KSR represents the most important Supreme Court obviousness case in the more than forty years. The changes brought about by KSR have been fundamental and are still being felt.

As the Court’s first major revisit to the fundamental question of obviousness since 1966, it necessarily has a major impact on practice as the what is likely to be the only major decision interpreting obviousness for quite some time.

Changes are coming in two waves. First, the Federal Circuit itself restructured the law of obviousness more than a year ago in reaction to the filing of the certiorari petition in 2005 so that the major course correction needed by KSR has already been accomplished. Thus, it may not have been incorrect to say that, measured by the state of the law at the time of the decision itself, KSR brought about no “great change” and that the first post-KSR opinion “did not require one iota of change” from the draft finished before KSR was decided.

During the more than two year pendency of the Supreme Court proceedings in KSR, the U.S. Patent and Trademark Office (PTO) has done little to adapt its policies but instead has prudently waited to see what the Supreme Court would say. Only now are the changes at the PTO starting to emerge. It may be expected that there will be wildly different views taken by individual examiners amongst the 4000-plus corps now that a decision from the Court has been issued. Over time, the practice will stabilize.

Prior to KSR there was a relatively rigid condition that to establish obviousness of a combination invention, it was necessary to establish a teaching, suggestion or motivation to combine the several elements. Now, under KSR the teaching, suggestion or motivation is but one of the indicia used to determine obviousness under a more flexible review.

One of the more important points of KSR is the discussion of “problems” faced by the inventor and those skilled in the art. One of the more important points of KSR is the discussion of “problems” faced by the inventor and those skilled in the art. Patent applicants all too often – and unnecessarily – create sophisticated “problems” that are identified in the specification that are faced by workers skilled in the art which are solved by the invention. Yet, given the “ordinary creativity” of the post-KSR worker in the art, perhaps the problem is then one that can be solved, making the invention obvious. Often, the applicant cleverly develops a problem that he faced that is different from any problem suggested by the prior art. Yet, the Court crafts an objective test of obviousness that minimizes the value of the applicant’s subjective problem. Setting up a strawman, a “problem”, in the “Background” may now prove fatal to patentability; it is irrelevant what purpose the applicant intends to solve.

In determining whether the subject matter of a patent claim is obvious, neither the particular motivation nor the avowed purpose of the patentee controls. What matters is the objective reach of the claim. If the claim extends to what is obvious, it is invalid under § 103. One of the ways in which a patent's subject matter can be proved obvious is by noting that there existed at the time of invention a known problem for which there was an obvious solution encompassed by the patent's claims.

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. Under the correct analysis, any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.

Clearly, the invention must be disclosed in an enabling manner, and the best known prior art must be cited to the examiner to meet the duty of disclosure. Yet, there is no duty to characterize the invention. In particular, there is no need to identify a problem that is faced or solved nor is it necessary to include “objects” of the invention.

In the wake of KSR, it may well be the best policy to simply disclose the invention without any discussion of the “Background…”, “objects” or “problems” faced by workers in the art. To the extent that the patent applicant overstates any “problems”, the patent applicant may be digging a grave for the invention[.]

[T]he post-KSR worker in the art is armed with “ordinary creativity” and can benefit from the knowledge of workers skilled in the art. Great care must be taken to avoid any detailed “Background” section or recitation of “objects”, which, if they are “given” as knowledge of a worker skilled in the art, may very well make the solution to problems obvious.

[C]ommon sense teaches… that familiar items may have obvious uses beyond their primary purposes, and in many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle... A person of ordinary skill is also a person of ordinary creativity, not an automaton.

A weird quirk of KSR is the reliance by the Court upon an irrelevant chemical “structural obviousness” case as the seminal CCPA case establishing the “suggestion” test for combination of prior art references to render a combination invention obvious. Indeed, a bread and butter key focal point for ex parte procurement in the organic chemistry arts is the question of whether a unique, new structure is “structurally” or prima facie obvious; this is based upon the closest prior art structure under a doctrine that has CCPA roots dating back to 1944. It is therefore an oddity of KSR that the Court cites as seminal a 1961 CCPA case that has absolutely nothing to do with putting together a combination of references to render a combination invention obvious, when that case is but one of numerous in a line of cases dealing with “structural” obviousness dating back to 1944. Instead, there is a line of CCPA case law dealing with the requirement for a “suggestion” to combine prior art to render a mechanical invention obvious that has many cases that date back to 1937.

While the KSR case should have only indirect impact on chemical practice, clearly some of the more extreme biotechnology cases from the 1990’s will be under intense scrutiny, including one case that had created a virtually per se patentability rule for new biotechnology entities.

An ongoing stream of Federal Circuit panel opinions will help flesh out the contours of KSR for the foreseeable future. It is unlikely that there will be any en banc consideration of obviousness for some time, if the denial of en banc consideration in the Pfizer case is any guide for the future.

One of the more positive aspects of the KSR opinion from the standpoint of traversing an obviousness rejection is the Court’s demand that the challenge have an explicit analysis demonstrating the obviousness of the invention. After discussion of the obviousness of a combination invention, the Court demands that “[t]o facilitate review, this analysis should be made explicit.”

Please consider this paper of Hal's essential reading.