The United States Patent and Trademark Office (USTPO) recently issued an update to its internal guidelines for evaluating obviousness under 35 U.S.C. § 103. The patent law addressing “obviousness” has changed dramatically over the last few years, and while the new USPTO Guidelines may have little (if any) impact on how issued patents are reviewed by a court, these Guidelines can have a significant impact on the breadth of claims an Examiner is willing to allow, as well as whether the USPTO is willing to issue a patent at all. For example, examiners are now cautioned against treating a particular obviousness rationale as a “per se” rule when rejecting a claim, and instead are required to explain the rationale and show how it applies to the facts at hand.

The recent turmoil in the law regarding obviousness began in 2007, when the U.S. Supreme Court decided KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007) – a case which repudiated the established requirement for a “teaching, suggestion, or motivation” within the prior art to show that a claim of a patent (or patent application) was obvious. KSR instead gave birth to a more flexible set of “rationales” that could be used to support a finding of obviousness, but at the same time provided less guidance regarding identifying non-obvious inventions and the bases on which a patent should be found valid or a patent application should be allowed to issue. In the absence of such guidance, examiners sometimes applied the KSR rationales in a conclusory manner when rejecting claims for obviousness, without explaining how or why the rationale applied to the claim.

After KSR, the USPTO issued an initial set of Guidelines (72 FR 57526) for applying the KSR decision in 2007. Since then the Federal Circuit has generated a number of holdings which clarify how certain obviousness rationales may be applied in practice and how evidence should be considered during prosecution. The prior 2007 USPTO Guidelines and the Federal Circuit decisions have diverged sufficiently that new guidelines have been expected. The 2010 Guidelines (75 FR 53643) became effective September 1, 2010, and include the following highlights and examples.

Highlights Discussing KSR Rationales For Considering Obviousness

Rationale: Combining Prior Art Elements (Additional Effort or Complexity Supports Nonobviousness)

The 2010 Guidelines explain that if the combining step involves such additional effort that the skilled artisan would not have undertaken it without a recognized reason to do so, then the claimed invention may be nonobvious even though the combining step was technically feasible and the result was predictable. Relatedly, the claimed invention may be nonobvious where the combination invention involves additional complexity as compared with the prior art, even if the invention could have been readily implemented, unless a reason for including the added features or steps can be articulated by the patent examiner.

Rationale: Substituting One Known Element for Another (Internet Implementation May Be Obvious)

Here, the 2010 Guidelines reiterate the 2007 Guidelines, stating that if the skilled artisan would have been technologically capable of making the substitution, and if the result obtained would have been predictable, then the claimed invention may be obvious. For example, a claimed invention involving the use of a conventional Web browser to carry out a prior art technique will likely be found obvious.

Rationale: Obvious to Try (Finite Number of Identified Predictable Solutions Required for Obviousness)

The 2010 Guidelines observe that if the possible options for solving a problem were not either known or finite, then the obvious to try rationale cannot be used to support a conclusion of obviousness.

Consideration of Evidence During Prosecution (Evidence Should Still be Considered)

The 2010 Guidelines note that KSR has not led to a change in how rebuttal evidence and secondary considerations are considered in the determination of obviousness.

These new guidelines help flesh-out the new KSR rationales, particularly in that they help set limitations on the new bases for evaluating obviousness in claims of pending applications. The impact of the new guidelines can be shown by the contrast between these 2010 Guidelines and the previous 2007 Guidelines. By describing fact patterns in which Examiners should not reject a particular claim under a particular KSR rationale, the 2010 USPTO Guidelines move toward providing the patent community with a clearer picture of the scope of the obviousness inquiry and its proper application following KSR.

In sum, the 2010 Guidelines deliver a welcome update to the 2007 Guidelines and provide a helpful review of CAFC case law in the post-KSR era, for the benefit of patent examiners and patent applicants alike.