The United States Patent and Trademark Office (USPTO) published Examination Guidelines to help examiners make decisions regarding the obviousness (or lack thereof) of claimed inventions in light of the Supreme Court’s recent decision in KSR International Co. v. Teleflex Inc., 82 USPQ2d 1385 (2007).

Teleflex v. KSR

In Teleflex Inc. v. KSR Int’l Co., the Supreme Court reaffirmed the framework for determining obviousness as set forth in Graham v. John Deere Co., but stated that the Federal Circuit had erred by applying the teaching-suggestion-motivation (TSM) test in an overly rigid and formalistic way.

Specifically, the Supreme Court stated that the Federal Circuit had erred in four ways: (1) ‘‘By holding that courts and patent examiners should look only to the problem the patentee was trying to solve;’’ (2) by assuming ‘‘that a person of ordinary skill attempting to solve a problem will be led only to those elements of prior art designed to solve the same problem;’’ (3) by concluding ‘‘that a patent claim cannot be proved obvious merely by showing that the combination of elements was ‘obvious to try;’’’ and (4) by overemphasizing ‘‘the risk of courts and patent examiners falling prey to hindsight bias’’ and as a result applying ‘‘[r]igid preventative rules that deny fact finders recourse to common sense.’’

In KSR, the Supreme Court reaffirmed that ‘‘[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.’’ When considering obviousness of a combination of known elements, the operative question is thus ‘‘whether the improvement is more than the predictable use of prior art elements according to their established functions.’’

Graham v. John Deere Co.

An invention that would have been obvious to a person of ordinary skill at the time of the invention is not patentable. As reiterated by the Supreme Court in KSR, obviousness is a question of law based on underlying factual inquiries. The factual inquiries enunciated by the Court are as follows:

(1) Determining the scope and content of the prior art;

(2) Ascertaining the differences between the claimed invention and the prior art; and

(3) Resolving the level of ordinary skill in the pertinent art.

Objective evidence relevant to the issue of obviousness must be evaluated by examiners. Such evidence, sometimes referred to as ‘‘secondary considerations,’’ may include evidence of commercial success, long-felt but unsolved needs, failure of others, and unexpected results.

In making a determination of obviousness, the key question factor is what a person of ordinary skill in the pertinent art would have known at the time of the invention, and on what such a person would have reasonably expected to have been able to do in view of that knowledge.

Other factors will apply

Once the Graham factual inquiries are resolved, examiners must determine whether the claimed invention would have been obvious to one of ordinary skill in the art. KSR noted that:

“The obviousness analysis cannot be confined by … overemphasis on the importance of published articles and the explicit content of issued patents … . In many fields it may be that there is little discussion of obvious techniques or combinations, and it often may be the case that market demand, rather than scientific literature, will drive design trends.”

Prior art is not limited just to the references being applied, but includes the understanding of one of ordinary skill in the art. The prior art reference (or references when combined) need not teach or suggest all the claim limitations; however, examiners must explain why the difference(s) between the prior art and the claimed invention would have been obvious to one of ordinary skill in the art. The ‘‘mere existence of differences between the prior art and an invention does not establish the invention’s nonobviousness.’’

Factors other than the disclosures of the cited prior art may provide a basis for concluding that it would have been obvious to one of ordinary skill in the art to bridge the gap between the prior art and the claimed invention. The USPTO states that in determining obviousness, neither the particular motivation to make the claimed invention nor the problem the inventor is solving controls. The proper analysis is whether the claimed invention would have been obvious to one of ordinary skill in the art after consideration of all the facts.

Rationales To Support Obviousness Rejections

The new Guidelines provide rationales that outline reasoning that may be applied to find obviousness in such cases.

If the USPTO determines that an invention is obvious using the Graham factors show that an obviousness rejection may be made using the familiar teaching-suggestion-motivation (TSM) rationale, then such a rejection using the TSM rationale can still be made.

Examiners are then directed to also consider whether one or more of the other rationales (as set forth below) support a conclusion of obviousness.

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

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

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

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

‘‘Obvious to try’’ – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;

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 would have been predictable to one of ordinary skill in the art;

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.

Like all exercises involving determinations of what’s obvious (or not) the guidelines fall short in not providing clear guidance within the “rationales” that can be used. Unfortunately, the guidelines take an amorphous, hard-to-define test and add amorphous, hard-to-define rationales to it.

The Court in KSR rejected the rigid rule that ‘obvious to try’ is per se insufficient to show obviousness stating:

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 this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under §103.

Thus, if the fact that something was obvious to try might be sufficient to prove obviousness, examiners may now be more likely to just take an “I know it when I see it” approach to every invention. There could then be a frightful battle over what was obvious to try and to whom was it obvious.

It remains to be seen how advances with “real innovation” are to be determined.

The Examination Guidelines can be found at the USPTO.

More on KSR here.

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8 Comments

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    Has anyone noticed that all the cases/examples given in this set of guidelines lead to a finding of obviousnesss? Unlike the previous written description and enablement guidelines, which contain at least a few examples where written description/enablement are found, these guidelines are basically useless to those of us who prosecute before the PTO, because presumably we want to argue our claims are unobvious.

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    In KSR, the Supreme Court reaffirmed that ‘‘[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.’’ When considering obviousness of a combination of known elements, the operative question is thus ‘‘whether the improvement is more than the predictable use of prior art elements according to their established functions.’’
    Doesn’t this in effect eliminate all inventions? An invention is made of known elements combined in a novel way. Say there are elements A, B and C in the invention and A does not exist in the prior art. Then A is also a new invention for example made up of elements D, E and F. Say D does not exist in the prior art then it is a new invention.
    So an invention can only be novel if one of its elements is novel, and part of that element novel and so on ad infinitum. To paraphase Aristotle, “it is not everything that can be new and non obvious or the chain of novelty would be endless”.
    Also one can substitute the above reasoning for method patents. A first invention might be composed of methods G, H, and I of which G is new and non obvious. So G being a new method would be a new invention only if one of its method elements J, K, and L (say J) was new and non obvious, and again the chain of novelty must be infinite to be an invention. Like with Fermat infinite descent is needed for a proof.
    So any invention if broken down into enough steps in a method and elements in an apparatus eventually gets to a combination of known elements and methods. To say otherwise gives an infinite lineage of new inventions or circular reasoning.
    The only way combining elements or methods can be unpredictable is if a new law of nature is discovered. For example someone might have discovered superconductivity by cooling wires for electrical transmission. But this unpredictability arises from the law of nature’s effects so this in effect is patenting a law of nature which is forbidden. Since all the other elements and steps, i.e. the wire, the materials used, and the cooling would be known then all would be obvious except for the disqualified unpredictable result.
    So a patent can only be non obvious if it discovers a new law of nature upon which it is invalidated. So there is no longer any such thing as a patent.

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    Patent is a very complex issue with no unique rule or pattern. In truth there is an expansion of human knowledge that might bring rewards regarding fame or wealth.

    I have three sets of patents bringing new conceptions in Hydrodynamics changing textbooks.

    I am the first inventor to use the expression ‘unsaturated hydraulic flow’ in the patenting system even though it is standing on my PhD textbooks since 1907 when Edgard Buckingham proposed a equation to track fluids moving on porosity.

    Unhappily lay people as inventors, patent attorneys, and patent examiners used to address it as wick/wicking. Hydrology does not employ it because of compliances to Thermodynamics.

    My patents may be worth billions, but first we need to kick lay people out of the system and make long standing scientific knowledge prevail. When USPTO assign Patent Examiners with expertise in Hydrology to approve Hydrological issues, my claims will take effect.

    Nowadays USPTO is issuing patents that not only violate my patents but with mistakes that kindergarten can demonstrate it.

    There is a huge gap in Hydrology regarding the patenting system. When heat is conducted, Thermal/Heat Conductivity is reported in around 66,000 issued patents. But, when fluid is conducted only around 400 issued discus it, while on porosity (wick/wicking) only 18 patent talk about it. Even though around 22,000 issued patents on wick/wicking by lay people never gauged conductivity on wicks.

    Patenting is a subtle affair.

    For lay people a wick make of plastic that never works on oil lamps it may be quite obvious, but for a PhD in Soil Science with deep knowledge of fluids moving on porous systems, a lot can be said about the boundaries of knowledge.

    Science is guided by Philosophy, and the boundaries of knowledge are asserted by Epistemology, Metaphysics, Logics, and History of Science.

    Etymology plays a strong boundary on expressing ideas. No one can ever invent a ball that is squared, or a wick that does not work on oil lamps.

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    The boundaries of knowledge is contantly changing. What is obvious today my not be obvious tomorrow when more knowledge is applied and the boundaries by Metaphysics show and new reasoning allows some sort of expansion of what we know.

    Just keep in mind that Lawyers are not trained in science, not even Justices.

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    Elson, you should be able to find a patent attorney trained in science, as there are many around. Indeed, the head barista here has an M.S. in physiology, and was a Ph.D. candidate.
    I should also put a plug for my own employer, Foley, which employs numerous PhDs.

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    Just imagine that my patent US 6,766,917 is so advanced that even Patent Examiners that do not have background in Hydrogeology/Soil Physics is infringing it approving US 20040109799 as a lay patent that bears a crass mistake at the first figure that lay people can check it out completely ignoring my patent in favor of lay people having no background in Hydrology. http://revver.com/watch/160663

    This is hot news:

    On October 23 USPTO is issuing a patent that is so poor in Hydrology that has a crass hydrological mistake in the first figure hurting common knowledge:

    US 7,285,255 / pat application 10/316,513

    I have two Patent Attorneys which are partners and own 45% of IP of my patents. They abandoned me withdrawing their representation after I started sending hundreds of IDS (Information Disclosure Statement) as soon as I realized a huge gap in the patenting system affecting patent attorneys having no background in Hydrology. I figured out they all might be Mechanical Engineers that learned something about Mechanic of Fluids very shallow compared to Hydrogeology/Soil Physics.

    I predict that there is a gap of around 100,000 new patents in Hydrology because of lay people in the patenting affairs.

    Well, my conceptions comes from Physiology learning how nature developed Phloem and Xylem to take fluids out of tubes, then I am proposing a change to capillarity to allow an advanced porosity.

    Plant Physiology + Soil Physics/Hydrogeology

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    “A person of ordinary skill is also a person of ordinary creativity, not an automaton.”

    According to Roget’s thesaurus:

    “Main Entry: creative
    Part of Speech: adjective
    Definition: imaginative
    Synonyms: artistic, clever, cool*, demiurgic, deviceful, fertile, formative, gifted, hep, hip*, ingenious, innovational, innovative, innovatory, inspired, inventive, original, originative, productive, prolific, stimulating, visionary, way out*
    Antonyms: mindless, stale, uncreative, unimaginative, uninspired, unoriginal, untalented
    Source: Roget’s New Millennium™ Thesaurus, First Edition (v 1.3.1)
    Copyright © 2007 by Lexico Publishing Group, LLC. All rights reserved.
    * = informal or slang”

    And:

    “The ordinary and customary meaning “is the meaning that the term would have to a person of ordinary skill in the art in question.”

    So ordinary creative is a synonym for ordinary inventiveness and ordinary innovation. So one of average skill is defined by KSR as an ordinary inventor. The thesaurus defines ordinary as:

    ” Roget’s New Millennium™ Thesaurus – Cite This Source – Share This
    Main Entry: ordinary
    Part of Speech: adjective 1
    Definition: common
    Synonyms: accustomed, customary, established, everyday, familiar, frequent, general, habitual, humdrum*, natural, normal, popular, prevailing, public, quotidian, regular, routine, settled, standard, stock, traditional, typical, usual, wonted
    Antonyms: abnormal
    Source: Roget’s New Millennium™ Thesaurus, First Edition (v 1.3.1)
    Copyright © 2007 by Lexico”

    So a normal, typical, traditional inventor is now precluded from inventing something. Or to put it another way, if a typical inventor would have made an invention without undue experimentation then that invention is obvious. However an inventor is surely defined as one who has a statutary right to a patent. If not then using the word invention in a patent would itself raise questions of being made by an ordinary inventor and thus being obvious.

    So that only leaves an abnormal or atypical inventor, presumably on a normal curve so many standard deviations from the average. Say for example that atypical here means the top 10% of inventors as sufficiently better than the average inventor. So that means that 90% of all patents must logically be invalid, because they must have been conceived by an ordinary innovator.

    Even then working out the atypical top 10% of patents would be impossible. So isn’t this KSR decision logically incorrect?

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    Elson Silva, Ph. D. is a retarded-bipolar soil jockey. Wick this bitch…