The USPTO published examination guidelines yesterday for determining obviousness under 35 U.S.C. 103, in view of the Supreme Court decision in KSR International Co. v. Teleflex Inc. The guidelines are effective immediately.
Among the rationales articulated in the guidelines is the new “Obvious To Try” rationale, also known as “Choosing From a Finite Number of Identified, Predictable Solutions, With a Reasonable Expectation of Success.” As set forth in the guidelines, a conclusion of obviousness may be supported by a showing that a person of ordinary skill had good reason to pursue the known options within his or her technical grasp. If the options lead to the anticipated success, the invention is likely the product not of innovation but of ordinary skill and common sense. Thus, an allegation that an invention was obvious to try might now be sufficient for an Examiner to support a rejection on obviousness under 35 U.S.C.103.
Thoughts and comments welcomed.
As promised by this USPTO notice about the final guidance document submitted for OMB review, the USPTO has apparently started Examiner training on obviousness in the post-KSR world. A summary of the USPTO’s KSR training materials has been circulating the IP Blogosphere today, with the scoop going to Mr. Harold Wegner.
According to this article at Intellectual Asset Magazine, as first pointed out over at Patently-O and the Patent Prospector, CAFC Justice Rader has apparently “revealed that he believed the recent KSR v. Teleflex decision handed down by the Supreme Court would not lead to “great changes” in the way the Federal Circuit looks at obviousness.” In fact, he told delegates of the recent CIP Forum in Sweden that “the judgment in the first CAFC decision [LeapFrog Enterprises Inc v Fisher-Price Inc] on obviousness post-KSR had actually been written before the Supreme Court’s decision was handed down and ‘did not require one iota of change’.”
JW Note: Is the CAFC apparently unconcerned about the effects of KSR because the CAFC had already adjusted their framework for obviousness analyses in anticipation of the ruling (See, e.g., Dystar Textilfarben GMBH & Co Deutschland KG v. C.H. Patrick, Co., et al., Alza Corporation v. Mylan Laboratories, Inc., et al., and Ormco Corporation, et al. v. Align Technology, Inc. etc)?
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!
As reported at a number of sources, Margaret Focarino, Deputy Commissioner for Patent Operations, has issued the following memo to the Technology Center Directors regarding the KSR opinion and the effect of the opinion on USPTO obviousness rejections: KSR Memo.
If you’re a practitioner, worth a quick read. The most important section being below, in our opinion.
In determining patentability under §103, a court must ask whether an improvement is more than the predictable use of prior-art elements according to their established functions.
On appeal from the CAFC, the Supreme Court reversed for KSR and found Claim 4 of Teleflex’s U.S. Pat. No. 6,237,565 (the ‘565 patent) obvious. Specifically, the Supreme Court held that the CAFC addressed the obviousness inquiry in a narrow, rigid manner that is inconsistent with §103 and Supreme Court precedent.
The technology at issue deals with adjustable pedal systems for vehicles using computer-controlled throttles. Claim 4 of Teleflex’s ‘565 patent recites a position-adjustable pedal assembly with an electronic pedal position sensor attached to a fixed pivot point. Teleflex originally sued KSR at District Court and alleged that KSR’s pedal assembly infringed the ‘565 patent. KSR defended on the basis that Claim 4 of ‘565 was invalid. The District Court agreed, finding Claim 4 obvious and thus invalid.
On the subsequent appeal, the CAFC held that the District Court’s recourse to the nature of the problem to be solved was insufficient to find Claim 4 of the ‘565 patent obvious. The CAFC noted that unless the prior art references addressed the precise problem that the patentee was trying to solve, the problem would not motivate an inventor to combine the references. That it might have been obvious to try that combination was likewise irrelevant.
A more detailed summary of the facts and the disposition of the case at the CAFC may be found at this previous AT! post: Teleflex, Inc., et al. v. KSR International Co.
In reversing the holding of the CAFC, the Supreme Court held as follows:
An Obviousness Inquiry Should Be Expansive and Flexible.
The way that the CAFC has been applying the TSM test is inconsistent with the expansive and flexible Graham framework. A combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results. See, e.g., United States v. Adams, 383 U. S. 39, 50–52 (Emphasis mine). 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. A court must ask whether the improvement is more than the predictable use of prior-art elements according to their established functions.
To determine whether there was an apparent reason to combine the known elements in the way a patent claims, it will often be necessary to look to: 1) interrelated teachings of multiple patents; 2) the effects of demands known to the design community or present in the marketplace; and 3) the background knowledge possessed by a person having ordinary skill in the art. To facilitate review, this analysis should be made explicit (rejections on obviousness grounds cannot be sustained by mere conclusory statements). But it need not seek out precise teachings directed to the challenged claim’s specific subject matter, for a court can consider the inferences and creative steps a person of ordinary skill in the art would employ.
The Teaching-Suggestion-Motiviation Test Captures a Helpful Insight into Obviousness, but is Not a Rigid Rule.
A patent composed of several elements is not proved obvious merely by demonstrating that each element was, independently, known in the prior art. (Emphasis mine). There is no necessary inconsistency between the TSM test and the Graham analysis. But a court errs where it transforms general principle into a rigid rule limiting the obviousness inquiry.
The Obviousness Analysis as Employed by the CAFC was Thrice Flawed.
In correcting the flaws of the CAFC analyses, the Supreme Court provides:
1) Under the correct analysis, any need or problem known in the field and addressed by a patent can provide a reason for combining elements in the claimed manner. Examiners are not constrained to looking at the problem the a patentee was trying to solve. The question is not whether the combination was obvious to the patentee, but whether the combination was obvious to a person with ordinary skill in the art.
2) It is common sense that familiar items may have obvious uses beyond their primary purposes. A person of ordinary skill in the art is not necessarily led to solve a problem by only art designed to solve the same problem.
3) A patent claim can be proved obvious merely by showing that the combination of elements was obvious to try. (Emphasis mine). When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If successful, this is likely the product of ordinary skill and common sense, and the fact that it was obvious to try might show that it was obvious under section 103.
Presumption of Validity for Patents Diminished?
The Supreme Court did not reach the question of whether a failure to disclose the relevant art for the present obviousness determination during the prosecution of the ‘565 patent voided the presumption of validity given to issued patents. However, the Supreme Court noted that the rationale underlying the presumption—that the PTO, in its expertise, has approved the claim —seems much diminished here.
Proper Inquiry for Obviousness in the Present Case.
The proper question was whether a pedal designer of ordinary skill in the art, facing the wide range of needs created by developments in the field, would have seen an obvious benefit to upgrading the prior art assembly with a sensor? The other cited references explained where not to put the sensor, such that the designer would know to place the sensor on a non-moving part, the most obvious being a pivot point.
Under this analysis, Claim 4 was deemed obvious. The Court noted that there was also no showing of a teaching away from the use of the references, nor any secondary factors to dislodge the determination of obviousness.
Well, the Supreme Court has apparently heard all of its cases for the October 2006 term, and we are anxiously awaiting for the other shoe to drop on the KSR v. Teleflex opinion (the first shoe being oral arguments, previously reviewed by the AT! here: KSR v. Teleflex: Notable Quotes from the Oral Arguments, and generally indicating that changes to the obviousness standard is likely).
Per U.S. Supreme Court procedures, during the months of May and June, the Court meets at 10 a.m. every Monday to release opinions. During the last week of the term (before recess in late June/early July . . . lasting until the next term starting the first Monday of October), additional days may be designated as “opinion days.”
Accordingly, we could conceivably have a decision tomorrow (Monday, April 30th), and almost certainly within the next month or two.