How Can The Updated USPTO Guidance On Determining Obviousness Help You?

Recent guidance published in the Federal Register by the United States Patent and Trademark Office (USPTO) explains some of what is required by patent examiners in making an obviousness case under 35 U.S.C. § 103. Since it is important to be informed on what guidance is given to examiners and to the public, this article highlights aspects of the new guidance that may help improve your odds of success at obtaining patents by understanding how obviousness rejections of patent application claims may be formulated by examiners.

The guidance focuses first on the flexibility examiners have when making obviousness rejections in a post-KSR era. For example, as part of the obviousness analysis, the guidance states that "a proper understanding of the prior art extends to all that the art reasonably suggests, and is not limited to its articulated teachings," and "when evaluating the prior art from the perspective of a PHOSITA [person having ordinary skill in the art], Office