A Flexible Approach To Obviousness

Inventing a new product is the first step in establishing a market monopoly. To fully corner the market, your product needs to be protected with intellectual property. Patents are particularly useful for protecting your inventions. However, your invention must meet several criteria, one of which is non-obviousness under  35 U.S.C. § 103 .

The US patent and trademark office recently set forth updated guidance on determining the obviousness of patent claims. The guidance may be helpful not only for patent examiners but also for patent attorneys and applicants. Find the link here.

The previous version of the guidance   was set forth in view of the Supreme Court decision KSR International Co. v. Teleflex Inc.   The KSR decision emphasized several factors that can be used to reject a patent claim for obviousness.  Some of those factors are combining existing components in a known way to get predictable results, using a known technique to improve similar devices, and applying a known method to an existing device. A common theme among the KSR factors is that modifications that only yield predictable results are obvious.

The updated guidance focuses on providing examiners with a flexible approach in making obviousness rejections.  It also reaffirmed the relevance of the obviousness factors in Graham v. John Deere Co . Thus, the patent examiner should define the content and scope of the prior art, establish contrasts between the prior art and the claims at issue, and determine the level of ordinary skill in the pertinent art, all of which are essential for a thorough patent application review by an intellectual property attorney .

The guidance also states that examiners must consider all evidence relevant to determining obviousness and ensure that they provide factual evidence. In other words, examiners must provide sound and objective reasoning to support their conclusion.  Applicants would do well to remind examiners when a rejection lacks a clear articulation of the examiner’s reason for the rejection and evidentiary support thereof. 

The guidance aims to foster clear communication between examiners and applicants during the examination process.  Although the Guidance encourages flexibility as introduced by cases such as KSR, examiners must perform an objective analysis of prior art, ascertain differences between the claims and the prior art, and consider the level of ordinary skill in the art which is fundamental to the determination of obviousness. Applicants should familiarize themselves with the new guidance to help them successfully prosecute patent applications efficiently. 

For expert guidance on patent prosecution and protecting your inventions, contact Milano IP today.