USPTO Issues New Guidelines for Determining Patent Obviousness

Today the USPTO published a set of guidelines that are intended to help patent examiners apply the Supreme Court’s ruling in KSR v. Teleflex when reviewing patent applications.  The guidelines are not formal rules, but they provide insight as to how the USPTO will intepret and implement KSR when reviewing new patent applications. 

The guidelines include a specific list of rationales that examiners can use to find an invention to be obvious.  The rationales — many of which can be summed up by the phrase “predictable results” — are:

  • Combining prior art elements according to known methods to yield predictable results;
  • Simple substitution of one known element for another to obtain predictable results;
  • Use of a 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; and
  • 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 the prior art reference teachings to arrive at the claimed invention.

The guidelines include specific factual findings that USPTO examiners must articulate in order to rely on any of the listed rationales for the rejection.  The guidelines were published in the October 10, 2007 issue of the Federal Register

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