USPTO Publishes Updated Guidance for Determining Obviousness

The United States Patent and Trademark Office (USPTO) has published updated Guidance for determining obviousness based on the U.S. Supreme Court’s ruling in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007) and the Federal Circuit’s implementation of KSR.

The updated Guidance is directed at assessing when a claim would have been obvious under 35 U.S.C. § 103. The Guidance retains the Graham inquiries affirmed by the Supreme Court’s decision in KSR, the Federal Circuit case law since KSR, and the guidelines provided in the Manual of Patent Examining Procedure (MPEP).

The KSR approach of the Supreme Court states: “Under § 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background, the obviousness or nonobviousness of the subject matter is determined. Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented.”¹ A determination of obviousness can involve a primary reference, which is to be modified based on one or more other prior art references. “[R]ejections on obviousness cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”²

The updated Guidance from the USPTO highlights how Examiners should apply this principle. In particular, the updated Guidance states: “Federal Circuit case law since KSR follows the mandate of the Supreme Court to understand the prior art—including combinations of the prior art—in a flexible manner that credits the common sense and common knowledge of a PHOSITA. The Federal Circuit has made it clear that a narrow or rigid reading of prior art that does not recognize reasonable inferences that a PHOSITA would have drawn is inappropriate. An argument that the prior art lacks a specific teaching will not be sufficient to overcome an obviousness rejection when the allegedly missing teaching would have been understood by a PHOSITA—by way of common sense, common knowledge generally, or common knowledge in the relevant art.”

A flexible approach to obviousness does not mean using common sense as a “wholesale substitute for reasoned analysis and evidentiary support.”³ Rather, as stated in the updated Guidance, USPTO Examiners are to provide support for obviousness findings based on “a clear articulation of their reasoning, grounded in relevant facts.” In addition, USPTO Examiners are “... to consider all objective evidence that has been properly made of record and is relevant to the issue of obviousness.”

MPEP §706 states that the “[t]he goal of examination is to clearly articulate any rejection early in the prosecution process so that the applicant has the opportunity to provide evidence of patentability and otherwise reply completely at the earliest opportunity.” The updated Guidance issued by the USPTO appears to clarify the MPEP process for achieving this objective.