Chapter 8. Basic Requirements of Patentability: Nonobviousness

  1. Chris P. Miller and
  2. Mark J. Evans

Published Online: 22 JUN 2010

DOI: 10.1002/9780470636916.ch8

The Chemist's Companion Guide to Patent Law

The Chemist's Companion Guide to Patent Law

How to Cite

Miller, C. P. and Evans, M. J. (2010) Basic Requirements of Patentability: Nonobviousness, in The Chemist's Companion Guide to Patent Law, John Wiley & Sons, Inc., Hoboken, NJ, USA. doi: 10.1002/9780470636916.ch8

Publication History

  1. Published Online: 22 JUN 2010
  2. Published Print: 24 JUN 2010

ISBN Information

Print ISBN: 9780471782438

Online ISBN: 9780470636916



  • basic requirements of patentability - nonobviousness;
  • Graham factors analysis of obviousness - key inquiry for patent law, crucial yet challenging concepts;
  • Venn diagram of relationship, prior art genus encompassing later claimed genus and species


This chapter contains sections titled:

  • The Basis for the Nonobviousness Requirement

  • Understanding §103(a)

  • Graham Factors Analysis of Obviousness

  • Focusing the Obviousness Inquiry: Prima Facie Obviousness and the Chemical Invention

  • Application of the TSM Test to the Chemical Arts

  • Prior Art as a Whole Must Be Considered for TSM Tests

  • Obviousness and Unpredictability in the Art

  • Unexpected Results as Secondary Indices of Nonobviousness

  • Prima Facie Obviousness Based Primarily on Similarity of Chemical Structure

  • Obviousness of a Species or Genus in Light of a Prior Art Genus

  • Obviousness of Ranges

  • Changing the Sequence of Ingredient Addition

  • Obviousness of Combining Equivalents Together for Same Known Purpose

  • Substituting Equivalents Known for the Same Purpose

  • Purified Forms of Compounds or Materials