About four years ago, I received an invention disclosure from an inventor that I found very instructive. The inventor's first name is Curtis. Curtis had described his invention in a methodical fashion. Instead of going right to the invention, he started with the base system, or what would be considered the prior art. He showed, step by step, what he did to the base system to arrive at the invention. The final invention was a product of solving the challenges he encountered as he transformed the base system into a new invention. As I reviewed the invention disclosure, it occurred to me that I may have found a new ally in rebutting prima facie case of obviousness.
To provide a context for this possible new ally, it is useful to know that patent applications tend to focus on the result, i.e., the invention, rather than the inventive process. When an examiner, without the benefit of the inventive process, examines the patent application, all the examiner has to do is bring together a set of prior art references that seemingly disclose separate elements of the invention, extract the separate teachings from the references, put the teachings into some magic box, and assert that the result of this magic box would be the invention or, in other words, that the invention is obvious. With the decision in KSR Int'l Co v. Teleflex, Inc. 550 U.S. 298 (2007), the examiner doesn't have to work hard to come up with a reason for combining different references to produce the invention. However, what if it were possible to show the examiner what really happens in the magic box—the challenges and the frustrations? Might the examiner change his mind? This is what made me think of Curtis's invention disclosure.
I'm assuming that Curtis kept a detailed record of the inventive process in some journal and extracted the content of the invention disclosure from the journal when the time came to prepare the invention disclosure. By keeping a detailed record of the inventive process, it was possible for Curtis to show the challenges he encountered while making the invention and how he solved the challenges. The record of the inventive process might be incorporated into the patent application or not. However, with such a record, when the need arises, it might be possible to show the examiner that the invention is not obvious even if elements of the invention could be found in a combination of prior art references.