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Updated Guidelines on What Is “Obvious” Reflect an Updated PTO

Bruce D. Sunstein

Bruce D. Sunstein | Founder, Partner View more articles

Bruce is a member of our Litigation Practice Group, Patent Practice Group, Trademark Practice Group and Business Practice Group

On September 1, the United States Patent and Trademark Office issued updated guidelines for use by patent examiners in determining when the subject matter claimed in a patent application should be rejected for being obvious.

The updated guidelines differ from the original guidelines, issued in 2007 in one major respect: They acknowledge that not all inventions are obvious. The original guidelines, occupying nine densely worded pages of the Federal Register, discuss not a single example of an invention that surmounts the obviousness hurdle.

The updated guidelines, issued under the new, more patent-friendly regime of David Kappos, who has been Director of the PTO since August 2009, are more balanced. Of the substantive examples dealing with obviousness determinations, nine reflect a finding of obviousness and ten reflect a finding of nonobviousness.

The original guidelines were triggered by the decision of the Supreme Court in KSR v. Teleflex, which, as we reported in 2007, made it easier to reject patent applications and to invalidate issued patents for obviousness. The updated guidelines reflect developments in the law since KSR v. Teleflex.

The rationale, articulated in both sets of guidelines, for rejection of inventions as obvious largely depends on the predictability of technology in the prior art related to the invention. The guidelines make clear that showing unexpected results associated with the invention can be an effective way of overcoming an obviousness rejection. But it is not the only way.

Patent practitioners in our office have found that, even before embarking on the effort of showing unexpected results to overcome an obviousness rejection, one should first assess whether an examiner’s rejection properly stacks up as a matter of form. A patent application defines the invention by a series of claims. A proper obviousness rejection by the PTO must address each part of each claim and show how each part can be found in the prior art.

Often a rigorous evaluation of a claim rejection will show that the examiner has failed to address one or more parts of the claim in making the rejection. Sometimes the failure comes simply from overlooking one or more words in the claim; sometimes the failure comes from a misunderstanding of a prior art reference cited in making the rejection; and sometimes the failure comes from insufficient appreciation of the invention defined by the claim.

A powerful response can be fashioned by calling out such a failure, but it will gain traction only when received by an office willing to listen. The updated guidelines reveal a PTO more willing to heed arguments that an invention claimed in a patent application has been wrongly deemed obvious. That is good news for inventors and for innovation.

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