USPTO Issues New Obviousness Guidelines

The USPTO has issued new detailed guidelines for assessing obviousness of inventions. The guidelines were adopted following the 2007 US Supreme Court decision in KSR International Co v Teleflex Inc (82 USPQ2d 1385) (see E-tips® Vol 5, No 22 May 9, 2007 "US Supreme Court Rules on Issue of Obviousness in Patent Law"). For more than twenty years, the Federal Circuit had been using a "teaching, suggestion or motivation" (TSM) test which requires proof of existence of some motivation or suggestion to combine prior art. The KSR decision found this approach too narrow, essentially rejecting the use of the test in favour of the older, more involved "Graham analysis" based on the 1966 case Graham v John Deere Co, 383 US 1. Professor Dennis Crouch noted that the KSR decision "appears to simply refine the particulars of how prior-art can be combined and when a "˜combination patent' will be seen as obvious," but concluded that the decision will make it easier to invalidate a patent. The new guidelines state that the TSM test is still a sufficient rationale for rejection of an application. However, they specify seven additional rationales that can lead to a finding of obviousness: These rationales are to be considered only after the Graham factual inquiries are conducted. This involves determining the scope and content of the prior art, ascertaining the differences between the claimed invention and the prior art, and resolving the level of ordinary skill in the pertinent art. Some observers are concerned that the "obvious to try" rationale in particular is ill-defined. However, the guidelines do require examiners to provide clear articulation of the reasons for rejection. In the case of "obvious to try", this requires showing that "a person of ordinary skill has good reason to pursue the known options within his or her technical grasp." For the KSR International Co v Teleflex Inc decision (2006-1286), see: http://www.supremecourtus.gov/opinions/06pdf/04-1350.pdf For the USPTO guidelines, visit: http://www.uspto.gov/web/offices/com/sol/notices/72fr57526.pdf For related commentary, see: http://www.pli.edu/patentcenter/blog.asp?view=plink&id=112; and http://tinyurl.com/3x58yx Summary by: Tom Feather