Developments in the Obviousness Inquiry After KSR v.Teleflex

[Federal Register: September 1, 2010 (Volume 75, Number 169)]
[Notices][Page 53643-53660][DOCID:fr01se10-31]
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DEPARTMENT OF COMMERCE
Patent and Trademark Office

Examination Guidelines Update: Developments in the Obviousness
Inquiry After KSR v.Teleflex

AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Notice.
To view the complete text of this notice see:
http://frwebgate.access.gpo.gov/cgi-bin/getdoc.cgi?dbname=2010_register&docid=fr01se10-31
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SUMMARY: The United States Patent and Trademark Office (USPTO or Office) is issuing an update (2010 KSR Guidelines Update) to its obviousness guidelines for its personnel to be used when applying the law of obviousness under [[Page 53644]] 35 U.S.C. 103. This 2010 KSR Guidelines Update highlights case law developments on obviousness under 35 U.S.C. 103 since the 2007 decision by the United States Supreme Court (Supreme Court) in KSR Int'l Co. v. Teleflex Inc. These guidelines are intended to be used by Office personnel in conjunction with the guidance in the Manual of Patent Examining Procedure when applying the law of obviousness under 35 U.S.C. 103. Members of the public are invited to provide comments on the 2010 KSR Guidelines Update. The Office is especially interested in receiving suggestions of recent decisional law in the field of obviousness that would have particular value as teaching tools.
DATES: Effective Date: This 2010 KSR Guidelines Update is effective
September 1, 2010.

Determining Obviousness

Determining whether an invention is obvious and therefore not able to be patented is not as easy as it sounds. Even patent examiners can be challenged by this issue. To help, the USPTO created Examination Guidelines for Determining Obviousness Under U.S.C. 103**[R-6]. The guidelines review pertinent court cases and outline a procedure for searching for prior art that has a bearing on obviousness.