Thursday, September 02, 2010

USPTO Issues Updated KSR Guidelines on Obviousness

The USPTO recently published a 15-page notice updating the 2007 KSR Guidelines.  The update reviews all of the most relevant Federal Circuit caselaw (over 20 cases) dealing with obviousness since KSR, and distills the rulings down to a reader-friendly format that concludes each case with a handy "teaching point."

In a nutshell, the update covers (1) principles of obviousness, (2) the impact of the KSR decision, (3) obviousness examples from Federal Circuit cases, which includes

  • Combining prior art elements
  • Substituting one known element for another, and
  • The "obvious to try" rationale
Finally, the update includes Federal Circuit cases discussing consideration of evidence in cases of obviousness.

The USPTO is also seeking comments from the public, and is "especially interested in receiving suggestions of recent decisional law in the field of obviousness that would have particular value as teaching tools." Comments concerning the 2010 KSR Guidelines Update may be sent by email to

The 2010 update is a fantastic teaching tool, and should be read by every practitioner.  Some highlights from the update:

The Principles of Obviousness:
It is important for Office personnel to recognize that when they do choose to formulate an obviousness rejection using one of the rationales suggested by the Supreme Court in KSR and discussed in the 2007 KSR Guidelines, they are to adhere to the instructions provided in the MPEP regarding the necessary factual findings.

[I]t remains Office policy that appropriate factual findings are required in order to apply the enumerated rationales properly. If a rejection has been made that omits one of the required factual findings, and in response to the rejection a practitioner or inventor points out the omission, Office personnel must either withdraw the rejection, or repeat the rejection including all required factual findings.
The Impact of KSR:
Office personnel as well as practitioners should also recognize the significant extent to which the obviousness inquiry has remained constant in the aftermath of KSR.

[W]hen considering obviousness, Office personnel are cautioned against treating any line of reasoning as a per se rule . . . for example, automating a manual activity, making portable, making separable, reversal or duplication of parts, or purifying an old product may form the basis of a rejection. However, such rationales should not be treated as per se rules, but rather must be explained and shown to apply to the facts at hand. A similar caveat applies to any obviousness analysis. Simply stating the principle (e.g., ‘‘art recognized equivalent,’’ ‘‘structural similarity’’) without providing an explanation of its applicability to the facts of the case at hand is generally not sufficient to establish a prima facie case of obviousness.
Combining Prior Art Elements:
Even where a general method that could have been applied to make the claimed product was known and within the level of skill of the ordinary artisan, the claim may nevertheless be nonobvious if the problem which had suggested use of the method had been previously unknown. [In re Omeprazole Patent Litigation, 536 F.3d 1361 (Fed. Cir. 2008)]

Office personnel should note that in this case the modification of the prior art that had been presented as an argument for obviousness was an extra process step that added an additional component to a known, successfully marketed formulation. The proposed modification thus amounted to extra work and greater expense for no apparent reason. This is not the same as combining known prior art elements A and B when each would have been expected to contribute its own known properties to the final product.

[M]erely pointing to the presence of all claim elements in the prior art is not a complete statement of a rejection for obviousness. In accordance with MPEP § 2143 A(3), a proper rejection based on the rationale that the claimed invention is a combination of prior art elements also includes a finding that results flowing from the combination would have been predictable to a person of ordinary skill in the art. MPEP § 2143 A(3). If results would not have been predictable, Office personnel should not enter an obviousness rejection using the combination of prior art elements rationale, and should withdraw such a rejection if it has been made.
Substituting One Known Element for Another:

[I]f the reference does not teach that a combination is undesirable, then it cannot be said to teach away. An assessment of whether a combination would render the device inoperable must not ‘‘ignore the modifications that one skilled in the art would make to a device borrowed from the prior art.’’
"Obvious to Try":
Some commentators on the KSR decision have expressed a concern that because inventive activities are always carried out in the context of what has come before and not in a vacuum, few inventions will survive scrutiny under an obvious to try standard. The cases decided since KSR have proved this fear to have been unfounded. Courts appear to be applying the KSR requirement for ‘‘a finite number of identified predictable solutions’’ in a manner that places particular emphasis on predictability and the reasonable expectations of those of ordinary skill in the art.

[T]he Federal Circuit cautioned that an obviousness inquiry based on an obvious to try rationale must always be undertaken in the context of the subject matter in question, ‘‘including the characteristics of the science or technology, its state of advance, the nature of the known choices, the specificity or generality of the prior art, and the predictability of results in the area of interest.’’

Read/download the USPTO's 2010 KSR Updates here (link)

Read/download the original 2007 KSR guidelines here (link)

Visit the USPTO KSR Examination Training Materials site here (link)

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