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[Sharan Basappa]

Hi,

I would like to know if an idea needs to be better (say in terms of size, performance etc.) than an existing idea to be considered as a patent? Or it just needs to be novel ?

Regards

[Wiscagent]

To be patentable an invention must be novel, non-obvious, and useful.  There is no requirement that it be "better" than what has come before.

[Landers]

In most cases it is not necessary that the invention be superior to other products etc. to be patentable.

You might have to show that it is superior under certain circumstances; for example, if your claims are rejected because your invention is deemed obvious, you can overcome that rejection in a number of different ways.  One of the ways is to show that the invention is superior.

[CriterionD]

You might have to show that it is superior under certain circumstances; for example, if your claims are rejected because your invention is deemed obvious, you can overcome that rejection in a number of different ways.  One of the ways is to show that the invention is superior.

Perhaps you could elaborate on this.  To a layman, or simply a non-practioner like myself, this doesn't seem to make sense. It would seem logical to assume that the more superior or novel an invention, the more obvious it would be to an inventor if anything.

[Wiscagent]

CriterionD, Landers’ commented that an applicant may be able to overcome an obviousness rejection by showing that the invention is superior to the prior art.

One way to think of this is to consider a situation where the art teaches a particular structure or method.  The new invention is in some way superior to the prior art.  Before the new invention everyone used the older, inferior method. 

The applicant can then say to the examiner.
  “Hey examiner, you think my invention is obvious!  My invention
   is better than the old way, it’s [cheaper, or faster, or stronger ...]
   If my invention is so obvious, why the heck didn’t someone else
   come up with the idea before me?”

Presumably your response to the office action would be a bit more sophisticated sounding, but that’s essentially what it would say.

[CriterionD]

The applicant can then say to the examiner.
  “Hey examiner, you think my invention is obvious!  My invention
   is better than the old way, it’s [cheaper, or faster, or stronger ...]
   If my invention is so obvious, why the heck didn’t someone else
   come up with the idea before me?”

Presumably your response to the office action would be a bit more sophisticated sounding, but that’s essentially what it would say.

I've got you there, and I figured thats what Landers meant, but isn't the main argument in this case that no one came up with the idea before me, and not that its "better"?   

Here I'm just curious myself.  I appreciate the replies.

[Wiscagent]

"the main argument in this case that no one came up with the idea before me"  that's a definition of NOVELTY.  If the invention is not novel, the game is over ... you lose ... no patent.

The OBVIOUSNESS issue relates to situations where the invention is novel, but it is considered to be obvious to a person skilled in the art.  Trivial example:
    I "invent" a measuring device for cooking.  The measuring device holds 327 mL
    and is used for making pancake batter.

That's probably novel.  I doubt that anyone has disclosed a 327 mL measuring "cup" for making pancake batter; but it sure is obvious over the prior art.  So my application should be rejected.

[CriterionD]

"the main argument in this case that no one came up with the idea before me"  that's a definition of NOVELTY.  If the invention is not novel, the game is over ... you lose ... no patent.

The OBVIOUSNESS issue relates to situations where the invention is novel, but it is considered to be obvious to a person skilled in the art.  Trivial example:
    I "invent" a measuring device for cooking.  The measuring device holds 327 mL
    and is used for making pancake batter.

That's probably novel.  I doubt that anyone has disclosed a 327 mL measuring "cup" for making pancake batter; but it sure is obvious over the prior art.  So my application should be rejected.

Right.  But, what I'm getting at is, "this original invention (say, a measuring device for measuring liquids) has existed for so long and despite that my invention is novel.  Meaning, in all this time, all indications are nobody has thought to do what I did, despite the fact that the supposedly anticipatory (is that the right word?) invention existed so long ago."  That would seem to me to be an obviousness argument.  I do realize that argument doesn't necesarily point to an invention not being obvious, but I would imagine it can help point to that direction.

Now, based on your example above, does it make a difference if the 327 mL measuring cup is that much superior to existing measuring cups, just because 327 mL allows one to much more easily fulfill an out of this world recipe?  Not only I would assume the answer is no, but if anything I would assume that would make the invention more obvious, because not only do you have the original measuring cup, but you also have a recipe persay that would clearly indicate that 327 mL is the ideal size for a measuring cup.

[sharanbr]

Guys, sorry for side tracking the discussion. But going through the replies, I am rethinking what qualifies as a patent now.

Below I am summarizing at a high level the idea I am currently working on. Please comment if there is a risk of it being
treated as something not novel.

In our field we have to build abstract components using lower level components.
So far people do this manually. The work is really quite straghtforward, but since
manual work is involved we normally tend to make mistake. Here comes the idea.
I give some inputs to a tool in terms of rules it should adhere to and based on
these rules it should build higher level components using listed lower components.
This avoids manual work that is normally involved. The job is done very fast
(probably seconds compared with manual job of couple of days). Let me come
to specific questions I have:

-- is this a case for patent?
-- I have seen some companies use similar techniques but nothing as flexible as the
scheme I am talking about. Is there a chance that this is already being used and hence
cannot be patended?

Regards

[still_studying]

When I was in college way too many years ago, some of the people in the CS department were doing research on rule-based automated generation of device driver code;  at the other extreme there's John Koza's "genetic algorithm" and its various (hah) evolutions.

In short, you're describing an area in which people have been doing research for quite a while.  What you have come up with may very well be novel, useful, nonobvious, eminently patentable, and potentially highly profitable, but without your writing something MUCH more specific -- which you shouldn't do on this public forum -- it would be impossible to answer your question.

[sharanbr]

Thanks a lot. Could you (or someone on the forum) clarify the following also:

-- I dont have to mention that no two minds think same. I looked at a particular
problem that we face in our day to day work and came up with a solution. Now it
is very unlikely that someone else might have solved the problem in exactly same
way. So, I am assuming that both me and that someone can patent the solution,
as long as both use different approach to solve the problem.
Am I right?

-- Coming to your comment on the rule based auto code generation, it is possible
that my solution might overlap with what you are talking. But taking this specific
case of code generation for device drivers, since I am giving the solution in the
context of another problem (the area of solution I am applying does not involve SW)
does it stand a chance of getting patent. Or one can say, you are solving a problem
in X domain, but similar solutions already exist in Y domain. So, no patent ..

Regards

[Wiscagent]

Sharanbr, if your solution (i.e. invention) and the other invention are sufficiently different, then yes, there is an opportunity for two separate patents.

But that’s a big IF.

Depending on how close the solutions are, and what is disclosed in the descriptions, it is quite likely that one invention would be obvious over the other.  There could also be a host of issues related to who invented what first, when were the inventions disclosed, when the patent applications were filed, and if the inventors were diligent in their pursuit of the invention.

[still_studying]

Richard covered your first question far better than I could have done.

Regarding your second, I think you're getting to the point where you might need an opinion from an attorney.  "Analogous arts" is one of those gray areas:
http://www.uspto.gov/web/offices/pac/mpep/documents/0900_904_01_c.htm

I'd suggest doing some patent searching to learn what else is out there and to decide whether you think your solution is novel over the existing art.  Unfortunately, a lot of published work in that area is going to be in non-patent literature, especially pre-1990s.