As briefly discussed in my recent article titled Obviousness & USPTO Guidance (click here), a couple of issues relating to prior art have been making news lately. The two prior art topics I’m referring to are (i) the analogous prior art test and (ii) the scope of permissible motivations to combine prior art references. In addition to the recent Guidance, an even more recent decision by the Court of Appeals for the Federal Circuit (CAFC) addresses how these prior art considerations impact obviousness determinations made in U.S. patents and patent applications. So, if obviousness is an issue with one of your issued patents, one of your pending patent applications, or one of your recently-conceived inventions – and I’m guessing that it is - then you may want to continue reading.

On February 27, 2024, the United States Patent and Trademark Office (USPTO) published another formal Guidance aimed at clarifying the determination of obviousness (or nonobviousness) for claimed inventions recited in patent applications. The Guidance focuses on the case law from the past fifteen (15) years in order to assist Examiners at the USPTO in making obviousness decisions in pending and future patent applications. Below is a summary of the highlights from the Guidance.