In May 2007, following the Supreme Court’s decision in KSR Int’l Co. v. Teleflex, Inc., the USPTO issued a memorandum to Group Directors of the Patent Examining Corps indicating that it remains necessary for Examiners, in formulating rejections under 35 USC 103(a), to identify proper reasoning supporting a combination of the prior art. In other words, based on the USPTO’s initial interpretation of the KSR decision, the procedure for reviewing claims under an obviousness standard remains unchanged. The USPTO indicated that further guidance regarding the KSR decision would be forthcoming.
In particular, the USPTO indicated that the KSR decision reaffirmed that obviousness must be evaluated based on the four Graham factors: determining the scope and content of the prior art, ascertaining differences between the prior art and the claims at issue, resolving the level of ordinary skill in the art, and evaluating evidence of secondary considerations. Further, according to the USPTO, a showing of “teaching, suggestion, or motivation” must still be considered as a factor in the obviousness analysis.
The USPTO’s guidance to Patent Examiners was summarized with the following statement:
Therefore, in formulating a rejection under 35 U.S.C. § 103(a) based upon a combination of prior art elements, it remains necessary to identify a reason why a person of ordinary skill in the art would have combined the prior art elements in the manner claimed.