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The Evolution of MPEP 2143 – Prima Facie Case of Obviousness.

Posted in General Commentary by Jake Ward on February 23, 2008


The USPTO has recently provided an online Manual of Patent Examination and Procedure (MPEP) archive containing copies of the MPEP revisions and editions from 1948 to 2006.

The most recent evolution of the obviousness standard in light of KSR Int’l Co. v. Teleflex Inc. should be of particular interest to practitioners.  The teach-suggestion-motivation (TSM) test, previously described in the MPEP as the primary criteria for establishing a prima facie case of obviousness, has been demoted to the last of at least seven (7) acceptable rationales.  Notably, the TSM criteria have even been listed underneath the previously unacceptable “obvious to try” standard.  Ouch.

Excerpts from the present MPEP (E8R6 – Sept 2007) and previous MPEP (E8R5 – Aug 2006) revisions are reproduced below.