Obviousness & USPTO Guidance
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[i] 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.
Direction from the USPTO
Graham v. John Deere Co. Still Relevant
Even though the Supreme Court of the United States (SCOTUS) decided Graham v. John Deere Co.[ii] nearly sixty (60) years ago, the three factors set forth in the decision - (1) the scope and content of the prior art, (2) the differences between the prior art and the claimed invention, and (3) the level of ordinary skill in the pertinent art – continue to be controlling.
The Race Against the Clock to File
A New Frame of Time
The Guidance clarifies that the critical timeframe for obviousness determinations now concludes with the effective filing date of the claimed invention under the first-to-file patent system implemented by the America Invents Act in 2011.
Flexibility Stressed . . .
At the outset of the Guidance, the USPTO states that the approach to obviousness determinations should continue to be flexible as demonstrated by the case law of the past fifteen (15) years since the KSR decision. According to the Guidance, “This updated guidance serves as a reminder for USPTO personnel of the flexible approach to obviousness that is required under KSR and Federal Circuit precedent.
Flexible Approach Favored by USPTO Guidance
The flexible approach emphasized by the Guidance includes flexibility in the application of the two-step analogous prior art test[iii] and permissible motivations that a PHOSITA may have to combine prior art.[iv]
. . . But Objective Factors Still Matter
In contrast to the emphasis on flexibility, the Guidance reiterates that the objective indicia or “secondary considerations” set forth in Graham are still important. In fact, the Guidance notes that sometimes these objective factors are at times the most important considerations in the obviousness analysis. Among the relevant “secondary considerations” of obviousness (or more accurately, nonobviousness) are commercial success, long-felt but unmet need, failure of others, industry praise, unexpected results, and copying.
What About “Common Sense” and “Ordinary Creativity”
The Guidance also recognizes that the KSR Court instructed the Federal Circuit that persons having ordinary skill in the art (PHOSITAs) also have “common sense,” which may be used to glean suggestions from the prior art that go beyond the primary purpose for which that prior art was produced. The Guidance also states that consistent with KSR and subsequent Federal Circuit case law, when evaluating the prior art from the perspective of a PHOSITA, Examiners must take that person’s “ordinary creativity” into account. A PHOSITA is a person of ordinary creativity, not an automation. Importantly, the Guidance referred to “common sense” and “ordinary creativity” in the context of only a PHOSITA, not an Examiner at the USPTO.
Objective Evidence!
The Bottom Line - Evidence is Required
In the end, notwithstanding the Guidance’s emphasis on a generally flexible approach to obviousness determinations and its recognition of amorphous concepts like “common sense” and “ordinary creativity,” when it comes to determining the obviousness (or nonobviousness) of a claimed invention, the proof remains in the evidentiary pudding. The Guidance makes it clear that the obviousness determination continues to be one that must have its basis in an evidentiary underpinning, even when it comes to the so-called “common sense” and “ordinary creativity” findings. The Guidance expressly states that obviousness rejections must be supported by “a clear articulation of reasoning, grounded in relevant facts.” Neither flexibility, nor “common sense,” nor “ordinary creativity,” either individually or collectively, is a sufficient substitute for reasoned analysis or evidentiary support.
If you have any questions about how the latest Guidance from the USPTO on obviousness impacts your current or anticipated patent matters, please contact Paul at paul@brightwiselaw.com.
[i] In 2007, the Supreme Court of the United States decided KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007), declaring, inter alia, that a flexible approach to obviousness determinations is required.
[ii] Graham v. John Deere Co., 383 U.S. 1 (1966).
[iii] For a more detailed discussion of the analogous prior art test, see our other articles posted on this Blog page.
[iv] The Guidance specifically notes the following permissible motivations: 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.
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