When is the elimination of an element or step considered obvious?

The elimination of an element or step can be considered obvious under certain circumstances. According to MPEP 2144.04, “Omission of an element and its function is obvious if the function of the element is not desired.”

This principle is illustrated in several cases:

• Ex parte Wu: Omission of a component in an anticorrosion composition was deemed obvious when its function was not required.
• In re Larson: Omission of additional framework in a mobile fluid carrying unit was obvious if increased cargo capacity was not desired.
• In re Kuhle: Eliminating a prior art switch member and its function was considered an obvious expedient.

However, it’s important to note that “the omission of an element and retention of its function is an indicium of nonobviousness,” as seen in In re Edge.

Key considerations:

• Is the function of the eliminated element still desired?
• Does the omission result in unexpected benefits or retain the function in an unexpected way?
• Is there a clear rationale for the omission?

To learn more:

• obviousness
• element elimination
• step elimination
• MPEP 2144.04