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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

  mpep

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.

MPEP Eighth Edition (Revision 6, September 2007)

2143 >Examples of< Basic Requirements of a Prima Facie Case of Obviousness

**>The Supreme Court in KSR International Co. v. Teleflex Inc., 550 U.S. ___, ___, 82 USPQ2d 1385, 1395-97 (2007) identified a number of rationales to support a conclusion of obviousness which are consistent with the proper “functional approach” to the determination of obviousness as laid down in Graham. The key to supporting any rejection under 35 U.S.C. 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 U.S.C. 103 should be made explicit.

EXEMPLARY RATIONALES
Exemplary rationales that may support a conclusion of obviousness include:

(A) Combining prior art elements according to known methods to yield predictable results;

(B) Simple substitution of one known element for another to obtain predictable results;

(C) Use of known technique to improve similar devices (methods, or products) in the same way;

(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;

(E) “Obvious to try” – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;

(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art;

(G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention.

Note that the list of rationales provided is not intended to be an all-inclusive list. Other rationales to support a conclusion of obviousness may be relied upon by Office personnel.

. . . .

MPEP Eighth Edition (Revision 5, August 2006)

2143 Basic Requirements of a Prima Facie Case of Obviousness

To establish a prima facie case of obviousness, three basic criteria must be met. First, there must be some suggestion or motivation, either in the references themselves or in the knowledge generally available to one of ordinary skill in the art, to modify the reference or to combine reference teachings. Second, there must be a reasonable expectation of success. Finally, the prior art reference (or references when combined) must teach or suggest all the claim limitations.

The teaching or suggestion to make the claimed combination and the reasonable expectation of success must both be found in the prior art, not in applicant’s disclosure. In re Vaeck, 947 F.2d 488, 20 USPQ2d 1438 (Fed. Cir. 1991).

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