By Professor Gregory Mandel
By Professor Though the Supreme Court’s unanimous reversal in KSR v. Teleflex, No. 04-1350, 550 U.S. ___ (2007), contains some harsh words for the Federal Circuit’s teaching, suggestion, or motivation (TSM) test, the decision itself appears to leave the TSM requirement roughly intact. Justice Kennedy’s 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. At the same time, the decision appears to essentially recreate the ‘implicit’ or ‘flexible’ TSM test—one that would allow implicit suggestions, such as the nature of the problem, to provide the requisite motivation to combine. It is this implicit TSM requirement that represented current Federal Circuit doctrine, pursuant to several decisions published after certiorari was granted in KSR (e.g., In re Kahn, DyStar, & Alza). In fact, the Supreme Court even indicates that the Federal Circuit may have gotten it right in these post-cert cases. The KSR opinion is more a critique of the Circuit’s application of the obviousness (and TSM) standard to the specific facts in 
KSR than a critique of the need to rigorously (and expansively) evaluate what would lead a PHOSITA to combine certain references in the obviousness analysis.
Under KSR, in order to evaluate whether a given combination was obvious, the factfinder must "determine whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue." The Supreme Court’s "reason to combine" sounds significantly like "suggestion, teaching, or motivation to combine." It is interesting that the Court used a term as loose as “reason,” given concerns raised during oral argument about the indefiniteness of the term “motivation.” In addition, the Court requires that, "[t]o facilitate review, the analysis should be made explicit," a proposition for which the Court cites Kahn, warning that conclusory statements are not sufficient. The Court goes on to criticize rigid application of TSM, particularly relying solely on published articles and explicit content of issued patents. But, the Court notes, "In the years since the Court of Customs and Patent Appeals set forth the essence of the TSM test, the Court of Appeals no doubt has applied the test in accord with these principles in many cases. There is no necessary inconsistency between the idea underlying the TSM test and the Graham analysis." And, the Court explicitly notes that the post-cert Circuit cases were not before it: "The extent to which [DyStar and Alza] may describe an analysis more consistent with our earlier precedents and our decision here is a matter for the Court of Appeals to consider in its future cases." The opinion also clearly (appropriately in my opinion) invites greater analysis of the PHOSITA and the circumstances surrounding the PHOSITA and the pertinent technology than the Circuit has engaged in in some of its decisions.
The contours of how to apply KSR will have to be worked out by the Patent Office, district courts, and the Federal Circuit. For existing patents, approved under the Circuit’s TSM standard, the decision likely leaves enough of TSM in place that there will not be large shocks to industry or rushes to challenge voluminous numbers of patents. As noted, the decision finds fault in the Circuit’s application of TSM in KSR, as opposed to the doctrine generally. Certainly, some existing patents will be challenged as a result of KSR, at least until the Circuit rules on how KSR should be applied to patents granted under the TSM standard. One would also expect an increase in validity opinion letter requests.
For future patent applications and prosecution, I read KSR to indicate that the non-obvious standard should be applied somewhat more stringently, and the decision gives examiners and others greater leeway in analyzing “reasons to combine,” but the opinion provides little insight for decision-makers concerning how to actually conduct the non-obvious inquiry. After seven Supreme Court cases on obviousness, there still is little guidance (beyond the statutory language itself) concerning how a decision-maker is supposed to measure the level of ingenuity necessary to satisfy the non-obvious requirement.
In this regard, a significant flaw in the KSR opinion is that it appears to misunderstand the hindsight bias and does not take it as seriously as is warranted. The hindsight concern, of course, was the basis for the TSM requirement in the first instance. The Court states that a "factfinder should be aware, of course, of the distortion caused by the hindsight bias and must be cautious of arguments reliant upon ex post reasoning." The hindsight bias, however, does not refer to ex post reasoning, but to the effect that knowledge of the invention itself has on one’s ability to judge whether it was obvious when it was achieved. Experiments on non-obvious decision-making that I have conducted reveal that knowledge of the invention unconsciously and inevitably distorts judgment of the ex ante obviousness of the invention. These studies also reveal that factfinders cannot avoid the hindsight bias simply by being made aware of it and warned to avoid it. The hindsight problem remains unresolved by the Court’s latest pronouncements and continues to pose a dilemma for patent law and policy. (Articles reporting the hindsight studies can be found at http://papers.ssrn.com/sol3/cf_dev/AbsByAuth.cfm?per_id=339760).
The opinion in KSR explicitly notes the concern that granting patents on obvious advances might stifle progress in the useful arts, and cites the Constitution for this proposition. This statement could have significant repercussions in the context of patent thicket and anti-commons arguments, though I would hardly expect it to be actually applied to deny a patent on a constitutional basis as not promoting progress.
Finally, one brief remark in KSR could prove significant. The Court notes that it need not reach the question of whether consideration of a reference that was not before the patent examiner during prosecution should void the presumption of validity. But, the Court states, "We nevertheless think it appropriate to note that the rationale underlying the presumption–that the PTO, in its expertise, has approved the claim–seems much diminished [in this circumstance]." A strong comment on this issue, clearly inviting the Federal Circuit to reexamine the presumption of validity that adheres to patents when they are challenged based on newly discovered prior art.
Gregory Mandel is the Associate Dean for Research & Scholarship and Professor of Law, Albany Law School. As of July 1, 2007, he will become a Professor of Law at Temple Law School. Professor Mandel was a co-author on the Brief of Business and Law Professors as Amici Curiae in Support of the Respondents in KSR.
As an engineer, doing some reseach on KSR, I find all your logic twisted. The sensor was obvious, a fluff patent.
Obviousness, is like porn, I know it when I see it.
Just wondering how many of the commenters here have been both an examiner and a prosecuting attorney?
When I was trained as an examiner in the 70’s, we were taught that we needed a reason to combine references. 1. Substitution of one component for its intended use not patentable. 2. Change in degree – not patentable; change in kind — patentable. 3. Some things are obvious per se: change in color, adding wheels, making adjustable: unless unexpected results occur.
Anybody remember the old green glass example: obvious to use any color glass: wait — green glass gives a greenhouse effect that is not achieved with other color glass: therefore — patentable.
The facts of KSR are a simple substitution of component argument: sensor used for its expected purpose.
SCOTUS analyzed the facts like my old SPE taught me. Find the closest single reference prior art. Determine what the difference(s) is (are) between the claimed invention and this single prior art reference. Can you find the differences in other prior art and do you have a reason to substitute? If so, not patentable. Sounds like Graham Deere to me.
Of course, there are much harder obviousness cases that are much harder to analyze. But this ain’t one of them. Remeber that this case is a COMBINATION OF ELEMENTS case which generally are pretty easy to analyze.
After doing this for 30 years, the only mystery left to me is how to determine the level of ordinary skill in the art and, even if you can do that, what do you do with that once you have determined that.
Professor Mandel makes some excellent points in his case review. I would add the following note.
In the oral arguments in this case, Mr. Goldstein, attorney for Teleflex, said “…what the Federal Circuit means by its test is not obvious, is something that’s either apparent or not apparent, and that’s what the Federal Circuit is asking.” (page 29, lines 3-6). Later on, Justice Stevens asked, “Don’t you think there’s a grammatical difference in the meaning of the word obvious and the meaning of the word apparent?” Goldstein answered, “No, I don’t.” (p. 37, line 21 et seq.)
I believe this decision was largely an attempt, by the Supreme Court, to clarify the meaning of “obviousness” by equating it with “apparent,” that is, something is “obvious to combine” when it is “apparent to combine.” (Note how Mr. Goldstein rephrased the obviousness test using the term “apparent” at the bottom of page 43 and how Justice Scalia commented, “So why don’t you say that?)
Unfortunately, while this attempt to clarify the law was commendable, I don’t think this point came through clearly. On the whole, I think the decision is marred by vague statements that, if properly qualified, would be appropriate, but in their unfinished state are just confusing. For example, where is there any statement that the time to test obviousness is at the time of applicant’s invention? The lack of appreciation for the major role played by hindsight suggests a superficial familiarity with important patent decisions (except, perhaps, the Supreme Court’s own decisions).
All KSR is really saying, with their “apparent reason to combine” test is that references are obvious to combine when there is an obvious (or “apparent”) reason to combine them. It will be interesting to see whether the USPTO introduces its own added gloss on the term “apparent” by somehow finding that an “apparent” reason adds something new to obviousness (e.g., just as they found extra life in each of the terms “useful, concrete, and tangible” under the State Street test).
Mark,
I have been wondering about the same thing and I am not sure that KSR will necessarily impact DNA patents all that much. Even though KSR certainly put “obvious to try” arguments back on the map, it may still be ineffective especially against most purified and isolated DNA patents. First, KSR, along with most of the cited SCOTUS cases like Adams, Anderson’s-Black Rock, and Sakraida, are about claims to machines where the elements of the claims are found in prior art compositions or machines. In other words they are ‘clean’ combination cases — finding each physical element of a machine somewhere in the prior art. In those cases the main question was whether you could combine the prior art references. The DNA patent obviousness cases like Bell and Deuel are different. They are about the obviousness of a DNA sequence in light of the prior art amino acid sequence in combination with a method of isolating a DNA sequence using amino acid information. Both Bell and Deuel seem to note this difference. (“[T]he PTO’s focus on Bell’s method is misplaced. Bell does not claim a method. Bell claims compositions, and the issue is the obviousness of the claimed composition, not of method by which they are made.”) Second, even though KSR made it easier for prior art to be combined, it might not matter for DNA patents. In fact, there seems little question that there was a motivation to combine the two sources in the DNA cases. (“[T]here is incentive or motivation to isolate (clone) the gene for any functional protein because it would then enable production of large amounts of the protein….” Ex parte Deuel). The point is that even when the two sources are combined (ie method plus amino acid sequence), the Fed. Cir. found that the claimed DNA sequences were still not obvious. Third, even if KSR’s holding is broader than simply making it easier to find a motivation, KSR’s broadening/rejuvenation of the “obvious to try” rejection may not impact DNA patents all that much. KSR holds that it was error to ignore the “obvious to try” argument and that you **might** be able to show obviousness “[w]hen there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions” and “this leads to the anticipated success.” It seems to me that the Fed. Cir. DNA cases already account for such findings of obviousness. Bell “concedes that in a case in which a known amino acid sequence is specified exclusively by unique codons, the gene might have been obvious.” Likewise, In re Deuel states that a short DNA sequence might be obvious if it coded for “a protein of sufficiently small size and simplicity … [that] each possible DNA would be obvious over the protein. That is not the case here.” On this score a lot depends on the meaning of “finite number” of solutions. In Bell, the Fed. Cir. found the IGF protein could be coded by “1036 different nucleotide sequences, only a few of which are the human sequence that Bell now claims.” Most proteins have a reasonable number of amino acids with degenerate codons, thus there will be a large number of possible DNA sequences that could code for that protein. It might be one thing to talk about the relatively small number of combinations of gas pedal components (though this also can become a large number relatively quickly) but it seems another issue to talk of the obviousness of one sequence out of a thousand possible ones. I’m not a big fan of patents on purified and isolated naturally occurring gene sequences but I don’t think KSR necessarily impacts them negatively.
I’m surprised not to see more attention paid to the Court’s rejection of the Federal Circuit’s “obvious to try” jurisprudence. Since obviousness to try is now enough unless there are significant inventive obstacles in making the try work, I wonder what the implications will be for Bell, Deuel, and DNA patent obviousness cases. They seem a lot harder to sustain under this new standard.
Eric wrote:
“Anyone notice how many times the Supremes used the word “predictable” to describe obviousness, as in “it does no more than yield predictable results,” uses a “predictable variation,” is a “predictable use of prior-art elements,” or a POSITA would examine a “finite number of identified, predictable solutions” (obvious to try)?”
Response:
I noticed the same thing. It appears that the court was working under the assumption that the more synonyms they use for “obvious”, the clearer the test becomes. Ironically, one of the synonyms for “obvious” is “patent”.
Elephant stated:
“Modification of Larry’s test
A simple test. Have the examining patent examiner prepare a draft written request of three examiner’s who are familiar with the field, but not familiar with the invention in question to solve the problem it solves without showing the filed patent application to that group. Present that written request to the applicant’s representative to review for bias and tellegraphing the solution. After this approval, submit the written request to the three examiners. If they come up with the actual claimed patented approach in a short period of time, the patent should be thrown out as obvious.”
Response:
That test is certainly better, but…
– in many cases, the “flash of genious” is identifying that a specific problem exists, only once that flash occurs, is the solution obvious. For such inventions, telling the examiners the specific problem may be telling them too much
– the patent office will never invest the resources necessary to implement that test.
Also, MM is right (boy it hurts to say that) that an applicant could rebut an examiner’s evidence-less reasons for obviousness with evidence-less reasons for non-obviousness. However, the likelihood of success in such cases is awfully low.
“That’s a fair question, John. The answer is that this case is a stinging slap in the face for the people who DEPEND ON the application of the strict TSM test to get their obvious claims through the patent office.”
Ding-ding-ding. We have a winner!
Most patents like this a) cover an improvement that is not worth the cost of prosecution, b) are simple to design around, and/or c) are only really useful for frightening/impressing patent-illiterate bumpkins.
We need a name for patents obtained by the strict TSM approach. I nominate “automaton patents.” Only automatons would learn something from the teachings contained therein.
Anyone notice how many times the Supremes used the word “predictable” to describe obviousness, as in “it does no more than yield predictable results,” uses a “predictable variation,” is a “predictable use of prior-art elements,” or a POSITA would examine a “finite number of identified, predictable solutions” (obvious to try)?
I wonder if the real test should be whether a POSITA would view the claimed invention as predictable given the teachings of the prior art? I.e., if a POSITA would be at all surprised by the claim, then it’s not predictable and not obvious?
Perry:
Thanks! I actually visited your website yesterday to see if you had commented on KSR with respect to design patents. Your word is golden with me when it comes to design patents.
“the long-standing test for properly combining references in a 103 rejection of a design patent claim has been “…whether they are so related that the appearance of certain ornamental features in one would suggest the application of those features to the other.” In re Glavas, 230 F.2d 447, 450, 109 USPQ 50, 52 (CCPA 1956).”
What do they mean by “suggest”? What is “so related”? Those terms could mean just about ANYTHING! What kind of test is this?! It’s so vague! It’s written in jello!! It’s totally subjective! This gives Examiner’s carte blanche! Was the CCPA on drugs when they wrote that?! This is going to spell the end of design innovation in the United States.
/snark off
Peanut gallery – Good comments. However, to rebut the reasons provided by the examiner, the applicant will now have to provide EVIDENCE of non-obviousness directed to the reasons provided by the examiner. A teaching away in the references themselves may rebut the references, but not the information stored in the Examiner’s mind and presented as PHOSITA knowledge.
Modification of Larry’s test
A simple test. Have the examining patent examiner prepare a draft written request of three examiner’s who are familiar with the field, but not familiar with the invention in question to solve the problem it solves without showing the filed patent application to that group. Present that written request to the applicant’s representative to review for bias and tellegraphing the solution. After this approval, submit the written request to the three examiners. If they come up with the actual claimed patented approach in a short period of time, the patent should be thrown out as obvious.
“Because the reasons to not have to be backed up by EVIDENCE, examiners can and will simply make them up using hindsight.
To rebut the reasons provided by the examiner, the applicant will now have to provide EVIDENCE of non-obviousness.”
Not necessarily. At a minimum, applicants will need only to provide a compelling counter-argument showing that the Examiner’s reasoning is flawed, i.e., the Examiner may have made an assumption about the invention or the properties of an element in the invention which is false. Note that I am not saying that this is all that an applicant SHOULD provide. I am simply pointing out that “evidence of non-obvious” is not strictly necessary to rebut an Examiner’s reasons for combining disparate references.
Concerning the query about TSM and design patents, the long-standing test for properly combining references in a 103 rejection of a design patent claim has been “…whether they are so related that the appearance of certain ornamental features in one would suggest the application of those features to the other.” In re Glavas, 230 F.2d 447, 450, 109 USPQ 50, 52 (CCPA 1956). So, the ‘suggestion’ is achieved if the prior art is “related”, meaning that if the two references are tables, it’s ok to combine, but if one is a table and the other is a car fender, it’s not. Since the Supremes did not kill TSM altogether, I don’t see this ‘relatedness’ test changing.
In a nutshell, this is the way KSR has changed things:
1) before KSR, examiners had to provide EVIDENCE of obviousness
2) after KSR, examiners merely need to provide REASONS of obviousness
Because the reasons to not have to be backed up by EVIDENCE, examiners can and will simply make them up using hindsight.
To rebut the reasons provided by the examiner, the applicant will now have to provide EVIDENCE of non-obviousness. In some cases, such evidence may be found in the references themselves (a teaching away). However, in many cases it will require information that is not easily available to the applicant’s attorney.
Someone said:
A simple test. Ask several who are familiar with the field, but not familiar with the invention in question to solve the problem it solves. If they come up with the patented approach in a short period of time the patent should be thrown out as obvious.
Response:
That test is easy enough in a courtroom. How would it be applied during prosecution? Also, you forgot the necessary preliminary step of time-traveling back to date on which the invention was conceived, before you start asking several who are familiar with the field.
I think much of the divide here is because people are arguing about different things. My position was that the TSM test, when strictly applied, was too stringent. Others are arguing that having no requirement whatsoever for combinations would be too liberal. From the decision, it appears the supreme court intended there to be some link between combinations to prevent hindsight rejections from occurring:
“A patent composed of several elements is not proved obvious merely by demonstrating that each element was, independently, known in the prior art.”
So it appears they wish to maintain some sort of connection between references, just not strictly a teaching from the primary reference. This no doubt raises the bar to patentability to some degree. But I think this notion that KSR will give everyone free reign to combine anything at a whim is unfounded (barring any cynical anecdotes you may have about patent examiners).
Points to Ponder said “KSR is the same kind of mealy-mouthed not-very-well-informed mess.”
Exactly. About all the Supreme Court said is that TSM is not some sort of magical mantra whose mere recitation negates any obviousness challenge. It offers little, if any, guidance as to how an examiner or court should decide the question of obviousness. Sure the Court reaffirmed Graham’s approach to determining obviousness: (1) determine the scope and content of the prior art; (2)determine the differences between the prior art and the claims at issue; and (3) determine the level of ordinary skill in the pertinent art. “Against this background,” you then determine obviousness. As the Court said in KSR, “[i]f a court, or patent examiner,conducts this analysis and concludes the claimed subject matter was obvious, the claim is invalid under §103.” Gee, that’s enlightening – all the KSR Court did was regurgitate what it says in section 103 (and threw in the secondary considerations from Graham).
In the end, when read properly, KSR really does not change much. At the same time, it really offers nothing new to the way in which obviousness is determined – at least if it is read properly and nothing is taken out of context. Of course, as Points pointed out, that could be the legacy of KSR if the CAFC chooses to take that route.
As for examiners, I agree that many ignored a strict application of TSM (even though they usually claimed that they were using the TSM approach). But, while it may be correct that KSR simply confirms that the TSM approach is not an absolute necessity, my fear is that many of the examiners who, at most, only paid lip-service to TSM, will now wrongly conclude that KSR allows them to use even less “common sense” than they did before when it comes to combining references.
Points to ponder
“With luck, the Federal Circuit will basically ignore KSR and keep doing what it’s been doing.”
… which is to ignore their own decision in KSR and pretend it never happened. LOL!!!
“How is returning to careful application of the Graham analysis (including the secondary factors), with some insights gleaned from TSM and some common sense references added where appropriate one way or the other, so bad for applicants, patentees, practitioners, or the patent system?”
That’s a fair question, John. The answer is that this case is a stinging slap in the face for the people who DEPEND ON the application of the strict TSM test to get their obvious claims through the patent office.
Those people know who they are. And you can identify many of them by their apocalyptic musings in these comments.
Two observations.
Here’s the whole line from Macbeth. In context, it becomes even more oddly appropriate, doesn’t it –
To-morrow, and to-morrow, and to-morrow,
Creeps in this petty pace from day to day
To the last syllable of recorded time,
And all our yesterdays have lighted fools
The way to dusty death. Out, out, brief candle!
Life’s but a walking shadow, a poor player
That struts and frets his hour upon the stage
And then is heard no more: it is a tale
Told by an idiot, full of sound and fury,
Signifying nothing.
Related topic –
Several noted that Festo made a mess. No, the MESS was created in the Clarence Thomas’ opinion in Warner-Jenkinson, another attempt to take both sides of everything and say nothing at the same time, with enough sloppy language to lead a majority on the Federal Circuit to the “complete bar rule.” The Supreme Court FIXED that mess in its Festo decison.
And when you put the two together, you get to a hopeful conclusion –
KSR is the same kind of mealy-mouthed not-very-well-informed mess. Maybe the Federal Circuit will do a better job of keeping the gold and throwing out the dross this time. Maybe the Federal Circuit will accept KSR’s invitation to treat KSR as limited to its facts. With luck, the Federal Circuit will basically ignore KSR and keep doing what it’s been doing.
A further note to a comment above – “implement an idea that was about 50 years old” with regard to distinguishing the Edison lightbulb invention from the more recent MP3 player – this length of time cannot be a standard today, where a problem has to be 50 years old to be a long felt need. Technical advances are moving too fast these days. If such a period of time is required to evidence non-obviousness, little if nothing will be patentable. Plus, the MP3 player used new processes and materials versus the Sony Walkman in an analogous fashion to the lightbulb. I don’t see any way to distinguish the lightbulb and MP3 player inventions, given the temporal differences.
The Professor is right, KSR changes nothing. For one thing, the trend of SCOTUS under Roberts is to decide on the narrowest possible grounds. So it is doubtful that SCOTUS ever even intended KSR to drastically change the law, but that has not stopped some of you from interpreting it otherwise.
Moreover, for those concerned about an examiner using “common sense” (he-he, its been awhile since I’ve encountered an examiner with common sense) or other crazy grounds based on KSR to justify a 103 rejection, I advise you to get out and prosecute more applications because this would represent zero change from what many examiners do now. Examiners that “live by the sword” of common sense, die by the sword…The notion that uttering the words “common sense” in a rejection would now shift a huge insurmountable burden to the applicant is nonsense. If something is so common sense or well known, then an examiner should be able to produce a document prooving it. Otherwise, how could it be common sense or well known? I think one good thing that KSR does reaffirm is that the “the analysis should be made explicit.” As usual, conclusory statements and blanket suppositions by examiners will not cut it.
Examiners never have difficulty in finding a “motivation” prior to the KSR decision. So, the KSR decision will have very little impact on the Examiners with respect to fashioning a 103 rejection. Just as before, prosecutors will either have to show that all the limitations are not found in the references or the references teach away from the combination. “Common sense” dictates that if A states that it won’t work with B, then a PHOISTA would not combine A and B. If neither can be shown, the secondary considerations outlined in Graham is all that is left.
How is returning to careful application of the Graham analysis (including the secondary factors), with some insights gleaned from TSM and some common sense references added where appropriate one way or the other, so bad for applicants, patentees, practitioners, or the patent system? Obviousness analysis is hardly “objective”, as Justicie Kennedy characterized the tests under Graham alone, but that is a minor mistake. KSR is much better than Festo, synergism, or flash of genius, or worse, which I and others had feared might result from a KSR decision if the Court had run amok here as it has done in these other patent doctrine decisions. Let’s accept KSR as a return to Graham with TSM and common sense guides and go on with our prosecution and litigation practices!
Joe Smith and Malcolm are right. Explicit TSM is sufficient as it’s always been. It is no longer necessary. That’s as it should be. That’s as it should always have been. Thanks to SCOTUS for their serious minded consideration. Good to see some part of our government works as it should.
Now there’s a standard that really clears things up – yes, good old “common sense.” Come on – that is not a standard for proving the issue of obviousness. As for the KSR oral arguments, all of that is meaningless. Unless I missed it, I could find neither “gobbledygook” nor “worse than meaningless” in the actual opinion (which is all that matters now).
During oral arguments, regarding *Dystar* and an “implicit” (vs. “explicit”) TSM test, Chief Justice Roberts called it “worse than meaningless” and Justice Scalia called it “gobbledygook.” The TSM test is dead, and the new standard is simply “common sense.”
A law professor who collects data? Somebody needs to pat this guy on the back and buy him a beer. But I disagree with his theme that KSR merely moves the obviousness analysis explicit TSM to implicit TSM. It’s the “merely” I disagree with. Demanding explicit TSM was the applicant’s rejoinder to a lousy 103 rejection. An implicit TSM is the way examiners justify the dreaded “obvious because I say so” rejections. If, as the professor suggests, KSR eliminates the first and exalts the second, we are doomed to suffer unending OBISS rejections. This is not a “merely” situation; it is huge.
Joe Smith said:
“Edison was trying to find a practical way to implement an idea that was about 50 years old and had to find new materials and new processes to make the device work.”
I think we are agreeing in the sense that in order to make a portable MP3 player work there are many important technical challenges to overcome beyond merely saying “make a portable MP3 player”.
My position is that if an Applicant discloses how to overcome these challenges, he or she deserves a patent. Do you agree?
I agree that ther KSR opinion leaves obvious determination largely intact.
Here is what the Supremes say about combination patents:
— The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.
— Sakraida and Anderson’s-Black Rock are illustrative. A court must ask whether the improvement is more than the predictable use of prior art elements according to their established functions.
— [In relation to the Adams Battery case] The fact that the elements worked together in an unexpected and fruitful manner supported the conclusion that Adams’s design was not obvious to those skilled in the art.
That analysis contains NOTHING surprising – it has been common knowledge amongst patent practitioners since about 1840. There are many, many decisions to that effect prior to the A & P case (which on its own facts was signally unjust).
Here also is what the Supremes say about technical problem:
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 patent community should have no problem living with the KSR decision.
In particular, those who draft patents, when they arrive at a combination of features that they wish to claim need to consider whether they combine in an unexpected and fruitful manner and if so need to ensure that the advantage is stated in the specification together with supporting evidence if available e.g. results of succesful experimental trial.
If the patentee was working on a particular problem, it does no harm to explain what the problem was and why the dislcosed solution is ingenious.
Of course in these days of Markman hearings, these things have to be done in a way that does not force a narrow claim construction. But it should be possible to steer a middle ground and ensure that the disclosure that helps to persuade a court that a partcular claim is valid finds its way into the specification.
I think every practitioner expected more clarity on how to apply Section 103 objectively (i.e. without hindsight). Avoiding hindsight, and therefore sticking to the facts was certainly the reason why a structured test as the TSM test was developped (there is the problem-solution approach at the EPO to possibly limit the effects of hindsight). Then, with the KSR opinion, and the more lousy “reason to combine”, the impression is that the door is again more opened to hindsight. Knowing the effect of hindsight, I do not see how implicit reasons to combine can be objectively identified by an ordinary factfinder. The statutory limits of non-obviousness are not very clear in any jusrisdiction, and this is why tests have been developped by the appeallate instances, in order to give more legal security to patent users. Here, with the KSR opinion, my impression is that we are loosing legal security in the application of the non-obviousness criteria.
“Are you saying then, that Thomas Edison did not deserve a patent?”
My hyptothetical involved the first combination of known elements – flash memory, mp3 and Sony Walkman format – to create an mp3 player – with each component performing known functions.
Edison was trying to find a practical way to implement an idea that was about 50 years old and had to find new materials and new processes to make the device work. There is a substantial difference between the two.
Compliment to that last contributor. I am often asked if Europe has a presumption of validity. Seems to me that inherent in any competent system is 1) patent valid till proved otherwise 2) patent not infringed till proved otherwise. Clear where the burden lies. As to “clear and convincing” as opposed to “preponderance” England as long ago as 1978 got rid of the distinction between Sect. 14 “clearly obvious” and Sect. 32 “obvious”. Perhaps the SCOTUS has brought us back to a nice simple 2 x 2 matrix of infringed/not infringed crossed with valid/invalid. But note: Patentee wins on only one of those four fields. Thus, in 50:50 cases that go to trial, patentee ought now to win in just 25% of those cases. That’s a great system for rendering litigation to trial a last resort, and causing most cases to settle before trial. Maybe now you don’t even need a “Loser Pays” provision, because suddely it will be hard to find parties willing to invest in the prosecution of frivolous/mischievous litigation.
Mandel says; “Finally, one brief remark in KSR could prove significant. The Court notes that it need not reach the question of whether consideration of a reference that was not before the patent examiner during prosecution should void the presumption of validity. But, the Court states, “We nevertheless think it appropriate to note that the rationale underlying the presumption–that the PTO, in its expertise, has approved the claim–seems much diminished [in this circumstance].” A strong comment on this issue, clearly inviting the Federal Circuit to reexamine the presumption of validity that adheres to patents when they are challenged based on newly discovered prior art.”
Thus proving that neither law professors nor the Supreme Court (or at least the hapless Kennedy clerk who wrote this mess) don’t think or write clearly. The presumption of validity is statutory, so there’s nothing to rethink on that count. What can and perhaps should be rethought is the burden of proof. The clear and convincing standard is pure judicial legislation and is unjustified in the face of non-cumulative prior art not cited to the PTO.
G,
Thanks for your response.
Actually it was known that passing electricity through carbon filaments in a vacuum would produce light. It’s an obvious extension of US181163 (Woodward) What was not known was how make the bulb last a long time.
“An inventor is not entitled to a patent unless _____”
the inventor can show that the invnetion is
A. novel, and
B. non obvious
I think it may be fair to say Mr. Smith must show why someone would not have thought to combine the 1) flash memory, 2) mpeg files to record music in a compact digital format and 3) Sony Walkman, Sony Discman and portable radios to create a portable MPEG player. Just because he was the first to invent the portable MPEG player, I do not believe means that he should have the right to exclude others from using the invention unless he can show that the invention was novel and non obvious at the time of the invention. If Mr. Smith can show some technical hurdle that had to be overcome to combine 1, 2 & 3 to create a portable MPEG player I think Mr. Smith would be deserving of a patent.
With respect to Thomas Edison I do not beleive any prior art at the time taught that passing electricity through carbon filaments in a glass vaccum would produce light. An argument that Mr. Edison might have made for non obviousness is that there was a long felt need for a light source at night. In the past people had used candles and gas lamps. Mr. Edison however discovered that when electricity is passed thorugh carbon filaments in a glass vaccum, light will illuminate. There is no teaching of this combination in the prior art.
I appreciate your feedback Mark. I just feel that there must be some better approach to obviousness that could be clearer than how the CAFC and the Supreme Court have been addressing the issue.
G,
Interesting approach, presume an inventor is not entitled to a patent unless he or she proves it.
How then, would you complete the following sentence?
“An inventor is not entitled to a patent unless ______________”
Joe Smith poses the following hypothetical:
“Suppose a few years back you thought:
1.) flash memory stores data;
2.) mpeg files record music in a compact digital format;
3.) Sony Walkman, Sony Discman and portable radios have demonstrated the market potential of portable music; and
you were the very first to conceive of putting those three together and create a portable mpeg player. Do you really think that you would have deserved a patent on the basic idea of the mpeg player? Common sense says that the combination was inevitable and should not be protected by a patent.”
Actually, Mr. Smith, I think that if you had conceived that invention before anyone else and if you described in your patent application how to make and use the invention in sufficient detail so that others of ordinary skill in the art could make and use your invention without undue experimentation, then yes, I believe that you would deserve a patent on the portable MPEG player.
Consider Thomas Edison. According to your hypothetical, his light bulb (US patent 223,898) was obvious. The elements of his invention, (e.g. thin carbon filaments, mixtures of lamp black and tar, glass bulbs, vacuum, platinum lead wires, etc) were all known and there was a demonstrated market potential for light bulbs.
Are you saying then, that Thomas Edison did not deserve a patent?
Practically speaking, hasn’t the burden always been on the applicant to prove non obviousness during prosecution of a patent. Examiners in my experience have not really been required to put much thought into reasons to combine references and are free to think up any reason that seems plausible to them at the time. Maybe we should all just admit this fact and make it law. If all elements in a claim are found in the prior art the presumption is unpatentability unless the applicant or patentee can prove non obviousness. This may be more efficient than having the Examiner wasting time thinking up of some absurd reason to combine references, only to have the applicant refute the Examiner’s reason to combine, then having the Examiner defend their position. Instead the Examiner could cite some references and if the applicant can find good justification for non obviousness (which would shed more meaningful information regarding the invention and problems of the prior art) the Examiner could allow the application. I believe this would work in litigation also and likewise shed more meaningful information on the invention and problems surrounding the prior art.
Mandel picks some of the rosier passages from the opinion, which is littered with refuse like:
“the results of ordinary innovation are not the
subject of exclusive rights under the patent laws.”
and approving cites to Sakraida and Black Rock.
This is not to say that Mandel is wrong; rather, my point is this opinion says many different things, some of which are in plain tension. What KSR actually means will depend on what those who get to interpret it take from it. Lucky for the patent bar, it is the Federal Circuit to whom this duty will primarily fall.
Thank you Professor Mandel – this is without question the best analysis I have read.
To everyone who is up in arms about the “common sense” language used in the opinion, you need to step back for a moment and think. “Common sense” could always be used as a motivation (i.e., reason) to combine references to the extent that the “common sense” was used by the examiner to formulate the motivation.
In other words, examiners could previously (and still can after KSR) use their “common sense” to determine why one of ordinary skill in the art would combine two references, and articulate that reason in the Office Action as the motivation (reason) for combining the references. KSR hasn’t changed this.
Looking forward, the Federal Circuit will continue using their same flexible TSM test – this is the test that they believe in and the supreme court explicitly endorsed this flexible application of the TSM test in the opinion.
In other words, KSR won’t change a thing!
Christ almighty people don’t you get it. The Supreme Court pulled a Marbury v. Madison. Remember the story Chief Justice Marshall trumped Jefferson’s belief that the Executive Branch was a higher authority than the Supreme Court by letting Jefferson win in the case based upon the proposition that the Supreme says what the law is. So Jefferson couldn’t complain.
It is the same thing here. Before KSR, everyone was unsure that the TSM test was even constitutional. Not once, but three times the TSM test was cited with approval by the Supreme Court. They even indicated that it was applied wrong in the present facts. So the court said, yeah its the test to determine obviousness and here is how it is to be applied. By the way, you examiners, you must provide “explicit analysis” when rejecting claims. This case is a total boom for patents. The TSM IS the proper test and the Supreme Court only indicated one instance in which it was not applied correctly. It even stated that the Federal Circuit has been applying it correctly in two other cases. Therefore, the score is 2 to 1 in favor of the Federal Circuit. Now let’s all quit whining and get on with it. TSM is now the law of the land.
These discussions about the patent system tend to drift away from the reality of the inventions under discussion.
Does anyone seriously argue that the claim by Teleflex which was under review by the court was not obvious? If you have persuaded yourself that it was not obvious then you need to be careful because your feet have floated off the ground and you may bump the ceiling or drift away into the ether at any moment.
Let me use a real example:
Suppose a few years back you thought:
1.) flash memory stores data;
2.) mpeg files record music in a compact digital format;
3.) Sony Walkmen’s Sony Discmen and portable radios have demonstrated the market potential of portable music; and
you were the very first to conceive of putting those three together and creat a portable mpeg player. Do you really think that you would have deserved a patent on the basic idea of the mpeg player. Common sense says that the combination was inevitable and should not be protected by a patent.
MM,
Applicant’s claimed widget = elements A, B, and C.
References 1, 2, and 3 show elements A, B, and C.
Applicant, a year or so after filing, is selling widgets like hotcakes.
In the meantime, Examiner rejects application, argues widget is obvious in light of 1, 2, and 3. Although 1, 2, and 3 have show no T,S,M to combine, it is within the common sense and technical grasp of PHOSITA to combine these items and to anticipate success. In addition, market forces provided applicant with a motivation to combine the finite number of possible combinations for the widget.
Examiner could’ve quoted KSR:
“When there is a design need or market pressure to solve a problem and there are a finite number
of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.” (KSR pg 17).
QED.
I’m not saying the widget is nonobvious, but that the TSM argument is absolutely no help to the applicant here.
Yes, I should not have used the word prove. Under your (correct) definition, no patent can be proven unanticipated or nonobvious. I should’ve used the words “argue with at least a chance of winning” or “rebut the examiner’s assertion.”
Teaching away will not “prove.” I might produce 50 reference which all teach towards.
Computers are cool. Nanotechnology is cool.
If your invention is simply computerizing something or making something smaller and you can’t show that anybody thought it would be difficult or impossible to computerize that thing or make it smaller, then you should be prepared to (1) get a claim with a lot of limitations in it that will render it less valuable or (2) watch your claim get tanked as obvious.
This is a good thing.
Something else to remember is that the plaintiff could have submitted detailed evidence of why a PHOSITA would *not* have followed the trend with the Asano pedal and, instead, would have abandoned the Asano design.
If you can’t think of a good reason why a proposed modification/combination would not be obvious, isn’t it possible that the proposed modification/combination is actually obvious?
MM wrote, “Please explain how one can argue that, at time X, it would have been obvious to combine elements in two disparate references, where the argument is devoid of any reference to a teaching, suggestion, or motivation to combine those elements.”
Great point. For example, under the facts of the KSR case, there was an overwhelming market trend to add the sensor — thus providing a motivation to add the sensor — and references that taught where to place the sensor.
a person having ordinary skill in the art <> a person having their head buried in the sand
“No T, no S, and no M, but can still be obvious.”
Please explain how one can argue that, at time X, it would have been obvious to combine elements in two disparate references, where the argument is devoid of any reference to a teaching, suggestion, or motivation to combine those elements.
Or perhaps you omitted something from the quoted passage above …?
“It is now unable to prove nonobviousness.”
The test was never intended to “prove” non-obviousness (after all, you can’t “prove” that a prior art reference which expressly suggests the combination does not exist). Non-obviousness could only be “proven” by teaching away or arguments based on one or more of those dubious Graham factors.
Agree w/ Caveman + Stepback.
The TSM test is intact…only to prove obviousness. It is now unable to prove nonobviousness. No T, no S, and no M, but can still be obvious.
Under KSR, the examiner or court can find motivation to combine in “common sense.” (Ctl+F your way through the opinion, you’ll find it plenty of times).
// random thought: Also, “market forces” can provide the motivation to combine. So…proof of commercial success => there were market forces providing motivation => obvious? eek! //
As Prof. Mandel noted: “Experiments on non-obvious decision-making that I have conducted reveal that knowledge of the invention unconsciously and inevitably distorts judgment of the ex ante obviousness of the invention.” You can’t get away from hindsight bias. It will be there.
KSR took the TSM test out of the inventor’s hands as a weapon against hindsight bias and against disguised conclusory statements of obviousness (e.g., recitation of some magic phrase such as “PHOSITA would exercise his commone sense to combine the elements….”).
p.s. Larry, you suggested to take a real-live PHOSITA and see if they can come up with it won’t work — it might well be obvious 10 years down the road when suing someone, but not obvious at time of filing.
(Captain?) CaveMan:
You act as if the TSM test mattered to examiners. Aside from the less predictable arts (e.g., the BioTech stuff), examiners routinely ignored (or merely paid lip service to) the TSM test. They would just dream up any reason for making the proposed modification/combination and force an applicant to amend the claims or appeal. Under KSR, they’ll continue to do so.
Lionel under TSM practice, the Examiner needed to support the combination with a TSM, regardless of where the references came from – a task that requires some effort. Now, the Examiners can, as I have been exaustively stating on this board, just do a little computer searching, find the claim terms in the reference somewhere and BANG issue a 103 rejection whether the combination makes sense or not.
Festo is another example of gratuitous intermeddling by the Supreme Court in perfectly good DOE jurisprudence and creating a stupid mess. The highlight of the Festo silliness is imparting DOE estoppel based on an amendment to place a dependent claim that is indicated allowable into independent form. Utter hogwash. So yes, people are still complaining about Festo, and rightfully so.
[slapping myself in the head]
Doh…yes, it is that simple stepback. What’s in the prior art – how does it differ from what is being claimed – and what’s the level of ordinary skill in the art. Once you have compiled all of that information, then it’s real simple – is the claim obvious in view of this information. It’s also quite astonishing that this simple analytical process is precisely what is required in 35 USC 103 – nothing more, nothing less. Of course I am still trying to find something else useful or enlightening in the KSR opinion – in other words, something other than a worthless regurgitation of section 103. Let me know if you find it.
Yes, under KSR, the “reason” Lionel is ANY reason. That’s the problem as any experience prosecutor will tell you. Under KSR, the Examiner can say that the references should be combined because it will eventually make the world a better place, or, more commonly, will increase efficiency. These are not “reasons.”
Personally, I’m surprised that no one has homed in on this simple, IF … THEN statement made in KSR v. Teleflex:
“[IF]a court, or patent examiner,
conducts this analysis and concludes the claimed subject matter was obvious, [THEN] the claim is invalid under §103.”
And what exactly is “this analysis”?
Here it is straight out of the mouth of Graham:
“Against this background the obviousness or nonobviousness
of the subject matter is determined.”
What is “this background”? Once again, straight out of the mouth of Graham:
“Under §103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved.”
So there you have it in simple English. A single person who is recognized as an “examiner” or as a “court” makes the judgment call just like an umpire in baseball makes a call. He or she makes the call while backed up against a “background” rather than against a baseball “backstop”. The “background” is the one defined in Graham. There is no video replay rule. Just your basic notion of fair play and common sense. Make the call and move on with your life.
“Long live computer searching and slap-dash back-of-the-hand 103 rejections…”
And this will be different from current practice how?
Actually, under KSR, the Examiner still has to provide a reason that one of ordinary skill in the art would have combined those elements.
I think making the test more flexible is generally good, but this will lead to more appeals.
Also, are people still complaining about Festo, which was way overblown when it came out.
“Under KSR any odd refrences can be cobbed together to establish a p.f. case”
Again, CaveMan: this is false, although I notice you’ve given yourself plenty of wiggle room by using the term “cobbed together” which, I’m guessing, will turn out to mean whatever you want it to mean when you’re sufficiently backed into a corner.
Can you at least provide a cite from the case which supports this radical proposition? After you do that, I’ll be happy to blow your argument out of the water with cites to the contrary.
TSM has always required a T,S, or M in the references themselves or “… in the knowledge generally available to one of ordinary skill in the art.” I think the flexibility in the TSM test has always been there.
A side note, Professor Mandel is not presently a registered patent attorney. I say this with all due respect and only so that his comments can be taken with the proper perspective. In my opinion, comnments from people who address these issues on a daily basis, e.g. examiners and prosecuters should carry the greatest weight in the TSM dialog.
/ignore Mooney ON (default)
KSR is worse than it looks. The TSM test is NOT intact. Under KSR any odd refrences can be cobbed together to establish a p.f. case whereupon the burden shifts as stepback artfully notes.
Long live computer searching and slap-dash back-of-the-hand 103 rejections…
Has anyone examined the impact of the KSR decision on design patents? After all, the TSM test was used in determining the question of obviousness of a design patent. But now what?
A simple test. Ask several who are familiar with the field, but not familiar with the invention in question to solve the problem it solves. If they come up with the patented approach in a short period of time the patent should be thrown out as obvious.
I too think that the article understates KSR’s significance, joining in an industry-wide state of denial unseen since Festo.
Simply put, the TSM test has been replaced by the following test: A claim is obvious if it is obvious, nothing more and nothing less, because the statute says so. Examiners and judges do not need strict guidance to determine what “obvious” means. They are capable of figuring it out for themselves.
As we did after Festo, we’ll suck it up and deal.
Prof. Mandel wrote, “The Supreme Court’s ‘reason to combine’ sounds significantly like ‘suggestion, teaching, or motivation to combine.'”
… and the Supreme Court’s “reason to combine” sounds significantly like what AIPLA asked for in its amicus brief: “Accordingly, although AIPLA has no interest in the ultimate victor in this case, its submits this brief in favor of Respondents to urge this Court to continue requiring a reason before combining prior art to establish obviousness under 103(a).” See page 2.
“Any practitioner who takes a case to the Board or the Fed Cir based on a “roughly intact” TSM argument is, IMO, a fool.”
Yeah, right.
So, in Gideon’s world, evidently, one can now prove obviousness simply by showing that two of five elements in the claims are in reference A and the remaining three are in reference B. No reason to combine them need be provided! So said the court in KSR. Haven’t you read the comments at Patently-O, your honor? Thank you. End of analysis.
Right.
I think you are giving too little weight to the Court’s discussion of the historic combination cases, which is where the Court begins its legal analysis. As the Court stated at 13: “Finally, in Sakraida v. AG Pro, Inc., 425 U. S. 273 (1976), the Court derived from the precedents the conclusion that when a patent simply arranges old elements with each performing the same function it had been known to perform. and yields no more than one would expect from such an arrangement, the combination is obvious. Id., at 282. The principles underlying these cases are instructive when the question is whether a patent claiming the combination of elements of prior art is obvious…. Sakraida and Anderson’s-Black Rock are illustrative – a court must ask whether the improvement is more than the predictable use of prior art elements according to their established functions.” Note that the Court says “a court must ask” this question, and in describing Sakraida states “is obvious” without further analysis required, whereas in other places the Court says “is likely to be obvious.” Although the Court later states (at 14-15) “common sense directs one to look with care at … the combination of two known devices according to their established functions, it can be important to identify a reason that would have prompted a person of ordinary skill … to combine the elements in the way the claimed new invention does,” nothing in the opinion suggests that the identification of such a reason for combination is required in the absence of a new function (creating an unresolved tension that my own blog on Patently-O noted).
If the PTO and/or the Federal Circuit follow the Court’s invitation to focus on its earlier combination cases, KSR will indeed result in a dramatic change to obviousness law. And in this regard, the PTO or the courts could readily shift the burden of production of evidence of non-obviousness, based solely on the lack of any demonstrated new function for the combination, which also would change prosecution practice, litigation, and results.
Stepback – fully agree.
The word “professor” appended to a man’s name has never, ever impressed me as a reason to listen to him.
Instead, it has always struck me a reason to examine his practical credentials more closely.
The autor wrote: “the decision itself appears to leave the TSM requirement roughly intact.”
I unequivocally and respectfully note that this is the absolute worst legal summary of a Supreme Court case that I have ever read.
Ever.
Any practitioner who takes a case to the Board or the Fed Cir based on a “roughly intact” TSM argument is, IMO, a fool.
I remember when the same kind of “experts” made soothing cooing sounds after the US Supreme Court rendered its opinion in Dickinson v. Zurko. Ha, ha people, relax. Nothing has changed. Everything is as it was before. Do not get alarmed. The world is not coming to an end. It’s all good. It’s all good. Trust me. I’m a trustable “authority”.
Sometimes in the aftermath of Zurko, when I have too much time on my hands, I like to visit the USPTO BOPAI reading room page and read a couple of the latest decisions by the Board. Let me give you a quick synopsis of what those decisions look like:
Affirmed.
Affirmed.
Affirmed.
….
Let me also give you a quick synopsis of what the appeal decisions to the Fed. Cir look like:
Affirmed Rule 36.
Affirmed Rule 36.
Affirmed Rule 36.
It all has to do with this seemingly inoccuous thing called “the substantial evidence rule”.
Zurko was a first shift in the burden of proofs.
KSR is a new and more powerful shift in the burden of proofs.
The essence of KSR v. Teleflex is that an Examiner can make a prima facie case for “obviousness” by merely uttering the words, “common sense”. At that point, the burden shifts fully to the applicant to prove with substantial evidence that it is not obvious.
Similarly, during summary judgment motions to a single judge, the defendant can appeal to the “common sense” of the judge and then it is up to the patent owner to convince the judge that his “common sense” is wrong. Good luck with that.
Oh, man, you butchered one of the greatest Shakespeare lines of all time.
The Supreme Court went easy on the CAFC after the death bed conversion in DyStar. If CAFC turns around and treats KSR as a nothing and acts as though they have in some means been vindicated and TSM lives then the next time this issue goes to the Supreme Court that court is not going to be as considerate of the CAFC’s feelings.
…agreed! The best commentary yet! The Fed Circ will drag this back and make the TSM what they stated in Kahn and Azla.
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