The United States Patent and Trademark Office (USPTO) recently issued guidance (the “Guidance”) outlining what is required when making an obviousness determination under 35 U.S.C. § 103 in view of the Supreme Court’s decision in KSR Int’l Co. v. Teleflex Inc., 550 US 398 (2007) (KSR). The Guidance does not introduce any shifts in the USPTO’s approach to determining obviousness, but instead reiterates the flexible approach required when making obviousness determinations in view of KSR.
In its KSR decision, the Supreme Court reaffirmed the use of the Graham factors and the secondary considerations but introduced more flexibility into the overall obviousness evaluation framework. The Guidance focuses on two aspects of KSR in light of the Federal Circuit’s continued refinement of obviousness determinations: (1) flexibility in understanding the scope of the prior art, and (2) flexibility regarding the motivation to combine the prior art.
Understanding the Scope of Prior Art
The Guidance emphasizes that KSR clarified that a person having ordinary skill in the art (PHOSITA) possesses common sense and may glean suggestions from the prior art outside of the art’s focus. That is, the scope of the prior art is not necessarily limited to its direct disclosures but extends to all that it reasonably suggests. The Guidance explains that even if a prior art reference lacks a specific teaching, a finding of obviousness based on the prior art can be supported when the deficiency of the prior art can be addressed with common sense, common knowledge of the art, or common knowledge generally. The Guidance also reiterates that when evaluating the scope of the prior art, a PHOSITA’s ordinary creativity should be taken into account.
Providing a Reason to Modify the Prior Art
The Guidance explains that KSR provides flexibility in how an obviousness determination can be supported. While a reasoned explanation that supports a determination of obviousness is still required, the rationale for supporting the obviousness determination need not be rigid or formalistic and can be based on implicit or explicit reasons. For instance, reasons for determining obviousness can include reasons such as (1) market forces, (2) design incentives, (3) any need or problem known in the field, and (4) the common sense and common knowledge of a PHOSITA.
Despite the flexibility provided by KSR, a clearly articulated line of reasoning based on evidentiary support is required to support an obviousness determination. The Guidance makes clear that conclusory statements arguing that an invention is obvious are insufficient to support an obviousness determination.
All Relevant Evidence before the Examiner must be Considered
Finally, the Guidance reiterates the requirement that all relevant evidence be considered when making an obviousness determination. Going even further, the Guidance explains that all evidence should be reviewed and reweighed at each stage of a USPTO proceeding.
Although the USPTO’s guidance does not have the force of law, by and large this guidance reiterates existing law. As such, it may prove useful for patent practitioners to point this out to Examiners during their next disagreement on whether an Applicant’s claimed invention is obvious or not.