The United States Patent and Trademark Office (USPTO) recently rolled out its Updated Guidance for Making a Proper Determination of Obviousness, which was published in the Federal Register on February 27, 2024 (89 Fed. Reg. 14,449). This update does not aim to alter existing law but emphasizes a flexible approach to determining patent obviousness as mandated by the U.S. Supreme Court in its landmark decision, KSR International Co. v. Teleflex Inc.

While the guidance is not legally binding, it offers invaluable insights into the USPTO’s current thinking on the subject and is particularly useful for practitioners navigating patent prosecution and post-grant validity challenges.

Key Aspects of the Updated Guidance

  • Flexibility in Obviousness: The concept of flexibility in the obviousness inquiry dates back to the Supreme Court’s decision in Graham v. John Deere Co. However, what does “flexibility” truly entail? According to recent USPTO guidance, it involves a nuanced understanding of prior art and its potential implications beyond its primary disclosure.
  • Analyzing Prior Art with Common Sense: The guidance underscores the importance of using “common sense” when evaluating prior art. This means considering all reasonable suggestions that prior art might imply, not just its explicit teachings. A rigid view of prior art can lead to an overly narrow interpretation that might miss crucial inferences an ordinarily skilled artisan would make.
  • Analogous Art and Motivation to Combine: Determining whether prior art disclosures are analogous and identifying motivations to combine different references are central to the flexibility highlighted in the KSR case. The guidance elaborates that courts should adopt a broad view of what constitutes analogous art, taking into account ordinary creativity rather than a mechanistic approach.

Practical Implications for Practitioners

  • Understanding Flexibility in Legal Reasoning Legal practitioners should note that while motivations to combine may appear generic, they can be highly relevant. The guidance advises against outright dismissal of such motivations without proper consideration of their broader applicability.
  • Supporting Obviousness Determinations with Evidence An obviousness rejection must be well-supported by evidence. The USPTO cautions against relying solely on “common sense” without a detailed and reasoned analysis backed by factual evidence. Furthermore, any decision on obviousness should consider all evidence on record, including any that might indicate non-obviousness.


The Updated Guidance on Obviousness by the USPTO serves as a crucial reminder of the flexibility required in patent law determinations. It reflects a synthesis of past Federal Circuit decisions and provides a clear framework for analyzing the scope and content of prior art. For patent practitioners, this guidance offers a roadmap for more effectively arguing obviousness cases, ensuring that their reasoning aligns with both the USPTO’s approach and judicial precedent. In summary, while the guidance itself does not alter the legal landscape, it refines our understanding of how flexibility can and should play a role in the determination of patent obviousness. It’s a must-read for anyone involved in the intricate dance of patent prosecution and litigation.

This article represents personal insights and interpretations of the author and is not affiliated with any past or present professional associations or clients.
Michael Jones Michael Jones is the founder and managing member of Jones Intellectual Property, whose mission is to provide his clients with personalized, effective legal solutions. Michael has focused on creating, protecting, and advocating for his clients’ intellectual property rights throughout his career. View Bio