USPTO's Recently Updated Guidelines Pertaining to Obviousness Provide Useful Tools for Practitioners

The United States Patent and Trademark Office (USPTO) recently published updated guidelines for the evaluation of obviousness—the 2010 KSR Guidelines Update(2010 Update)—in light of Federal Circuit decisions issued since the Supreme Court's 2007 landmark decision in KSR Int'l Co. v. Teleflex Inc. Unlike the 2007 KSR Guidelines, which substantially increased the examiners' arsenal by supplementing the prior teaching-suggestion-motivation (TSM) test with six additional rationales for rejecting claims as obvious, the 2010 Update provides a more balanced picture of the obviousness inquiry that will assist both practitioners and examiners in arguing obviousness. More particularly, the 2010 Update provides a number of examples from actual cases—cases that found claims obvious and cases that found claims nonobvious—that examiners and practitioners can use to help support their positions. In announcing the updated guidelines, USPTO Director David Kappos stated, "[n]ow that a