U.S. Patent Office Issues Rejection Guidelines Based On Court Ruling

The opinion describes how examiners should proceed when rejecting claims on the basis of obviousness.

By K.C. Jones, InformationWeek
Oct. 10, 2007
URL: http://www.informationweek.com/story...

The U.S. Patent and Trademark Office issued new examination guidelines to ensure compliance with a recent U.S. Supreme Court decision.

Last month, justices issued an opinion in the KSR International v. Teleflex case. The opinion provides new insight into how the court believes examiners should proceed when rejecting claims.

The new guidelines published by the USPTO state that factual inquiries established by an earlier Supreme Court decision in Graham v. John Deere remain the basis for decisions regarding "obviousness."

"That is, patent examiners will continue to consider the scope and content of the prior art, the differences between the claimed invention and the prior art, the level of ordinary skill in the pertinent art, and objective evidence relevant to the issue of obviousness," John Doll, commissioner for patents, said in a statement.

The USPTO said that patent examiners must continue to explain the reasoning that leads to a legal conclusion of obviousness when rejecting claims on that ground.

The reasoning may still include the established Federal Circuit Court of Appeals standard that a claimed invention may be obvious if the examiner identifies a prior art teaching, suggestion, or motivation (TSM) as the basis, the USPTO explained.

To adapt to the KSR decision, the guidelines now state that examiners are no longer required to use the TSM approach to make a proper obviousness rejection. In other words, even if the TSM approach cannot be applied to a claimed invention, the invention may still be found obvious.

The new guidelines identify rationale for making obviousness rejections that are supported by the decision. For each rationale, the guidelines explain underlying factual finding examples to help examiners proceed.