The USPTO has issued updated guidelines for examiners with respect to determining whether or not an invention is obvious. In the past three years, there have been several significant cases that have clarified the KSR v Teleflex ruling on obviousness further. The new guidelines take into consideration a total of 24 Federal Circuit cases that have offered additional guidance for examiners on interpreting KSR. The Office has grouped the cases into four categories of teaching points: (1) combining prior art elements; (2) substituting one known element for another; (3) the obvious-to-try rationale; and (4) consideration of evidence. These include In re Kubin, Crocs v International Trade Commission, DePuy Spine v Medtronic, and Eisai v Dr Reddy's Labs. Robert Polit of McAndrews Held & Malloy said that the guidelines will be "very useful – if examiners decide to use them". The guidelines are open to public comment and suggestions should be sent by email to KSR_Guidance@uspto.gov. There is no deadline for submitting comments.
