USPTO Examination Guidelines for Determining Obviousness Under 35 U.S.C. 103

The guidelines aim to help patent examiners assess whether an invention is non-obvious, which is a key requirement for obtaining a patent.

The determination of obviousness involves a legal analysis of whether the claimed invention, as a whole, would have been obvious to a person having ordinary skill in the art at the time the invention was made, based on the prior art available. The MPEP outlines several steps that examiners should follow:

1. Identify the Prior Art: The examiner must locate and consider the relevant prior art that existed before the filing date of the patent application. Prior art includes patents, published patent applications, scientific publications, and other publicly available materials.

2. Determine the Differences: The examiner needs to identify the differences between the claimed invention and the prior art. These differences are known as the "claimed invention features" and are used as a basis for the obviousness analysis.

3. Establish the Level of Ordinary Skill: Examiners must define the level of ordinary skill in the art at the time of the invention. This is a hypothetical person who possesses the average knowledge and skills of practitioners in the relevant field.

4. Assess the Scope and Content of the Prior Art: The examiner evaluates the relevant prior art to understand the state of the technology and the range of information available to the person of ordinary skill.

5. Determine the Motivation to Combine: The examiner considers whether a person of ordinary skill would have been motivated to combine the elements of the prior art to arrive at the claimed invention. Motivation can be explicit (suggested in the prior art) or implicit (based on common knowledge and design incentives).

6. Evaluate Secondary Considerations: Examiners may consider "secondary considerations" or objective indicia of non-obviousness. These include evidence of commercial success, long-felt but unresolved need, unexpected results, and others.

7. Make a Conclusion: Based on the analysis of the above factors, the examiner determines whether the claimed invention would have been obvious or non-obvious to a person of ordinary skill in the art.

It's important to note that the determination of obviousness is a subjective judgment based on the available evidence, and different examiners may reach different conclusions. Applicants can present arguments and evidence to support the non-obviousness of their invention during the patent prosecution process.