By Christopher P. Singer —

As widely publicized, U.S. Patent and Trademark Office Director David Kappos
launched a blog earlier this month that is intended to engage the public and provide updates
regarding USPTO news (see "Director Kappos Joins Blogger Ranks").  In an
article posted on November 24, 2009, Director Kappos announced that the public
has been requesting additional guidance concerning the determination of
non-obviousness in light of the Supreme Court's decision in KSR International Co. v. Teleflex Inc.  While the Office did publish examination
guidelines (72 Fed. Reg. 57526) that are currently used by the examining corps to determine non-obviousness of
a claim, Director Kappos noted that the public has expressed concern regarding
the manner in which the Office is applying KSR
in practice.  The public has been
heard.

Noting that a number of court decisions regarding
obviousness have been rendered in the two years since the KSR decision, Mr. Kappos stated that:  "[o]ffice personnel are
presently reviewing court decisions with an eye toward identifying factual
scenarios to illustrate the developing law of obviousness."  A good amount of effort will evidently
be directed to cases that have analyzed the "obvious-to-try"
rationale, implying that this basis has been particularly troublesome for
applicants.

The Director also noted that applicants and
practitioners need to be keenly aware of how KSR has changed the law of
obviousness, stating that:

[I]t
may be necessary to review a broader cross-section of prior art than was
previously necessary, or to consider filing evidence of unexpected results earlier
rather than later in the course of prosecution.  By being proactive,
practitioners will expedite prosecution and avoid unnecessary fees and RCE
filings.

Understandably, Mr. Kappos did not specify a
particular timeline for the completion of the review and publication of further
guidelines.  Nevertheless, he did
state his commitment to providing ongoing education for examiners and managers
in an effort to ensure that KSR is clearly and properly applied, and his
intention to keep an open dialog with applicants and practitioners regarding
the "contours and boundaries" of KSR.