The United States Patent and Trademark Office (USPTO) recently updated its guidance on the determination of obviousness, a key factor in patent prosecution that directly impacts inventors, businesses, and the broader innovation ecosystem. This new guidance revisits the flexible approach mandated by the Supreme Court’s decision in KSR Int’l Co. v. Teleflex Inc. (KSR), emphasizing the necessity for a reasoned explanation when determining whether a claimed invention should be refused a patent on the basis of obviousness. It aims to provide clarity on applying the Supreme Court’s directives by focusing on post-KSR cases from the United States Court of Appeals for the Federal Circuit.

In a more technical vein, the guidance underscores the importance of the “Graham inquiries” in controlling obviousness determinations post-KSR, reinforcing the Supreme Court’s call for flexibility in understanding the scope of prior art and providing reasons for modifying or combining prior art references to assess the obviousness of a claimed invention. This includes acknowledging the role of common sense and ordinary creativity in interpreting prior art, moving further beyond a rigid or narrow interpretation that fails to consider the broader implications and potential combinations suggested by the prior art.

Moreover, the guidance highlights the importance of articulating a clear rationale when Examiners combine references or call for modifications to prior art, ensuring that such decisions are grounded in a logical and evidentiary bases. This approach demands a detailed explanation of why a person of ordinary skill in the art would have been motivated to make the proposed modification or combination, taking into account the knowledge and creativity typical of those skilled in the field. This requirement for a well-reasoned explanation underscores the USPTO’s commitment to maintaining a high standard of patent prosecution quality by recommending that obviousness rejections are based on a thorough and thoughtful analysis of the prior art as it relates to the claimed invention.

The updated guidance can be found here: https://www.federalregister.gov/documents/2024/02/27/2024-03967/updated-guidance-for-making-a-proper-determination-of-obviousness.