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ARTICLE · 15 MARCH 2024

USPTO Publishes Updated Guidance For Determining Obviousness

Buchanan Ingersoll & Rooney
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The United States Patent and Trademark Office (USPTO) has published updated Guidance for determining obviousness based on the U.S. Supreme Court's ruling in KSR Int'l Co. v. Teleflex Inc., 550 U.S.

United StatesIntellectual Property
Ralph G. Fischer
Ralph G. Fischer
Shayne Janne Jossef D. Rasay
Shayne Janne Jossef D. Rasay
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The United States Patent and Trademark Office (USPTO) has published updated Guidance for determining obviousness based on the U.S. Supreme Court's ruling in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007) and the Federal Circuit's implementation of KSR.

The updated Guidance is directed at assessing when a claim would have been obvious under 35 U.S.C. § 103. The Guidance retains the Graham inquiries affirmed by the Supreme Court's decision in KSR, the Federal Circuit case law since KSR, and the guidelines provided in the Manual of Patent Examining Procedure (MPEP).

The KSR approach of the Supreme Court states: "Under § 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background, the obviousness or nonobviousness of the subject matter is determined. Such secondary considerations as

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