By Bruce D. Sunstein, a member of our Patent Practice Group
On September 1, the United States Patent and Trademark Office issued updated guidelines
for use by patent examiners in determining when the subject matter
claimed in a patent application should be rejected for being obvious.
The updated guidelines differ from the original guidelines,
issued in 2007 in one major respect: They acknowledge that not all
inventions are obvious. The original guidelines, occupying nine densely
worded pages of the Federal Register, discuss not a single example of
an invention that surmounts the obviousness hurdle.
The updated guidelines,
issued under the new, more patent-friendly regime of David Kappos, who
has been Director of the PTO since August 2009, are more balanced. Of
the substantive examples dealing with obviousness determinations, nine
reflect a finding of obviousness and ten reflect a finding of
The original guidelines were triggered by the decision of the Supreme Court in KSR v. Teleflex, which, as we reported
in 2007, made it easier to reject patent applications and to
invalidate issued patents for obviousness. The updated guidelines
reflect developments in the law since KSR v. Teleflex.
The rationale, articulated
in both sets of guidelines, for rejection of inventions as obvious
largely depends on the predictability of technology in the prior art
related to the invention. The guidelines make clear that showing
unexpected results associated with the invention can be an effective
way of overcoming an obviousness rejection. But it is not the only way.
Patent practitioners in
our office have found that, even before embarking on the effort of
showing unexpected results to overcome an obviousness rejection, one
should first assess whether an examiner's rejection properly stacks up
as a matter of form. A patent application defines the invention by a
series of claims. A proper obviousness rejection by the PTO must
address each part of each claim and show how each part can be found in
the prior art.
Often a rigorous
evaluation of a claim rejection will show that the examiner has failed
to address one or more parts of the claim in making the rejection.
Sometimes the failure comes simply from overlooking one or more words
in the claim; sometimes the failure comes from a misunderstanding of a
prior art reference cited in making the rejection; and sometimes the
failure comes from insufficient appreciation of the invention defined
by the claim.
A powerful response can be
fashioned by calling out such a failure, but it will gain traction only
when received by an office willing to listen. The updated guidelines
reveal a PTO more willing to heed arguments that an invention claimed in
a patent application has been wrongly deemed obvious. That is good
news for inventors and for innovation.
Bruce D. Sunstein is the founder of Sunstein Kann Murphy & Timbers
LLP. His practice focuses on portfolio development, litigation, and
licensing of patents, trademarks, and copyrights. He established
procedures that underpin operation of the Patent Practice Group.
His strategic approach to intellectual property has enabled a wide
range of enterprises to establish dominant patent positions in their
markets. Technologies regularly involved in Bruce's practice include
bioinformatics, electronic circuits and systems, computer hardware and
software, communications and speech, medical devices, pharmaceuticals
and mechanical devices.