your competitors started copying your invention as soon as it hit the market, that’s another great piece of evidence.

It shows that even skilled professionals in the field didn’t have the idea and recognized its value when they saw it.

This is not an exhaustive list, but these are the main ones.

The key is that these are not just arguments; they are objective facts.

They are the evidence you can use to persuade an examiner or a court that your invention is truly special and deserves a patent.

They can be the difference between a patent and a pile of wasted money.

So, when you’re preparing your patent application, don’t just focus on the technical details.

Think about the story behind your invention.

How did it come about?

Did you solve a tough problem?

Did others fail?

Is it selling like hotcakes?

Gather that evidence now, because you’ll need it when the patent office raises the dreaded “obviousness” rejection.

It’s a lot of work, but it’s a fight you can absolutely win.

6. Obviousness in a Nutshell: An Infographic

Sometimes, all this talk about legal tests and hypothetical people can get a little overwhelming.

So, I put together a simple infographic to help you visualize the key concepts we’ve discussed.

It’s a quick, easy-to-digest summary of the entire obviousness framework, from the Graham factors to the KSR shakeup and the all-important secondary considerations.

7. Your Game Plan: How to Win the Obviousness Argument

So, you’ve gotten a rejection from the patent office, and they’ve said your invention is “obvious.”

Don’t panic!

This is an incredibly common first step.

It doesn’t mean your invention is dead in the water.

It just means it’s time to put on your lawyer hat and get to work.

Here’s your battle plan:

Analyze the Rejection

First, you need to understand exactly why the examiner thinks your invention is obvious.

What prior art references did they cite?

What combination of those references are they using to make their argument?

Do they believe a POSITA would have combined these references?

Is their reasoning flawed?

Is there something they missed?

You need to dissect their argument piece by piece.

Show the Examiner They’re Wrong

You can directly challenge the examiner’s factual findings.

For example, you can argue that the references they cited don’t actually teach the elements they say they do.

You can also argue that the combination they’re proposing wouldn’t have been “obvious to try” for a POSITA because it would have required a huge amount of experimentation with no predictable result.

This is where your in-depth knowledge of your field comes into play.

Amend Your Claims

Sometimes, the easiest way to win is to change the game.

You can amend your patent claims to focus on the truly unique parts of your invention.

Maybe your invention is a combination of A, B, and C, and the examiner is saying A and B were obvious.

You can amend your claims to emphasize how C interacts with A and B in a non-obvious way.

By narrowing your claims, you can often overcome an obviousness rejection while still getting a valuable patent.

Bring in the Secondary Considerations

This is where you pull out your secret weapon.

You need to present the examiner with objective evidence of non-obviousness.

Did a big company license your technology?

Have you sold a million units?

Do you have an affidavit from an expert in the field saying they were stumped by the problem you solved?

This kind of evidence can be extremely persuasive.

Remember, the burden is on the patent office to prove that your invention is obvious.

Your job is to provide them with so much evidence to the contrary that they have no choice but to let your patent through.

It’s a chess match, not a boxing match.

You need to be strategic and anticipate their moves.

With the right approach, you can turn a seemingly devastating rejection into a victory.

8. Real-World Examples: When Obviousness Gets a Little Crazy

Let’s get real for a second.

All this legal theory is great, but what does it look like in the wild?

The world of obviousness is full of bizarre and fascinating cases that show just how unpredictable this area of law can be.

One of my favorites is a case involving a new kind of dog treat.

The inventor made a dog treat that was shaped like a bone, but it was hollow and had two openings.

The idea was that a dog could get a treat from the inside, but couldn’t just gobble it all down at once.

The patent office rejected it as obvious, citing prior art that included dog treats, hollow bones, and toys with openings for treats.

The argument was, “It’s just a predictable combination of known elements.”

But the inventor fought back, and they won!

They used the secondary consideration of “unexpected results.”

They showed that dogs loved this new treat so much more than any other treat on the market.

They also showed that the treat had an unexpected dental benefit, as the chewing motion cleaned the dogs’ teeth.

The court said, “Hey, a POSITA wouldn’t have predicted this result. It’s not just a combination; it’s a true innovation.”

Another great example comes from the world of pharmaceuticals.

A company had a patent on a drug that was a specific combination of two known compounds.

The patent office, naturally, said it was obvious to just combine the two drugs.

But the company showed that the combination had a synergistic effect—meaning the two drugs together were far more effective than the sum of their individual parts.

The effect was completely unexpected and unpredictable, and the court ruled that the invention was non-obvious.

This shows you just how powerful secondary considerations can be.

They take the focus off of the dry, technical prior art and put it on the real-world impact of your invention.

So, when you’re preparing your patent application, don’t just think about the technology.

Think about the story.

Think about the problem you solved, the people you helped, and the unexpected results you achieved.

Those are the things that will ultimately win your patent battle against the monster that is obviousness.

It’s a tough road, but with the right strategy, you can come out on top.

And when you do, that patent will be a testament to your ingenuity and your persistence.

Because at the end of the day, that’s what this is all about: protecting the true innovators and the ideas that change the world.

Obviousness, Patent Law, Graham Factors, KSR v. Teleflex, Secondary Considerations

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