USPTO Issues Updated Obviousness Guidance Tracing 15 Years of Case Law Following KSR

On February 27, the U.S. Patent and Trademark Workplace (USPTO) printed a notice in the Federal Register offering up to date steering for company decision-makers on making correct determinations of obviousness beneath the U.S. Supreme Courtroom’s 2007 ruling in KSR International Co. V. Teleflex Inc. Whereas the USPTO’s examiner steering doesn’t represent substantive rulemaking, it traces 15 years of case legislation from the U.S. Courtroom of Appeals for the Federal Circuit to make clear a number of areas of confusion stemming from the Supreme Courtroom’s requires a versatile strategy to the obviousness evaluation for patent validity.

PHOSITA’s Widespread Sense is Essential Facet of Versatile KSR Commonplace

For the reason that Supreme Courtroom struck down the Federal Circuit’s inflexible “teaching-suggestion-motivation” take a look at in KSR, many members of the patent neighborhood have expressed concerns over the elevated subjectivity within the Supreme Courtroom’s obviousness strategy. The USPTO’s latest steering for examiners and personnel on the Patent Trial and Attraction Board (PTAB) focuses on post-KSR precedential selections of the Federal Circuit on obviousness which have “refine[d] the contours of the obviousness inquiry.” Whereas sustaining a versatile strategy, the USPTO added that these up to date pointers emphasize that examiners should present a reasoned rationalization when explaining a conclusion on obviousness to an inventor.

Briefly, the USPTO’s up to date obviousness steering notes that, resulting from passage of the America Invents Act (AIA) within the years following KSR, examiners figuring out obviousness for post-AIA patents ought to change the time focus of the inquiry to “earlier than the submitting date of the efficient invention” because the AIA amended in 35 U.S.C. § 103. The USPTO’s steering additionally acknowledged KSR’s clear reaffirmation of the Supreme Courtroom’s seminal ruling in Graham v. John Deere Co. (1965), which the USPTO’s steering known as an goal inquiry.

The USPTO’s steering finds that Federal Circuit case legislation following KSR has taken a versatile strategy not solely to understanding the scope of the prior artwork, but in addition to offering a motive to change the prior artwork. In understanding the prior artwork’s scope, the USPTO underscored that examiners should take into account the widespread sense of an individual having extraordinary ability within the artwork (PHOSITA) to acknowledge cheap inferences {that a} PHOSITA would draw from the prior artwork references. As an example, in Zup, LLC v. Nash Manufacturing (2018), the Federal Circuit discovered a motivation to mix references with out an specific educating from the prior artwork resulting from business considerations for rider security that might essentially be felt by a PHOSITA. The USPTO’s steering added that the scope of the prior artwork inquiry was associated to problems with analogous artwork, citing obviousness selections from the Federal Circuit that recall the “similar area of endeavor” and “fairly pertinent” checks in figuring out whether or not an asserted prior artwork reference is analogous to the patent claims for figuring out validity.

‘Widespread Sense’ Can not Substitute Articulated Causes and Evidentiary Assist

Whereas Federal Circuit rulings on obviousness proceed to debate the motivation of a PHOSITA to mix prior artwork references, the USPTO acknowledged that the time period “motivation” is known way more broadly following KSR. A number of motivations that would doubtlessly be felt by a PHOSITA have been outlined by the Federal Circuit in 2013’s Plantronics v. Aliph, together with market forces, design incentives, recognized issues in a area of endeavor, or the interrelated teachings of a number of patents. Different Federal Circuit circumstances have additionally established {that a} PHOSITA could also be motivated by needs to enhance on the prior artwork, and {that a} PHOSITA could also be correctly motivated to mix even when a perceived drawback may be addressed in a extra advantageous manner.

Regardless of the added flexibility of the obviousness evaluation post-KSR, the USPTO steering reminds examiners that they need to nonetheless present articulated reasoning and evidentiary help when making determinations that patent claims are invalid as apparent. The Federal Circuit has highlighted the necessity for such evaluation in circumstances like Plantronics and Arendi S.A.R.L. v. Apple (2016), which particularly famous that “references to ‘widespread sense’–whether or not to provide a motivation to mix or a lacking limitation–can’t be used as a wholesale substitute for reasoned evaluation and evidentiary help.” The USPTO added that clearly reasoned obviousness determinations serve the company’s aim of compact prosecution that allows patent examination to conclude on the earliest doable time.

The USPTO’s steering additionally reminds these workers making obviousness determinations that they’re required to think about all proof related to obviousness that’s correctly earlier than them. An essential theme within the growth of obviousness legislation following Graham and KSR is that the inquiry isn’t restricted to sure components expressly said in Graham. When a patent applicant or proprietor makes an argument on goal indicia of non-obviousness, which incorporates secondary concerns like business success or lengthy felt however unsolved want, the decision-maker isn’t free to disregard these arguments. Nonetheless, the evidentiary help for such secondary concerns can’t depend on conclusory testimony from knowledgeable witnesses because the Federal Circuit has underscored in rulings like Quanergy Systems v. Velodyne Lidar (2022).

Acknowledging that there is no such thing as a “one-size-fits-all” strategy to obviousness determinations following KSR, the discover says that company personnel should name upon each authorized and technical experience in making correct obviousness determinations. Legally correct rejections might be characterised each by findings of truth and reasoned explanations of why the claimed expertise can be apparent to a PHOSITA, the USPTO’s steering concludes.

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