USPTO's Updated Guidance For Making An Obviousness Determination

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In late February, the United States Patent and Trademark Office (USPTO) issued an update to the current guidance to examiners in making obviousness determinations.¹ The five-point guidance emphasizes the flexible approach to determining obviousness in light of the U.S. Supreme Court's decision in KSR Int'l Co. v. Teleflex Inc. (KSR).² The update is based on a review of several cases from the past ten years of post-KSR America Invents Act (AIA) law.

The first two points of the guidance remind that the AIA changed the time period for the availability of prior art from the time the invention was conceived to the effective filing date of the application. Additionally, they remind that the factors laid out by the Supreme Court in Graham v. John Deere Co.,³ remain the controlling tests for determining obviousness.