USPTO Updates Guidance on Obviousness Rejection: Flexibility is Key

By Babak Akhlaghi on March 4, 2024.

To secure a patent, an invention must be both novel and non-obvious. While demonstrating novelty is relatively straightforward—simply proving that the invention doesn’t exist in any previous patents or publications—the test for obviousness presents a greater challenge. Applicants must prove that the differences between their invention and the prior art are not immediately apparent to someone with expertise in the field. This area of patent law is nuanced, and skilled practitioners often include as many variations of the invention in their applications as possible to bolster the chance of approval.

Historically, there has been inconsistency in how the U.S. Patent and Trademark Office (USPTO) has applied the standard for obviousness, with some examiners in certain units being stricter than others. To address this, the USPTO recently issued updated guidelines aimed at clarifying how examiners and applicants should approach the determination of an invention’s obviousness, including the considerations to be made when attempting to overcome such rejections.

Below, we will provide a summary of these updated guidance and conclude with some key insights. Your thoughts and feedback are welcome.

On February 27, 2024, USPTO released updated guidance regarding how to handle obviousness rejections, drawing from recent Federal Circuit rulings that followed the Supreme Court’s KSR decision.  This updated guidance emphasizes the importance of flexibility in two key areas: understanding the scope of prior art and the reason for modifying it. However, it also clarifies this flexible approach does not exempt examiners from the responsibility of providing a well-reasoned and evidence-backed rationale when making an obviousness rejection, a point that is often lacking in a 103 rejection.

1. Flexible Understanding of Prior Art

Examiners are reminded to take a flexible approach that considers common sense and knowledge of a person of ordinary skill when determining the scope of the prior art. See, Updated Guidance on page 4 (stating this perspective is grounded in the KSR decision stating “a person of ordinary skill is also a person of ordinary creativity, not an automaton”). Therefore, an argument that the proposed combination of references does not teach a specific feature in the claim may not hold if a PHOSITA could reasonably infer such a feature through common sense or knowledge in the field. Similarly, the guidance advises a flexible stance on whether prior art is sufficiently related to the claimed invention, referencing Federal Circuit decisions that have recognized analogous art based on shared general fields of endeavor. See, Updated Guidance on page 5 (citing Unwired Planet, LLC v. Google Inc., 841 F.3d 995, 1001 (Fed. Cir. 2016); and In re Mettke, 570 F.3d 1356, 1359 (Fed. Cir. 2009)).

2. Flexible Motivation to Combine References

Any motivation, whether from references or evidence of PHOSITA knowledge, is sufficient to combine references to arrive at the claimed invention.  See, Updated Guidance on page 6 citing (Outdry Techs. Corp. v. Geox S.p.A., 859 F.3d 1364, 1370–71 (Fed. Cir. 2017)).  Notably, the guidance clarifies that the motivation for combining references does not need to be the optimal choice, as long as the prior art does not discourage a suitable option, and broad applicability alone does not undermine its validity.   Id. (citing Intel Corp. v. Qualcomm Inc., 21 F.4th 784, 796 (Fed. Cir. 2021)).  Furthermore, the motivation can come from various sources like market forces; design incentives; the interrelated teachings of multiple patents; any need or problem known in the field of endeavor at the time of invention and addressed by the patent; and the background knowledge, creativity, and common sense of the person of ordinary skill.  Id. (citing Plantronics, Inc. v. Aliph, Inc., 724 F.3d 1343, 1354 (Fed. Cir. 2013), quoting KSR, 550 U.S. at 418–21, 127 S. Ct. at 1741–42)

3. Articulated Reasoning and Evidentiary Support

While the guidance encourages a flexible approach, it also stresses that clear articulation of reasons supported by evidence is crucial for any proper obviousness rejection. References to “common sense” cannot replace reasoned analysis and evidentiary support when dealing with missing limitations from prior art.  Notable Federal Circuit cases cited to in the updated guidance include Mintz v. Dietz & Watson, Inc., 679 F.3d 1372, 1377 (Fed. Cir. 2012), where the Federal Circuit pointed out that simple assertions of “common sense” add nothing to the analysis of obviousness; Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355, 1362 (Fed. Cir. 2016), where the Federal Circuit emphasized that references to common sense cannot replace thorough analysis and evidentiary support; In re Van Os, 844 F.3d 1359, 1361 (Fed. Cir. 2017), reinforcing that the flexibility provided by KSR does not eliminate the need for reasoned analysis.

4. Consideration of All Relevant Evidence:

In line with KSR’s flexible approach, Examiners must consider all evidence relevant to obviousness determination before reaching a conclusion, including the secondary consideration.  If such considerations are present before the Examiner, either in the specification or via a declaration, then they must be considered even before the issuance of the first action.  To this end, in making an obviousness rejection, the Examiner must weight all the evidence of record, including evidence of obviousness and evidence of non-obviousness. If such weighing shows obviousness by a preponderance of the evidence, then 103 rejection should be issued.  See, Updated Guidance at page 9 (citing ACCO Brands Corp. v. Fellowes, Inc., 813 F.3d 1361, 1366 (Fed. Cir. 2016)).

Key Takeaways:

1. The updated guidance will likely result in a rise in 103 rejections and influence their persistence during the patent prosecution process.  Overall, by emphasizing flexibility on not just motivation to combine element but also the scope of the prior art element, the guidance makes obviousness rejection easier to make and harder to overcome.

2. A critical strategy for overcoming 103 rejections made under the updated guidance will likely involve pointing out the absence of a logical and evidence-supported justification for such rejections. It is insufficient for an Examiner to merely claim that combining references or a missing element would have been within the purview of common sense or knowledge of Person Having Ordinary Skill In The Art (“PHOSITA”) without providing some form of evidentiary support. The Examiner is tasked with providing clear and factual evidence for all the essential aspects of the prima facie case for obviousness.

3. The justification for combining references does not have to identify the best possible option; it only has to be a suitable one.

Data From USPTO

Data from the USPTO indicates a significant uptick in 103 rejections. An analysis of the rejection rates within the 2100 Art Unit (AU) from January 2023 through December 2023 reveals a 39% increase. For detailed insights, refer to the initial chart presented.  The recent USPTO guidance on obviousness determinations may lead to a rise in 103 rejections.

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