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U.S. Patent and Trademark Office Issues Examiner Guidelines on Obviousness

Intellectual Property Update

October 23, 2007

Guidelines Implement Supreme Court Ruling, May Make Patents More Difficult to Obtain 

On October 10, 2007, the United States Patent and Trademark Office (PTO) issued examiner guidelines for determining obviousness under the U.S. Supreme Court’s ruling of April 30, 2007, in KSR International Co. v. Teleflex, Inc. 72 Fed. Reg. 57526.  Both the ruling and the guidelines clarify the standards for findings of obviousness and require patent examiners to document and make explicit their rationale for an obviousness rejection of a patent application.

While these guidelines impose increased obligations on examiners, they also suggest that patents may be more difficult to obtain in the future.  Likewise, when patent disputes arise, patentholders may face a higher burden in demonstrating the validity of patents granted for combinations of elements found in the prior art.   

As a result, any business engaged in the development of new products and technologies, whether as a core competency or in support of existing or future operations, must be keenly aware of these examination criteria and be fully prepared to demonstrate the non-obviousness of its inventions.

Background:  The KSR Decision

In November, 2002, Teleflex brought suit against KSR, claiming that KSR had infringed on a patent granted to Teleflex for its electronic adjustable floor pedals.  KSR responded by claiming that Teleflex had no right to patent what was simply an obvious combination of two pre-existing parts.  As the case wound its way through the courts, the dispute hinged on which test of obviousness should apply:  the Supreme Court’s earlier framework, as set forth in its 1966 decision in Graham v. John Deer Co., 383 U.S. 1, 148 USPQ 459 (1966), or the Federal Circuit’s less stringent “teaching-suggestion-motivation” test.  

In April 2007, the high court once again found in favor of KSR.  The Supreme Court reaffirmed the framework for determining obviousness that it had set forth in Graham.  The court emphasized “the need for caution in granting a patent based on the combination of elements found in the prior art," [1] and reaffirmed principles based on its precedent that “[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." [2]

 

PTO Examiner Guidelines Strengthen Definition of Obviousness 

In response to the Supreme Court decision, the PTO recently issued new guidelines on obviousness that are designed to help examiners make proper determinations of patent applications under KSR.  To the extent that the new guidelines are inconsistent with previous guidance from the PTO, including certain sections of the Manual of Patent Examining Procedure (MPEP), PTO personnel have been advised that the new guidelines control.

The guidelines reemphasize that patent examiners are to conduct specific factual inquiries regarding obviousness, including:

  • Determining the scope and content of prior art;
  • Ascertaining the differences between the claimed invention and the prior art; and
  • Resolving the level of ordinary skill in the pertinent art.

Examiners must also ensure, in making an obviousness rejection, that the written record includes findings of fact concerning the state of the art and prior art teachings.  Likewise, examiners must demonstrate how a “person of ordinary skill” would have understood those teachings, what such a person would have known at the time of the inventions, and what he or she would have reasonably been expected to do with such knowledge. 

Factors that may be considered in determining the level of ordinary skill in the art may included types of problems encountered in the art, prior art solutions to those problems, rapidity with which innovations are made, sophistication of the technology, and educational level of active workers in the field. 

Reasons for Obviousness Rejections 

If the claimed invention would have been obvious to one of ordinary skill in the art, the patent application may be rejected on grounds of obviousness.  The new PTO guidelines offer several examples of rationales that would support rejection, including:

  • Combining prior art elements according to known methods to yield predicable results;
  • Simple substitutions of one known element for another to obtain predictable results;
  • Use of known technique to improve similar devices (methods, or products) in the same way;
  • Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
  • “Obvious to try” — choosing from a finite number of identified, predictable, solutions, with a reasonable expectation of success;
  • 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;
  • 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.

Businesses Should Be Prepared for Obviousness Hurdle

The practical effects of the KSR ruling are many, and extend to both existing patents as well as those that may be obtained in the future.  In preparing patent applications businesses must make every effort to demonstrate the non-obviousness of their inventions.  Likewise, in defending and prosecuting patent-infringement cases, businesses should be prepared to use this now-clarified standard of obviousness to their advantage.

[1] 82 USPQ2d at 1395.

[2] Id.