The U.S. States Patent and Trademark Office yesterday released guidelines for patent examiners that update the standards for obviousness and aim to provide direction in the application of obviousness rejections. Rejection of patent applications for obviousness is a nearly universal rejection and most often the one hardest to overcome.

The updated guidelines incorporate decisions handed down by the U.S. Court of Appeals for the Federal Circuit since the 2007 U.S. Supreme Court decision in KSR Int’l Co. v. Teleflex Inc. KSR reinforced earlier decisions validating a more flexible approach to providing reasons for obviousness—meaning that it is easier for an examiner to find an invention obvious.

The intent of the new guidelines is to provide a basis for patent examiners to apply the law of obviousness in conjunction with the Manual of Patent Examining Procedure (MPEP). The new guidelines update the previously released KSR guidelines that were incorporated into MPEP Sections 2141 and 2143. The new cases "begin to clarify the contours of the obviousness inquiry after KSR, and help to show when a rejection on this basis is proper and when it is not," according to the USPTO.

The new guidelines emphasize that familiar lines of argument still apply to overcome allegations of obviousness, including teaching away from the claimed invention by the prior art, lack of a reasonable expectation of success, and unexpected results.

The examination guidelines review and group 24 post-KSR Federal Circuit decisions in one or more areas: (1) combining prior art elements, (2) substituting one known element for another, (3) the obvious-to-try rationale, and (4) consideration of evidence. In exemplifying each group with one or more post-KSR Federal Circuit decisions, the updated guidelines identify when obviousness is found and when it is not. This provides guidance to examiners, to applicants arguing before examiners, and to those seeking to enforce their own patents or to invalidate the patents of others. A summary of a few of the points emphasized in the guidelines follows.

  • Even where a general method that could have been applied to make the claimed product was known and within the level of skill of the ordinary artisan, the claim may nevertheless be nonobvious if the problem which had suggested use of the method had been previously unknown. In re Omeprazole Patent Litigation, 536 F.3d 1361 (Fed. Cir. 2008).
  • A claimed combination of prior art elements may be nonobvious where the prior art teaches away from the claimed combination and the combination yields more than predictable results. Crocs, Inc. v. U.S. International Trade Commission, 598 F.3d 1294 (Fed. Cir. 2010).
  • A claimed invention is likely to be obvious if it is a combination of known prior art elements that would reasonably have been expected to maintain their respective properties or functions after they have been combined. Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356 (Fed. Cir. 2008).
  • A combination of known elements would have been prima facie obvious if an ordinarily skilled artisan would have recognized an apparent reason to combine those elements and would have known how to do so. Ecolab, Inc. v. FMC Corp., 569 F.3d 1335 (Fed Cir. 2009).
  • Analogous art is not limited to references in the field of endeavor of the invention, but also includes references that would have been recognized by those of ordinary skill in the art as useful for applicant’s purpose. Agrizap, Inc. v. Woodstream Corp., 520 F.3d 1337 (Fed. Cir. 2008).
  • A chemical compound would have been obvious over a mixture containing that compound as well as other compounds where it was known or the skilled artisan had reason to believe that some desirable property of the mixture was derived in whole or in part from the claimed compound, and separating the claimed compound from the mixture was routine in the art. Aventis Pharma Deutschland v. Lupin Ltd., 499 F.3d 1293 (Fed. Cir. 2007).
  • A claimed polynucleotide would have been obvious over the known protein that it encodes where the skilled artisan would have had a reasonable expectation of success in deriving the claimed polynucleotide using standard biochemical techniques, and the skilled artisan would have had a reason to try to isolate the claimed polynucleotide. KSR applies to all technologies, rather than just the "predictable" arts. In re Kubin, 561 F.3d 1351 (Fed. Cir. 2009).
  • Where there were a finite number of identified, predictable solutions and there is no evidence of unexpected results, an obvious to try inquiry may properly lead to a legal conclusion of obviousness. Perfect Web Technologies, Inc. v. InfoUSA, Inc., 587 F.3d 1324 (Fed. Cir. 2009).
  • All evidence, including evidence rebutting a prima facie case of obviousness, must be considered when properly presented. In re Sullivan, 498 F.3d 1345 (Fed. Cir. 2007).

These guidelines do not constitute substantive rulemaking and do not have the force and effect of law and were developed as a matter of internal USPTO management.