While the new guidance is not intended as a shift in the USPTO’s position on obviousness, its release emphasizes the many considerations that are in play when obviousness is considered under U.S. patent law. Knowledge of the USPTO’s position and the relevant cases is of paramount importance when dealing with obviousness rejections in patent prosecution. –Dr. Jon Platt, Esq.

Today the USPTO released “Updated Guidance for Making a Proper Determination of Obviousness,” 89 FR 14449 (February 27, 2024). The guidance is not intended to break new ground and does not appear to, though it refers to many case-law precedents from the last two decades that are not currently cited in the Manual of Patent Examining Procedure (MPEP). The guidance also emphasizes a couple of points: 1) the need for an examiner to articulate the reasons behind a conclusion that a claim is obvious, rather than relying on references to nebulous concepts such as “common sense”; and 2) the need to consider all evidence relevant to the question of obviousness.

The general approach to questions of obviousness under U.S. patent law was set forth by the Supreme Court in Graham v. John Deere, 383 U.S. 1 (1966). In the Graham approach the Examiner initially considers the question by 1) determining “the scope and content of the prior art;” 2) ascertaining “differences between the prior art and the claims at issue;” and 3) resolving “the level of ordinary skill in the pertinent art.” 383 U.S. at 17. A finding of prima facie obviousness from this process shifts the burden to the applicant to rebut the finding, which may involve submitting evidence of “secondary considerations [such] as commercial success, long felt but unsolved needs, failure of others, etc., … to give light to the circumstances surrounding the origin of the subject matter sought to be patented.” Id.

The Supreme Court again considered the question of obviousness in KSR v. Teleflex, 550 U.S. 398 (2007). In KSR a unanimous Court rejected what it characterized as a rigid single test for obviousness, instead opting for a flexible approach that gave examiners (and other deciders) more latitude in finding claims obvious. This flexibility involved both 1) flexibility in the understanding of the scope of the prior art, and 2) flexibility in finding reasons to modify the prior art to reach a conclusion of obviousness. In the first of these the Court opined against rigid “preventative rules that deny factfinders recourse to common sense,” 550 U.S. at 421. For the second, the Court rejected a conception of obviousness “confined by a formalistic conception of the words teaching, suggestion, and motivation,” 550 U.S. at 419.

The Court’s opening of the door to the application of “common sense” in determining obviousness was a dangerous move. Common sense has been defined as “sound practical judgment that is independent of specialized knowledge, training, or the like; normal native intelligence,” https://www.dictionary.com/browse/common-sense. This seems a bad fit with a legalistic concept such as patent law obviousness. Indeed Descartes once wrote of common sense (bon sens) that it “is of all things in the world the most equally distributed, for everybody thinks he is so well supplied with it that even those most difficult to please in all other matters never desire more of it than they already possess.”

Fortunately several post-KSR cases have rejected the bare invocation of “common sense” as a basis for obviousness. Perhaps the plainest statement is found in a case cited in the new guidance (but not in the MPEP), Mintz v. Dietz & Watson, 679 F.3d 1372 (Fed. Cir. 2012): “The mere recitation of the words ‘common sense’ without any support adds nothing to the obviousness equation.” The new guidance cites other cases on this point, and stresses the need for an obviousness rejection “to provide adequate analysis based on evidentiary support.”

Another point of emphasis in the new guidance is for decision-makers (such as examiners) to “consider all relevant evidence that is properly before them.” This pointedly includes rebuttal evidence, such as secondary factors described in Graham. As the new guidance states, “when the so-called secondary considerations of the fourth [Graham] factor (also known as objective indicia of nonobviousness) have been made an issue in the case, the decision-maker is not free to ignore them.” On this issue the guidance cites two cases, In re Huai-Hung Kao, 639 F.3d 1057 (Fed. Cir. 2011), and Kinetic Concepts v. Smith & Nephew, 688 F.3d 1342 (Fed. Cir. 2012), both of which are not currently referred to in the MPEP.

While the new guidance is not intended as a shift in the USPTO’s position on obviousness, its release emphasizes the many considerations that are in play when obviousness is considered under U.S. patent law. Knowledge of the USPTO’s position and the relevant cases is of paramount importance when dealing with obviousness rejections in patent prosecution.

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