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Obviousness after KSR v. Teleflex

Posted Sunday, February 12, 2012 by Mike Cicero

One of the several types of rejections an examiner may issue against a claim of a pending patent application is created by 35 U.S.C. §103 and is known as an obviousness rejection. When issuing an obviousness rejection, an examiner is asserting that the differences between the claims and the prior art “are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill” in the applicable technology. 35 U.S.C. §103. The prior art might include subject matter that is available under 35 U.S.C. §102, admitted prior art, general knowledge of one of ordinary skill in the art, or any combination of these. To make such a rejection an examiner has the initial burden to establish a so called prima facie case of obviousness. Once such showing is made the applicant, or the applicant’s representation, can argue against the rejection or amend the claims to render them nonobvious.

An examiner may make a prima facie case of obviousness by recreating the claims through a combination of multiple prior art references or a modification of a single reference. In any case the examiner should clearly and explicitly articulate the rational being used to support the obviousness rejection so the applicant is afforded an opportunity to identify and address all relevant issues. Often times the rational used by the examiner is that the prior art contains some teaching suggestion or motivation to combine prior art elements. This rational, commonly known as the teaching-suggestion-motivation (TSM) test, became so common that it thought to be a requirement in order to make any obviousness rejection when combining references. Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1348 (Fed. Cir. 2000). In 2007, however, the Supreme Court of the United States decided KSR v. Teleflex and made clear that while satisfying the TSM test may sometimes be sufficient to establish a prima facie case of obviousness, it cannot be treated as necessary. 550 U.S. 398, 419 (2007). In view of this decision, the Patent Office has set out a non-exhaustive list of seven independent rationales that may be used to support an obviousness rejection. Perhaps to make abundantly clear that the TSM test is still good law, it is included in this list.

Since KSR v. Teleflex, some interesting decisions have been issued regarding obviousness type rejections. Take for instance Crocs, Inc. v. U.S. Int’l Trade Commission where the court ruled that even though a teaching was found in the prior art, it taught away from the claims and, therefore, actually weighed against a finding of obviousness. 598 F.3d 1294 (Fed. Cir. 2010). The claims at issue in Crocs related to the heel straps on the trendy foam sandals that became popular in recent years. A prior art reference taught sandal heel straps but went on to disparage the use of foam as the material because the foam-on-foam friction would keep the sandal strap from resting in contact with the user’s heel. The Croc claims taught that this result was actually preferential because the strap would contact the heel only when it was needed to serve its purpose of securing the sandal on the foot. Otherwise the foam strap would remain off the heel and minimize uncomfortable and unnecessary rubbing on the heel. Similar reasoning was applied in DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., where a prior art reference taught that a certain compression member would yield increase the likelihood of a surgical screw failure after a spinal surgery. 567 F.3d 1314 (Fed. Cir. 2009). The patent at issue asserted that the compression member would transfer load away from the surgical screw and actually mitigate the concern of the prior art. Once again, even though the elements of the claims could be found in the prior art, the prior art taught away from the combination and therefore could not be used to support a finding of obviousness.

While the teaches-away rational described here weighs in favor of non-obviousness, many rationales other than the TSM test actually support a finding of obviousness. Because the thrust of KSR v. Teleflex decision was that lower courts had (1) been too rigid in applying the TSM test and (2) should allow rationales other that the TSM test altogether, it is unsurprising that some empirical studies have since shown an increase in obviousness rejections. Moving forward it will be interesting to see what other developments will arise from 35 U.S.C. § 103 as this area continues to settle since KSR‘s shock to the system.

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