On May 3, 2007, the U.S. Patent and Trademark Office issued interim guidelines for examination of obviousness determinations to Examiners in the wake of the U.S. Supreme Court’s KSR decision. The interim guidelines will serve until the Office studies the KSR decision further and issues final guidance. In KSR Int’l Co. v. Teleflex, Inc., No. 04-1350 (U.S. Apr. 30, 2007), the Supreme Court eliminated the need for Examiner’s to identify a specific “teaching, suggestion or motivation” in the prior art in order to combine prior art references in making a rejection. Instead, the Court reaffirmed the factors enumerated in Graham v. John Deere, 383 U.S. 1 (1966). The Court stated that it is still necessary to determine whether there was an apparent reason to combine known element in the fashion claimed, and that the analysis should be made explicit. Deputy Commissioner Margaret Focarino instructed Examiners to “identify a reason why a person of ordinary skill in the art would have combined the prior art elements in the manner claimed.”

View the May 3, 2007 PTO memo.

View a summary of the KSR v. Teleflex opinion.