The KSR Decision
What might it mean to your application?

The KSR Decision - "What - another article on obviousness? Well, I mentioned that it is a difficult subject. And ordinarily on the Business of Patents I do not intend to get into detailed discussions of Federal Circuit or Supreme Court cases. But KSR v Teleflex (2007) is an important case that could increase the difficulty of your getting a patent.

So let's talk about what it might mean. And let's try to do that without quoting too much law.

You will recall from Part III on Obviousness our review of the Teaching-Suggestion-Motivation test. This test requires that there must be a suggestion or teaching in the prior art to combine elements shown in the prior art in order to find a patent obvious. And we mentioned that the rub comes in over arguments over whether the test requires evidence that is explicit or implicit.

In KSR the majority opinion emphatically rejects an 'explicit' TSM test—one that would require explicit prior art teachings in order to combine given references in the obviousness analysis. And it seems to suggest a more flexible or implicit test that would allow implicit suggestions such as the nature of the problem to provide motivation to combine references.

That opinion (in my opinion) could clearly make it easier for an examiner to fend off TSM arguments from a patent applicant. Then it would clearly result in more patents being ruled as obvious.

So a simplistic interpretation would be that the patent approval rate would drop. However - that is a one variable analysis and as we all know in complex multivariable problems it is rather difficult to predict the outcome when only one variable is changed.

The essence of TSM is still in place, but weakened. So we will have to closely observe the evolution of cases that hinge on a TSM argument to see how the US Patent Office, district courts, and the Federal Circuit react to KSR. It has not affected any of my docket in 2008 and 2009, but I have not really had to use a TSM argument to refute a 35 USC 103 rejection. I have fortunately been able to use what I call technical or fact based arguments to win the day. But maybe I have been lucky.

So What Does It All Mean?

I think the KSR decision is definitely a major decision and will make it more difficult to get some claims. It may affect some technological fields more than others. But maybe that is not a bad thing. As in most of these shifts we will only see the results "in the rear view mirror".

Stay tuned.


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Mike Ervin
Mike Ervin - Cost Effective Small Business Patent Protection.

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