OVERCOMING AN OBVIOUSNESS REJECTION

I have already written on this topic. For example, see Obviousness Rejections Post KSR The USPTO has recently issued Examination Guidelines for Determining Obviousness for use by its examiners.

Analysis for obviousness involves (i) determining the scope and content of the prior art, (ii) ascertaining the differences between the claimed invention and the prior art; and (iii) resolving the level of ordinary skill in the pertinent art.

Objective evidence relevant to the issue must be evaluated by the examiner when presented. This evidence, i.e., “secondary considerations,” may include evidence of commercial success, long-felt but unresolved need, failure of others, and unexpected results. Note that this evidence can be included within the text of the originally filed application.

One of the more difficult tasks is to define the hypothetical person of ordinary skill in the art. The USPTO materials suggest factors that may be considered in determining the level of ordinary skill in the art may include (1) “Type of problems encountered in the art;” (2) “prior art solutions to those problems;” (3) “rapidity with which innovations are made;” (4) “sophistication of the technology;” (5) “educational level of active workers in the field.”

The Supreme Court in the KSR decision stated that the analysis supporting a rejection for obviousness be made explicit and that rejections can not be sustained mere conclusory statements but, instead, there must be an articulated reason with some rational underpinning to support the legal conclusion of obviousness.

A listing of rationales stated by the USPTO includes:

(A) Combining prior art elements according to known methods to yield predictable results;

(B) Simple substitution of one known element for another to obtain predictable results;

(C) Use of known techniques to improve similar devices, methods, or products, in the same way;

(D) Applying a known technique to a known device, method or product ready for improvement to yield predictable results;

(E) “Obvious to try” choosing from a finite number of identified, predictable solutions, with reasonable predictions of success;

(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variation would have been predictable to one of ordinary skill in the art;

(G) Some teaching, suggestion, or motivation in the prior art that would have lead one of ordinary skill to modify the prior art reference or to combine prior art references teachings to arrive at the claimed invention.

An additional aspect of the new interpretation of the law may result in the inventors or others providing declarations or oaths regarding the state of the art prior to the invention or the likelihood that a person skilled in the art would look to the patents or other materials cited by the examiner.

This is only a summary of the USPTO materials. It must be kept in mind that the Court of Appeals for the Federal Circuit will have much to say regarding how the USPTO attempts to implement the KSR ruling as well as any other rules promulgated by the Patent Office.