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[boozerker]

What if someone has an design that is novel but is pretty obvious only in hindsight? Yet no one really sells it or has patented such a thing?

For example, let's say there were enough collectors going around purchasing books for the covers alone. And if they didn't remove the cover properly, it's value would be lost.

Now let's say someone decides to manufacture books without the glue and binding materials, so the cover would fall off if not handled tightly, somewhat inconvenient for readers, but great if the covers are what you're mainly interested in. Thus you get to read the book, and keep the cover whose value stays intact.

But let's say no one has sold books this and no one has yet mentioned the idea anywhere.

Is this patentable? And if so, is it a design or utility patent?

[JimIvey]

First, let's clear up design vs. utility.  If the novelty is how it looks, it's a design.  If the novelty is how it works, it's a utility.

All innovations are obvious in hindsight.  If obviousness-after-the-fact could be used as a legitimate grounds for rejection, there would be no patents whatsoever. 

Yet, all applicants should be prepared to rebut an argument based on just such reasoning:  e.g., "it would have been obvious to one of ordinary skill in the art at the time the invention was made to combine prior art reference A and prior art reference B because it would [achieve some advantage described in the applicant's specification or some other wholly made-up advantage that might or might not be achieved in reality]."  Every rejection includes at least one sentence just like that without even the barest assertion that the proffered advantage would have been known to the ordinary artisan at the time the invention was made.

Regards.

[boozerker]

That really answered my question very well. Thanks.

Just to clarify, are you saying that anyone can take a novel combination of prior arts and patent it?

First, let's clear up design vs. utility.  If the novelty is how it looks, it's a design.  If the novelty is how it works, it's a utility.

Also I'd like to expand on this. What if how it looks is the main reason for how it works? For example, it looks exactly like the prior art, but you've arranged it in such a way that it's easier to use.

[JimIvey]

That really answered my question very well. Thanks.

Just to clarify, are you saying that anyone can take a novel combination of prior arts and patent it?

No.  It still has to be non-obvious -- not non-obvious today (impossible) but non-obvious at the time the invention was made.

In short, the examiner must make a showing of obviousness using only information available at the time the invention was made.  Of course, the examiner's first general sense of obviousness is formed today, making the adoption of the view of the past very difficult.

First, let's clear up design vs. utility.  If the novelty is how it looks, it's a design.  If the novelty is how it works, it's a utility.

Also I'd like to expand on this. What if how it looks is the main reason for how it works? For example, it looks exactly like the prior art, but you've arranged it in such a way that it's easier to use.

Easier to use is how it works.  If it looks exactly like the prior art, the novelty is not in the way it looks.  Novelty means newness, the part that's different from the prior art.

Regards.

[boozerker]

Also I'd like to expand on this. What if how it looks is the main reason for how it works? For example, it looks exactly like the prior art, but you've arranged it in such a way that it's easier to use.

Easier to use is how it works.  If it looks exactly like the prior art, the novelty is not in the way it looks.  Novelty means newness, the part that's different from the prior art.

Thanks again. If I can inquire one more question?

Actually an elaboration. I meant to say, it looks identical only because of the way it's been arranged -- in a novel manner of course. And the result is the new arrangement looks practically identical to the old arrangement, but the difference is obvious when you pick it up, and then you'll probably say "hey, I like this way better, it enhances the possibilities"

So again, what if how it's "arranged to look" creates a few new possibilities that are desirable, but no one has yet thought of?

[JimIvey]

it enhances the possibilities

Utility.

So again, what if how it's "arranged to look" creates a few new possibilities that are desirable, but no one has yet thought of?

Arguably, both.  I'm imagining something like fabric-covered foam stitched together to make a full size mattress that folds, origami-like, into something resembling a Barcalounger (though probably wouldn't recline).  You might be able to get both -- utility on the origami-like folding generally and design for exactly your design.

Note that design patents have virtually no scope.  It would have to be a near identical copy to infringe.  If another mattress folded in essentially the same way to make a chair that looks different from a Barcalounger, the design patent would probably be of no help.

Regards.