Person Having Ordinary Skill in the Blogosphere

Trying to articulate most precisely why an obviousness rejection is flawed can sometimes be a frustrating affair.  You know the Examiner is stepping outside the established bounds of obviousness, and you want to fight back.  You look around at all the legal and technical weapons at your disposal, but you can’t decide which one is proper for the task at hand.

Analytics can help.  You can either spend a ton of time reading PTAB ex parte appeal decisions, or take a look at appeal analytics.  Or do both, as I do.  If you curate your inputs toward your goals, you will have a clearer path to selecting the best output weaponry.  If machine learning algorithms have taught us anything, it is that to optimize outputs, you need to train the model embodied as your mind with the most useful inputs.

So let’s take a look at the most recent U.S. Supreme Court decision on obviousness – KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007).  In the patent world, we know this case for decreasing the burden for proving obviousness.  Prior to KSR, to prove obviousness, one would need to point to an explicit teaching, suggestion or motivation (“the TSM test”) in the prior art references that would have rendered it obvious for one having ordinary skill in the art to have combined prior art references to obtain the claimed invention. 

I never practiced patent law prior to KSR.  I started my career in October 2007, and KSR was decided in April 2007.  Thus, when I was an impressionable young law student and new associate, I heard about how the transition in the burden of proving obviousness changed the role of US patent practitioners.  Instead of simply arguing “there is no teaching, suggestion or motivation in the prior art references,” you had to be more strategic in arguing rejections. 

That was not an easy transition, which in hindsight (proper, not improper hindsight) probably benefited me long term.  My mentors were, like everyone else in the profession, not experienced in arguing obviousness in the post-KSR context.  That forced me to look deeply into the language of Federal Circuit obviousness decisions and the language of KSR itself.    

One helpful nugget in KSR is:

[A] patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art. Although common sense directs one to look with care at a patent application that claims as innovation 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 in the relevant field to combine the elements in the way the claimed new invention does. This is so because inventions in most, if not all, instances rely upon building blocks long since uncovered, and claimed discoveries almost of necessity will be combinations of what, in some sense, is already known.

KSR Int. Co. v. Teleflex Inc., 550 U.S. 398, 418-19 (2007).

Essentially every invention is a combination of several elements independently known in the prior art.  But some patent examiners come at you with “Smith discloses part A is used in a known system, and Jones discloses part B is used in known system, and both systems do important stuff, so combined, they would something really important.”

Although I’ve never received a rejection quite that egregious, the essence of some rejections has been similar.  And the PTAB will reverse such rejections, especially if you are quoting language from the most important obviousness decision in decades.

An Examiner is required to set forth convincing reasoning based on the cited prior art references, and what the references would have taught a person having ordinary skill in the art.  A rejection that is simply based on combining known references without this reasoning is insufficient.

Let’s take a look at the patent analytics.  I used PatentAdvisor’s File Wrapper search feature and searched for decisions that mentioned “patent composed of several elements is not proved obvious merely.”

Here are the results. If you can get the PTAB to mention this quote in an appeal decision, you have a 76.7% chance of the PTAB reversing the rejection, as shown below by data from PatentAdvisor.

Here are a few recent examples where the PTAB reversed a rejection using this quote.

Pretty solid results for a case that blew up the norms of obviousness and made the jobs of patent lawyers more difficult.  Use this KSR quote effectively in your appeals, and you can expect improved outcomes for your clients.