It’s Not Always Obvious to Combine Prior Art

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Andrew Rapacke is a registered patent attorney and serves as Managing Partner at The Rapacke Law Group, a full service intellectual property law firm.

Even when prior art discloses each of several concepts included within a Patent, it may still be patentable. According to the USPTO’s Patent and Trial Appeal Board (PTAB), a patent covering video game graphics (‘488 Patent) for simulating shadows was not obvious despite evidence that the concepts involved were already disclosed in prior art.

The PTAB rejected the petitioner’s obviousness argument stating that although the prior art may be combined to produce the same effect, that “alone is not an articulated reason why one having ordinary skill in the art would have combined and modified the various teachings.” The PTAB acknowledged that a finding of obviousness must explicitly involve such reasoning for the combination.

Consequently, the PTAB has enforced the idea that inventions may still be patentable despite prior art that could be combined to cover the same if the new combinations are made in unexpected, unique, and improved ways.

Source – National Law Review

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