USPTO Obviousness Examination Guidelines Updated

September 1, 2010
News | Patents | USPTO

On September 1, the United States Patent and Trademark Office (USPTO) published 2010 KSR Guidelines Update, an update on the guidelines for examination of patent applications for obviousness under 35 U.S.C. § 103. The guidelines were made available for public comment through mail and email. These guidelines are effective immediately and can be reviewed here.

The 2010 KSR Guidelines Update incorporates additional guidance and interpretation of the Supreme Court’s 2007 KSR v. Teleflex decision, including several subsequent Court of Appeals for the Federal Circuit (CAFC) decisions interpreting KSR, for proper obviousness rejections. There is a detailed table at the end of the Guidelines providing “teaching points” based on 24 obviousness cases, detailing the fact patterns that were involved. These teaching points are divided into four types of fact patterns:

  • Combining Prior Art Elements;
  • Substituting One Known Element for Another;
  • The Obvious To Try Rationale;
  • Consideration of Evidence.

Interestingly, about half of the cases reviewed relate to the biotech or chemistry arts. All patent practitioners, including ex-United States counsel preparing applications which will be prosecuted in the United States would be well-served to review the updated Guidelines.


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