Anticipate This!™ | Patent and Trademark Law Blog

Examination Guidelines for Determining Obviousness in View of KSR.

Posted in Practice Commentary by Jake Ward on October 11, 2007

The USPTO published examination guidelines yesterday for determining obviousness under 35 U.S.C. 103, in view of the Supreme Court decision in KSR International Co. v. Teleflex Inc.  The guidelines are effective immediately.

Among the rationales articulated in the guidelines is the new “Obvious To Try” rationale, also known as “Choosing From a Finite Number of Identified, Predictable Solutions, With a Reasonable Expectation of Success.”  As set forth in the guidelines, a conclusion of obviousness may be supported by a showing that a person of ordinary skill had good reason to pursue the known options within his or her technical grasp.  If the options lead to the anticipated success, the invention is likely the product not of innovation but of ordinary skill and common sense.  Thus, an allegation that an invention was obvious to try might now be sufficient for an Examiner to support a rejection on obviousness under 35 U.S.C.103.

Thoughts and comments welcomed.    

One Response

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  1. Interested observer said, on June 2, 2015 at 2:56 pm

    The day KSR came out and its contents became known to me. That was many years ago. What was immediately “obvious” was that the supremes had just sanctioned the application of hindsight as an acceptable tool to invalidate issued and pending claims. Well, here it is, June of 2015, many years later. I was right, for chemical and drug patents at least. And, now that the mysterious, undefined “inventive concept” thingie, whatever it is, is part of the now metaphysical/religious section 101, it will be a hoot to see applications or patents fall due to a failure to meet the statutory requirements of section 101 based on hindsight. What will the supremes think of next? Injecting section 102 and/or 112 requirements into section 101 and/or 103 and/or vice versa? This is getting really interesting.

    Shoot, why not just mush all the key section requirements into each other and make some new stuff up along the way, e.g., requiring undefined “at least semi-hard” novelty (whatever that is, maybe something infused with some counterintuitive inherency mumbo jumbo) for section 112? That ought to keep the attorneys and courts busy for a while.

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