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Updated USPTO Guidelines for Obviousness Determination Issued 2/27/24

By Russel Pigg

The United States Patent Trademark Office published updated guidelines (89 FR 14449) that reviewed the flexible approach to determining obviousness under KSR Int’l Co. v. Teleflex Inc. on February 27, 2024 (KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007)). 

The focus of the publication was on the precedent established by the Federal Circuit since the KSR case.

The updated guidelines did not announce any new practice or procedure, but rather just outlined the USPTO’s current understanding of the law in connection with the precedent of the Federal Circuit in view of the Supreme Court ruling in KSR.

The first subject matter the USPTO addressed was the shift from a first-to-invent statutory scheme to one based on a first-inventor-to-file approach due to the America Invents Act (AIA). Prior to the AIA, the priority went to the individual who could prove they first invented the claim, even if someone else filed previously to them.

The AIA shifted the time focus of the obviousness inquiry from “at the time the inventions as made” to “before the effective filing date of the claimed invention.” The USPTO outlined that when an examiner is determining obviousness in cases governed by the AIA, the examiner should interpret “at the time of invention” in KSR to mean “before the effective filing date of the claimed invention” under the AIA.

In section II, the USPTO went on to explain that KSR is an extension of Graham v. John Deere Co. (383 U.S. 1 (1966)) and reaffirmed the approach to obviousness taken in Graham. Obviousness or nonobviousness should be determined using the first three Graham factors including the scope and content of the prior art, differences between the prior art and the claims at issue, and the level of ordinary skill in the pertinent art, as well as the secondary considerations of commercial success, long felt but unsolved needs, and failure of others.

 KSR upheld that Graham was the law of the land and this analysis was “objective” and the USPTO outlined that obviousness determinations should still be based on objective inquiries established in Graham.

Section III outlined flexibility under KSR. Flexibility is made up of two parts. The first part is the proper understanding of the scope of the prior art, and the second part is the appropriate reasons to modify the prior art.  The Federal Circuit has ruled using these two aspects of flexibility since the KSR decision. 

The importance of the persons having ordinary skill in the art (PHOSITA) was expressed. Prior art must be understood in a flexible manner that credits the common sense and common knowledge of a PHOSITA.

The PHOSITA’s perspective on prior art must be considered, and is not limited to just the references being applied.

 The skill level associated with a PHOSITA is fact dependent and changes depending on the area, and that exact level of skill is rarely defined.

The teaching, suggestion, and motivation test is not a formalistic or rigid way to analyze obviousness as made clear by the Federal Circuit, consistent with the KSR ruling.  A more flexible approach to providing reasoning for modifying prior art has been used by the Federal Circuit following KSR.

 The Federal Circuit acknowledged that there are many potential reasons for modification or combination or prior art references obvious to a skilled artisan and any can be justified using any clearly articulated line of reasoning. With this flexible approach to obviousness, there is still importance to support the rejection with a clear articulation of the reasons why the claimed invention would have been obvious based on relevant facts.

Common sense is not adequate for rejection and cannot be used in place of reasoned analysis and evidentiary support.

The USPTO cautions against using common sense in a rejection and patent applicants should scrutinize any attempt to rely on common sense without a more complete reasoning. Examiners are required to provide a clear articulation of their reasoning when making a determination that a claim would be obvious.

In section IV of the guidelines, the USPTO makes clear the entirety of evidence before the decision-maker must be considered.

All relevant facts must be considered, not just the first three Graham Factors. The first three Graham factors are as stated earlier the scope and content of the prior art, differences between the prior art and the claims at issue, and the level of ordinary skill in the prior art.

The secondary considerations, the objective indicia of nonobviousness, must also be considered.  If these objective indicia are properly before the examiner, they must be taken into consideration. Providing evidence of secondary considerations of nonobviousness can be a useful way to win the case as a patent applicant. 

            Although, usually this objective indicia is only provided in litigation and rarely in the early steps of patent application.

Newly submitted evidence in rebuttal of an obviousness rejection must also be considered. The examiner must take the perspective of the PHOSITA on obviousness and take into consideration the entirety of evidence. 

With regards to evidence, the federal circuit has expressed that expert opinion that is not grounded in factual support has little weight in the obviousness inquiry. No argument centered around solely the words and opinions of an expert will be heavily considered.

In the final section of the updated guidelines, section V, the USPTO writes that all legal determinations of obviousness must apply reasoning to facts. The examiners must first identify facts and then articulate sound reasoning that leads to a proper conclusion.

The applicant must ensure that all relevant evidence is before the examiner.

 Under this flexible approach, there is not one exact approach to creating an obviousness rejection, but they must all be based on the findings of fact and a reasoned explanation explaining why the claimed invention would have been obvious to a PHOSITA.

There is seemingly no substantial change to the approach taken in patent application examinations created by these guidelines.

While reading these guidelines, some may see the flexible approach as giving examiners more wiggle room, while others may take the requirements in fact-based evidence with well-articulated reasoning as asking for more from the examiners in a rejection, making it harder for them to reject. Likely, however, these new guidelines will not change the approach taken by an examiner while reviewing an application.


Federal Register / Vol. 89, No. 39 / Tuesday, February 27, 2024