On February 27, 2024, the United States Patent and Trademark Office (“USPTO”) issued their “Updated Guidance for Making a Proper Determination of Obviousness” at 89 Fed. Reg. 14449.

The guidance re-emphasizes the USPTO’s position that a flexible approach is required for determining what the prior art teaches and why the prior art may be obvious to modify, but that the determination of obviousness still requires consideration of all relevant evidence and to be supported by articulated, sound reasoning supported by factual evidence.

With respect to understanding the scope of the prior art, the guidance states that “[a] proper understanding of the prior art extends to all that the art reasonably suggests, and is not limited to its articulated teachings regarding how to solve the particular technological problem with which the art was primarily concerned” and “[w]hen evaluating the prior art from the perspective of a PHOSITA, Office personnel must take that person's ‘ordinary creativity’ into account.”

The guidance further states that “the flexible approach to obviousness encompasses … also how to provide a reasoned explanation to support a conclusion that claims would have been obvious.”  For example, when formulating an obviousness rejection, Office personnel may use “any clearly articulated line of reasoning that would have allowed a PHOSITA to draw the conclusion that a claimed invention would have been obvious in view of the facts.”  Moreover, “a proposed reason to combine the teachings of prior art disclosures may be proper, even when the problem addressed by the combination might have been more advantageously addressed in another way,” and “a proposed reason [to modify a prior reference] is not insufficient simply because it has broad applicability.”

While emphasizing that the approach to determining obviousness is flexible, the guidance cautions that “a proper obviousness rejection still requires the decision-maker to provide adequate analysis based on evidentiary support.”  For example, the guidance states that “any legally proper obviousness rejection must identify facts and then articulate sound reasoning that leads to the conclusion that the claims would have been obvious to a PHOSITA.”

Additionally, the guidance states that second considerations (e.g., commercial success, long-felt but unmet need, failure of others, copying by competitors, and unexpected results), when made at issue in a case, must be considered by the decision-maker in establishing a prima facie case of obviousness, and all relevant evidence, including secondary considerations, must be reweighed at each stage of USPTO proceedings.