Non-Obviousness Worksheet
A §103 non-obviousness scaffold, the Graham factors, the KSR motivation to combine, and secondary considerations with nexus. Free worksheet for patent practitioners.
Written for patent practitioners as a work-aid. Not a substitute for professional judgment.
Attorney work-aid sequence
A structured place to capture the §103 non-obviousness reasoning a practitioner develops when drafting an application or responding to an office-action rejection: who the person of ordinary skill is, what the prior art teaches, which references an examiner might combine, and why that combination isn't obvious.
This is a capture scaffold for an attorney's own analysis. The template stays neutral, it does not predict a §103 outcome or draft legal argument. The notes below explain the governing framework and cases for context; none of it is legal advice, and legal judgment stays with the practitioner.
The Template
§103 Analysis
Linked Disclosure
Optional, the invention disclosure this worksheet builds on.
PHOSITA Graham · Skill Level
Describe the person of ordinary skill in the art: field, education, experience, and the tools and knowledge they'd have at the relevant date.
Prior-Art Landscape Graham · Scope & Content
The relevant references and what each teaches, at a level useful for combination analysis.
Element-by-Element Mapping
For the key independent claim: each element, the closest reference that discloses it, and the gap. This is the claim chart an examiner builds under MPEP 2143, mapping it first shows where the combination actually breaks down.
Uncomfortably-Close Reference Combinations KSR · MPEP 2143
For each risky combination: reference A, reference B, optional reference C, the combination argument an examiner might make, and which MPEP 2143 rationale (A–G) it rests on, combining known elements, simple substitution, obvious to try, and so on.
Combination Analysis: The Case For and Against
State the strongest obviousness theory first, which reference supplies what, the exact proposed modification, and the reason to combine (from the field above). Then test it: no motivation to combine, teaching away, changes the principle of operation, missing element, no reasonable expectation of success, unpredictability, hindsight, or a technical barrier. A neutral two-sided record holds up better than a one-sided one.
Reasonable Expectation of Success
Even with a motivation to combine, would a skilled artisan have had a reasonable expectation of success? Note the uncertainty, unpredictability, or missing knowledge that undercuts it.
Analogous Art
Is each cited reference analogous art, same field of endeavor, or reasonably pertinent to the problem? Non-analogous art is a separate, distinct rebuttal; flag any reference that isn't.
Unexpected Results Graham · Secondary Considerations
Any surprising or unexpected technical results, with evidence.
Long-Felt Need Graham · Secondary Considerations
Evidence of a long-felt but unmet need, and why prior solutions fell short.
Other Secondary Indicia Graham · Secondary Considerations
Commercial success, copying, industry praise, licensing, failure of others, the type and the supporting evidence.
Nexus
For each piece of secondary-considerations evidence: how is it attributable to the claimed features specifically, rather than to unclaimed features of the product? Nexus is where these arguments most often fail, record the tie to the claim, not just the success.
The framework this scaffolds
Non-obviousness under 35 U.S.C. § 103 is assessed through the Graham v. John Deere (1966) factors: the scope and content of the prior art, the differences between the art and the claims, the level of ordinary skill, and the secondary considerations. The worksheet fields track those factors.
In KSR v. Teleflex (2007), the Supreme Court reaffirmed Graham but rejected a rigid teaching-suggestion-motivation test, holding it is only one of several valid rationales. The USPTO codified the flexible approach as the exemplary rationales in MPEP 2143 (A–G), combining known elements, simple substitution, "obvious to try," and so on. A proper rejection still has to map every claim element to the art and articulate a reason to combine with a reasonable expectation of success, which is the seam the Why PHOSITA Wouldn't Combine, Reasonable Expectation of Success, and Analogous Art fields work.
Secondary considerations turn on nexus. In Fox Factory v. SRAM (Fed. Cir. 2019), the Federal Circuit held that a presumption of nexus applies only where the evidence is tied to a product essentially coextensive with the claims; where the successful product includes critical unclaimed features, nexus cannot be presumed. Commercial success, praise, and long-felt need do little without that tie, which is why the Nexus field asks for it directly.
Educational context on the governing framework, not legal advice, and not a prediction for any specific claim.
Use it in the platform (coming soon)
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Frequently Asked Questions
What are the Graham factors?
From Graham v. John Deere (1966), the four factual inquiries behind an obviousness determination under §103: (1) the scope and content of the prior art, (2) the differences between the prior art and the claims, (3) the level of ordinary skill in the art, and (4) secondary considerations such as commercial success, long-felt need, and unexpected results. This worksheet is organized around them.
What replaced the teaching-suggestion-motivation (TSM) test after KSR?
In KSR v. Teleflex (2007) the Supreme Court held that TSM is only one of several valid ways to show a reason to combine references. The USPTO codified the flexible approach as the exemplary rationales in MPEP 2143 (A–G), for example combining known elements to yield predictable results, simple substitution, or "obvious to try." A rejection still needs an articulated reason plus a reasonable expectation of success.
What is nexus in secondary considerations of non-obviousness?
Nexus is the required link between the objective evidence (commercial success, praise, long-felt need) and the claimed invention. In Fox Factory v. SRAM (Fed. Cir. 2019), the court held a presumption of nexus applies only where the evidence is tied to a product essentially coextensive with the claims; critical unclaimed features defeat the presumption. Without nexus, secondary-considerations evidence carries little weight.
What is analogous art?
Prior art counts against a claim only if it is analogous, either in the same field of endeavor as the invention, or reasonably pertinent to the particular problem the inventor faced. A reference that is neither is non-analogous art, a distinct basis for rebutting an obviousness rejection separate from the motivation-to-combine argument.
Scope. Completing this worksheet does not establish that a claim is or isn't obvious, or predict how the USPTO or a court would rule. Primarily US law and USPTO practice; other jurisdictions differ.
Disclaimer. This worksheet is a practitioner work-aid for capturing an attorney's own analysis. Obviously Not is not a law firm and does not provide legal advice; this worksheet and any output are for informational and documentation purposes only, are not legal, patent, patentability, eligibility, non-obviousness, claim-scope, validity, or freedom-to-operate advice, and do not create an attorney-client relationship. All legal judgment, including whether and how to file or argue, remains with a licensed patent practitioner exercising independent professional judgment. Nothing here predicts an outcome at the USPTO or any court.