The United States Patent and Trademark Office has provided an update to its Examination Guidelines concerning the law of obviousness under 35 U.S.C. 103 in light of precedential decisions from the United States Court of Appeals for the Federal Circuit issued since the 2007 decision by the United States Supreme Court in KSR Int’l Co. v. Teleflex Inc. The Updated KSR Examination Guidelines were published today in the Federal Register, and in response to the requests of many stakeholders the USPTO has included additional examples to help elucidate the ever-evolving law of obviousness. These guidelines are intended primarily to be used by Office personnel in conjunction with the guidance in the Manual of Patent Examining Procedure. The effective date of the these new Guidelines is September 1, 2010, but members of the public are invited to provide comments on the 2010 KSR Guidelines Update. The Office is especially interested in receiving suggestions of recent decisional law in the field of obviousness that would have particular value as teaching tools.
The Examination Guidelines Update correctly explains that every question of obviousness must be decided on its own facts, thus it is the intent of the Office to “clarify the contours of the obviousness inquiry after KSR, and help to show when a rejection on this basis is proper and when it is not.” The 2010 KSR Guidelines Update provides a ‘‘teaching point’’ for each case discussed, and there is a table listing many of the cases and their teaching points, which can be found on the last two pages of the roughly 17 page Federal Register Notice. Perhaps this table was intended to be all inclusive, but I do not see, for example, Ball Aerosol v. Limited Brands, 555 F.3d 984 (Fed. Cir. 2009) in the table.
According to the Federal Register Notice, the ‘‘teaching point’’ provided is intended to be used to quickly determine the relevance of the discussed case. What most average lay people would call lawyer weasel words, but which attorneys would call a disclaimer is present and explains that the teaching points “should not be used as a substitute for reading the remainder of the discussion of the case in this 2010 KSR Guidelines Update. Nor should any case in this 2010 KSR Guidelines Update be applied or cited in an Office action solely on the basis of what is stated in the ‘teaching point’ for the case.” Right! Like that is going to happen. Of course the teaching points will be cited in responses to Office Actions, and they should be cited. After all, the guidance provided to the examining corps needs to coincide with what is published in the Federal Register. So while I understand what the USPTO is saying and why they would include such a disclaimer, the reality is that attorneys and agents should certainly read this 2010 KSR Guidelines Update and should start to weave the teaching points into responses.
“Now that a body of post-KSR case law is available to guide office personnel and practitioners as to the boundaries between obviousness and nonobviousness, this update can be used to compare and contrast situations in which claimed subject matter was found to have been obvious with those cases in which it was determined not to have been obvious,” said Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos. “This update will be helpful to USPTO patent examiners, inventors and the patent bar because it reviews several cases from the Federal Circuit that have involved the application of the law of obviousness since the KSR case was decided by the Supreme Court.”
Indeed, the 2010 KSR Guidelines Update does contain helpful information. One particularly worthwhile paragraph to make note of is the following:
Many basic approaches that a practitioner may use to demonstrate nonobviousness also continue to apply in the post-KSR era. Since it is now clear that a strict TSM approach is not the only way to establish a prima facie case of obviousness, it is true that practitioners have been required to shift the emphasis of their nonobviousness arguments to a certain degree. However, familiar lines of argument still apply, including teaching away from the claimed invention by the prior art, lack of a reasonable expectation of success, and unexpected results. Indeed, they may have even taken on added importance in view of the recognition in KSR of a variety of possible rationales.
Another helpful, albeit general, paragraph that is likely particularly noteworthy is the following explanation of Ball Aerosol:
The Federal Circuit’s directive in Ball Aerosol was addressed to a lower court, but it applies to Office personnel as well. When setting forth a rejection, Office personnel are to continue to make appropriate findings of fact as explained in MPEP §§2141 and 2143, and must provide a reasoned explanation as to why the invention as claimed would have been obvious to a person of ordinary skill in the art at the time of the invention. This requirement for explanation remains even in situations in which Office personnel may properly rely on intangible realities such as common sense and ordinary ingenuity.
So naked, conclusory statements that a combination would be common sense is not considered appropriate. Support must be forthcoming for why one of ordinary skill in the art would view the combination as commonsensical.
In terms of specifics, the Guidelines tackle the question of when a seemingly otherwise obvious combination does not support an obviousness rejection. The Guidelines explain:
In view of the cases decided since KSR one situation when it is important to identify a reason to combine known elements in a known manner to obtain predictable results is when the combination requires a greater expenditure of time, effort, or resources than the prior art teachings. Even though the components are known, the combining step is technically feasible, and the result is predictable, the claimed invention may nevertheless be nonobvious when the combining step involves such additional effort that no one of ordinary skill would have undertaken it without a recognized reason to do so. When a combination invention involves additional complexity as compared with the prior art, the invention may be nonobvious unless an examiner can articulate a reason for including the added features or steps. This is so even when the claimed invention could have been readily implemented.
Perhaps the most thorny of all issues created by the Supreme Court’s KSR decision is the fact that “obvious to try” is now capable, at least in some circumstances, of leading to a valid obviousness rejection. The 2010 Updated Guidelines explain:
Supreme Court’s instruction, that this rationale is only appropriate when there is a recognized problem or need in the art; there are a finite number of identified, predictable solutions to the recognized need or problem; and one of ordinary skill in the art could have pursued these known potential solutions with a reasonable expectation of success… 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.
The Updated Guidelines go through a number of cases, but the take away instructions for Office personnel can perhaps best be summarized in Example 4.18, which discusses Sanofi-Synthelabo v. Apotex, Inc., 550 F.3d 1075 (Fed. Cir. 2008), saying:
Office personnel should recognize that even when only a small number of possible choices exist, the obvious to try line of reasoning is not appropriate when, upon consideration of all of the evidence, the outcome would not have been reasonably predictable and the inventor would not have had a reasonable expectation of success.
Admittedly, this is just largely rehashing what is said about obvious to try previously, with more of the same following, but what can really be said? The Supreme Court opened a can of worms that they could never have envisioned by so carelessly allowing “obvious to try” to be an avenue for demonstrating a claim is obvious. So until such time as the Federal Circuit overrules the Supreme Court obvious to try will remain a thorn in the side of the USPTO, patent attorneys and innovators, requiring a case-by-case approach that integrates the latest examples to provide an understanding of the irrational.
Finally, the Federal Register Notice explains that consideration of rebuttal evidence and evidence of secondary considerations has not changes from the pre-KSR obviousness law, citing several examples from cases in the Notice. Specifically pointed out is that “Office personnel should consider all rebuttal evidence that is timely presented by the applicants when reevaluating any obviousness determination.” In fact, upon the submission of rebuttal evidence or evidence of secondary consideration patent examiners must reweigh all evidence on the record to determine based on the totality whether the claims in question are nonobvious.
All in all the 2010 KSR Guideline Updates seem to be extremely helpful in digesting three and one-half years of case law development and further providing insight into how the USPTO will interpret and apply important Federal Circuit rulings in making an obviousness determination.
Members of the public are invited to provide comments on the updated guidelines. The USPTO is especially interested in receiving additional suggestions in the field of obviousness that would have particular value as teaching tools.