Federal Register / Vol. 89, No. 39 / Tuesday, February 27, 2024 / Notices 14453 

evidence in rebuttal of an obviousness 

rejection must not be considered merely 

for its knockdown value against any 

previously-established prima facie case. 

See MPEP 2145, and in particular, the 

cases cited in examples 1–3. Evidence 

submitted to rebut a determination of 

obviousness is important because it may 

constitute ‘‘independent evidence of 

nonobviousness.’’ Pressure Prods. Med. 

Supplies, Inc. v. Greatbatch Ltd., 599 

F.3d 1308, 1319 (Fed. Cir. 2010), 

quoting Ortho-McNeil Pharm., Inc. v. 

Mylan Labs., Inc., 520 F.3d 1358, 1365 

(Fed. Cir. 2008). Such evidence ‘‘may 

often be the most probative and cogent 

evidence of nonobviousness in the 

record.’’ Ortho-McNeil, 520 F.3d at 

1365, quoting Catalina Lighting, Inc. v. 

Lamps Plus, Inc., 295 F.3d 1277, 1288 

(Fed. Cir. 2002). 

It follows from the directive to 

consider all relevant evidence that the 

mere existence of a reason to modify the 

teachings of the prior art may not 

necessarily lead to a conclusion that a 

claimed invention would have been 

legally obvious. Intercontinental Great 

Brands LLC v. Kellogg N. Am. Co., 869 

F.3d 1336, 1346–47 (Fed. Cir. 2017). 

When stepping into the shoes of a 

PHOSITA, the decision-maker should 

seek to understand the ‘‘complete 

picture’’ regarding the PHOSITA’s 

perspective on obviousness, having due 

regard for additional evidence that may 

weigh against any prima facie case. Id. 

at 1346. In determining whether a 

claimed invention would have been 

obvious, Office personnel are charged 

with weighing all the evidence of 

record, including evidence of 

obviousness and evidence of 

nonobviousness. ‘‘If this weighing 

shows obviousness by a preponderance 

of the evidence, then the claims at issue 

were unpatentable.’’ ACCO Brands 

Corp. v. Fellowes, Inc., 813 F.3d 1361, 

1366 (Fed. Cir. 2016). 

Without diminishing the need to 

consider all relevant evidence when 

making a determination about 

obviousness, the Federal Circuit has 

made it clear that an expert’s conclusory 

opinion about a matter relevant to the 

obviousness inquiry may be unavailing 

unless accompanied by factual support. 

See, for example, Ethicon, 844 F.3d at 

1352 (concluding in the context of an ex 

parte appeal that the Board properly 

gave little weight to conclusory expert 

testimony regarding objective indicia); 

Quanergy Sys., Inc. v. Velodyne Lidar 

USA, Inc., 24 F.4th 1406, 1417 (Fed. Cir. 

2022) (agreeing with the Board, in the 

context of an inter partes review 

proceeding, that the proffered expert 

testimony was ‘‘incomplete, unspecific, 

and ultimately conclusory’’ and 

therefore not entitled to controlling 

weight). Consistently, in the context of 

proceedings before the PTAB, Office 

regulations provide that ‘‘[e]xpert 

testimony that does not disclose the 

underlying facts or data on which the 

opinion is based is entitled to little or 

no weight.’’ 37 CFR 42.65(a); see also 

Xerox Corp. v. Bytemark, Inc., No. 

IPR2022–00624, 2022 WL 3648989, at 

*6 (PTAB 2022) (precedential) (The 

USPTO Director affirmed that because 

‘‘the cited declaration testimony is 

conclusory and unsupported, [it] adds 

little to the conclusory assertion for 

which it is offered to support, and is 

entitled to little weight.’’). Further, 

during the examination of an 

application or the reexamination of a 

patent, any objective evidence of 

nonobviousness must be submitted by 

way of an affidavit or declaration; 

attorney arguments alone cannot take 

the place of such evidence in the record 

where the evidence is necessary. See 37 

CFR 1.132; MPEP 716.01(c) and MPEP 

2145, subsection I. 

Consistent with Federal Circuit 

precedent, Office personnel are directed 

to consider all objective evidence that 

has been properly made of record and 

is relevant to the issue of obviousness at 

MPEP 2141, subsection II. 

V. Office Personnel Will Continue To 

Apply Reasoning to Facts in Order To 

Reach a Proper Legal Determination of 

Obviousness 

Any legally proper obviousness 

rejection must identify facts and then 

articulate sound reasoning that leads to 

the conclusion that the claims would 

have been obvious to a PHOSITA. 

‘‘Obviousness is a question of law based 

on underlying facts. . . .’’ Henny Penny 

Corp. v. Frymaster LLC, 938 F.3d 1324, 

1331 (Fed. Cir. 2019). During patent 

examination, making factual findings 

concerning the content of the prior art 

is often the first step when considering 

whether or not a claimed invention 

would have been obvious. As discussed 

above, the obviousness determination 

may also involve other facts, such as 

those presented in an evidentiary 

declaration. After making appropriate 

findings of fact, Office personnel must 

use reasoning in accordance with 

Graham and KSR to determine whether 

a claimed invention would have been 

obvious in view of all relevant facts. 

Office personnel must explain on the 

record how the conclusion of 

obviousness was reached. See MPEP 

2141, subsection II: ‘‘Once the findings 

of fact are articulated, Office personnel 

must provide an explanation to support 

an obviousness rejection under 35 

U.S.C. 103.’’ See also MPEP 2142. 

In keeping with the flexible approach 

to obviousness in KSR and Graham, 

there is no one-size-fits-all approach to 

crafting an obviousness rejection. See 

KSR, 550 U.S. at 415, 127 S. Ct. at 1739. 

Different technologies or different 

factual situations may lend themselves 

to different formats for presentation of 

the relevant facts, or to different lines of 

reasoning to explain the legal 

conclusion of obviousness. Office 

personnel are called on to use their legal 

and technological expertise to 

determine how best to explain an 

obviousness rejection. See Hyatt v. 

Kappos, 625 F.3d 1320, 1343 (Fed. Cir. 

2010), aff’d and remanded, 566 U.S. 

431, 132 S. Ct. 1690 (2012). Any legally 

proper obviousness rejection will be 

characterized by findings of fact and a 

reasoned explanation showing why the 

claimed invention would have been 

obvious to a PHOSITA. See, for 

example, In re Biedermann, 733 F.3d 

329, 335–36 (Fed. Cir. 2013); Arctic Cat 

Inc. v. Bombardier Recreational Prod. 

Inc., 876 F.3d 1350, 1360–61 (Fed. Cir. 

2017). 

Katherine K. Vidal, 

Under Secretary of Commerce for Intellectual 

Property and Director of the United States 

Patent and Trademark Office. 

[FR Doc. 2024–03967 Filed 2–26–24; 8:45 am] 

BILLING CODE 3510–16–P 

DEPARTMENT OF DEFENSE 

Department of the Air Force 

[Docket ID: USAF–2023–HQ–0016] 

Submission for OMB Review; 

Comment Request 

AGENCY: Department of the Air Force, 

Department of Defense (DoD). 

ACTION: 30-Day information collection 

notice. 

SUMMARY: The DoD has submitted to the 

Office of Management and Budget 

(OMB) for clearance the following 

proposal for collection of information 

under the provisions of the Paperwork 

Reduction Act. 

DATES: Consideration will be given to all 

comments received by March 28, 2024. 

ADDRESSES: Written comments and 

recommendations for the proposed 

information collection should be sent 

within 30 days of publication of this 

notice to www.reginfo.gov/public/do/ 

PRAMain. Find this particular 

information collection by selecting 

‘‘Currently under 30-day Review—Open 

for Public Comments’’ or by using the 

search function. 


lotter on DSK11XQN23PROD with NOTICES1
14454 Federal Register / Vol. 89, No. 39 / Tuesday, February 27, 2024 / Notices 

FOR FURTHER INFORMATION CONTACT: 

Reginald Lucas, (571) 372–7574, 

whs.mc-alex.esd.mbx.dd-dodinformation-collections@mail.mil. 

SUPPLEMENTARY INFORMATION: 

Title; Associated Form; and OMB 

Number: Air Force Recruiting 

Information Support System—Total 

Force (AFRISS–TF); OMB Control 

Number 0701–0150. 

Type of Request: Extension. 

Number of Respondents: 100,000. 

Responses per Respondent: 1. 

Annual Responses: 100,000. 

Average Burden per Response: 15 

minutes. 

Annual Burden Hours: 25,000. 

Needs and Uses: Recruiting requires 

the collection of specific information on 

prospective Air Force, Air National 

Guard, and Air Force Reserve Command 

enlistees, officers, and health profession 

personnel prior to entering into duty. 

The information is used to create the 

initial personnel record that is used to 

prescreen and qualify enlistees, line 

officers, and health professionals fit for 

service and ultimately induct them into 

one of the three Air Force commands. 

The information is also collected to 

process security clearances for those 

individuals requiring clearances for 

sensitive and classified positions. The 

respondents are recruiting applicants of 

the Air Force who may seek more 

information or request copies of their 

personal information. The collection 

instrument is a list of questions asked 

by the recruiter that cannot be found on 

the SF–86; information taken from the 

SF–86 can complete the rest of the 

recruit’s application. Collections 

instruments are completed by 

applicants and recruiters into the 

system of record as applicable to their 

recruiting and application purposes. All 

completed instruments of collection 

reside in the system of record which has 

safeguards in place to protect privacy 

information. The result of successful 

information collection is the successful 

accession of an applicant in the Air 

Force and the safe keeping of said 

applicant’s personal information. 

Affected Public: Individuals or 

households. 

Frequency: On occasion. 

Respondent’s Obligation: Voluntary. 

OMB Desk Officer: Ms. Jasmeet 

Seehra. 

You may also submit comments and 

recommendations, identified by Docket 

ID number and title, by the following 

method: 

• Federal eRulemaking Portal: http:// 

www.regulations.gov. Follow the 

instructions for submitting comments. 

Instructions: All submissions received 

must include the agency name, Docket 

ID number, and title for this Federal 

Register document. The general policy 

for comments and other submissions 

from members of the public is to make 

these submissions available for public 

viewing on the internet at http://

www.regulations.gov as they are 

received without change, including any 

personal identifiers or contact 

information. 

DOD Clearance Officer: Mr. Reginald 

Lucas. 

Requests for copies of the information 

collection proposal should be sent to 

Mr. Lucas at whs.mc-alex.esd.mbx.dddod-information-collections@mail.mil. 

Dated: February 21, 2024. 

Aaron T. Siegel, 

Alternate OSD Federal Register Liaison 

Officer, Department of Defense. 

[FR Doc. 2024–03981 Filed 2–26–24; 8:45 am] 

BILLING CODE 6001–FR–P 

DEPARTMENT OF DEFENSE 

Department of the Army 

[Docket ID: USA–2023–HQ–0018] 

Submission for OMB Review; 

Comment Request 

AGENCY: Department of the Army, 

Department of Defense (DoD). 

ACTION: 30-Day information collection 

notice. 

SUMMARY: The DoD has submitted to the 

Office of Management and Budget 

(OMB) for clearance the following 

proposal for collection of information 

under the provisions of the Paperwork 

Reduction Act. 

DATES: Consideration will be given to all 

comments received by March 28, 2024. 

ADDRESSES: Written comments and 

recommendations for the proposed 

information collection should be sent 

within 30 days of publication of this 

notice to www.reginfo.gov/public/do/ 

PRAMain. Find this particular 

information collection by selecting 

‘‘Currently under 30-day Review—Open 

for Public Comments’’ or by using the 

search function. 

FOR FURTHER INFORMATION CONTACT: 

Reginald Lucas, (571) 372–7574, 

whs.mc-alex.esd.mbx.dd-dodinformation-collections@mail.mil. 

SUPPLEMENTARY INFORMATION: 

Title; Associated Form; and OMB 

Number: Installation Management 

Command Survivor Outreach Service 

System (SOS IMCOM); OMB Control 

Number 0702–0148. 

Type of Request: Revision. 

Number of Respondents: 60,295. 

Responses per Respondent: 2. 

Annual Responses: 120,590. 

Average Burden per Response: 20 

minutes. 

Annual Burden Hours: 40,197. 

Needs and Uses: SOS is an Armywide program that provides dedicated 

and comprehensive support services to 

all family members of soldiers who die 

while on active duty, including Regular 

Army, United States Army National 

Guard and Reserves patrons. SOS 

Support Coordinators serve as the main 

Survivor advocate. They facilitate 

support groups, provide life skills 

education, assist survivors in managing 

applicable life-long benefit transition 

milestones, connect survivors with 

counseling resources, and represent the 

command in contacts with community 

organizations. SOS Financial 

Counselors help survivors by assisting 

with budget counseling, debt 

management, education, and higher 

education needs. SOS staff members are 

required to make periodic 

communication with Survivors—at a 

minimum of one contact annually—to 

conduct well-being checks and 

milestone management reviews or 

determine the level of support Survivors 

desire. Information gathered in these 

meetings is input into the SOS 

application collection instrument by 

SOS staff members. No customers have 

access to the collection instrument. SOS 

staff members collect the information 

from the survivors and document the 

information as a direct contact within 

the SOS application case notes. The 

successful result of the information 

collection is an organized and up-todate database of essential information 

on survivors that allows SOS to better 

provide the support they deserve. 

Affected Public: Individuals or 

households. 

Frequency: On occasion. 

Respondent’s Obligation: Voluntary. 

OMB Desk Officer: Ms. Jasmeet 

Seehra. 

You may also submit comments and 

recommendations, identified by Docket 

ID number and title, by the following 

method: 

• Federal eRulemaking Portal: http:// 

www.regulations.gov. Follow the 

instructions for submitting comments. 

Instructions: All submissions received 

must include the agency name, Docket 

ID number, and title for this Federal 

Register document. The general policy 

for comments and other submissions 

from members of the public is to make 

these submissions available for public 

viewing on the internet at http://

www.regulations.gov as they are 

received without change, including any 

personal identifiers or contact 

information. 


lotter on DSK11XQN23PROD with NOTICES1