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09.01.2009 | Legal Advisory

Determining whether an invention would have been obvious to one of skill in the art has been an evolving analytical balancing act. Arriving at a determination of obviousness, without using hindsight, is a problem that the Federal Circuit attempted to solve by codifying the “teaching, suggestion, or motivation” (TSM) test that had been used in some form for the past several decades. Almost two and half years ago, however, the Supreme Court rejected a rigid application of the TSM test by issuing its ruling in KSR Int’l Co. v. Teleflex, Inc., 127 S.Ct. 1727 (2007). In KSR, the Court ruled that an obviousness analysis “need not seek out precise teachings directed to the specific subject matter of the challenged claim,” but instead “can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” Id. at 14. The Court further stated that an obviousness analysis must “ask whether the improvement is more than a predictable use of prior art elements according to their established functions.” Id. at 13. Now that time has passed since the KSR decision, it is insightful to look at what effect this newest standard has had on everyday practice before the United States Patent and Trademark Office (USPTO).

Patent practitioners struggle daily with interpreting and arguing obviousness under KSR while prosecuting patent applications before the USPTO. KSR’s broader approach to obviousness can often seem quite arbitrary in every day practice. Since KSR, there have been a number of precedential Board of Patent Appeals and Interferences (BPAI, the Board) decisions that shed light on how the USPTO views the TSM test since KSR. In particular, shortly after KSR, the Board issued three precedential decisions seeming to indicate that the USPTO would no longer use the TSM test. More recently, however, the Board issued three other precedential decisions that are more of a mixed bag and may signal that the USPTO is willing to apply the TSM test and require some minimal explicit motivation for combining prior art references.

Those first three BPAI decisions following KSR involved applications in the mechanical (Ex Parte Smith, No. 2007-1925 (Bd. Pat. App. & Int. June 25, 2007)), electrical (Ex Parte Catan, No. 2007-0820 (Bd. Pat. App. & Int. July 3, 3007)), and biotechnological (Ex Parte Kubin, No. 2007-0819 (Bd. Pat. App. & Int. May 31, 2007)) arts. In all three cases, the Board rejected application of the TSM test and only applied KSR. In two of the three opinions in its most recent trilogy, however, the Board used the TSM test to support its decisions made primarily under KSR.

The first of the most recent three cases is Ex parte Fu, No. 2008-0601 (Bd. Pat. App. & Int. March 31, 2008) in which a representative claim was directed to a charge transport layer consisting of a poly(flouroacrylate)-graft-poly(methyl methacrylate) surfactant. Id. at 2-3. The Examiner relied on an “obvious to try” rationale and maintained an obviousness rejection over art that disclosed a surfactant having a perfluoroalkyl radical, without limitations to a particular species. Id. at 13. The Board found that while the genus of surfactants disclosed by the prior art was arguably broad, it consisted of a finite number of surfactants that could be tried to solve the problem that the applicant was attempting to solve. Id. at 14-15. The Board noted that the Examiner’s analysis passes muster even under the “more rigorous” TSM test. Id. at 15.

Ex parte Whalen II, No. 2007-4423 (Bd. Pat. App. & Int. July 23, 2008) claimed a composition for embolizing an aneurysm having a high relative viscosity. Id. at 2. The Examiner rejected the claims as being obvious over art having the same composition with a lower relative viscosity arguing it would have been obvious to optimize the prior art composition by using a higher viscosity. Id. at 14. The Board reversed the Examiner stating that the Examiner had not explained why a person of ordinary skill in the art would have had a reason to modify the prior art compositions with a higher viscosity. The Board acknowledged that the Supreme Court had not discarded the TSM test altogether in KSR and stated that there still must be some “apparent reason to combine the known elements in the fashion claimed” and that the reason must be explicit. Id. at 15-16.

Finally, in Ex parte Jella', No. 2008-1619 (Bd. Pat. App. & Int. November 3, 2008), claims directed to garage panel doors having a specific height were rejected by the Examiner as being obvious over art teaching doors of the same construction with a different finished height. Id. at 8-9. The Board agreed with the Examiner that the finished height of the door was a matter of design choice and would be a predictable result were someone having ordinary skill in the art to modify a commercially available door. Id. at 11. Regardless of a lack of teaching in the art and a number of secondary considerations cited by the appellant, the Board stated that this was an example of market demand driving a design trend. It did not use the TSM test and cited KSR as warning against granting patent protection to advances that would occur in ordinary course without real innovation. Id. at 13.

Out of the three more recent BPAI opinions, two used the TSM analysis in support of their decision. Even though Ex parte Jella' held strictly to KSR without mentioning the TSM test, the Board in Ex parte Whalen II acknowledged that there still must be an “apparent reason to combine” prior art elements and that these reasons must be made explicit. There is no doubt that KSR has changed how obviousness is argued before the USPTO, but perhaps the BPAI has begun to provide assurance to patent practitioners and signal that the USPTO is beginning to recognize the unpredictability that has so often plagued obviousness rejections after KSR.

This advisory was prepared by Nutter's Intellectual Property practice. For more information, please contact your Nutter attorney at 617-439-2000.

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