Yesterday, the USPTO published guidelines to help examiners make appropriate decisions regarding the obviousness of claimed inventions in light of the Supreme Court’s decision in KSR International Co. v. Teleflex Inc. The guidelines, which reaffirm the Supreme Court’s earlier decision in Graham v. John Deere Co., call for examiners to continue to consider:
1) The scope and content of the prior art
2) The differences between the claimed invention and the prior art
3) The level of ordinary skill in the pertinent art, and
4) Objective evidence relevant to the issue of obviousness.
The Guidelines emphasize that Office personnel fulfill the critical role of fact finder, and must therefore ensure that the written record includes findings of fact concerning the Graham factors. In determining obviousness, neither the particular motivation to make the claimed invention nor the problem the inventor is solving controls. The proper analysis is whether the claimed invention would have been obvious to one of ordinary skill in the art after consideration of all the facts. The familiar teaching-suggestion-motivation (TSM) rationale for an obviousness rejection is still available, but its absence does not require a determination of nonobviousness. TSM is one of a number of valid rationales.
A number of alternate rationales for making an obviousness determination are set forth. The key to supporting any rejection is a clear articulation of the reason(s) why the claimed invention would have been obvious.
Other rationales enumerated in the guidelines include:
(A) Combining prior art elements according to known methods to yield predictable results;
(B) Simple substitution of one known element for another to obtain predictable results;
(C) Use of known technique to a known device (method, or products) in the same way;
(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
(E) “Obvious to try” – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations would have been predictable to one of ordinary skill in the art;
(G) Some teaching, suggestion or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention.
It is noted that the majority of the rationales set forth in the guidelines focus on “predictable results.”
If applicant disagrees with any factual findings by the Office, an effective traverse must include a reasoned statement explaining why the applicant believes the Office has erred substantively as to the factual finding.
View the complete Examination Guidelines