Obviousness a combination of prior art – a comparative myth
The idea that obviousness is simply the combination of prior art is indeed often seen as a myth, or at least a misconception in the context of patent law. While it’s true that a combination of prior art references can sometimes render an invention obvious, obviousness is not just about putting pieces together. There are more nuanced factors at play that distinguish a valid invention from one that is merely a combination of existing ideas.
Why the "Combination Myth" is a Misconception:
- Obviousness Requires Insight, Not Just a Combination:
- Obviousness doesn’t simply mean that you can combine existing ideas to form something new. The key is whether a person of ordinary skill in the art (PHOSITA) would find that combination to be obvious without any inventiveness or new insight.
- Just because two prior art references exist doesn’t automatically mean that a combination of them will be obvious.
- Teaching, Suggestion, or Motivation (TSM) Test:
- If no clear reasoning exists in the prior art that would suggest combining the references, the invention may not be obvious. The mere existence of multiple pieces of prior art does not automatically mean that they should be combined.
- Unexpected Results:
- A combination might be non-obvious if it produces unexpected results that would not have been obvious to someone skilled in the art.
- Inventive Step:
- The concept of inventive step suggests that an invention should not be obvious to someone skilled in the field at the time of filing. Example: The Myth of Just Combining Prior Art
Imagine someone combines two existing technologies:
- Technology A is a well-known LED light.
- Technology B is a motion sensor.
If you combine these to create a motion-activated LED light, this could seem like an obvious combination of known elements. However, this combination might not necessarily be obvious if it requires unexpected design insights or creates an innovative way of integrating the motion sensor and LED to solve a new problem. It might not have been immediately apparent to a skilled person in the art without specific direction from the prior art.
In contrast, if the combination of these two elements were common in the field and there were clear motivations to do so based on existing technologies, then the combination might be considered obvious.
The idea that obviousness is just the combination of prior art oversimplifies the nuanced analysis that patent examiners and courts use to determine whether an invention is patentable. Obviousness involves a deeper look at the reasoning behind the combination, the motivation to combine, and whether the result is truly innovative in light of existing knowledge.
