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Summary of proposed final KSR examining guidelines surfaces

August 06, 2007
Post by Blog Staff

The Patent Prospector is reporting that the summary of the USPTO's post-KSR obviousness examination guidelines recently sent to OMB has apparently surfaced. Note that this summary is not confirmed, but it comes from a typically reliable source. Either click below or head over to the Patent Prospector to read the summary.

Update (11:15): another source has confirmed the accuracy of the summary.

Further update (2:10): Peter Zura has additional commentary.

Examination Guidelines for Determining Obviousness Under 35 U.S.C. § 103 in View of the Supreme Court Decision in KSR International Co. v. Teleflex Inc.

Summary

  • The factual inquiries in Graham are still the basis for determining obviousness under 35 U.S.C. § 103.

[The U.S. Supreme Court affirmed that the analysis required to support an obviousness rejection under § 103 is that explained in] Graham v. John Deere Co. Obviousness is a question of law based on underlying factual inquiries.

The factual inquiries enunciated by the Court are as follows:

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

Objective evidence relevant to the issue of obviousness must be evaluated, by Office personnel. Such evidence, sometimes referred to as "secondary considerations," may include evidence of commercial success, long-felt but unsolved needs, failure of others, and unexpected results. The evidence may be included in the specification as filed, accompany the application on filing, or be provided in a timely manner at some other point during the prosecution. The weight to be given any objective evidence is decided on a case-by-case basis. The mere fact that an applicant has presented evidence does not mean that the evidence is dispositive of the issue of obviousness.

  • Examiners have been trained on the Graham factual inquiries and should continue to make findings concerning them.
  • The Supreme Court, in the KSR decision, on the facts in this case found that the Federal Circuit's Teaching, Suggestion, or Motivation (TSM) test transformed the general principles of the obviousness analysis into a rigid rule.
  • The TSM Test - A patent claim is prima facie obvious if "some motivation or suggestion to combine the prior art teachings" can be found in the prior art, the nature of the problem, or the knowledge of a person having ordinary skill in the art.
  • In view of the guidance provided by the Supreme Court in KSR, an examiner must continue to articulate a reason or rationale to support an obviousness rejection under 35 U.S.C. § 103. Examples of rationales in common situations are listed below and discussed in more detail in the guidelines. In formulating a rejection under § 103, the rationale should be based on the state of the art and not on impermissible hindsight (e.g., improper-hindsight reasoning using applicant's disclosure).
  • When formulating an obviousness rejection, an examiner should expect that a person of ordinary skill in the art will exercise ordinary creativity, common sense and logic.
  • Examiners should ensure that the written record includes findings of fact concerning the teachings of the applied references and when necessary, the general state of the art.

Office personnel fulfill the critical role of factfinder when resolving the Graham inquiries. It must be remembered that while the ultimate determination of obviousness is a legal conclusion, the underlying Graham inquiries are factual. When making an obviousness rejection, Office personnel must therefore ensure that the written record includes findings of fact concerning the state of the art and the teachings of the references applied. In certain circumstances, it may also be important to include explicit findings as to how a person of ordinary skill would have understood prior art teachings, or what a person of ordinary skill would have known or could have done. Factual findings made by Office personnel are the necessary underpinnings to establish obviousness.

Office personnel may rely on their own technical expertise to describe the knowledge and skills of a person of ordinary skill in the art.

  • The TSM test can be used as a basis for making an obviousness rejection, but examiners should not conclude that an invention is unobvious simply because a rejection based on TSM cannot be made.

Rationales for arriving at a conclusion of obviousness suggested by the Supreme Court’s decision in KSR include:

  • Combining prior art elements according to known methods to yield predictable results (see III.A. of the guidelines);

To reject a claim based on this rationale, Office personnel must resolve the Graham factual inquiries. Then, Office personnel must articulate the following:

  1. a finding that the prior art included each element claimed, although not necessarily in a single prior art reference, with the only difference between the claimed invention and the prior art being the lack of actual combination of the elements in a single prior art reference;
  2. a finding that one of ordinary skill in the art could have combined the elements as claimed by known methods, and that in combination, each element merely would have performed the same function as it did separately;
  3. a finding that one of ordinary skill in the art would have recognized that the results of the combination were predictable; and
  4. whatever additional findings based on the Graham factual inquiries may be necessary, in view of the facts of the case under consideration, to explain a conclusion of obviousness.

The rationale to support a conclusion that the claim would have been obvious is that all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded nothing more than predictable results to one of ordinary skill in the art at the time of the invention. [I]t can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does." If any of these findings cannot be made, then this rationale cannot be used to support a conclusion that the claim would have been obvious to one of ordinary skill in the art

  • Simple substitution of one known element for another to obtain predictable results (see III.B. of the guidelines);

The rationale to support a conclusion that the claim would have been obvious is that the substitution of one known element for another would have yielded predictable results to one of ordinary skill in the art at the time of the invention. If any of these findings cannot be made, then this rationale cannot be used-to support a conclusion that the claim would have been obvious to one of ordinary skill in the art.

  • Use of known technique to improve similar devices in the same way (see III.C. of the guidelines);

[To reject a claim based on this rationale, Office personnel must articulate the following:]

  1. a finding that the prior art contained a "base" device (method, or product) upon which the claimed invention can be seen as an "improvement;"
  2. a finding that the prior art contained a comparable device (method, or product) that was improved in the same way as the claimed invention;
  3. a finding that one of ordinary skill in the art could have applied the known "improvement" technique in the same way to the "base" device (method, or product) and the results would have been predictable to one of ordinary skill in the art; and
  4. whatever additional findings based on the Graham factual inquiries may be necessary, in view of the facts of the case under consideration, to explain a conclusion of obviousness.
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