New Obviousness Guidelines from the USPTO and Their Impact on Prosecution
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New Obviousness Guidelines from the USPTO and Their Impact on Prosecution Anthony C. Tridico & Carlos M. Téllez MAY 9, 2011 ©Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, 2011 1 Disclaimer These materials are public information and have been prepared solely for educational purposes to contribute to the understanding of American intellectual property law. These materials reflect only the personal views of the authors and are not individualized legal advice. It is understood that each case is fact-specific, and that the appropriate solution in any case will vary. Therefore, these materials may or may not be relevant to any particular situation. Thus, the authors and Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P. cannot be bound either philosophically or as representatives of their various present and future clients to the comments expressed in these materials. The presentation of these materials does not establish any form of attorney-client relationship with the authors or Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P. While every attempt was made to insure that these materials are accurate, errors or omissions may be contained therein, for which any liability is disclaimed. 2 Agenda y Background on the 2010 Obviousness Guidelines y Discussion of the 2010 Obviousness Guidelines 1) Principles of Obviousness 2) Impact of the KSR decision 3) Obviousness examples from the Federal Circuit 4) Cases related to consideration of evidence by USPTO y Practical considerations on how to approach obviousness rejections { A novel approach to rebut a prima facie case of obviousness 3 Agenda y Background on the 2010 Obviousness Guidelines y Discussion of the 2010 Obviousness Guidelines 1) Principles of Obviousness 2) Impact of the KSR decision 3) Obviousness examples from the Federal Circuit 4) Cases related to consideration of evidence by USPTO y Practical considerations on how to approach obviousness rejections { A novel approach to rebut a prima facie case of obviousness 4 2010 USPTO Obviousness Guidelines y Effective September 1, 2010 y Do not replace the 2007 Guidelines published after KSR, but rather, supplement them y Do not identify new obviousness rationales y Do not represent new PTO policy 5 2010 USPTO Obviousness Guidelines y Do not constitute substantive rule making and hence do not have the force and effect of law. y Thus, failure of the USPTO to follow the Guidelines is NOT appealable y Rejections by Examiners are appealable y Review 24 Federal Circuit cases decided after KSR 6 Importance of 2010 Guidelines y Obviousness is the no. 1 cause of invalidity in litigated patents and the most common rejection by Examiners y Provide examples of actual application of principles in KSR in which inventions were found obvious and examples of non-obvious inventions y “No examiner may choose to disregard . [KSR] . or the associated examiner guidance materials” (PTO’s slides summarizing Guidelines) 7 Purpose of 2010 Guidelines y “The purpose of this 2010 KSR Guidelines Update is to remind Office personnel of the principles of obviousness explained by the Supreme Court in KSR Int’l Co. v. Teleflex Inc., 550 U.S 398 (2007) (KSR), and to provide additional guidance in view of decisions by the United States Court of Appeals for the Federal Circuit (Federal Circuit) since KSR.” 8 Agenda y Background on the 2010 Obviousness Guidelines y Discussion of the 2010 Obviousness Guidelines 1) Principles of Obviousness 2) Impact of the KSR decision 3) Obviousness examples from the Federal Circuit 4) Cases related to consideration of evidence by USPTO y Practical considerations on how to approach obviousness rejections { A novel approach to rebut a prima facie case of obviousness 9 1) Principles of Obviousness y 2007 Obviousness guidelines remain valid y Emphasize that the Graham v John Deere inquiries remain the starting point for obviousness analysis y 2007 guidelines: every obviousness rejection requires to: { (a) Resolve the Graham inquiries; { (b) Articulate the appropriate findings of fact; and { (c) Explain how the rationale leads to a conclusion of obviousness. 10 1) Principles of Obviousness y Graham v John Deere inquiries { Determine the scope and content of the prior art { Identify the differences between the claimed invention and the prior art { Determine the level of ordinary skill in the art { Consider secondary indicia of nonobviousness (unexpected results, unmet long felt need, commercial success, etc) 11 1) Principles of Obviousness y “[I]t 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” 12 Agenda y Background on the 2010 Obviousness Guidelines y Discussion of the 2010 Obviousness Guidelines 1) Principles of Obviousness 2) Impact of the KSR decision 3) Obviousness examples from the Federal Circuit 4) Cases related to consideration of evidence by USPTO y Practical considerations on how to approach obviousness rejections { A novel approach to rebut a prima facie case of obviousness 13 2) Impact of the KSR decision y KSR is a U.S. Supreme Court decision. Reaffirmed obviousness analysis under Graham v John Deere y Teaching-Suggestion-Motivation (TSM) test no longer controls obviousness determinations { Examiner can use TSM test to find claim obvious, but { Applicants cannot use TSM test to argue nonobviousness y Exemplified 7 rationales for obviousness, among them “obvious to try” 14 2) Impact of the KSR decision y “[W]hen considering obviousness, Office personnel are cautioned against treating any line of reasoning as a per se rule . rather [each rationale] must be explained and shown to apply to the facts at hand.” y “A similar caveat applies to any obviousness analysis. 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.” 15 Agenda y Background on the 2010 Obviousness Guidelines y Discussion of the 2010 Obviousness Guidelines 1) Principles of Obviousness 2) Impact of the KSR decision 3) Obviousness examples from the Federal Circuit 4) Cases related to consideration of evidence by USPTO y Practical considerations on how to approach obviousness rejections { A novel approach to rebut a prima facie case of obviousness 16 3) Examples from the Fed. Cir. y Guidelines discuss only 3 of the 7 rationales from KSR { Combining prior art elements { Substituting one known element for another, and { Obvious to try 17 Agenda y Background on the 2010 Obviousness Guidelines y Discussion of the 2010 Obviousness Guidelines 1) Principles of Obviousness 2) Impact of the KSR decision 3) Obviousness examples from the Federal Circuit a) Combining prior art elements b) Substituting one known element for another, and c) Obvious to try 4) Cases related to consideration of evidence by USPTO y Practical considerations on how to approach obviousness rejections 18 3.1 Combining Prior Art Elements y Post-KSR cases have held such combinations to be nonobvious “when the combination requires a greater expenditure of time, effort, or resources than the prior art teachings.” Case Cite Notes In re Omeprazole Patent 536 F.3d 1361 (Fed. Even where a general method that could have been applied to make the claimed product was known Litigation Cir. 2008) and within the level of skill of the ordinary artisan, the claim may nevertheless be nonobvious if the problem which had suggested use of the method had been previously unknown. Crocs Inc. v. 598 F.3d 1294 (Fed. “[M]erely pointing to the presence of all claim elements in the prior art is not a complete statement of a International Trade Cir. 2010) rejection for obviousness.” Commission Sundance Inc. v. 550 F.3d 1356 (Fed. A claimed combination of prior art elements may be nonobvious where the prior art teaches away from DeMonte Fabricating Cir. 2008) the claimed combination and the combination yields more than predictable results. Ltd. Ecolab Inc. v. FMC Corp. 569 F.3d 1335 (Fed A combination of known elements would have been prima facie obvious if an ordinarily skilled artisan Cir. 2009) would have recognized an apparent reason to combine those elements and would have known how to do so. Wyers v. Master Lock No. 2009-1412— The scope of analogous art is to be construed broadly and includes references that are reasonably Co. F.3d-- (Fed. Cir. July pertinent to the problem that the inventor was trying to solve. Common sense may be used to support a 22, 2010) legal conclusion of obviousness so long as it is explained with sufficient reasoning. DePuy Spine Inc. v. 567 F.3d 1314 (Fed. Predictability as discussed in KSR encompasses the expectation that prior art elements are capable of Medtronic Sofamor Cir. 2009) being combined, as well as the expectation that the combination would have worked for its intended Danek Inc. purpose. An inference that a claimed combination would not have been obvious is especially strong where the prior art’s teachings undermine the very reason being proffered as to why a person of ordinary skill would have combined the known elements. 19 3.1 Combining Prior Art Elements Examiners must articulate the following: y A finding that the