The Nonobviousness of “Simple” Inventions

As regular readers of this blog know, I advocate using the USPTO’s Manual of Patent Examining Procedure (MPEP) as primary authority during prosecution.  This is by no means a per se rule, however.  There are times when I find judicial authority more effective.  One situation where judicial decisions have been particularly helpful has been when prosecuting claims directed to a “simple” (i.e., “elegant”) solution to a problem.  Sometimes, the USPTO has a bias against such inventions.  The following is the structure of an exemplary approach for presenting such authority.

In the U.S., it is well-settled, blackletter law that the simplicity of a claimed invention is not adverse to its patentability. See:

• Goodyear Tire & Rubber Co. v. Ray-O-Vac Co., 321 U.S. 275, 279 (1944)(simplicity of itself does not negate invention)
• Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1390-91 (Fed. Cir. 1998) (“Nor does the patent statute require that an invention be complex in order to be nonobvious”);
• In re Oetiker, 977 F.2d 1443, 1446 (Fed. Cir. 1992) (simplicity is not inimical to patentability); and
• Van Veen v. United States, 386 F.2d 462, 465 (1967) (“It is incorrect to hold that an invention was obvious when made, simply because the invention is simple in nature and is easily understood when described in a patent specification.”).

Indeed, the simplest inventions are often the most innovative.

• Van Veen, at 465 (“Experience has shown that some of the simplest advances have been the most nonobvious”).

This is because the simplicity of an invention may constitute great excellence and value.

• Reiner v. I. Leon Co., 285 F.2d 501, 504, (2d Cir.1960), cert. denied, 366 U.S. 929 (1961) (simplicity of construction can reflect a patentable technological advance and/or an economy of production).

In sum, the patentability (novelty or nonobviousness) of a claimed invention is separate and distinct from the complexity of that invention.

© 2013, Michael E. Kondoudis

The Law Office of Michael E. Kondoudis
DC Trademark Attorney 
www.mekiplaw.com