Obviousness Guidance at the PTO By Wen Xue* Download a PDF version of this article here. Introduction I. Obviousness Errors in Patent Prosecution A. Errors Arising from the Indeterminateness of Obviousness B. Errors Arising from a Biased PTO’s Prosecution Practice II. The PTO’s Bounded Authority A. The PTO’s Power and Authority B. The PTO’s Previous Practice of Adopting Guidance 1. Interpretation in Response to Legislative or Judicial Change in Law 2. Guidance in Response to Changes in Fact III. A Proposal for Obviousness Guidance IV. Judicial Challenge to the Obviousness Guideline A. Challenge of a Patent Rejection B. Challenge of the PTO’s Rulemaking Authority C. Challenge of the Substantive Content of the Guideline V. Cost-Benefit Analysis of the Obviousness Guideline A. The Cost B. The Benefit C. Comparison with the AIA Proceeding Conclusion Continue reading →
