USPTO Publishes Updated Guidance on Obviousness

On February 27, 2024, the U.S. Patent and Trademark Office (USPTO) published updated guidance in the Federal Register regarding making a proper obviousness determination. The updated guidance reiterates the flexible approach to obviousness required by KSR v. Teleflex since 2007, focusing on post-KSR precedential cases from the Federal Circuit. The “updated guidance also emphasizes the need for a reasoned explanation when reaching a conclusion that a claimed invention would have been obvious.” 

According to the USPTO, “The Office does not intend to announce any new Office practice or procedure by way of this updated guidance,” although “[t]his updated guidance will be incorporated into the MPEP in due course.”  Curiously, this latter quote ends with a footnote stating that “[t]his notice does not address the impact, if any, of artificial intelligence on the obviousness inquiry.”  This may be a clue as to potential future guidance or remarks concerning artificial intelligence that are not yet ready for prime time.

This updated guidance addresses the impact of the America Invents Act, the Graham factors in obviousness determinations post-KSR, the Federal Circuit’s implementation of KSR, the consideration of all evidence relevant to the question of obviousness, and the application of reasoning to facts in order to make a proper legal determination of obviousness.

Importantly, according to the USPTO, “[t]his updated guidance reinforces the directive that Office personnel are required to provide a clear articulation of their reasoning, grounded in relevant facts, when making a determination that a claim would have been obvious under 35 U.S.C. 103,” noting that this “serve[s] the goal of compact prosecution.” 

In applying this updated guidance, the USPTO reminds its personnel that “[a]ny legally proper obviousness rejection must identify facts and then articulate sound reasoning that leads to the conclusion that the claims would have been obvious to a  "person of ordinary skill in the art," and that “Office personnel must explain on the record how the conclusion of obviousness was reached.”  However, the USPTO also emphasizes that “there is no one-size-fits-all approach to crafting an obviousness rejection.”

We will continue to monitor the impact of this updated guidance, if any, on U.S. prosecution practice. 

The Notice is available here:  https://www.govinfo.gov/content/pkg/FR-2024-02-27/pdf/2024-03967.pdf