March 8, 2024
Authored and Edited by Adriana L. Burgy; Stacy Lewis†
In 2007, the USPTO published “Examination Guidelines for Determining Obviousness Under 35 U.S.C. 103 in View of the Supreme Court Decision in KSR International Co. v. Teleflex Inc.”. This was updated in 2010 and now, as of Feb. 27, 2024, there is a new update. 89 Fed.Reg. 14,449 (Feb. 27, 2024).
The initial guidance included seven examples of rationales that may support a conclusion of obviousness, with case law cites. The seven are:
72 Fed.Reg. 57,526 (Oct. 10, 2007); M.P.E.P. §2143 [R-07.2022]. The 2010 update provided additional case law examples of the rationales. 75 Fed.Reg. 53,644 (Sept. 1, 2010).
The updated guidance published on Feb. 27, 2024, was issued “to provide a review of the flexible approach to determining obviousness that is required by KSR Int’l Co. v. Teleflex Inc. (KSR).” The USPTO continues to recognize that post-KSR, a flexible approach to the obviousness determination is required. Additionally, any conclusion of obviousness must be supported. A link to the updated guidance can be found here.
Highlights of the updated guidance include:
Although the updated guidance does not signal any changes in the USPTO’s approach to determining obviousness, the reminder, to the examining corps and practitioners, is welcome as citing to the guidance and the case law highlighted therein can be a valuable tool for overcoming obviousness rejections.
Note: KSR’s application in the design patent context remains to be clarified by the Federal Circuit in LKQ Corp. v. GM Global Technology Operations LLC, No. 21-2348 (Fed. Cir.).
†Stacy Lewis is a Law Clerk at Finnegan.
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