USPTO Issues Examination Guidelines for Obviousness
Oct. 22, 2007 - The USPTO recently issued
guidelines for examiners attempting to make obviousness determinations under the Supreme Court's recent landmark decision in
KSR Int'l Co. v. Teleflex Inc. In
KSR, the Supreme Court rejected a strict, mechanical application of the Federal Circuit's requirement of some teaching, suggestion, or motivation to combine features found in different pieces of prior art to support a finding that a claim is obvious. The PTO identified seven potential rationales for finding a claimed invention obvious:
Combining prior art elements according to known methods to yield predictable results;
Simple substitution of one known element for another to obtain predictable results;
Use of known technique to improve similar devices, methods, or products in the same way;
Applying a known technique to a known device, method, or product ready for improvement to yield predictable results;
"Obvious to try"–choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations would have been predictable to one of ordinary skill in the art;
Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference teachings to arrive at the claimed invention.
The first thing that stands out is the focus on whether the inventor obtained more advantage from a combination than would be predicted based on the prior art. This is not surprising as predictability was a recurring theme in the Supreme Court's decision. The focus on predictability probably will lead to a resurgence in the importance of secondary considerations to rebut findings of obviousness rather than merely challenging the sufficiency of the examiner's prima facie case of obviousness or alleging a lack of any teaching, suggestion, or motivation to make a claimed combination.
Rationale six is potentially disturbing as it invites an examiner to use prior art references from different fields to support a finding of obviousness without any real guidance on when that is or is not appropriate. It is a long-standing principle that prior art from fields outside the inventor's field of endeavor generally is not relevant to obviousness.
Copyright © 2007 Scott R. Cleere
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