(September 8, 2010) On September 1, 2010, the U.S. Patent and Trademark Office (“PTO”) published a notice of its Examination Guidelines Update: Developments in the Obviousness Inquiry After KSR v.Teleflex, 75 Fed. Reg. 53643 (Sept. 1, 2010) (“Guidelines”). The new Guidelines became effective September 1, 2010, and the PTO has invited interested members of the public to comment on the Guidelines by sending an e-mail to [email protected] or by regular mail. The new Guidelines seek to incorporate developments in the case law on obviousness since the issuance of the Supreme Court’s decision in KSR v. Teleflex, 550 U.S. 398 (2007).
The Guidelines recognize seven rationales supporting a claim of obviousness as derived from the Supreme Court’s Decision in KSR:
Regardless of which rationale an Examiner decides to apply, the Guidelines emphasize that “[a]ny rationale employed must provide a link between the factual findings and the legal conclusion of obviousness.” Thus, the Guidelines state:
The Guidelines continue to require the examiner to provide an explicit rationale and a “reasoned explanation” to support a purported combination as part of a prima facie case of obviousness. Indeed, the Guidelines emphasize, “[t]his requirement for explanation remains even in situations in which Office personnel may properly rely on intangible realities such as common sense and ordinary ingenuity.”
The Guidelines reinforce that “familiar lines of arguments” against prima facie cases of obviousness still apply, including:
The Guidelines include a chart that discusses cases that apply the “combining prior art elements”, “substituting one known element for another”, “obvious to try”, and “consideration of evidence” rationales, and the “teaching points” of each case.
You can find additional publications on the law of obviousness on our firm website at www.arelaw.com, or contact one of our attorneys to discuss your particular issues.
Mr. Macedo is a Partner at Amster, Rothstein & Ebenstein LLP and author of The Corporate Insider’s Guide to U.S. Patent Practice, published by Oxford University Press. Mr. Macedo’s practice specializes on intellectual property issues including litigating patent, trademark and other intellectual property disputes, prosecuting patents before the U.S. Patent and Trademark Office and other patent offices throughout the world, registering trademarks and service marks with the U.S. Patent and Trademark Office and other trademark offices throughout the world, and drafting and negotiating intellectual property agreements. He may be reached at [email protected].
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