USPTO Issues Updated Obviousness Guidance Tracing 15 Years of Case Law Following KSR

“An important theme in the development of obviousness law following Graham and KSR is that the inquiry is not limited to certain factors expressly stated in Graham.”

obviousnessOn February 27, the U.S. Patent and Trademark Office (USPTO) published a notice in the Federal Register providing updated guidance for agency decision-makers on making proper determinations of obviousness under the U.S. Supreme Court’s 2007 ruling in KSR International Co. V. Teleflex Inc. While the USPTO’s examiner guidance doesn’t constitute substantive rulemaking, it traces 15 years of case law from the U.S. Court of Appeals for the Federal Circuit to clarify several areas of confusion stemming from the Supreme Court’s calls for a flexible approach to the obviousness analysis for patent validity.

PHOSITA’s Common Sense is Important Aspect of Flexible KSR Standard

Since the Supreme Court struck down the Federal Circuit’s rigid “teaching-suggestion-motivation” test in KSR, many members of the patent community have expressed concerns over the increased subjectivity in the Supreme Court’s obviousness approach. The USPTO’s recent guidance for examiners and personnel at the Patent Trial and Appeal Board (PTAB) focuses on post-KSR precedential decisions of the Federal Circuit on obviousness that have “refine[d] the contours of the obviousness inquiry.” While maintaining a flexible approach, the USPTO added that these updated guidelines emphasize that examiners must provide a reasoned explanation when explaining a conclusion on obviousness to an inventor.

Briefly, the USPTO’s updated obviousness guidance notes that, due to passage of the America Invents Act (AIA) in the years following KSR, examiners determining obviousness for post-AIA patents should change the time focus of the inquiry to “before the filing date of the effective invention” as the AIA amended in 35 U.S.C. § 103. The USPTO’s guidance also acknowledged KSR’s clear reaffirmation of the Supreme Court’s seminal ruling in Graham v. John Deere Co. (1965), which the USPTO’s guidance referred to as an objective inquiry.

The USPTO’s guidance finds that Federal Circuit case law following KSR has taken a flexible approach not only to understanding the scope of the prior art, but also to providing a reason to modify the prior art. In understanding the prior art’s scope, the USPTO underscored that examiners must consider the common sense of a person having ordinary skill in the art (PHOSITA) to recognize reasonable inferences that a PHOSITA would draw from the prior art references. For instance, in Zup, LLC v. Nash Manufacturing (2018), the Federal Circuit found a motivation to combine references without an express teaching from the prior art due to industry concerns for rider safety that would necessarily be felt by a PHOSITA. The USPTO’s guidance added that the scope of the prior art inquiry was related to issues of analogous art, citing obviousness decisions from the Federal Circuit that recall the “same field of endeavor” and “reasonably pertinent” tests in determining whether an asserted prior art reference is analogous to the patent claims for determining validity.

‘Common Sense’ Cannot Replace Articulated Reasons and Evidentiary Support

While Federal Circuit rulings on obviousness continue to discuss the motivation of a PHOSITA to combine prior art references, the USPTO recognized that the term “motivation” is understood much more broadly following KSR. Several motivations that could potentially be felt by a PHOSITA were outlined by the Federal Circuit in 2013’s Plantronics v. Aliph, including market forces, design incentives, known problems in a field of endeavor, or the interrelated teachings of multiple patents. Other Federal Circuit cases have also established that a PHOSITA may be motivated by desires to improve on the prior art, and that a PHOSITA may be properly motivated to combine even when a perceived problem can be addressed in a more advantageous way.

Despite the added flexibility of the obviousness analysis post-KSR, the USPTO guidance reminds examiners that they must still provide articulated reasoning and evidentiary support when making determinations that patent claims are invalid as obvious. The Federal Circuit has highlighted the need for such analysis in cases like Plantronics and Arendi S.A.R.L. v. Apple (2016), which specifically noted that “references to ‘common sense’–whether to supply a motivation to combine or a missing limitation–cannot be used as a wholesale substitute for reasoned analysis and evidentiary support.” The USPTO added that clearly reasoned obviousness determinations serve the agency’s goal of compact prosecution that enables patent examination to conclude at the earliest possible time.

The USPTO’s guidance also reminds those employees making obviousness determinations that they are required to consider all evidence relevant to obviousness that is properly before them. An important theme in the development of obviousness law following Graham and KSR is that the inquiry is not limited to certain factors expressly stated in Graham. When a patent applicant or owner makes an argument on objective indicia of non-obviousness, which includes secondary considerations like commercial success or long felt but unsolved need, the decision-maker is not free to ignore those arguments. However, the evidentiary support for such secondary considerations cannot rely on conclusory testimony from expert witnesses as the Federal Circuit has underscored in rulings like Quanergy Systems v. Velodyne Lidar (2022).

Acknowledging that there is no “one-size-fits-all” approach to obviousness determinations following KSR, the notice says that agency personnel must call upon both legal and technical expertise in making proper obviousness determinations. Legally proper rejections will be characterized both by findings of fact and reasoned explanations of why the claimed technology would be obvious to a PHOSITA, the USPTO’s guidance concludes.

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18 comments so far. Add my comment.

  • [Avatar for Anon]
    March 4, 2024 07:24 pm

    A late addition, and one worth going back down and digging up is the post by Greg Aharonian – the position is backed up by the legislative record (as I recall, Cornell Law’s notes tab is on point:

    This paragraph is added with the view that an explicit statement in the statute may have some stabilizing effect, and also to serve as a basis for the addition at a later time of some criteria which may be worked out.

    It is exceedingly unlikely (given the Act of 1952’s stripping of authority from the Supreme Court for setting the meaning of “invention, “gist,” “gist of the invention,” and numerous other similar terms that prior acts of Congress thought that the Court could ‘interpret” to an established meaning) that Congress would turn around with the explicit replacement of “invention,” and make the same mistake of giving this authority back to the judicial branch.

    What the Judicial Branch should have done – but did not – is at the first case punted back to Congress with the directive: Do not pass incomplete laws – and do your F’n job and provide the criteria.

  • [Avatar for francis hagel]
    francis hagel
    March 3, 2024 12:59 pm

    @Night Writer
    @Don Baker

    As Night Writer points out, this USPTO guidance pays little attention if any to the hindsight factor. This is no surprise, this is the case in the MPEP. Still, it is disappointing.

    A hindsight-guided approach in the assessment of obviousness is impossible to avoid, simply because the USPTO’s search of prior art relies on the foreknowledge of the invention. But what is missing in the MPEP and the recent guidance is the recognition of this fact. Were this fully recognized, the PTO would be more concerned about setting safeguards to mitigate hindsight.

    It is fair to say that the emphasis in the guidance on « flexibility » does the opposite. Examiners remain free to assemble bits of information cherry-picked from several prior art references as reported by Night Writer.

    It is actually not so simple to recognize that prior art searches are hindsight-guided and take this in full account, not just by the USPTO and examiners, but also by patent practitionners. One of the reasons is the PHOSITA is perceived by examiners and patent practitionners through the lens of the mental agility they have developed (and are proud of) by dealing with many cases pertaining to different fields of endeavor. This vision is as Don Baker notes is a legal fiction, far remote from real-life skilled persons, who are in my experience narrowly specialized.

    A key issue here is the scope and meaning of « the art », which must assessed to distinguish « analogous art» from « non-analogous art ». Again, the guidance pays scant attention to this issue. It only mentions one example (« recreative devices »). And it does not urge examiners to pay due attention to evidence submitted by the applicant to delineate « the art », e.g. to show technical preconceptions shared by skilled people within a field of endeavor or their narrow specialisation.

  • [Avatar for Don Baker]
    Don Baker
    March 3, 2024 10:30 am

    For the record, I’m a Pro Se inventor, a disabled and retired engineer & scientist with three engineering degrees and a PhD, not a lawyer or an agent. The first few NPPAs were really hard, but I learned and now have 9 patents and 2 pending. I got good help from most of my Examiners and deliberate obstruction from a few, who faced no apparent consequences. The USPTO can be really helpful or extremely dense and petty, and the management can’t seem to tell the difference.
    Here’s a thought that might explain it:
    There are three kinds of legal convictions
    You’re convinced there is a God
    You’re convinced there’s no god
    You’re convinced you don’t know
    And if you can believe all three convictions at once, they you’ll make a mighty fine lawyer, and get a conviction every time
    Prison inmates beat up child molesters; the rest of us tell lawyer jokes.
    For many of us the law is like a game of hopscotch. If you set one layman’s toe over the line, it’s “Error! Error! Dismiss! Dismiss!”
    If you pull your layman’s toe back, it’s “Estoppel! Estoppel! Dismiss! Dismiss!”
    Engineering schools are hard, but understandable if you can learn the rules. If you design or build a circuit wrong, it just doesn’t work. Well, not counting intermittent faults.
    But patent law –
    It’s arbitrary, confusing, shifting, impenetrably complex, and designed to be so to keep lawyers employed. I have often thought that we would all be better off if we just chuck the whole Gordian mess out and hire proven and accomplished Engineering Professors to run it.
    Except that I’ve seen kind of egotistical shenanigans that go on in peer review.
    Maybe in another Universe. Marvel says there are a lot of them.
    Watch out for the water bears.

  • [Avatar for Anon]
    March 3, 2024 09:37 am

    Sorry to hear about your physical and then legal misfortunes Don.

    Your last question is pointed, but the disabilities of the Patent Office are NOT visited upon the Patent Office, so it is the innovators that suffer.

  • [Avatar for Night Writer]
    Night Writer
    March 3, 2024 09:24 am

    Again, the core problem here is that the guidelines don’t provide limiting principles for the examiner. Things like if the prior art doesn’t exhibit the advantages or functions of the invention then that is probably evidence of non-obviousness. Or if you are putting together four or more prior art references and building their invention with the component parts, then that is probably evidence the invention is non-obvious. Look like Mr. Baker is an agent or attorney?

  • [Avatar for Donald L Baker]
    Donald L Baker
    March 2, 2024 01:00 pm
    -How a patent examiner can prove the earth is flat

  • [Avatar for Don Baker]
    Don Baker
    March 2, 2024 12:54 pm

    A lot of the prior art in electric guitar pickup switching circuits produces duplicate circuits and tonal outputs. I had a claim for a scalable method of constructing circuit topologies that would eliminate duplicates. The examiner could not imagine how that could be done. He wrote that he put the term “eliminate duplicates” into Google and got 14,000 hits; therefore he claimed it must be “obvious”.
    Whereupon I put the term “flat earth” into Google and got “About 11,200,000 results (0.29 second)”.
    The very next patent examiner on the very next patent got so negative (possibly in defense of his colleague) that he invented prior art out of whole cloth to kill the application. The USPTO upheld him all the way up through the PTAB.
    The invention (NPPA 15/917,389) was a simple modification to a single-coil pickup with a slide-in magnet below the vertical poles, so that you can reverse the magnetic polarity of the pickup, and thus the phase of the guitar string signal. The standard magnet configuration in a 3-coil Stratocaster-type guitar is N-S-N in the bridge, middle and neck pickups. There are three other configurations, N-N-N, N-S-S and S-S-N, excluding those that would simply reverse the string signal output (S-N-S, S-S-S, S-N-N, and N-N-S). Different magnetic configurations would give different tonal outputs for the same switching circuit, due to signal phase inversions.
    I was disabled in a car wreck in 1985, which crushed my left hip and further damaged a spine that had already produced crippling pain. I never again had a secure, full-time job. I started working on guitar circuits after I went on SSDI disability income in 2003. As far as I could tell, no one had bothered to investigate this kind of tonal variation before.
    But which of us has the worse disabilities? Me or the Patent Office?

  • [Avatar for Anon]
    March 1, 2024 01:25 pm

    Mr. Baker,

    Examiners do not have the power or authority as you appear to suggest.

    They must examine applications under the law.

    Do they (often!) do so poorly?


    But that is exactly why practitioners exist, to shepherd the case through proper law.

  • [Avatar for Pro Say]
    Pro Say
    February 29, 2024 07:48 pm

    Prima Facie = Prima Facetious

  • [Avatar for David Lewis]
    David Lewis
    February 29, 2024 07:31 pm

    To the extent that the new guidelines just reiterate more recent case-law, it is good. If it was introduced to the examiners with a verbal comment saying you’ve been too lenient, it is bad.

  • [Avatar for Donald L. Baker]
    Donald L. Baker
    February 29, 2024 10:25 am

    In the hands of a person not fully proficient in ordinary skills, PHOSITA is a matter of pure speculation. It is a purely legal construction, like “a reasonable person”. Any bigot is reasonable, just ask one. And they’re chock full of common sense, too. In NPPA 15/917,389, the Examiner invented prior art out of whole cloth, misapplying the engineering principles in prior patented inventions. The USPTO fully upheld this invention of prior art, perhaps because the M.I.T. graduate who made the Application exhibited the same kind of outrage at the Examiner that he would have gotten in from classmates in school. It brought into question the integrity of the entire process. How could this be so hard? Everything is “obvious” once you see how it works. It’s a bell you can’t unring. Just reading a patent application under PHOSITA can be prejudicial. Under first to file, if there is no duplication of effort, principle and application in published prior art, in literature, or even culture, there is no obviousness, because no one did it before. Legal constructions are a long, long way from true engineering. It brings about the kind of short-handed thinking of stating that mathematical decimal points and ellipses in claims are “too many periods”, without ever examining if the mathematical constructions themselves describe a patentable invention or algorithm. Possibly because that kind of thinking is too hard for those whose ordinary skills have lapsed or never advanced.
    How many otherwise worthy inventions have lost legitimate protection to this legal constructionism?

  • [Avatar for Julie Burke]
    Julie Burke
    February 29, 2024 10:15 am

    In response to Max Drei’s: Meanwhile, what jurisprudence is out there, on the issue whether the case put by the Examiner fails to rise to the (modest? minimal? serious? or something else?) level of “prima facie”?

    The examiners’ behavior is informed by their performance and appraisal plan (PAP). PAP revisions arise by behind the scenes POPA-management negotiations. Note that the patent bar, Congress, OMB, OPM, PPAC, inventors, American public, etc., are not sitting at that negotiation table. It has only been through Congressional oversight hearings that we have even been able to obtain copies of revised PAPs.

    As long as determining compliance with 35 USC 103 is rated as by the USPTO management-POPA negotiated PAP as a basic task to be performable by entry level trainees with essential cursory level attention (without any required advanced analysis or sound legal understanding) there is nothing to ensure that the examiners’ determination of prima facie obviousness rises beyond the bare minimal level, no matter how many OPLA-created guidance documents or MPEP updates are published.

  • [Avatar for Josh Malone]
    Josh Malone
    February 29, 2024 09:23 am

    @MaxDrei — the case law says that a “prima facie” case for obviousness occurs as soon as the challenger assembles the prior art components to cover most of the limitations and pleads that common sense and/or efficiency fill in the gaps.

  • [Avatar for Anon]
    February 29, 2024 09:15 am

    MaxDrei, there is more than one type of burden. Further, establishing the prima facie case requires more than merely presenting an “I say so.”

    Quite in fact, the Best Practices is to always first attack the Examiner’s rejection (as appropriate) in NOT establishing the prima facie case, and then adding arguments as of substance as if the prima facie case were present.

    Your asking of ‘jurisprudence’ seems rather odd for one that spends so much time on US patent law blogs – is this more of your throwing feces at the wall to see what sticks?

  • [Avatar for Fred Gribbell]
    Fred Gribbell
    February 29, 2024 08:58 am

    This article says, “… when making determinations that patent claims are invalid as obvious.” A patent claim in a pending application is NEVER INVALID. It may be obvious, but just say it that way. Invalidity applies only to issued patent claims.
    Also, if the Plantronics case says “… known problems in a field of endeavor …” is a reason to find obviousness, that is doubletalk. What about the John Deere secondary consideration of ‘solving a long-felt need’? Those sound like two sides of the same issue, so who wins that argument? It’s another instance of inconsistency at the Federal Circuit.
    And I agree that the primary problem today is everyone is using hindsight, but the PTO isn’t preventing that. The PTAB is the worst offender. It’s bad enough when the courts are against patents, but now the PTO itself seems to be getting into the act at the very initial stage of examination. I’m sure the individual examiners don’t want to be criticized for granting a patent that is later held to be invalid, but we still need the PTO examiners to be reasonable in their rejections.

  • [Avatar for Greg Aharonian]
    Greg Aharonian
    February 29, 2024 08:52 am

    The biggest problem with “obvious”, the most important term of 35 USC 103, is that the term is not defined in statute, nor in the Legislative history. That makes the first sentence of 35 USC 103 fatally vague. And it is a violation of the separation of powers for the Judiciary to offer a definition. Their only ruling can be that the first sentence is fatally vague, and that Congress has to be more clear what is meant by “obvious”. I have never understood why the patent bar for decades has refused to assert this Constitutional right of their clients. Indeed, relying on this caselaw is an argument for the unConstitutionality of “obvious”, because one aspect of Due Process Public Notice is that you shouldn’t have to wait until trial before you are informed what the terms of a statute are (especially for criminal laws, but ample caselaw for civil laws). Which at the same time renders Markman claim construction unconstitutional, since you should have to wait until a patent infringement trial to learn the meaning of a claim term.

    The second problem is that all of these decisions ignore the VERY CLEAR intent of the second sentence of 35 USC 103 – basically, that it does not matter how the invention was made. That an invention was made in light of “industry concerns” is interesting historically, and economically, but Congress was clear when it wrote the second sentence – “that does not matter”.

    The third problem is that the secondary considerations are mostly ignored by Examiners, who typically without punishment ignore such arguments.

    Indeed, given the fatal vagueness of “obvious”, and let us be honest, no judge in the last 70 years has been able to define the term, the secondary considerations should be the primary considerations.

    35 USC 103 is a Due Process Public Notice failure. And every patent lawyer who cares about their clients should be raising it in Responses.

    And the proof that the Patent Office has only a fatally vague understanding of “obvious” can be seen if you ask the Examiner for a proposed claimed amendment to make the claims “not obvious”. They should be able to do so, if the term is not fatally vague. And all independent claims, made narrow enough, will become ‘not obvious’. After all, when I make a mistake on my taxes, the IRS doesn’t say, “You did it wrong, guess again.”. Instead, they send me a proposed amendment to my tax return that I can accept or challenge. I always accept because they are correct – they understand tax law and constitutional law (they give me clear guidance).

    The USPTO does not understand 35 USC 103 – no one does, because Congress did not understand “obvious” when it wrote the statute in 1952. Its vagueness is unConstitutional.

  • [Avatar for Night Writer]
    Night Writer
    February 29, 2024 03:31 am

    The biggest issue with an obviousness analysis is hindsight. That term is used only once in the whole document. Yet, we know that this is a real psychological problem where humans once they know something cannot do an analysis where they forget they knew something. There are hundreds of psychological studies showing this fact.

    The fact is too that TSM is what worked. Now we have to convince people something is not obvious because it is just so good.

    Notice too: “Prior art is not limited just to the references being applied, but includes the understanding of one of ordinary skill in the art.”

    So, with 103, we are using everything we know and properly thinking about one of ordinary skill in the art. But with 112, under Williamson, we are using the understanding of circuit court judges. So, remove the one of ordinary skill in the art for 112 and hyper-include the one of ordinary skill in the art for 103.

    The biggest problem I have with these guidelines is that it doesn’t address the other side of the problem. What is that? Well, I am literally writing a response right now to a case where the examiner is using five or six references to piece together the claim. The five or six references together don’t even perform all the functions the claim does when put together.

    An Examiner should not use a claimed structure as a “template” and select elements from the references to reconstruct the claimed invention.

    Anyway, I don’t have hours to explain all this. But the guidelines are one sided. They don’t provide good arguments for when the examiner has gone too far and used the claim as a template and then just pieced together the elements and how to tell when the examiner has done that. And it doesn’t caution against hindsight, which we know is a very real psychological problem. Go to Google Scholar and type in “hindsight”.

  • [Avatar for Max Drei]
    Max Drei
    February 28, 2024 05:41 pm

    If (from outside the jurisdiction) I understand it right, the initial burden during examination of patentability of a pending patent application is on the USPTO to establish a “prima facie” case of obviousness. If it succeeds in that, then the burden switches to the applicant, to refute that prima facie case. So, this new “guidance” is (I suppose) a reminder to Examiners to be creative and then diligent, when putting together their “prima facie” case, so that it proves resistant to applicant efforts to undermine it.

    I presume that the guidance is just as useful for prosecution attorneys as for PTO Examiners, providing both with a sort of Check List so that both can perform competently their respective roles in the obviousness enquiry. This is a good thing for everybody who has cause to review the prosecution history, right?

    Meanwhile, what jurisprudence is out there, on the issue whether the case put by the Examiner falls to rise to the (modest? minimal? serious? or something else?) level of “prima facie”?

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