Making a Proper Determination of Obviousness

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).
Read the Guidance Here .
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. 

Reiterating the Central Role of Graham v. John Deere .
The updated guidance underscores that the factual inquiries set forth by the Supreme Court in Graham v. John Deere Co ., 383 U.S. 1 (1966), continue to control obviousness determinations even after KSR :
As the opening paragraph of the KSR decision made clear by quoting Graham, the Supreme Court’s decision reaffirmed the approach to obviousness announced decades earlier: ‘Under § 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background, the obviousness or nonobviousness of the subject matter is determined.’
Thus, while KSR mandated a more flexible approach, the Graham factors still form the foundation of any obviousness analysis. As the guidelines state, “USPTO personnel continue to ground obviousness determinations in the objective inquiries announced in Graham .”  Before Graham and the 1952 Act, the courts had ground their obviousness analysis in the statutory requirement of “invention” and the Constitutional purpose to “promote the Progress.”  In Graham , the court held  Section 103 was intended to simply codify the common law of its prior cases – with the one exception of rejecting a “flash of creative genius test” to the extent one existed.  The guidelines do not reference the US Constitution or any other Supreme Court cases besides Graham and KSR . 
Rather than reflecting on old cases, the guidance appears to largely focus on accounting for Federal Circuit precedent from the past 15 years — since KSR .  Thus, the updated guidance seeks to consolidate and synthesize that body of appellate case law for examiners. As the introduction states, it aims to “provide further clarification for decision-makers on how the Supreme Court’s directives should be applied.”
There has been some inconsistency across technology centers and individual examiners in how KSR’s flexibility is applied, and the guidance is one move in an effort to further synchronize Office-wide standards and best practices. Unfortunately, as I note below, the guidance has some major problems that will likely lead to greater confusion.  Still, the guidance will be useful for applicants and attorneys to understand how examiners are expected to analyze obviousness issues.  
In a footnote, the agency notes that this particular guidance does not address “the impact, if any, of artificial intelligence on the obviousness inquiry. The Office continues to seek input from the public on that question and will issue additional notices as warranted.”
Accounting for the AIA’s Change to the Obviousness Timeframe
An important preliminary note in the guidelines acknowledges that the America Invents Act (AIA) changed the relevant timeframe for the obviousness inquiry from the “time the invention was made” to “before the effective filing date of the claimed invention.” As the guidelines explain:
When determining obviousness in a case governed by the AIA, Office personnel should interpret references to ‘at the time of invention’ in KSR as if they referred to the statutory time focus under the AIA, which is ‘before the effective filing date of the claimed invention.’
Thus, KSR and the obviousness analysis must be applied through the lens of the AIA filing-date focus and its first-to-file system.  
Mandating a Flexible Approach to Understanding Prior Art
Echoing KSR ’s directive that “[a] person of ordinary skill is also a person of ordinary creativity, not an automaton,” the guidelines emphasize the need for flexibility in understanding the scope of the prior art:
The Supreme Court instructed the Federal Circuit that persons having ordinary skill in the art (PHOSITAs) also have common sense, which may be used to glean suggestions from the prior art that go beyond the primary purpose for which that prior art was produced . . . a proper understanding of the prior art extends to all that the art reasonably suggests , and is not limited to its articulated teachings regarding how to solve the particular technological problem with which the art was primarily concerned.
This is a potentially confusing element of the guidance that is derived from the Supreme Court’s statement that the obviousness analysis “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ,” and the Court’s push back against “overemphasis on the importance of published articles and the explicit content of issued patents.” Quoting KSR . 
I am concerned that this portion of the guidance will lead to some major troubles because this portion of the guidance confuses KSR ‘s motivation to combine analysis with an examiner’s analysis of the scope-and-content of the prior art.  In the sections of KSR quoted above, the Supreme Court is discussing flexibility of the motivation-to-combine analysis and pushing back on the  Federal Circuit’s “TSM” test that the Supreme Court found was unduly bound to express teachings in the prior art.  The guidance, however, takes the Court’s analysis a step further and tells examiners that the scope-and-content of the prior art also need not be unduly bound to the prior art.  Confusion.   
To resolve this, I would want examiners to be clear in their reading of prior art — and particularly in their analysis of what is suggested-but-not-disclosed by the prior art.  Still, an important point made by the guidance is that the scope of a reference’s disclosure depends upon the level of skill in the art. For a PHOSITA, a circle within a chip-design drawing may have a particular meaning that would be meaningless to an ordinary reader.  Here though we also expect readers to have some amount of creativity — thus “ordinary creativity” must be taken into account and becomes part of the disclosure itself. 
But who is PHOSITA? . Although the guidance asks examiners to consider what might be suggested to a PHOSITA, the guidance does not ask examiners to actually determine the level of skill. Examiners almost never explicitly state the level of skill in the art — it will be interesting to see whether pushback on implicit statements of what a PHOSITA would know could see some results.

Flexibility in the scope of the prior art also extends to the analogous arts test.  Under long standing precedent, we assume that a PHOSITA would only look to certain “analogous” references in considering whether to move forward with an obvious project.  The two-step analogous arts test for obviousness involves determining whether a reference is within the scope of the prior art by considering two separate tests:

Same Field Test: This test asks whether the reference is in the same field as the inventor’s endeavor.
Reasonably Pertinent Test: This test asks whether the reference is reasonably pertinent to the particular problem with which the inventor was involved

A reference that fits either of these categories is considered analogous art and then can be used in the obviousness analysis. 
Although the Federal Circuit has reiterated the test as still binding post- KSR , several cases have suggested that KSR has expanded the scope of potential prior art. Wyers v. Master Lock Co., 616 F.3d 1231 (Fed. Cir. 2010) (SCT “directed us to construe the scope of analogous art broadly”); Airbus S.A.S. v. Firepass Corp., 941 F.3d 1374 (Fed. Cir. 2019) (analogous arts test “should take into account any relevant evidence in the record cited by the parties to demonstrate the knowledge and perspective of a person of ordinary skill in the art.”).  (Notice how many reference there are in the Winslow tableau image above). 
One oddity of the analogous arts guidance is that it cites Netflix, Inc. v. DivX, LLC, 80 F.4th 1352 (Fed. Cir. 2023) as “not[ing] the flexible approach under KSR as applied to the ‘same field of endeavor’ test.'”  But in Netflix , the Federal Circuit only cited KSR twice. The first cite was simply quoting the argument made by the patent challenger Netflix that KSR requires a broader analogous arts test (apparently quoting Wyers ). The court did not address that portion of the argument directly and then later cited KSR only for its statement that courts must be cautious to avoid hindsight bias. Id. (“A factfinder should be aware, of course, of the distortion caused by hindsight bias . . . .”). 
The court in Netflix also does not use the “flexible” term to describe its analogous arts test but rather highlights that the scope is substantially fact-dependent.  Still, Netflix is useful for patent examiners because it allows for broad “general” fields of endeavor and does not require substantial explanation of their linkage.
Endorsing a Flexible Approach to Providing a Motivation to Combine
The guidelines also reiterate KSR’s flexible approach to articulating motivations to combine prior art teachings:
Consistent with KSR, the Federal Circuit makes it clear that the obviousness analysis is not ‘confined by a formalistic conception of the words teaching, suggestion, and motivation.’ To be sure, the Federal Circuit continues to use the word ‘motivation’ in its obviousness jurisprudence. However, it is evident that the term is no longer understood in a rigid or formalistic way. 
Quoting Intel Corp. v. Qualcomm Inc., 21 F.4th 784 (Fed. Cir. 2021). 
The list of permissible motivations endorsed by the guidelines is expansive, including “market forces; design incentives; the ‘interrelated teachings of multiple patents’; ‘any need or problem known in the field of endeavor at the time of invention and addressed by the patent’; and the background knowledge, creativity, and common sense of the person of ordinary skill.”
Articulated Reasoning Still Required
Importantly, the guidelines caution that the flexibility approach does not relieve examiners of the need to provide articulated reasoning grounded in facts:
[P]recedential case law requires such an analysis. . . . [C]learly articulated obviousness rejections serve the goal of compact prosecution and allow patent practitioners and Office personnel to conclude patent examination or other USPTO proceedings at the earliest possible time.
Thus, while KSR and its progeny have expanded the sources of motivation and types of reasoning sufficient to support an obviousness rejection, conclusory rejections without articulated rationale will still not suffice.
Considering All Relevant Objective Evidence
The updated guidelines also emphasize the continued need to consider all relevant evidence, including commercial success, long-felt need, and failure of others:
The requirement to consider all relevant evidence is part of the establishment of a prima facie case of obviousness. . . . At each stage of USPTO proceedings, Office personnel must reweigh all evidence that is relevant and properly of record at that time. Newly submitted evidence in rebuttal of an obviousness rejection must not be considered merely for its knockdown value against any previously established prima facie case.
So while the list of potential motivations and reasoning supporting obviousness has expanded post-KSR, objective real-world evidence weighing against obviousness still plays a key role.
It follows from the directive to consider all relevant evidence that the mere existence of a reason to modify the teachings of the prior art may not necessarily lead to a conclusion that a claimed invention would have been legally obvious.
In practice, even if the examiner can easily spin a motivation to combine that seems to fill the gap between prior art and claims, compelling evidence that others failed to solve the problem; that a claimed solution enjoyed commercial success; or that the prior art teaches-away from the solution may undermine an obviousness finding.
Applying Reasoning to Reach Legal Obviousness Determinations
The guidelines wrap up by underscoring that obviousness remains a legal conclusion grounded in factual underpinnings:
Any legally proper obviousness rejection must identify facts and then articulate sound reasoning that leads to the conclusion that the claims would have been obvious to a PHOSITA. . . . After making appropriate findings of fact, Office personnel must use reasoning in accordance with Graham and KSR to determine whether a claimed invention would have been obvious in view of all relevant facts.
Any legally proper obviousness rejection must identify facts and then articulate sound reasoning that leads to the conclusion that the claims would have been obvious to a PHOSITA. . . . After making appropriate findings of fact, Office personnel must use reasoning in accordance with Graham and KSR to determine whether a claimed invention would have been obvious in view of all relevant facts. Office personnel must explain on the record how the conclusion of obviousness was reached. Once the findings of fact are articulated, Office personnel must provide an explanation to support an obviousness rejection under 35 U.S.C. 103.
Thus, while the approach to obviousness is flexible, rejections still require identifiable facts linked through articulated reasoning leading to the ultimate legal conclusion of obviousness.
Takeaways
The guidelines do not substantially change the examination approach to obviousness.  While the generalized flexibility guidance gives examiners more leeway, the requirements of articulated evidence and reasoning push the other way. It remains to be seen which side of the scale will be more rigorously enforced.  Of course, the emphasis throughout the guidance is on flexibility and common sense — suggesting that the expansive approach will carry more weight at the USPTO. 
For patent applicants, I want to note a few elements of the guidance that may help patent applicants: 

Noting rejections require: “a clear articulation of reasoning, grounded in relevant facts.”  Arguments focused on disputing the sufficiency of the examiner’s factual basis or reasoning may gain more traction than attempts to distinguish prior art.  Depending upon the situation, will probably be most effective if directed to internal management (SPE/TC Director) rather than as a PTAB appeal because the low standard for a prima facie case has not changed. 
Cautioning against: “references to ‘common sense’ without any support.”  This is similar to point 1, but patent applicants should scrutinize any attempt to rely on “common sense” without citation or more complete reasoning that ties the common sense to the level of skill in the art. 
Consideration of all relevant evidence before the examiner: The guidance emphasizes the importance of considering all relevant evidence that is properly before the decision-maker.  Of course, it will be the applicant’s duty to ensure that the evidence is before the examiner. 
Emphasizing secondary considerations evidence: “Objective indicia may often be the most probative and cogent evidence of nonobviousness in the record.”  This can be difficult and more costly, but providing evidence of secondary considerations of nonobviousness can easily win your case – so long as they include specific evidence tied to the claim scope rather than general conclusory statements.  The guidance particularly warns against “expert’s conclusory opinion about a matter relevant to the obviousness inquiry may be unavailing unless accompanied by factual support.”
The Level of Skill: These guidelines repeatedly emphasize the knowledge and skill of a PHOSITA. Of course, the  PHOSITA level is fact dependent and changes according to the area of technology or market.  But, examiners almost never explicitly define the level of skill associated with PHOSITA.  The guidelines new focus offers opportunity to challenge implicit assumptions made along this vein.

What do you think — are there further strategies that you can derive from the guidance?
Of some interest, in the past substantial aspects of guidance and training has focused on searching and identifying the best prior art.  This new guidance avoids that topic and instead instructs examiners on how to marshal their evidence to establish a prima facie case of obviousness.