Evidence vs. Arguments: Using Data to Defeat Obviousness Rejections

When Charles Goodyear discovered vulcanization in 1839 to improve rubber, existing rubber products made his method seem obvious on paper. But Goodyear’s exhaustive experiments quantifying superior leak resistance, flexibility, and durability provided irrefutable data that overcame initial patenting hurdles. Like Goodyear, inventors facing obviousness rejections must answer: what real-world evidence can prove this invention is more than just obvious?

According to a 2021 Patent Office study, non-obviousness is the most frequently cited rationale for claim rejections during prosecution. But obviousness assertions based on prior art mashups can often be overcome with persuasive evidence. The key is knowing what kinds of experiments, data, and metrics will resonate most with patent examiners.

The IP consultants at Global Patent Solutions LLC (GPS) recommend compiling data demonstrating:

• Unexpected measured improvements over the closest prior art (e.g. efficiency, cost)
• Superior performance or properties through benchmarking trials (speed, strength, etc.)
• Commercial success fulfilling previously unmet market needs
• Failure of others to arrive at the solution, indicating non-obviousness
• Inoperability of prior art combinations without the invention’s contribution

Backing arguments with numbers does the talking for you. Skilled practitioners like GPS can assist with designing studies to empirically tackle obviousness head-on.

Don’t leave patentability to subjective debate – let your invention speak through objective data. With air-tight experimental evidence, even seemingly obvious advances can pass examination muster to achieve patented protection. Because in the battle of obviousness, numbers don’t lie.

This article is part of a series entitled “A Guide to Protecting Your Innovations”.  To start the series at the beginning, click here.

Next up in our series, we answer the question: “How should we draft the specification to support broad claim coverage?”