35 U.S.C. 103

In Graham, the Supreme Court explained that under section 103 the scope and content of the prior art are determined, the differences are ascertained and the level of ordinary skill is resolved; against that background, obviousness is decided⁶. The USPTO applies the same inquiries in examination².

1. Determine the scope and content of the prior artThe prior art is not limited to the references applied; it includes the understanding of a person of ordinary skill in the art².
2. Ascertain the differencesThe differences between the claimed invention and the prior art are identified^2,6.
3. Resolve the level of ordinary skillFactors may include the type of problems in the art, prior solutions, the rapidity of innovation, the sophistication of the technology and the educational level of active workers in the field⁷.
4. Weigh objective evidenceEvidence sometimes called secondary considerations, such as commercial success, long-felt but unsolved needs, failure of others and unexpected results, must be evaluated when present, and counts only if it is related to the claimed invention¹¹. Its weight is decided case by case^2,6.

In KSR, the Supreme Court reaffirmed the Graham framework but held that the Federal Circuit had applied the teaching, suggestion, motivation (TSM) test in an overly rigid and formalistic way². The Court described its cases as setting out an expansive and flexible approach³. It stated that combining familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results³. The USPTO supplemented its obviousness guidance on February 27, 2024 (89 FR 14449), after the January 31, 2024 cut-off date of the current MPEP¹².

A rejection must rest on articulated reasoning with some rational underpinning, not on mere conclusory statements². MPEP 2141 lists example rationales that may support a conclusion of obviousness²:

• Combining prior art elements according to known methods to yield predictable results².
• Simple substitution of one known element for another to obtain predictable results².
• Using a known technique to improve similar devices, methods or products in the same way².
• Applying a known technique to a known device, method or product ready for improvement, to yield predictable results².
• Obvious to try: choosing from a finite number of identified, predictable solutions with a reasonable expectation of success².
• Known work in one field prompting predictable variations for use in the same or a different field, based on design incentives or other market forces².
• Some teaching, suggestion or motivation in the prior art that would have led a person of ordinary skill to modify or combine the references².

Once the examiner has made the Graham findings and concluded that the claimed invention would have been obvious, the burden shifts to the applicant to show that the findings were wrong or to provide other evidence of nonobviousness². The rejection arrives in an Office action.

• Under 37 CFR 1.111(b), the reply must distinctly and specifically point out the supposed errors and reply to every ground of objection and rejection².
• A bare statement that the Office has not made a prima facie case is not an adequate traverse; the examiner may repeat the rejection and make the next action final².
• Rebuttal evidence may include secondary considerations and evidence of unexpected results².
• A reply may also show that a cited disclosure is not prior art because a section 102(b) exception applies².

The AIA amended section 103 together with section 102, effective March 16, 2013⁴. For applications under the AIA's first inventor to file provisions, obviousness is judged before the effective filing date of the claimed invention; for applications under pre-AIA law, it is judged at the time of the invention².

The USPTO's examination guidelines for obviousness open with a discussion of this decision².

Claim 4 of a patent on an adjustable pedal assembly with electronic throttle control was held obvious. The Court found that the Court of Appeals had analyzed the issue in a narrow, rigid manner inconsistent with section 103, and reversed3.