US Patent Office Issues Update to KSR Examination Guidelines

Written by Gene Quinn (of and Practice Center Contributor)

The United States Patent and Trademark Office has provided an update to its Examination Guidelines concerning the law of obviousness under 35 U.S.C. 103 in light of precedential decisions from the United States Court of Appeals for the Federal Circuit issued since the 2007 decision by the United States Supreme Court in KSR Int’l Co. v. Teleflex Inc. The Updated KSR Examination Guidelines were published today in the Federal Register, and in response to the requests of many stakeholders the USPTO has included additional examples to help elucidate the ever-evolving law of obviousness. These guidelines are intended primarily to be used by Office personnel in conjunction with the guidance in the Manual of Patent Examining Procedure. The effective date of the these new Guidelines is September 1, 2010, but members of the public are invited to provide comments on the 2010 KSR Guidelines Update.  The Office is especially interested in receiving suggestions of recent decisional law in the field of obviousness that would have particular value as teaching tools.

The Examination Guidelines Update correctly explains that every question of obviousness must be decided on its own facts, thus it is the intent of the Office to “clarify the contours of the obviousness inquiry after KSR, and help to show when a rejection on this basis is proper and when it is not.”   The 2010 KSR Guidelines Update provides a ‘‘teaching point’’ for each case discussed, and there is a table listing many of the cases and their teaching points, which can be found on the last two pages of the roughly 17 page Federal Register Notice. Perhaps this table was intended to be all inclusive, but I do not see, for example, Ball Aerosol v. Limited Brands, 555 F.3d 984 (Fed. Cir. 2009) in the table. (more…)