The novelty requirement states that a claimed invention must be new compared to the prior art. Meanwhile, the nonobviousness requirement states that a claimed invention must not be an obvious variant of the prior art. The U.S. government has no motivation to grant a patent to inventors for old ideas or obvious variations of existing technology.
To overcome the novelty and nonobviousness requirements, the claims must be narrowed so that the invention recited in the claims (i.e., the claimed invention) is considered new and nonobvious. These requirements are two of the most common reasons most patent applications are rejected.
What is the novelty requirement?
The novelty requirement states that the inventor will not be awarded a patent if the claimed invention existed in the prior art. See 35 USC 102. The prior art is any printed publication as well as anything in public use or offered for sale. The claimed invention is the scope of protection being sought as recited in the current pending claims.
So, if you amend the claims during prosecution, your claimed invention can meet the novelty requirement if the prior art doesn’t disclose each and every limitation of the claim. All you need to do is amend the claims to include additional features or relationships that are not taught in the cited prior art.
What is the nonobviousness requirement?
The nonobviousness requirement states that the inventor will not be awarded a patent if the difference between the claimed invention and the prior art is obvious. See 35 USC 103. Once again, the claimed invention is compared to the prior art. You can increase the nonobviousness of the invention by narrowing the scope of your claim.
Now, the term nonobvious is not as well defined as you might like. The basic standard of what is nonobviousness is “common sense.” Obviously, people’s perception of common sense varies greatly. There are tests for nonobviousness such as teaching away or hindsight rationale. If the cited prior art teaches away from the combination suggested by the examiner, then this is an indication that the claimed invention is nonobvious. If it appears that the examiner used the inventor’s specification as a blueprint to come up with the claimed invention, then that is also an indication of nonobviousness.
MPEP Section 210o describes many different standards to show nonobviousness.
How do you overcome a novelty or nonobviousness rejection?
The novelty and nonobviousness requirements involve a comparison between the prior art and the claimed invention. You cannot change the prior art. You have to deal with it. However, you can change the claims of your patent application. In doing so, you are changing the claimed invention.
In general, you want to narrow the claimed invention to move it further away from the teachings of the prior art. When you do that, you increase the probability of the claimed invention being deemed both novel and nonobvious.
However, you need to carefully narrow the claimed invention because overdoing it will allow your competitors to have easy design-around options. This may result in a less valuable patent. Whenever you narrow the claimed invention, you are looking at balancing the twin goals of increasing patentability while preserving the breadth of patent protection if / when the patent is granted.
This is one of the reasons that you want to load your provisional and nonprovisional patent application with details. You don’t have to claim the details but they should be included to provide you with backup arguments when you need to narrow the claimed invention.