KSR Aftermath: New § 103 Arguments for Practitioners?

Most practitioners will recognize that there is no cookie-cutter set of arguments that may be used for any and all obviousness rejections by the USPTO.  Patent prosecution is much like most other areas of law in that respect:  it is all about the facts, the facts, and yes, the facts.

That being said, following the Supreme Court decision in KSR Int’l Co. v. Teleflex Inc., the obvious question (pun intended) is: How might this decision affect a patent prosecutor’s arguments in the face of an USPTO Examiner’s § 103 rejection? 

In light of the KSR opinion and subsequent cases and commentary, below is a non-limiting set of three example strategies practitioners may consider:

1)  Proceed substantially as normal – argue that a teaching-suggestion-motivation (TSM) has not been established.  However, recognize that TSM may not now be sufficient by itself, and bolster the TSM argument with non-analagous art, teaching away, or secondary consideration evidence (unexpected results, commercial success, failure of others, etc.) arguments.  KSR rationale:

• The TSM test captures a helpful insight.
• A patent composed of several elements is not proved obvious merely by demonstrating that each element was, independently, known in the prior art.

2)  Argue that the combination of elements yields more than results predictable by one of ordinary skill in the art.  Phrased differently, the claimed elements are more than a predictable variation of the prior art. This concept, sounding much like “synergism,” was much repeated in the opinion.  KSR rationale:

• Such a combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.
•  When a work is available in one field, design incentives and other market forces can prompt variations of it, either in the same field or in another.
• If a person of ordinary skill in the art can implement a predictable variation, and would see the benefit of doing so, §103 likely bars its patentability.
• If a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond that person’s skill.
• Sakraida and Anderson’s-Black Rock are illustrative—a court must ask whether the improvement is more than the predictable use of prior art elements according to their established functions.

3) Go back to the basics – assert non-obviousness in view of Graham factors. Specifically, spell out for the Examiner: 1) the scope and content of the prior art; 2) the level of ordinary skill in the prior art; 3) the differences between the claimed invention and the prior art; and 4) objective evidence of nonobviousness. KSR rationale:

• Graham v. John Deere Co. of Kansas City, set out an objective analysis for applying §103:
• “[T]he scope and content of the prior art are . . . determined; differences between the prior art and the claims at issue are . . . ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background the obviousness or nonobviousness of the subject matter is determined. Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented.”
• While the sequence of these questions might be reordered in any particular case, the factors define the controlling inquiry.
• To this end, Graham set forth a broad inquiry and invited courts, where appropriate, to look at any secondary considerations that would prove instructive.
• Teleflex has not shown anything in the prior art that taught away from the use of Asano, nor any secondary factors to dislodge the determination that claim 4 is obvious.

These are some of our thoughts, and we’re certain that there are other concepts and strategies that may be used, as appropriate.  Any comments on such strategies from our readers are welcomed!