Vidal urges ‘flexible approach’ to obviousness

Guidance aims to clarify how 15-year-old SCOTUS precedent should be applied |  USPTO underscores need for a flexible approach to obviousness | Emphasises need for ‘a reasoned explanation’ in conclusion.

The US Patent and Trademark Office (USPTO) has released updated guidance for patent examiners tasked with determining the obviousness of patents, as well as clarification on how the Supreme Court's directives should be applied.

Published on the Federal Register today, February 27 and signed by the office director Kathi Vidal, the guidance serves “as a reminder for USPTO personnel of the flexible approach to obviousness that is required”.

The update stems from the after-effects of the Supreme Court's unanimous decision regarding the obviousness of a claimed invention under 35 U.S.C. 103 in KSR Int'l Co v Teleflex (2007).

Since then, the USPTO noted that the Federal Circuit “has helped to refine the contours of the obviousness inquiry”.

Gas-pedal system patent

In that particular case, Teleflex sued KSR International, alleging that KSR had infringed its patent for an adjustable gas-pedal system composed of an adjustable accelerator pedal and an electronic throttle control.

KSR countered that Teleflex's patent was obvious, and therefore unenforceable—under Section 103(a), obvious inventions cannot be patented, putting in motion a tangled trajectory through the US courts.

A federal district court accepted KSR's argument that the invention was obvious because each of the invention’s components existed in previous patents.

However, Teleflex later found success at the Court of Appeals for the Federal Circuit, which reversed the District Court—prompting KSR to appeal to the US Supreme Court.

SCOTUS then ruled unanimously that the Federal Circuit had “analysed the issue in a narrow, rigid manner inconsistent with [Section 103(a)] and our precedents,” referring to the Federal Circuit's application of the “teaching-suggestion-motivation” (TSM) test”.

That opinion found that Teleflex's patent was obvious and therefore invalid.

‘A reasoned explanation’

In its updated guidance, the USPTO underscores the need for a flexible approach to obviousness but also emphasises the need for “a reasoned explanation” when reaching a conclusion that a claimed invention would have been obvious.

However, the office added that its note does not constitute substantive rulemaking and “does not have the force and effect of law”.

This means that rejections will continue to be based on the substantive law and any failure by office personnel to follow this guidance is “neither appealable nor petitionable”.

The USPTO does not intend to announce any new practice or procedure by way of this updated guidance, it added

“This guidance is based on the office's current understanding of the law and is believed to comport with the binding precedent of the Supreme Court and the Federal Circuit. Furthermore, it is meant to be consistent with the office's present examination policy,” said the USPTO.

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