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   when something non-obvious turns obvious quickly
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   Author  Topic: when something non-obvious turns obvious quickly  (Read 706 times)
Timothy Davenport
when something non-obvious turns obvious quickly
« on: Dec 12th, 2006, 12:28pm »
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I have a nuanced question that I hope I can make clear.
Let's say that at the time an invention is submitted it is not obvious but while it is in the hands of the USPTO it suddenly becomes obvious because of a publicized scientific discovery. In determining obviousness does the USPTO use the obviousness present on date of invention submission, or the obviousness present on the date that it arrives on a patent examiners desk?
Or are no patents issued for inventions that can be made obvious by a scientific discovery related to them, in the first place?
I'll use an anology to try to clarify.
Let's say at the time Smuckers submits the invention of crimped sandwhiches, that bread peanut butter and jelly do not exist (ignoring utility for sake of arguement). If bread, peanut butter, and jelly are discovered while the application is with the USPTO but before the patent is issued, do they hold the sudden obviousness against Smuckers or do they only look at the obviousness present on the date of invention submission?
IP Logged
Senior Member


Posts: 2584
Re: when something non-obvious turns obvious quick
« Reply #1 on: Dec 12th, 2006, 1:40pm »
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The answer lies in 35 USC 102.  For use in obviousness analysis (under 35 USC 103), a reference must be prior art under 35 USC 102.  
There are a number of different ways a reference can be prior art under Section 102, none of which predate the filing of the application.  However, something like what you're suggesting can happen for a patent application that is not published at the time your filed your application but has an earlier effective date once published, i.e., after publication is prior art as of it's filing date, presumably 18 months earlier.
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James D. Ivey
Law Offices of James D. Ivey
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