It is essentially up to the PTO to decide if your “invention” is unobvious… Which is undoubtedly unfair, but that’s the way it is.

You can always challenge the PTO final decisions… As there is really no such thing as a “final decision” at the PTO. But it is really difficult to prove because your invention must be something that is not just unobvious… but key : “unobvious to those skilled in the art.”

So it boils down to: "Would most persons who make or use a _____________, never have considered combining a ______________ with it into one product?

It is a difficult question to answer or prove one way or the other. Unfortunately, people in such field will probably not be on your side in testifying on your behalf…… After all, you are developing a competing product against them. Life’s a *&%$#!

So it boils down to: "Would most persons who make or use a _____________, never have considered combining a ______________ with it into one product?

Exactly, with regards to that, as both of them are fairly simple straight products and are readily available, there is a very high probablity that most people were exposed to both products at one point or other during their life, so the fact that none attempted to do what I have is what I believe makes it non obvious. After all, companies are notorious for filing patent applications for everything they do.

There is never any simple one size fits all answer as to what constitutes obviousness.

Anyways – whether someone “skilled in the art” would consider doing something is largely besides the point. What matters is whether or not they would do something if made aware of enabling factors, i.e. new materials, or what not. i.e. a hamburger pattie is made of basic ground beef. There is a special kind of beef that confers all sorts of advantages over basic ground beef, but for whatever reason it is not known to those who make hamburger patties. Hence, those who make hamburger patties would not consider using this special beef (because they are not aware of it), yet an idea to use this special sort of beef to make hamburgers is still likely to be considered obvious.

And there are other situations where people within an industry are perceived as either having considered a certain concept in the past, or likely having done so. What matters is whether they would have followed through on the consideration in a certain situation. If they had regularly passed up on a certain idea because it was perceived as not likely being marketable, that could actually help to provide an argument against obviousness.

Lastly, it is ultimately up to the courts to decide what is and isn’t obvious once a patent has been granted. As far as getting that patent granted, at the moment the USPTO can be a pain to deal with as they have been under pressure to streamline operations and stop issuing so many “obvious” patents (as may have been granted 5-10 years down the line).

You did not mention if product X and product Y are from the same field or different fields. If for example product X was a ladder product and product Y was a bed frame product. Combining them is not so obvious, but if both products are from the same field then it may be more difficult to prove the combination is non-obvious to someone skilled in that field. The Pressman book “Patent It Yourself” for example list over 25 general arguments against obviousness including combinations from different fields. The PTO website and others probably have similar lists. Good luck.

Jeeth~ Obviousness is a tough legal question to deal with. In the exchanges, I think we’re getting off track by focusing on straightout combining different products X and Y to make Z (producing a “better Y” – a.k.a. your objective).

The way you should look at your invention…and the way the patent examiner will view your claim… is this: you start with old product Y (same field as the “better Y” though different field from X) and then modify old Y by borrowing upon “teachings” or “suggestions” of X. When the question of obviousness is raised by the examiner, she will have uncovered a patent to Y (or other Y disclosures)…and she will find various patented embodiments of X which include the “teaching” of what you borrowed. Her rejection typically asserts “It would have been obvious to a person of ordinary skill in the Y technology field to apply the X feature to Y to gain the same function/advantages/results taught by X.”

Arguments against the rejection might include: Jeeth’s XY combination (BetterY) produces unexpected results; the specific patented items found by the examiner cannot be physically combined; the examiner’s suggested modification of Y would defeat Y’s purpose; the disclosure in X teaches away from any Y combination; the examiner’s Patents X and Y do not have effective dates that qualify them as “prior art;” or any of a variety of arguments.

An example would be modifying a desk chair Y such that the user would be warm by employing an embedded heating element borrowed from the X field. If the examiner rejects your chair claim based on a first patent showing a desk chair…in view of a patent showing a stovetop heating element…and suggests it would be obvious to modify the chair by adding a stovetop heating element…then your argument would be that the examiner’s proposed combination may warm the user, but is not a reasonable or workable combination…etc. On the other hand, if the examiner finds heating elements in pillows, beds, carseats….then you’re cooked.

My point is that you should think of “obviousness” as relevant to >modifying a single disclosed prior art reference in light of a secondary prior art reference< and NOT in light of combining the whole of two existing products. dk