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May 3, 2007


Margaret Focarino, USPTO Deputy Commissioner for Patent Operations, issued a memo of the salient points of the Supreme Court's KSR v. Teleflex ruling. As guidance for examination, the hazy Graham four-factor test predominates, while the CAFC's more structured TSM test is demoted to "a helpful insight." Examiners are advised to state their reasoning for an obviousness rejection.

Date: May 3,2007
To: Technology Center Directors
From: Margaret A. Focarino, Deputy Commissioner for Patent Operations

Subject: Supreme Court decision on KSR Int'l. Co., v. Teleflex, Inc.

The Supreme Court has issued its opinion in KSR, regarding the issue of obviousness under 35 U.S.C. § 103(a) when the claim recites a combination of elements of the prior art. KSR Int'l Co. v. Teleflex, Inc., No. 04-1350 (U.S. Apr. 30, 2007). A copy of the decision is available at http://www.supremecourtus.gov/opinions/06pdf/04-1350.pdf [a non-working link]. The Office is studying the opinion and will issue guidance to the patent examining corps in view of the KSR decision in the near future. Until the guidance is issued, the following points should be noted:

(1) The Court reaffirmed the Graham factors in the determination of obviousness under 35 U.S.C. § 103(a). The four factual inquiries under Graham are:
   (a) determining the scope and contents of the prior art;
   (b) ascertaining the differences between the prior art and the claims in issue;
   (c) resolving the level of ordinary skill in the pertinent art; and
   (d) evaluating evidence of secondary consideration.

Graham v. John Deere, 383 U.S. I, 17-18, 148 USPQ 459,467 (1966).

(2) The Court did not totally reject the use of "teaching, suggestion, or motivation" as a factor in the obviousness analysis. Rather, the Court recognized that a showing of "teaching, suggestion, or motivation" to combine the prior art to meet the claimed subject matter could provide a helpful insight in determining whether the claimed subject matter is obvious under 35 U.S.C. § 103(a).

(3) The Court rejected a rigid application of the "teaching, suggestion, or motivation" (TSM) test, which required a showing of some teaching, suggestion, or motivation in the prior art that would lead one of ordinary skill in the art to combine the prior art elements in the manner claimed in the application or patent before holding the claimed subject matter to be obvious.

(4) The Court noted that the analysis supporting a rejection under 35 U.S.C. 103(a) should be made explicit, and that it was "important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the [prior art] elements" in the manner claimed. The Court specifically stated:

Often, it will be necessary . . . to look to interrelated teachings of multiple patents; the effects of demands known to the design community or present in the marketplace; and the background knowledge possessed by a person having ordinary skill in the art, all in order to determine whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue. To facilitate review, this analysis should be made explicit.
KSR, slip op. at 14 (emphasis added).

Therefore, in formulating a rejection under 35 U.S.C. 5 103(a) based upon a combination of prior art elements, it remains necessary to identify the reason why a person of ordinary skill in the art would have combined the prior art elements in the manner claimed.

Posted by Patent Hawk at May 3, 2007 5:55 PM | Prosecution