How to do a Patent Search to Avoid Obviousness

Inventor's Learning Center has a great tutorial for conducting a prior art search. It's critical to perform a thorough search before submitting your patent (or even before working on it) so to avoid infringing on another patent or running the risk of submitting an "obvious" invention. 

Start by compiling a list of features and functions. Afterwards, create a list of synonyms that describe each of your invention's features. These words should go into your keyword searches.

Make a note of any inventions that look similar while paying attention to their classification. Repeat your keyword search within each referenced classification for a more refined search.

This is a good starting point for performing your prior art search. 

Sterne's "Obviousness is King"

Rob Sterne is the editor-in-chief of the Patent Office Litigation, and in this video he explains the concept of obviousness in patents and how it has transformed since the contested proceedings on September 16, 2012.  

Sterne's predictions that the new proceedings will focus more so on seconding guessing the original patent examiner instead of questioning the actual obviousness of the patented invention. He believes that the process of defending the patent-ability of ones invention will become increasingly difficult for the inventor due to the very short time period the proceedings will now take.

Proceedings must be completed within 12 months!

Agreeably, the process for defending the non-obviousness of ones patent should be limited to a time frame; however, this can be very difficult to handle due to the often exacerbated timelines given via the court and attorneys. 

Obviousness (Part II)

How can we argue for the obviousness of a patent?

We must argue that there is "no teaching, suggestions, or motivation to combine the [prior art] references and that the resulting combination of elements would not have been understood to produce predictable results by someone skilled in the art." (Gene Quinn)


Furthermore, it is imperative to show that the prior art references are from different fields in order to strengthen the argument for non-obviousness.


Obviousness used to be tested using the TSM Test:

Testing

Suggestion

Motivation

The test requires the examiner to prove that some suggestion/motivation exists to combine the referenced elements. Now the Graham Analysis is used as the standard in arguing for obviousness in order to maintain a broader, more holistic evaluation of the patent.

Graham factors include:

1. scope and content of prior art
2. level of ordinary skill in the art
3. differences between claimed invention and prior art
4. objective evidence of non-obviousness
• commercial success
• long-felt, unsolved needs
• failure of others

Obviousness (Part I)

obvious
[ob-vee-uh s]

adjective (Dictionary.com)

1. easily seen, recognized, or understood; open to view or knowledge; evident
2. lacking in subtlety

To reiterate from the last weeks, patents according to law must be "non-obvious". This is further elaborated by defining that "a person having ordinary skill in the art would not know how to solve the problem at which the invention is directed by using exactly the same mechanism". (Farflex Dictionary)

The concept of obviousness also takes into account the number of cites required in order to justify the patent. AKA the more prior art references, the more non-obvious the patent is likely to be.

Elaboration on Anticipation and Obviousness

US 2661889 A

Patent Title: Thermal Coffee Cup

Being that this patent was filed in 1948, I believe it was a novel technology and therefore not anticipated. I make this statement because the prior art does not exist in a means that would jeopardize the novelty of this idea. 

The patent has one single claim. Interestingly enough, this gives us some insight on how different the patent regulations were 65 years ago. It claims:

In an insulated container jacket, 

the combination which comprises an outer frusto conicalshaped sleeve 

and an inner corrugated lining

having a plurality of open vertically disposed separated channels 

therein with both the upper and lower ends of said channels open, 

and with the inner surface of the lining also frusto conicalshaped, 

and a cup-like frusto conical-shaped container 

the upper and lower ends of which are rolled inwardly 

with a closure permanently secured in the lower end, 

an outer ring having a bead 

with a groove in the inner surface around the upper end of the container 

and a cap secured in the groove of said ring.

The way the patent is claimed leaves great room for patent improvements, which can be observed in the number of patents on thermal sleeves that were filed in the number of decades after.

US 7922031 B1

Patent Title: Insulator sleeve for a beverage container

I believe this patent was non-obvious in many ways: as one who regularly uses thermal sleeves, I had never considered a reusable thermal sleeve. The novelty is further highlighted in making the sleeve clear for convenient use when ordering at coffee shops. This was the first mention of an eco-friendly, smart thermal sleeve.

The first claim states:
An insulating sleeve combination for a frusto-conical beverage cup,
 the cup including an outer peripheral surface, the combination comprising:

an opaque frusto-conical inner sleeve, 

the inner sleeve including an inner surface for engagement with the outer peripheral surface of the cup, 

an outer surface adapted for accepting printed indicia, 

a top edge and a bottom edge, 

wherein the inner sleeve comprises an arcuate section of a paper-based material having a top edge, 

a bottom edge, 

and two side edges, 

the two side edges being fixed to one another and the arcuate section folded to form the frusto-conical inner sleeve;

a frusto-conical outer sleeve, 

the outer sleeve including an inner surface for engagement with at least a portion of the outer surface of the inner sleeve, an outer surface, a top edge, and a bottom edge; 

the outer sleeve having an inside diameter sufficient to allow at least partial insertion of the inner sleeve within the outer sleeve 

such that the inner and outer sleeve are coaxially aligned.

This patent, as opposed to the prior above, is far more detailed. This is precisely why it makes it increasingly difficult to build off of such a patent.

Was it Obvious? Was it Anticipated?

I'd like to address the obviousness and anticipation of the patents mentioned in my previous post:

1. Insulating Sleeve
2. Thermal Coffee Cup
3. Thermal sleeve, method for manufacturing a thermal sleeve, and combination cup and thermal sleeve
4. Insulator Sleeve for a Beverage Container
5. Temperature-Indicating Sleeve and Related Container
6. Sleeve Construction for Improved Paperboard Cup Insulation
7. Beverage Cup Sleeving System and Method
8. Protective Sleeve
9. Hot and Cold Cup Sleeve 

First we should define the terms (as defined by Wex Legal Dictionary):

Obviousness = ""A person having ordinary skill in the art" would not know how to solve the problem at which the invention is directed by using exactly the same mechanism."

Anticipation = "A grounds for invalidating or rejecting a patent because it means that the claimed invention lacks novelty. Patent invalidity based on lack of novelty, or anticipation, requires that the invention was known or used by others before it was invented by the patentee."

Insulating Sleeve

This patent personally seems obvious. The concept of insulating sleeves was well in existence by the year 2000, and simply adding air gaps to improve insulation from the user does not seem novel enough for a patent.

Thermal Coffee Cup

Given the priority date of 1948 and a lack of prior art, I believe this concept was both non-obvious and unanticipated. 

Thermal sleeve, method for manufacturing a thermal sleeve, and combination cup and thermal sleeve

The patent at hand appears obvious to me but still novel in application. Other patents discussed have been demonstrated as providing insulation from the user's hand rather than providing thermal insulation in order to maintain content temperatures. Additionally, I believe the manufacturing process is novel to patent.

Insulator Sleeve for a Beverage Container

Without a doubt, I believe this is strongly unanticipated and non-obvious. This invention in particular has large potential to revolutionize the market and move toward a "green" solution. There already exist a slew of non-disposable cups, and it follows the societal trend to create a non-disposable sleeve.

Temperature-Indicating Sleeve and Related Container

I believe that this patent is obvious but unanticipated. In my opinion, adding a temperature indicator is a rather obvious solution for determining whether a beverage is at an optimal temperature for consuming; however, I question the practicality of the invention. 

Sleeve Construction for Improved Paperboard Cup Insulation

I do not believe this patent to be truly novel and useful in its entirety. Adding multiple air gaps is an obvious but inefficient concept for insulation.

Beverage Cup Sleeving System and Method

Given that this patent's priority date is after that of the Insulator Sleeve for a Beverage Container, I believe that this technology is highly obvious and anticipated. It is essentially the same as the said patent, however, without the translucent quality. 

Protective Sleeve

I do believe that the manufacturing is non-obvious and unanticipated. This patent specifically addresses improving the economic and environmental impacts through enhancing the manufacturability of the product.

Hot and Cold Cup Sleeve 

I believe this patent is non-obvious in the sense that not all persons skilled in this art know how to solve the issue of condensation ruining existing sleeves. Furthermore, I believe the patent was not anticipated.

Insulation Patents Summaries

In this blog, I'd like to give a brief summary of a list of patents and patent applications related to various container insulation technologies.

US 6343735 B1
Patent Title: Insulating Sleeve
Priority Date: May 4, 2000
Problem(s) Stated: Disposable foamed plastic cups do not insulate a user's hand from the temperature of the liquid inside the container.
Invented Solution: A sleeve made from flexible material will be used in conjunction with a container to insulate a person's hand from the temperature of the contents inside the container through the implementation of a spaced apart portion between the sleeve's side wall and the container's edge.
Claims: (1) The insulating sleeve will conform to the sidewalls of the container, while portions of the sleeve will be positioned angled away from the sidewall and separated in order to create a gap. (4) The sleeve has a structurally weakened area near the said spacer which tears when the container is inserted into the sleeve. (5) The sleeve is shiftable between a flat storage configurations and an open use position. (8) The insulating sleeve has a top and bottom tubular opening for receiving the container.
Representative Diagrams:

US 2661889 A

Patent Title: Thermal Coffee Cup
Priority Date: July 20, 1948
Problem(s) Stated: Not stated.
Invented Solution: To provided a combined holder and coffee cup that's simple, cheap to manufacture, and provides convenient use to the user in which a portion of the cap can be torn away to permit drinking while keeping the contents heated.
Claims: An insulated container jacket combines a conical-shaped sleeve with an inner corrugated lining with both upper and lower ends open. The upper and lower ends are rolled inwardly and permanently secured.
Representative Diagrams:

US 8251277 B2

Patent Title: Thermal sleeve, method for manufacturing a thermal sleeve, and combination cup and thermal sleeve
Priority Date: April 15, 2005
Problem(s) Stated: Not stated.
Invented Solution: A laminate cup sleeve made of creped paper, adhesive, and a paper substrate will enhance the ease of holding onto the cup sleeve. A method for manufacturing the cup sleeve is provided.
Claims: (1) The cup sleeve comprises of a creped paper product which has a first end, second end, first cup opening, and second cup opening and an adhesive that holds the first and second end together to enclose a cup. Further dimensions are provided. (10) A combination of the cup and cup sleeve comprises of the cup and the cup sleeve.
Representative Diagrams:

US 7922031 B1

Patent Title: Insulator sleeve for a beverage container
Priority Date: March 1, 2006
Problem(s) Stated: The use of insulator sleeves instead of double-cupping in order to insulate temperatures has provided economic benefits, but the sleeves themselves have a finite re-usability period before the hinges tear or the paperboard is stained.
Invented Solution: A transparent/translucent, non-disposable sleeve coupled with a disposable beverage container will provide economic benefits while not disrupting the regular workflow of taking orders.
Claims: (1) An insulating sleeve combination comprises of an opaque frusto-conical inner sleeve and a frusto-conical outer sleeve which provides engagement at the interface. At least a portion of the outer sleeve is transparent. The outer sleeve is made of transparent rubber silicon. 
Representative Diagrams:

US 8118189 B2

Patent Title: Temperature-Indicating Sleeve and Related Container
Priority Date: December 15, 2006
Problem(s) Stated: Disposable, insulated cups make it difficult for the consumer to determine the temperature of the beverage.
Invented Solution: A temperature-indicating sleeve that is capable of being placed in contact with the outer surface of a container to help the consumer determine whether the contents of the container are at an acceptable temperature for consumption.
Claims: (1) A detachable container sleeve with thermal insulating properties allows visual temperature indication in accordance with the container body. (18) The method of manufacturing the sleeve involves forming a continuous sleeve sidewall with a top and bottom opening and a temperature indicator calibrated to detect the temperature of the contents within the container. 
Representative Diagrams:

US 6152363 A

Patent Title: Sleeve Construction for Improved Paperboard Cup Insulation
Priority Date: May 3, 1999
Problem(s) Stated: Insulating sleeves do not incorporate the simplicity of a sleeve cut from a single blank, adding an air-gap layer, while being lightweight.
Invented Solution: An insulating sleeve which incorporates air-gap means that are rigidly attached to the sides of the sleeve in order to provide better insulation and ease of assembly.
Claims: (1) A sleeve construct of paperboard containing plural air-gaps on the said sleeve. 
Representative Diagrams:

US 20080078824 A1

Patent Title: Beverage Cup Sleeving System and Method
Priority Date: August 23, 2006
Problem(s) Stated: Insulating cup sleeves cannot weather wetness. 
Invented Solution: A cup insulating system comprised of a layer of elastomer.
Claims: (1) The cup insulating sleeve is comprised of a layer of elastomer with in upper and lower opening to receive a beverage cup. (14) The thermal cup protector is made up of an elastomeric and fabric composite sleeve which can be cleaned in a dishwasher. (18) An insulating ring contains an elastomeric ring, outer surface, and inner surface for receiving a beverage cup.
Representative Diagrams:

US 20100019023 A1

Patent Title: Protective Sleeve
Priority Date: July 25, 2008
Problem(s) Stated: Hot and cold beverages/foods are difficult for consumers to handle when dispensed into disposable containers due to insufficient thermal insulating properties.
Invented Solution: A sleeve with a unique arch will reduce negative environmental impact through ease of manufacturability while insulating the contents of the container.
Claims: (1) The sleeve comprises of a blank with two edges which comprise of one peak and one trough. (10) The method for comprising the sleeve comprises of applying a blank to a sheet of material and cutting the blanks. (16) Positioning one or more sleeves leaves no gaps due to a shared cut line between the top and bottom edges.
Representative Diagrams:

US 20140151385 A1

Patent Title: Hot and Cold Cup Sleeve
Priority Date: February 6, 2014
Problem(s) Stated: Hot beverage cup sleeves do not work well with cold beverages due to condensation from the beverage.
Invented Solution: A cup sleeve that is water absorbent for use on cold beverages.
Claims: (1) A disposable sleeve comprising of a water-absorbent lining, water-repellent outer layer, and a polyethylene laminate film layer for adhesion between the lining and the outer layer. (2) The lining is made of resin and pulp while the outer layer is made of various other polymers. 
Representative Diagrams: