Wednesday, September 1, 2010

PTO new KSR guidelines

The PTO has published Updated KSR Guidelines in the Federal Register (available here). The guidelines have been updated in view of 24 post-KSR Circuit opinions from the Federal Circuit.

The Guidelines include a "teaching point" for each of the post-KSR opinions. The Guidelines break the opinions into two main categories: 20 opinions dealing with the prima facie case; and 4 opinions dealing with rebuttal evidence. The prima facie category is further divided into: Combining Prior Art Elements (6 opinions); Substituting One Known Element for Another (7 opinions); and Obvious to Try (7 opinions).

The Guidelines repeatedly stress the importance of fact finding and explanation.
  • "It remains Office policy that appropriate factual findings are required in order to apply the enumerated rationales properly. If a rejection has been made that omits one of the required factual findings, and in response to the rejection a practitioner or inventor points out the omission, Office personnel must either withdraw the rejection, or repeat the rejection including all required factual findings"
  • "This requirement for explanation remains even in situations in which Office personnel may properly rely on intangible realities such as common sense and ordinary ingenuity"
  • "When considering obviousness, Office personnel are cautioned against treating any line of reasoning as a per se rule."
  • "Simply stating the principle (e.g., "art recognized equivalent," "structural similarity") without providing an explanation of its applicability to the facts of the case at hand is generally not sufficient to establish a prima facie case of obviousness."

The Guidelines also refer to Examiner training materials from 2008 that are specific to particular technology centers, found at

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