On October 10, 2007, published in the Federal Register were the USPTO long-awaited examining guidelines as to patentability after the US Supreme Court opinion in KSR International Co. v. Teleflex Inc., 550 U.S. __ (2007). Prior to KSR, a patent applicant might have been able to rebut a rejection of a patent claim as being not patentable (to the Patent Examiner) due to obviousness: (a) if the Patent Examiner was relying on a combination of references published (or if a patent or patent application, filed) before the applicant’s invention date; and (b) if the combined references were not directed to the problem being solved by the applicant’s patent claim in question. Since KSR, the availability of references is less restricted and may be combined under a number of reasons enumerated in the new guidelines. One may almost presume that unless an element or step of a claim is new, then unless an unpredictable result or synergistic function results from the invention as claimed, then the claim may be found obvious by the Patent Examiner. Presuming the claim is read correctly and the cited references are applicable to the examination, the applicant may rebut such a rejection with evidence and/or arguments that: (a) the results of the claimed combination were indeed unexpected; (b) the elements in the combination do not merely perform the function that each element performs separately (i.e., the synergy rebuttal); and/or (c) a person of ordinary skill in the art (which is perhaps an arguable point) could not have combined the claimed elements by methods known at the time of the invention (e.g., due to technological limitations as the time). Presumably other rebuttals may apply. (MPEP §2145)
So it seems that by way of the patent application itself, once an applicant has thoroughly described to one of slightly less than ordinary skill in the general technical field, one or more solutions (and at least the best solution) to a problem (that is largely unstated but inferable), the applicant should provide at least one claim based on that description that distinctly claims a new element (or new step) among its elements (or steps) and if not, then the claim should be drawn to an unexpected result, a synergistic result and/or a previously technically fettered result.
http://www.uspto.gov/web/offices/com/sol/notices/72fr57526.pdf
