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ARTICLE · 18 MARCH 2024

Update To USPTO Guidance For Determining Obviousness

Finnegan, Henderson, Farabow, Garrett & Dunner LLP
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In 2007, the USPTO published "Examination Guidelines for Determining Obviousness Under 35 U.S.C. 103 in View of the Supreme Court Decision in KSR International Co. v. Teleflex Inc.".

United StatesIntellectual Property
Adriana Burgy
Adriana Burgy
Stacy Lewis
Stacy Lewis
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In 2007, the USPTO published "Examination Guidelines for Determining Obviousness Under 35 U.S.C. 103 in View of the Supreme Court Decision in KSR International Co. v. Teleflex Inc.". This was updated in 2010 and now, as of Feb. 27, 2024, there is a new update. 89 Fed.Reg. 14,449 (Feb. 27, 2024).

The initial guidance included seven examples of rationales that may support a conclusion of obviousness, with case law cites. The seven are:

  • (A) Combining prior art elements according to known methods to yield predictable results;
  • (B) Simple substitution of one known element for another to obtain predictable results;
  • (C) Use of known technique to improve similar devices (methods, or products) in the same way;

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