USPTO Updates Examination Guidelines for Determination of Obviousness

The U.S. Patent and Trademark Office (USPTO) has issued an update to its obviousness guidelines for examiners, to be used when applying the law of obviousness under 35 U.S.C. § 103 (the Guidelines).

The U.S. Supreme Court decision in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007), placed a renewed emphasis on the factual inquiries of Graham v. John Deere, 383 U.S. 1 (1966), and rejected the application of a strict prior teaching-suggestion-motivation test (the TSM test) in determining obviousness under 35 U.S.C. § 103. The recently updated Guidelines recognize that this renewed emphasis on the principles of Graham and the abrogation of the strict TSM test have clearly impacted the examination of patent applications, but the Guidelines also suggest that the obviousness inquiry has remained the same, to a significant extent, since the KSR decision.