VALIDITY ANALYSIS POST-KSR: SIMPLIFIED FLOW CHARTS In our Fall 2010 E-Newsletter, we reported some of the highlights from the new Examination Guidelines issued September 2010 by the U.S. Patent and Trademark Office (USPTO) regarding obviousness post-ksr. 1 As a follow-up, Staas & Halsey LLP has developed and provides below a Validity Analysis Diagram containing simplified flow charts for analyzing obviousness rejections in accordance with Post-KSR factors. It should be noted that the flow charts mainly focus on the Post-KSR factors. Therefore, the USPTO obviousness analysis provided in MPEP 2141 and 2143 (8 th ed. 2001)(Rev. 8, July 2010) should also be considered. VALIDITY ANALYSIS DIAGRAM INTERPRET (CONSTRUE) THE CLAIM DOES PROPERLY INTERPRETED CLAIM READ ON A SINGLE ITEM OF PRIOR ART? OBVIOUSNESS ANALYSIS 1) Scope and Content of the Prior Art 2) Differences Between Claims and Prior Art 3) Level of Skill In the Art 4) Secondary Considerations ANY MEANS LIMITATIONS? DOES PRIOR ART HAVE SAME STRUCTURE OR STRUCTURE EQUIVALENT (E.G., INTERCHANGEABLE) TO MEANS DISCLOSED IN SPECIFICATION? POST-KSR FACTORS COMBINATION OF PRIOR ART ELEMENTS? SUBSTITUTION OF ONE KWN ELEMENT FOR ATHER? A B OBVIOUS TO TRY? C EVIDENCE CONSIDERED? D OBVIOUS? INVALID: ANTICIPATED INVALID: OBVIOUS VALID 1 See USPTO New Examiner Guidelines Issued September 2010 Regarding Obviousness Post-KSR, Aaron Walker, Staas & Halsey LLP, E-Newsletter, Fall 2010.
A COMBINATION OF PRIOR ART ELEMENTS? WAS A KWN METHOD USED TO SOLVE UNKWN PROBLEM? DOES PRIOR ART TEACH AWAY? DOES COMBINATION YIELD MORE THAN PREDICTABLE RESULTS? DO ELEMENTS MAINTAIN PROPERTIES OR FUNCTIONS? WOULD ONE OF ORDINARY SKILL HAVE RECOGNIZED A REASON TO COMBINE; AND HAVE KWN HOW TO DO SO? MAY BE BVIOUS COMBINATION LIKELY TO BE OBVIOUS
B SUBSTITUTION OF ONE KWN ELEMENT FOR ATHER? IS REFERENCE ANALOGOUS? Must consider problem to be solved Not limited to field of endeavor of the invention if one of ordinary skill would have recognized as useful for applicant s purpose ADAPT EXISTING PROCESSES TO INCORPORATE INTERNET AND WEB BROWSER TECHLOGIES FOR COMMUNICATING AND DISPLAYING INFORMATION? REASON TO MODIFY CLOSEST PRIOR ART AND CLOSEST PRIOR ART TEACHES AWAY? REASON TO SELECT AND MODIFY THE CLOSEST PRIOR ART BUT REASONABLE EXPECTATION OF SUCCESS IDENTIFIED LINE OF REASONING THAT WOULD HAVE LED ONE OF ORDINARY SKILL IN THE ART TO SELECT AND MODIFY PRIOR ART IN A PARTICULAR WAY TO PRODUCE THE CLAIMED RESULT? MAY BE BVIOUS LIKELY TO BE OBVIOUS
C OBVIOUS TO TRY? RECOGNIZED PROBLEM OR NEED IN THE ART? SOLUTIONS ALREADY IDENTIFIED? FINITE NUMBER OF SOLUTIONS? ARE SOLUTIONS PREDICTABLE? REASONABLE EXPECTATION OF SUCCESS? MAY BE BVIOUS LIKELY TO BE OBVIOUS TO TRY
D EVIDENCE CONSIDERED? DID THE PTO MADE A PROPER PRIMA FACIE CASE OF OBVIOUSNESS? WAS ALL EVIDENCE CONSIDERED? IS EVIDENCE COMMENSURATE IN SCOPE WITH CLAIM? WAS EVIDENCE PRESENTED PROPERLY AND TIMELY? IS THERE A NEXUS BETWEEN CLAIMED INVENTION AND EVIDENCE? WAS EVIDENCE CONSIDERED ON THE RECORD? DOES EVIDENCE OF BVIOUSNESS OUTWEIGH EVIDENCE OF OBVIOUSNESS? * * Evidence of obviousness may include evidence in the record or what is in the specification. MAY BE BVIOUS LIKELY TO BE OBVIOUS