The United States Patent and Trademark Office (USPTO) published Examination Guidelines [1] 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) [2].
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 [1].
More on KSR here [3].