You’ve built something new. You’re confident it works. But will it qualify for a patent? One of the most misunderstood and most frequently contested requirements in patent law is non-obviousness. Many inventors are surprised to learn that being first isn’t always enough. Your invention also has to clear a bar that trips up more applications than almost any other requirement.

At Goldstein Patent Law, we’ve guided countless inventors through this analysis. Here’s what non-obviousness really means, how examiners evaluate it, and what you can do to strengthen your application.

The Four Requirements for a Patent

Before diving into non-obviousness specifically, it helps to understand where it fits. To be patentable, an invention must be:

• Patentable subject matter: it must fall into an eligible category (process, machine, manufacture, or composition of matter)
• Novel: it must be new and not already disclosed in the public record
• Useful: it must have a practical, real-world application
• Non-obvious: it must not be an obvious variation of something that already exists

All four must be satisfied. But non-obviousness is the one that generates the most disputes, rejections, and litigation. If you’re unsure whether your invention qualifies on the other fronts, our overview of what makes an invention patentable is a good starting point.

What Does Non-Obviousness Mean?

Non-obviousness is defined under 35 U.S.C. § 103, which states that a patent cannot be obtained if the differences between the claimed invention and the prior art would have been obvious at the time the invention was made to a person having ordinary skill in the pertinent art (commonly abbreviated as PHOSITA, meaning Person Having Ordinary Skill In The Art).

In plain terms: could a reasonably skilled professional in your field have looked at existing technology and logically arrived at your invention without any creative leap? If yes, it’s obvious. If no, and if your invention requires a genuine flash of ingenuity, it’s likely non-obvious.

This standard was firmly established by the U.S. Supreme Court in the landmark case Graham v. John Deere Co. (1966), which remains the foundational framework for non-obviousness analysis today.

The Graham v. John Deere Framework

The Graham decision laid out a four-factor test that patent examiners and courts still use to evaluate non-obviousness:

1. Determine the scope and content of the prior art. What already exists in the field? This includes patents, published applications, academic papers, products on the market, and any public disclosures.

2. Identify the differences between the prior art and the claims. What exactly does your invention do differently from what’s already out there?

3. Determine the level of ordinary skill in the art. What would a competent, reasonably skilled professional in this field already know? This is the PHOSITA standard: not a novice, not a genius, but a typical skilled practitioner.

4. Evaluate secondary considerations (objective indicia of non-obviousness). Real-world evidence can tip the scales. More on this below.

KSR International Co. v. Teleflex: A Critical Update

In 2007, the Supreme Court significantly expanded the non-obviousness analysis in KSR International Co. v. Teleflex Inc.. Prior to KSR, examiners largely relied on a rigid “teaching, suggestion, or motivation” (TSM) test, meaning they needed to find an explicit reason in the prior art to combine existing elements before calling something obvious.

KSR rejected this narrow approach. The Court held that combining familiar elements using known methods to yield predictable results is likely obvious, even without an explicit suggestion to combine them. This made the non-obviousness bar meaningfully harder to clear and is why working with an experienced patent attorney matters more than ever.

At Goldstein Patent Law, we conduct thorough prior art searches and anticipate these arguments before your application is ever filed.

Secondary Considerations: Your Best Defense

Even when a USPTO examiner argues that your invention is obvious, you can push back using secondary considerations, which is real-world evidence that suggests the invention wasn’t obvious after all. These include:

• Commercial success: if the invention succeeded commercially, it suggests the market saw value that skilled practitioners had missed
• Long-felt but unsolved need: if the problem your invention solves had been known for years without a solution, that’s strong evidence of non-obviousness
• Failure of others: if competitors tried and failed to solve the same problem, your solution was clearly not obvious
• Unexpected results: if your invention produced results that were surprising even to experts in the field
• Copying by competitors: if rivals immediately copied your invention after you disclosed it, that implies they couldn’t have developed it themselves
• Skepticism of experts: if established professionals doubted the invention would work before it was demonstrated

These secondary considerations are codified in the USPTO’s Manual of Patent Examining Procedure (MPEP) § 716 and can be decisive in overcoming a rejection.

Common Reasons Applications Fail the Non-Obviousness Test

Understanding where inventors stumble can help you avoid the same mistakes:

Combining existing elements with no unexpected result. If your invention simply puts two known things together in a way any skilled person would think to try, it’s likely obvious under KSR.

Incremental improvements without a meaningful leap. Slightly improving a component’s efficiency or size, without a surprising outcome, often won’t clear the bar.

Prior art that “suggests” the combination. Even a passing reference in an old patent or research paper pointing toward your solution can be used against you.

Weak claim drafting. Sometimes the invention itself is non-obvious, but poorly written claims make it look like an obvious variation. This is one of the most common and most preventable problems, and exactly why professional claim drafting at Goldstein Patent Law is worth the investment.

What Non-Obviousness Is Not

A few important clarifications:

• It does not mean complex. A simple invention can absolutely be non-obvious if no skilled person would have thought of it.
• It does not mean commercially successful. Commercial success is evidence of non-obviousness, but it doesn’t guarantee it.
• It does not mean surprising to a layperson. The standard is what would be obvious to a skilled practitioner in the field, not the general public.
• It is not the same as novelty. An invention can be entirely novel (never done before) and still be obvious if it’s a logical, predictable step from existing technology.

How Non-Obviousness Interacts With Patent Claims

Your patent application doesn’t protect the invention as a whole, it protects specific claims. Each claim is evaluated for non-obviousness independently. This means a single application might have some claims that survive examination and others that get rejected.

Skilled claim drafting anticipates these challenges. By structuring independent and dependent claims strategically, a good patent attorney can maximize the scope of protection while minimizing exposure to obviousness rejections. Our team at Goldstein Patent Law approaches every application with this in mind from day one.

Tips for Strengthening Your Non-Obviousness Position

If you’re preparing to file, keep these strategies in mind:

Document everything. Keep detailed records of your development process, failed experiments, and the problems you were trying to solve. This documentation can support secondary consideration arguments later.

Conduct a thorough prior art search. Knowing what’s out there before you file lets you position your claims to highlight what’s genuinely different about your invention.

Emphasize unexpected results. If your invention produced outcomes that surprised even you, make sure that’s clearly articulated in your application.

Work with a patent professional. Non-obviousness is as much an argument as it is a legal standard. How you frame your invention in the application matters enormously.

Ready to Find Out If Your Invention Qualifies?

Non-obviousness is a nuanced, fact-specific analysis that depends on the technology, the prior art landscape, and how your invention is described and claimed. Getting it right from the start can mean the difference between strong patent protection and a costly rejection.

Contact Goldstein Patent Law today to schedule a consultation. We’ll evaluate your invention, assess the prior art, and build the strongest possible case for patentability.