Updated Guidance On Obviousness

The United States Patent and Trademark Office (USPTO) has released an updated guidance, dated February 27, 2024, for determining obviousness under 35 U.S.C. § 103. The updated guidance reflects over 15 years of jurisprudence following the Supreme Court's decision in K.S.R. Int'l Co. v. Teleflex Inc. (K.S.R.).

The updated guidance emphasizes the need for a flexible approach to determining obviousness and reinforces the requirement for a reasoned explanation in concluding that an invention is obvious. Drawing on Federal Circuit case law since the KSR decision, the guidance consolidates this body of appellate case law to clarify and synchronize obviousness determinations across technological centers at the USPTO.

Impact of the America Invents Act

The guidance highlights that the America Invents Act (AIA), especially its prior art provisions, has shifted the obviousness inquiry focus from "at the time the invention was made" to "before the effective filing date of the claimed invention." This change aligns with our transition from a first-to-invent system to a first-inventor-to-file system, underscoring a significant temporal shift in assessing obviousness.

Reaffirmation of the Graham Inquiries

The guidance stresses the importance of USPTO personnel using the Graham v. John Deere Co. (Graham) framework for post-KSR obviousness determinations. This framework involves evaluating:

a) the scope and content of the prior art,

b) the differences between the prior art and the claims at issue,

c) the level of ordinary skill in the art, and

d) secondary considerations that may shed light on the circumstances surrounding the invention.

This reference to Graham's framework reaffirms that obviousness rejections must be based on substantive law. Accordingly, upon receiving an obviousness rejection based upon or that references the guidance, it may be necessary to remind the Examiner of the requirement that an obvious rejection must be based on substantive law. Of course, the guidance itself is not substantive law.

Flexibility in Analyzing Obviousness

The guidance emphasizes the need for flexibility in the obviousness analysis, as mandated by KSR. This flexibility extends to (1) understanding the scope of prior art and (2) the appropriate reasons for modifying or combining prior art references. The guidance advises against a rigid or overly narrow interpretation of prior art. It advocates for a broader perspective, including reasonable inferences and creative steps that a person of ordinary skill in the art might employ.

Flexible Approach to Understanding Prior Art

In assessing the scope of the prior art component of the obviousness analysis, the guidance emphasizes "that persons having ordinary skill in the art (PHOSITA) also have common sense, which may be used to glean suggestions from the prior art that go beyond the primary purpose for which that prior art was produced." Moreover, "a proper understanding of the prior art extends to all that the art reasonably suggest, and is not limited to its articulated teachings regarding how to solve the particular technological problem with which the art was primarily concerned."

Guidance on post-KSR Federal Circuit case law underscores the importance of a flexible interpretation of prior art that takes into account the common sense and knowledge of a person having ordinary skills in the art (PHOSITA) and that prior art should be evaluated from the perspective of the PHOSITA with "ordinary creativity." The guidance also stresses that this flexibility applies to determining whether prior art is similar to the claimed invention. For instance, the guidance states that references only need to be in a similar field of work to qualify as similar art, eliminating the need for a detailed explanation of the connection between the references.

The flexibility described in the guidance for determining the scope and applicability of prior art will undoubtedly give the Examiner greater freedom in interpreting what a reference discloses and teaches. When prosecuting a patent application, it is now necessary to ask the Examiner to clearly define what is disclosed by a reference and what is being inferred. For elements claimed to be inferred from the references, it may be necessary to ask the Examiner to define the field and level of skill of the PHOSITA making these inferences.

Given this flexibility, the post-KSR case DSS Technology Management, Inc. V. Apple Inc., 885 F.3d 1367, 1375 (Fed. Cir. 2018) (DSS Technology) may provide some valuable limitations to the guidance's flexible approach based on common sense and common knowledge. In DSS Technology, the Court provided the following comments on common sense:

• Common sense is typically invoked to provide a known motivation to combine, not to supply a missing claim element,

• Common sense is usually invoked to fill in a missing limitation only when that limitation is simple and the technology particularly straightforward and

• Common sense cannot be used as a wholesale substitute for reasoned analysis and evidentiary support, especially when dealing with a limitation missing from the cited prior art.

Flexible Approach to Modifying or Combining Prior Art

The guidance defines a flexible approach for combining or modifying prior art reference components. It emphasizes that a "motivation" to modify or combine prior art references is "no longer understood in a rigid or formalistic way."

Referencing Federal Circuit case law, the guidance articulates the following permissible reasons to combine or modify prior art references: 

• market forces;

• design incentives

• the interrelated teachings of multiple patents;

• any need or problem known in the field of endeavor at the time of invention and addressed by the patent; and

• the background knowledge, creativity, and common sense of the person of ordinary skill.

Moreover, the guidance reiterates that the Federal Circuit has held that "a proposed reason to combine the teachings of prior art disclosures may be proper, even when the problem addressed by the combination might have been more advantageously addressed in another way."

In line with the guidance's flexibility theme, this is quite an expansive and adaptable list.

Need for Clearly Articulated Reasoning

The guidance underscores the necessity for clearly articulated reasoning grounded in fact when making obviousness determinations. This requirement is aimed at avoiding reliance on generic rationale or "common sense" without a proper evidentiary basis. Decisions must be supported by a thorough analysis and relevant evidence, ensuring that rejections are not based on hindsight but on a sound understanding of the art.

Again referencing post-KSR Federal Circuit case law, the guidance notes that "the mere recitation of the words' common sense' without any support adds nothing to the obviousness equation."

The guidance "reinforces the directive that Office personnel are required to clearly articulate their reasoning, grounded in relevant facts when determining that a claim would have been obvious under 35 U.S.C. 103."

Consequently, obviousness rejections that lack a clearly articulated rationale remain insufficient.

Considering All Relevant Evidence

The updated guidance stresses the importance of considering all relevant evidence correctly presented to the decision-maker regarding obviousness. This evidence may include not only the prior art but also secondary considerations or objective indicia of nonobviousness, such as commercial success, long-felt but unsolved needs, and others' failures, which must be integrated into the overall obviousness analysis.

The guidance reiterates that a decision maker "must always consider any objective evidence of nonobviousness presented in a case." Also, "newly submitted evidence in rebuttal of an obviousness rejection must not be considered merely for its knockdown value against any previously established prima facie vase."

Accordingly, secondary evidence that others failed to solve the problem addressed by the claimed invention, that the claimed solution enjoyed commercial success, or that the prior art teaches away from the claimed solution may still undermine an obviousness rejection.

The Role of Legal and Technological Expertise

Lastly, the guidance acknowledges the role of USPTO personnel's legal and technological expertise in applying the obviousness standard. It recognizes the variability across different technologies and factual situations, requiring a tailored approach to each case while adhering to the principles outlined in the guidance.

Accordingly, while the guidance emphasizes flexibility, obviousness rejections still require identifiable facts linked through articulated reasoning, leading to the conclusion of obviousness.

In conclusion, while emphasizing flexibility in the obviousness analysis, the guidance also reinforces the need for "a clear articulation of reasoning, grounded in relevant facts." A relevant portion of KSR states:

"[A] patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art. Although common sense directs one to look with care at a patent application that claims to innovate the combination of two known devices according to their established functions, it can be important to identify a reason that would have prompted a person of ordinary skill in the relevant ɦeld to combine the elements in the way the claimed new invention does This is so because inventions in most, if not all, instances rely upon building blocks long since uncovered, and claimed discoveries almost of necessity will be combinations of what, in some sense, is already known."

Accordingly, applicants should be wary of any attempt by an Examiner to rely on "common sense" without providing additional reasoning specific to the cited prior art. Moreover, the guidance emphasizes the Examiner's obligation to consider properly presented secondary consideration evidence.

How TCP Law Can Help

A patent attorney at TCP Law can help interpret an obviousness-based rejection and develop arguments and amendments that may help overcome a pending rejection. A patent attorney can also draft and file a response that addresses all rejections in a pending office action.

For assistance with prosecuting your patent application or with any other patent issue, please contact TCP Law at info@tcplawfirm.com or 917-612-1059.