Patent Law

Jean Witz, Training Quality Assurance Specialist with USPTO Technology Center 1600 (biotechnology, chemistry, pharmaceuticals), presents the above-named discussion of obviousness as it relates to life sciences patents.  She writes:

The Basic Approach to Determining Obviousness Remains the Same

• An examiner is still required to provide a reasoned statement of rejection grounded in the Graham inquiries.  He or she must articulate a reason or rationale to support the obviousness rejection. 
• See KSR at 1396  ("To facilitate review, [the obviousness] analysis should be made explicit.") (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
• "If a court, or patent examiner, conducts [the Graham] analysis and concludes the claimed subject matter was obvious, the claim is invalid under § 103.? KSR at 1391.

 Rationales Supporting a Prima Facie Case of Obviousness

• Combining prior art elements according to known methods to yield predictable results
• Simple substitution of one known, equivalent element for another to obtain predictable results
• Use of known technique to improve similar devices (methods, or products) in the same way
• Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results
• "Obvious to try" ? choosing from a finite number of predictable solutions
• Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations would have been predictable to one of ordinary skill in the art
• Teaching, suggestion, or motivation, either in the references themselves or in the knowledge generally available to one of ordinary skill in the art, to modify the reference or to combine reference teachings

See the full presentation here.