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USPTO Issues Updated Guidance Highlighting the Requirement for a Flexible Approach to the Obviousness Determination

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On February 27, 2024, the USPTO issued its Updated Guidance for Making a Proper Determination of Obviousness in the Federal Register.1 While the guidance does not constitute substantive rulemaking, its goal is to provide guidance for USPTO personnel when making obviousness determinations. The guidance focuses on the flexible approach to determining obviousness that is required by KSR Int'l Co. v. Teleflex Inc. (KSR) and post-KSR Federal Circuit precedent. 

At first glance, the guidance appears to be merely parroting the existing law and approach to determining obviousness. However, the generalized flexibility reiterated throughout the guidance has the potential to raise the bar for applicants for nonobviousness during prosecution. In contrast, the need for articulated reasoning and evidentiary support could increase the burden on Office personnel handing down these rejections.

I. Overview of the Updated Guidance
The updated guidance begins with a few housekeeping matters. First, the guidance reiterates that the approach to the obviousness inquiry for USPTO personnel can be found in the Supreme Court’s decision in KSR. Next, the guidance clarifies that since the Supreme Court decided KSR before the passage of the America Invents Act, the time frame for the obviousness inquiry should shift to keep in line with the first-inventor-to-file approach. Thus, the relevant time frame shifts from the “time the invention was made” to “before the effective filing date of the claimed invention.”2 Finally, the updated guidance reiterates that the Supreme Court’s decision in KSR affirmed that the Graham factors continue to define the obviousness inquiry. Therefore, the guidance instructs USPTO personnel to follow the flexible approach that is required under KSR while “continu[ing] to ground obviousness determination[s] in the objective inquires announced in Graham.” 

Besides these initial housekeeping matters, the rest of the updated guidance is devoted to reiterating and expanding upon the flexible approach to obviousness mandated by KSR and post-KSR Federal Circuit decisions. The guidance states that there are at least two aspects of flexibility: First, flexibility regarding understanding the scope of the prior art, and second, flexibility regarding the reasoning to modify prior art. However, this flexible approach is constrained by the requirement that decision-makers must provide articulated reasoning, grounded in fact, when making a determination that a claim would have been obvious.

Interestingly, the guidance concludes with a footnote that the notice “does not address the impact, if any, of artificial intelligence on the obviousness inquiry.”4 The Office “seek[s] input from the public . . . and will issue additional notices.”5  

II. A Flexible Approach to Obviousness
The guidance credits the flexible approach in KSR to the frequently quoted sentence, “[A] person of ordinary skill is also a person of ordinary creativity, not an automaton.”6 Although a flexible approach can be considered subjective, the guidance importantly advises USPTO personnel of the importance of clearly articulated reasoning grounded in relevant facts in their obviousness rejection.   

Scope of the Prior Art: The guidance states that Federal Circuit case law since KSR suggests that the approach to understanding prior art, including combinations of the prior art, must credit “the common sense and common knowledge of a PHOSITA.”7 Thus, even if the prior art lacks a specific teaching, that will not be enough to overcome an obviousness rejection when, by way of common sense or common knowledge, “the allegedly missing teaching would have been understood by a PHOSITA.”8  

Reason to Modify the Prior Art: The guidance continues, explaining the Office personnel “may use any clearly articulated line of reasoning that would have allowed a PHOSITA to draw the conclusion that a claimed invention would have been obvious in view of the facts.”9 The reasonings may include “market forces; design incentives; the `interrelated teachings of multiple patents'; `any need or problem known in the field of endeavor at the time of invention and addressed by the patent'; and the background knowledge, creativity, and common sense of the person of ordinary skill.”10  

Need for Articulated Reasoning and Evidentiary Support: The flexible approach to the obviousness inquiry is framed within the context of the need for articulated reasoning and evidentiary support. The guidance places this burden squarely on the decision-maker’s shoulders. Notably, the decision-maker must consider all relevant evidence that is properly before them and is not “free to ignore” secondary factors that have been made an issue in the case. Office personnel must “reweigh all evidence” at each stage of USPTO proceedings. The guidance highlights the importance of evidence submitted to rebut a determination of obviousness and emphasizes that this evidence “must not be considered merely for its knockdown value.”11 In fact, the guidance reiterates case law that states that such evidence “may often be the most probative and cogent evidence of nonobviousness in the record.”12  

After considering all evidence, Office personnel “must use reasoning in accordance with Graham and KSR to determine whether a claimed invention would have been obvious.”13 The guidance articulates that while “there is no one-size-fits-all approach to crafting an obviousness rejection,” Office personnel must explain how they have reached the legal conclusion of obviousness on the record.14  

III. Key Takeaways for Patent Practitioners 
Given that obviousness is already the most common rejection, it will be interesting to see this guidance’s impact on that statistic. In the meantime, there are strategies patent practitioners may use when faced with obviousness rejections. 

Clear Reasoning: Given the guidance’s emphasis on facts and reasoned explanations regarding obviousness determinations, providing complete reasoning with clear support for your arguments throughout prosecution is essential.

Secondary Considerations: The guidance explains that “attorney arguments alone cannot take the place of such evidence in the record where the evidence is necessary.”15 Patent practitioners may consider using expert declarations or affidavits during the patent examination process to present objective evidence of nonobviousness. However, the guidance warns that expert opinions must be accompanied by complete and specific factual support. 


[1] Updated Guidance for Making a Proper Determination of Obviousness, 89 FR 14449 (Feb. 27, 2024).
[2] Id. at 14450.
[3] Id.
[4] Id. n. 1.
[4] Id.
[6] KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421.
[7] Supra note 1, at 14450
[8] Id.
[9] Id. at 14452.
[10] Plantronics, Inc. v. Aliph, Inc., 724 F.3d 1343, 1354 (Fed. Cir. 2013).
[11] Supra note 1, at 14453.
[12] Ortho-McNeil Pharm., Inc. v. Mylan Labs., Inc., 520 F.3d 1358, 1365, quoting Catalina Lighting, Inc. v. Lamps Plus, Inc., 295 F.3d 1277, 1288 (Fed. Cir. 2002).
[13] Supra note 1, at 14453.
[14] Id. 
[15] Id.

 

 

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