The Requirement of Inventiveness

An invention shall be considered as involving an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the art... 

A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made. 

The references cited by an examining authority have to be assessed in view of the so-called person skilled in the art . The skilled person is a fiction and represents a person who knows all references that have ever been published in whatever language, who however does not have too much creativity in posing and solving objects or problems on the respective technical field. This means that the person skilled in the art does not have the capacity of a Nobel Laureate, but does know more about the respective technical field than a technically interested layman. Of course, the knowledge of the person skilled in the art is stretchable and a matter of the respective case. Occasionally, a team of persons can be addressed as person skilled in the art , in particular in border-line technical fields. 

The issue of inventiveness is more complicated and ambiguous than the issue of novelty. It depends for example on the state of the art, the skill of the person skilled in the art, whether the invention uses well-known techniques, whether the invention solves the problem in the prior art only in a further way employing techniques that are known as such, and other issues. 

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Section 103 of 35 U.S.C., bearing on the question of obviousness, is a new section consistent with decisions of the courts (since 1950) holding patents invalid on the ground of lack of invention or lack of patent-able novelty (6). Earlier cases (11,19, 24), in which the requirement of invention was stated, had the underlying concept that the presence of invention was to be determined as of the time the invention was made. This concept is now expressed in 35 U.S.C. 103 (37), a statutory version of what was, prior to Jan. 1, 1953, the judge-made (or case law) requirement of invention (38). 

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