Chapter 6The Novelty Threshold: Can You Recognize It When You See It?

Chapter 2 sets forth what is or is not prior art. The next step is to compare the invention to the prior art in an evaluation of the patentability of the invention: Are there differences between the invention and the prior art that set the invention sufficiently apart to qualify the invention for a patent? The differences that qualify are those that make the invention “novel” and “nonobvious.” Novelty requires that the invention differ in some way from the prior art, while nonobviousness requires that the difference be great enough to rise to the level of a patent grant. Admittedly, these explanations beg the question, but novelty and nonobviousness are distinct requirements, as evidenced by the fact that they are stated in separate sections of the patent statute, Sections 102 and 103, respectively, of Title 35, U.S. Code. The novelty section however is primarily a statement of what is or is not prior art, while the nonobviousness section does little more than state that an invention must be nonobvious over the prior art to qualify for a patent. As patent courts have been called upon to apply these two requirements to an untold variety of inventions, an intricate framework of definitions for each requirement has evolved. These frameworks are explored in this chapter and in Chapter 7, respectively.

As a general rule, however, an invention can only be evaluated for nonobviousness when it presents something novel, ...

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