Summary: The U.S. Patent & Trademark Office today issued a press release concerning long-awaited Examination Guidelines to help Examiners make appropriate decisions regarding the obviousness of claimed inventions in light of the Supreme Court’s decision in KSR International Co. v. Teleflex Inc.
Mention "KSR" and "obviousness" to patent practitioners and you'll get a wide range of responses, with some claiming the Supreme Court's decision in KSR International Co. v. Teleflex Inc., 550 U.S. __, 82 USPQ2d 1385 (2007) will lead to fewer inventions being patented, and others predicting the opinion will eventually jeopardize the validity of many previously-issued patents.
One thing most practitioners will agree upon, however, is that uniform and concrete guidance is needed from the PTO (and eventually the courts) to remove the guesswork out of predicting how the PTO and courts will deal with inventions under the KSR standard. After all, when it can cost upwards of $50,000 to $100,000 to prosecute a patent application (U.S. and internationally), inventors and their employers are understandably wary about making the investment in today's uncertain environment.
The PTO took steps today to alleviate some of that concern. Today, the PTO issued its long-awaited PTO Examination Guidelines concerning KSR, which had been tied up in the Office of Management and Budget (OMB) through much of the summer and early fall (see related post here). Below is a summary of the Guidelines.
As stated in the PTO's press release:
“The Guidelines stress that the familiar factual inquiries announced by the Supreme Court in its much earlier decision, Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), remain the basis for every decision regarding obviousness,” noted Commissioner for Patents John Doll. “That is, patent examiners will continue to consider (1) the scope and content of the prior art, (2) the differences between the claimed invention and the prior art, (3) the level of ordinary skill in the pertinent art, and (4) objective evidence relevant to the issue of obviousness.”
The Guidelines also note that patent examiners must continue to explain the reasoning that leads to a legal conclusion of obviousness when rejecting claims on that ground. The reasoning may still include the established Court of Appeals for the Federal Circuit standard that a claimed invention may be obvious if the examiner identifies a prior art teaching, suggestion, or motivation (TSM) to make it. However, in keeping with the KSR decision, the Guidelines explain that there is no requirement that patent examiners use the TSM approach in order to make a proper obviousness rejection. Furthermore, the Guidelines point out that even if the TSM approach cannot be applied to a claimed invention, that invention may still be found obvious.
To help patent examiners make obviousness rejections that are supported by appropriate facts and reasoning, the Guidelines identify a number of rationales suggested by the Supreme Court in the KSR decision. For each rationale, the Guidelines explain the underlying factual findings, and provide guidance about how to reason from the facts to the legal conclusion of obviousness. The Guidelines emphasize, however, that the identified rationales are only examples, and that any explanation of facts and reasoning based on the Graham inquiries may be used to support a rejection for obviousness."
Below is a list of the "rationale" mentioned above, each of which is explained in detail in the Guidelines:
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Combining prior art elements according to known methods to yield predictable results;
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Simple substitution of one known element for another to obtain predictable results;
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Use of known technique to improve similar devices (methods, or products) in the same way;
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Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
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‘‘Obvious to try’’—choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
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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;
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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.
The Guidelines, as noted above, emphasizes that the so-called "teaching, suggestion, and motivation" test (the last bullet) is available to Examiners, but that Examiners shouldn't rely on that test to the exclusion of one or more of the other enumerated rationale for rejecting claims set forth in KSR. That is, if the TSM test comes up negative (i.e., no prima facie case of obviousness), the Examiner shouldn't stop there because one of the other rationale may suggest that the invention is obvious despite the lack of a teaching, suggestion, or motivation to modify or combine prior art.
More on the Guidelines latter, but like the rest of you, I need to read through the Notice and sort through the document to see how it will impact my practice and the clients I work with. Between these Guidelines and the new "claims and continuation" rules effective November 1, 2007, there certainly is a lot to digest.
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