Updated Guidelines on What Is "Obvious" Reflect an Updated PTO

By >updated guidelines for use by patent examiners in determining when the subject matter claimed in a patent application should be rejected for being obvious.

The updated guidelines differ from the >KSR v. Teleflex, which, as we A patent application defines the invention by a series of claims. A proper obviousness rejection by the PTO must address each part of each claim and show how each part can be found in the prior art.

Often a rigorous evaluation of a claim rejection will show that the examiner has failed to address one or more parts of the claim in making the rejection. Sometimes the failure comes simply from overlooking one or more words in the claim; sometimes the failure comes from a misunderstanding of a prior art reference cited in making the rejection; and sometimes the failure comes from insufficient appreciation of the invention defined by the claim.

A powerful response can be fashioned by calling out such a failure, but it will gain traction only when received by an office willing to listen. The updated guidelines reveal a PTO more willing to heed arguments that an invention claimed in a patent application has been wrongly deemed obvious. That is good news for inventors and for innovation.

From sunsteinlaw.com