USPTO issues memo detailing preliminary obviousness instructions in light of KSR

May 03, 2007
Post by Blog Staff

As reported on Patently-O, the USPTO has issued a memo to the technology center directors regarding examination of applications in light of KSR. The good news is that the USPTO seems to have taken to heart the statement in the KSR opinion that "[t]o facilitate review, [the obviousness] analysis should be explicit."

More details after the jump.

First, the memo reaffirms the importance of the Graham factors in the obviousness analysis, and lists those four factual inquiries. Second, the memo notes that the prior TSM test was not totally rejected, and that meeting the TSM test would likely provide "helpful insight" in determining whether an invention is obvious. However, the memo notes that rigid application of the TSM test is inappropriate.

Finally, the memo states that:

in formulating a rejection under 35 U.S.C. § 103(a) based upon a combination of prior art elements, it remains necessary to identify a reason why a person of ordinary skill in the art would have combined the prior art elements in the manner claimed.

This appears to be good news from a prosecution perspective, as hopefully it will eliminate rejections based solely on "common sense" without further explanation.

Click here to read the memo.

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