Update to USPTO Guidance for Determining Obviousness

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:

• (A) Combining prior art elements according to known methods to yield predictable results;
• (B) Simple substitution of one known element for another to obtain predictable results;
• (C) Use of known technique to improve similar devices (methods, or products) in the same way;
• (D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
• (E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
• (F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art;
• (G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention.

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:

• Acknowledgement that the America Invents Act shifted the time focus of the obviousness inquiry to “before the effective filing date of the claimed invention”;
• Graham inquiries continue to control obviousness determinations, including considerations of objective evidence (“secondary considerations of the fourth factor”);
• Flexibility comes into play in terms of understanding the scope of prior art, including crediting the common sense and knowledge of one of ordinary skill in the art (a POSITA is not an automaton), determining whether art is analogous, and explaining why it would have been reasonable for one of ordinary skill in the art to combine and/or modify the asserted references; and
• A conclusion of obviousness still requires adequate analysis based on evidentiary support; conclusory opinions are insufficient.

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.).