In the wake of KSR v. Teleflec, Deputy Commissioner Peggy Focarino has submitted a memorandum to the technology center directors with preliminary examination guidance. The memo includes marching orders requiring that examiners continue to provide "reasons" for combining prior art in an obviousness rejection.
[I]n formulating a rejection under 35 U.S.C. 103(a) based upon a combination of prior art elements, it remains necessary to identify the reason why a person of ordinary skill in the art would have combined the prior art elements in the manner claimed.
In submitting the memo, Deputy Commissioner Focarino noted that the Supreme Court's opinion requires explicit discussion:
To facilitate review, [the apparent reasons for combining prior art] should be made explicit.
In addition, the memo reminds us of the basics of Graham v. John Deere:
- determining the scope and contents of the prior art;
- ascertaining the differences between the prior art and the claims in issue;
- resolving the level of ordinary skill in the pertinent art; and
- evaluating evidence of secondary consideration.
- Download Focarino.pdf (Thanks to Hal Wegner and others for the memo).