by Dr. Michael (Mike) D. Hammer, Partner, JMB Davis Ben-David

There are times when I am reading a rejection from a US patent examiner that isn’t clear at all what the examiner is thinking. Particularly when it comes to the question of whether a claimed invention is obvious, the basis for a rejection can be somewhat opaque and even seem completely disengaged from the prior art. Recently, the USPTO issued updated guidance to its examiners for “Making a Proper Determination of Obviousness.” The updated guidance may not tell us what’s going on in the mind of a patent examiner, but at least it tells us what the USPTO thinks an examiner should be thinking. 

The simultaneous good news/bad news is that the updated guidance does not break any new ground.  Rather, it clearly articulates what most of us have been experiencing since the Supreme Court’s decision in  KSR v. Teleflex (“KSR”) in 2007, with abundant citation to case law from the past 16+ years.  Notably, while the guidance does lead with heaps of gloom and doom (from the perspective of an Applicant), there are a few breaks in the clouds by the end, which at least provide some light, and maybe even a glimmer of hope that yes, it is still possible to patent an invention in the USA. 

What does the revised examination guidance say?

First, the guidance emphasizes that obviousness is determined in view of the standard questions formulated by the Supreme Court’s 1966 decision in Graham v. John Deere Co.: (1) What is the scope and content of the prior art? (2) How is the prior art different from the claimed invention? (3) What is the level of ordinary skill art? and (4) Are there other considerations that demonstrate non-obviousness (often called “Secondary Considerations”)?  With the answers to these questions in mind, an examiner is supposed to then determine if the differences between the prior art and the claimed invention are large enough that the claimed invention would be “non-obvious” to a “person having ordinary skill in the art” (our generic “PHOSITA”). 

KSR stands for the idea that the PHOSITA knows a lot more about their technology than “only” what is taught in the prior art. This makes a lot of sense in a way.  If I say “Mary had a little lamb…” there is a strong chance that your mind will complete the rhyme.  The Court in KSR understood that the PHOSITA will make analogous logical steps when presented with prior art teachings. In the context of patent examination, the updated guidance states that KSR’s appreciation for the PHOSITA’s knowledge allows for examiners to take a “flexible approach” to the obviousness determination, both with respect to how the prior art is understood and also what a PHOSITA might do with the information, once taught.

With respect to the scope of the prior art, the guidance states: “Thus, the Supreme Court taught that a proper understanding of the prior art extends to all that the art reasonably suggests, and is not limited to its articulated teachings regarding how to solve the particular technological problem with which the art was primarily concerned.” Moreover, “Federal Circuit case law since KSR follows the mandate of the Supreme Court to understand the prior art—including combinations of the prior art—in a flexible manner that credits the common sense and common knowledge of a PHOSITA.” 

Often a client will tell us that an obviousness rejection is off-base because the cited art doesn’t include an element of the claimed invention. However, the stated “flexible approach” to understanding the prior art allows the USPTO to slam the door in the face of this type of rebuttal: “An argument that the prior art lacks a specific teaching will not be sufficient to overcome an obviousness rejection when the allegedly missing teaching would have been understood by a PHOSITA—by way of common sense, common knowledge generally, or common knowledge in the relevant art.” In other words, if the PHOSITA knows enough to “fill in the gaps” that are missing from the cited prior art, a claim will be rejected as obvious.

With respect to how a PHOSITA might use prior art teachings, the guidance repeats that “Federal Circuit case law since KSR confirms that the flexible approach to obviousness encompasses not only how to understand the scope of prior art, but also how to provide a reasoned explanation to support a conclusion that claims would have been obvious” (emphasis added). Accordingly, the USPTO indicates that an examiner is not restricted to the teachings of the cited prior art in the obviousness determination.

Importantly, and despite this seemingly loosey goosey approach (“If it feels obvious it must be obvious!”), the guidance clearly instructs examiners that there must be a clear, reasoned, evidence-based articulation for why a claimed invention is obvious. Quoting the Court of Appeals for the Federal Circuit, the guidance states: “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, especially when dealing with a limitation missing from the prior art references specified.” 

The guidance also reminds examiners to consider all of the evidence in a patent application– whether it is in the original filing, or provided during the course of examination. “At each stage of USPTO proceedings, Office personnel must reweigh all evidence that is relevant and properly of record at that time. Newly submitted evidence in rebuttal of an obviousness rejection must not be considered merely for its knockdown value against any previously-established prima facie case [of obviousness].” In this way, the fourth question from Graham is brought front and center, and the full context in which an invention was developed must be considered.

Lastly, the USPTO provides a critical reminder to Applicants that, just as examiners are supposed to support assertions of obviousness with reasoned, evidenced-based argument, so too must Applicants in their arguments for non-obviousness.  Often an Applicant will try to argue non-obviousness in the form of an expert Declaration.  However, as the guidance notes: “the Federal Circuit has made it clear that an expert’s conclusory opinion about a matter relevant to the obviousness inquiry may be unavailing unless accompanied by factual support” (emphasis added). 

Is anything patentable in the face of the PHOSITA’s common sense?

The answer to this question is a resounding “Yes!” Like I said, the revised examination guidance is nothing “new,” and more than two million patents have been granted since the USPTO began implementing the “flexible approach” articulated by the court in KSR and reviewed in the revised examination guidance. A patent examiner may attempt to use a PHOSITA’s “common sense” to assert obviousness, but unless that assertion is backed up clear reasoning, the examiner’s leap of logic is going to fall flat, along with the rejection.  Moreover, it is critical for an Applicant to remember that there is no substitute for strong evidence.  An examiner may try to reject a claim as obvious, but if there is objective evidence of non-obviousness – whether it is data of surprising superiority, published literature that demonstrates that the knowledge of the art was not as described by the examiner, or even a teaching away in the published literature – the rejection will not stand.

The 2024 obviousness guidance doesn’t necessarily tell us anything new, and certainly won’t make obtaining a patent under the USPTO’s “flexible approach” any easier.  However, moving forward, it will be a useful tool with which to both understand an examiner’s rejection of an invention as obvious and maybe even help identify ways to overcome it.

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