The USPTO published examination guidelines for determining obviousness in light of the Supreme Court decision in KSR International Co. v. Teleflex Inc.
The guidelines seek to provide guidance to US Examiners for making rejections on the basis of obviousness under 35 USC 103. In particular, the guidelines mention the factual inquiries stated in Graham v. John Deere Co., as emphasized by the Supreme Court in KSR, namely that Examiners should consider: (1) the scope and content of the prior art, (2) differences between the claimed invention and the prior art, and (3) the level of ordinary skill in the art. The guidelines also state that “[o]bjective evidence relevant to the issue of obviousness must be evaluated by Office personnel.” This objective evidence is commonly referred to as “secondary considerations” and includes evidence of commercial success long-felt but unresolved need, failure of others and unexpected results.
The guidelines also discuss the Examiner’s responsibility to provide a written record including findings of fact and an explanation to support an obviousness rejection. According to the guidelines, the focus of an obviousness determination should be what one of ordinary skill in the art would have known or have been reasonably expected to know at the time of the invention. The source of that knowledge can be: “documentary prior art, general knowledge in the art or common sense.”
The guidelines further list a number of rationales that can be used by an Examiner to support a finding of obviousness. These rationales include: combining prior art elements by known methods to achieve predictable results, substituting one known element for another to obtain predictable results and other rationales. For each rationale, the guidelines explain the factual findings and provide guidance for the Examiner to formulate a legal conclusion of obviousness. Because these rationales have been approved by the USPTO, it is expected that US Examiners will make regular use of them in Office Actions.