In a patent examination, a first step the Examiner is duty bound to make is called the 'prima facie' case for obviousness. This is very complex and has many elements which must be considered. We win a majority of our cases because an examiner fails to sufficiently make the prima facie case – and we demand that it be made or the patent be granted.
In a second step, where the Examiner manages to actually make a prima facie case, we consider the prior art cited – and point out the technical differences to the Examiner. Many times, there are significant technical differences between the claimed invention and the cited prior art and examiner has not sufficiently considered these technical differences. It is important to aggressively argue each and every technical difference in view of the obviousness standards set forth in Graham V. Deere. This is the second step of a patent examination.
Where a very clever Examiner indeed establishes the necessary prima facie case (not an easy task), and further gives good analysis for each and every element of the claim (an even more difficult task), the applicant is entitled to raise what is called 'secondary consideration' arguments.
Secondary consideration arguments work like this… If an invention seems obvious and is 'proven' to be so by a patent examiner in view of some prior art, then we might be able to nevertheless still establish that the invention is not obvious despite examiner's well prepared analysis of the prior art. This occurs when the prior art seemingly obviates an invention, but where other important evidence exists to suggest otherwise.
For example, in U.S. Patent 8,027,094 there is a simple lens which looks like this:
This is a spectacularly boring lens. We've seen thick lenses for hundreds of years. Newton himself probably used a thick lens similar to this. Now consider what is even more spectacularly boring – the claim:
"A mid-IR collimating lens having a numerical aperture of greater than 0.7 and a focal length of less than 8 millimeters"
Wow! How could one get a patent on a simple, single element, thick plano-convex lens! Just because the numeric aperture and focal length are specified with discrete values – this is a premium candidate for an obviousness rejection. Specifying new values rarely makes an invention non-obvious unless unexpected results occur. However in this case, the results are quite expected and the lens performs just as one might expect with those specified parameters. So what gives? Why is this patent granted?
Prior to this disclosure, no one had achieved such a lens. It had huge commercial impact and enabled very valuable systems (many of them) to come into existence. Commercial success where others had failed is a secondary consideration which disproves any case of obviousness built upon even very solid prior art.
At the point where an Examiner establishes a strong case for obviousness based upon the prior art, the Applicant may introduce by affidavit some details documenting great commercial success. One must show the commercial success is realized because it is tied to the claimed invention. If the Examiner is convinced, the previous case of obviousness is dismissed and the patent is granted. Thus, no matter how obvious something might be, if that something is the root of a commercial success which can be documented, one can establish 'non-obvious'.
'Pet rock' anyone? I am not optimistic this argument would continue for the 'Pet Rock' which did have great commercial success, but maybe. ;)