REVISED PATENT OFFICE GUIDELINES FOR
DETERMINING PATENTABILITY
Earlier this month the U.S.
Patent & Trademark Office (PTO) issued proposed guidelines for
how patent examiners determine whether an invention as claimed in a
patent application is obvious. The guidelines are based on the
2007 U.S. Supreme Court case of KSR International Co. v. Teleflex,
Inc. in which the Court said examiners should use "common
sense" in determining obviousness. The Court of Appeal for
the Federal Circuit (the patent appeals court) found that a patent
claim requiring a sensor on an automobile accelerator pedal with a
fixed pivot point would not have been obvious because neither of the
cited patents provided a specific motivation to put a sensor on such
a pedal. However, the Supreme Court said that other patents
suggested using sensors on pedals, and it was well within the skill
of one of ordinary skill in the art to do so, and to predict the
result achieved by putting the sensor on such a pedal. Many
viewed KSR as changing the obviousness determination, and making it
easier for patent examiners to reject applications. While that
is true to some extent, the overriding factor has always been: what
would one of ordinary skill in the art find it obvious to do with
knowledge of all the relevant prior
art? In my view, the most important part of the KSR decision is
the Supreme Court's summary and listing of seven basic ways that the
prior art may be applied to determine obviousness and the
proposed new guidelines by the PTO underscore these seven approaches:
1. Can prior art elements be combined according
to known methods to yield predictable results;
2. Will a simple substitution of one known
element for another obtain predictable results;
3. Can a known technique to improve similar
devices or methods be used in the same way;
4. Can a known technique be applied to a known
device or method for improvement to yield predictable results;
5. Are there only a finite number of identified,
predictable solutions, with a reasonable expectation of success when
combined with a known device or method;
6. Is there known work in one field of endeavor
which may prompt modifications for use in either the same field or a
different one based on design incentives or other market forces where
the modifications are predictable to one of ordinary skill in the
art; and
7. Do the cited prior art references provide a
motivation for one of ordinary skill in the art to combine the
elements to achieve the claimed invention.
The PTO guidelines provide a
wealth of knowledge, and there are also examples of
obviousness determinations given on the PTO web site. Moreover,
various patent examining groups (organized by technology) also have
their own PowerPointŪ presentations on examination using the KSR
seven approaches. The PowerPointŪ on internet and business
method patent applications is very good. While the Supreme
Court almost opened the door to all sorts of rejections asserting a
basis of "common sense," in the three years since that time
the Courts and the PTO have shown that KSR really has changed very little,
other than to help summarize existing approaches to determining
obviousness.
David Hoffman
Law Offices of David L. Hoffman
28494
Westinghouse Place, Suite 204
Valencia,
California 91355
