by Dennis Crouch
Earlier this week, the USPTO published updated examination guidelines regarding obviousness determinations under 35 U.S.C. §103. While these new guidelines are not legally binding, they offer important insight into how the Office plans to apply an even more flexible approach to obviousness -- something Director Vidal sees as mandated by the Supreme Court’s 2007 decision in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007). (2500 words).
Overall the guidance here suggests that the office is looking to make non-obviousness a larger hurdle via increased flexibility. Still, the guidelines spend some time on the requirements of a prima facie case; the necessity of both evidence and reasoning to support any obviousness rejection; and consideration of all evidence before the examiner. Obviousness is already the most common rejection - with the vast majority of applications being initially rejected as obvious. It will be interesting to see whether the rates go up even further following this new guidance.
This post breaks down the guidelines and walks through some potential strategies for patent applicants.
To continue reading, become a Patently-O member. Already a member? Simply log in to access the full post.