KSR Training Continues at the USPTO

Since the release of the post-KSR memo from the USPTO, the Office has started training examiners on post-KSR obviousness, and has submitted a final draft to the OMB for final review (link).

While the final draft has not been release yet, a draft summary has been working its way through the blogosphere. While the draft copy has not been 100% verified, internal USPTO contacts note that the alleged Summary is "consistent" with information being provided during the current training of PTO personnel.

The proposed guidelines, if followed, appear to place more responsibility on the Examiner to explain the reasons for combining references:

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 Summary also provides exemplary rationales for finding obviousness, which include:

A. 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.

B. 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.

C. 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.

The rationale to support a conclusion that the claim would have been obvious is that a method of enhancing a particular class of devices (methods, or products) was made part of the ordinary capabilities of
one skilled in the art based upon the teaching of such improvement in other situations. One of ordinary skill in the art would have been capable of applying this known method of enhancement to a "base" device (method, or product) in the prior art and the results would have
been predictable to one of ordinary skill in the art. The Supreme Court in KSR noted that "if the actual application of the technique would have been beyond the skill of one of ordinary skill in the art, then using the technique would not have been obvious." 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.

D. Applying a known technique to a known device ready for improvement to yield predictable results (see III.D. of the guidelines);

E. "Obvious to try" - choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success (see III.E. of the guidelines);

F. 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 prior art reference teachings to arrive at the claimed invention. 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 there was some teaching, suggestion, or motivation, either in the references themselves or in the knowledge generally available to one of ordinary skill in the art, to modify the reference or to
combine reference teachings;

(2) a finding that there was reasonable expectation of success; and

(3) 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 most problematic portion of the guidelines involves the statement that the claim may be "seen" by the examiner as an "improvement" over existing devices or methods - which arguably applies to most patent applications. Examiners have apparently been availing themselves of this technique in recent rejections.

Download the document here (link).

For additional comments on the PTO document, see the Patent Prospector's post here (link).