Examination Guidelines for Determining Obviousness in View of KSR.
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.