PTO Publishes KSR Obviousness Exam Guidelines

By Ron Zapata

Portfolio Media, New York (October 10, 2007)--The U.S. Patent and Trademark Office has revised its examination guidelines in light of the U.S. Supreme Court decision in KSR International v. Teleflex Inc., which made it easier to invalidate patents based on obviousness.

The PTO published guidelines on Wednesday for examiners to determine obviousness in light of the KSR decision, which said the teaching-suggestion-motivation test for validating patents was being used too rigidly.

The new guidelines say that examiners can still use the TSM test to reject a patent, but an invention may still be found obvious without using the approach.

“The guidelines stress that the familiar factual inquiries announced by the Supreme Court in its much earlier decision, Graham v. John Deere Co. ... remain the basis for every decision regarding obviousness,” PTO Commissioner for Patents John Doll said. “That is, patent examiners will continue to consider (1) the scope and content of the prior art, (2) the differences between the claimed invention and the prior art, (3) the level of ordinary skill in the pertinent art, and (4) objective evidence relevant to the issue of obviousness.”

The guidelines note that patent examiners must continue to explain the reasoning for rejecting a patent on the grounds of obviousness.

The TSM method was established by the Court of Appeals for the Federal Circuit as the standard for obviousness to prove whether a person of ordinary skill in a given industry might combine earlier findings in the same manner claimed in a patent.

The new obviousness guidelines say that examiners can also consider a combination of prior art elements, simple substitution of a known element or use of a known technique to improve similar devices in a patent determination.

“In short, the focus when making a determination of obviousness should be on what a person of ordinary skill in the pertinent art would have known at the time of the invention and on what such a person would have reasonably expected to have been able to do in view of that knowledge,” the new guidelines say. “This is so regardless of whether the source of that knowledge and ability was documentary prior art, general knowledge in the art or common sense.”

The PTO had taken steps to incorporate the KSR decision in its patent examinations prior to publishing the new guidelines.

In July, the Board of Patent Appeals largely abandoned the TSM test in affirming PTO rejections of three separate patent claims for a type of polynucleotide, an electronic bioauthentication device for credit card consumers and a pocket insert for a bound book.

In May, the PTO issued preliminary guidance to patent examiners regarding KSR, which said not to completely forgo the TSM test. The PTO also told examiners to continue to look for specific reasons why prior art would be combined into a new patent before rejecting applications for obviousness.

In its decision in May, the Supreme Court rejected the “rigid approach of the Court of Appeals” regarding the TSM test. The court found that the appellate court had erred by not looking at other possibilities under which a patent could be obvious, such as prior art for inventions used for other purposes.

The Supreme Court further said the appellate court had erred by finding that a patent could not be proved obvious if the combination of prior art was “obvious to try.” And the Federal Circuit “drew the wrong conclusion from the risk of courts and patent examiners falling prey to hindsight bias,” the decision said.

The Supreme Court said that inventors should be allowed to consider prior inventions when creating new works. But the combination of the prior art must create a novel combination in order to be patentable.

“In many fields it may be that there is little discussion of obvious techniques or combinations, and it often may be the case that market demand, rather than scientific literature, will drive design trends,” the decision said. “Granting patent protection to advances that would occur in the ordinary course without real innovation retards progress and may, in the case of patents combining previously known elements, deprive prior inventions of their value or utility.”