Obviousness following KSR v' Teleflex in U'S' Patent Practice

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Obviousness following KSR v. Teleflex in U.S.
Patent Practice

• Abraham (Abe) Hershkovitz
• Hershkovitz Associates, LLC
• APAA Conference - November 18th, 2007
• Adelaide, Australia

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HERSHKOVITZ ASSOCIATES

• ABE HERSHKOVITZ
• 2845 DUKE STREET
• ALEXANDRIA, VA 22314
• 703-370-4800 (voice)
• 703-370-4809 (fax)
• patent_at_hershkovitz.net
• www. hershkovitz.net

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What is the Obviousness Standard?

• 35 U.S.C. 103 Conditions for patentability
  non-obvious subject matter.
• (a) A patent may not be obtained though the
  invention is not identically disclosed , if the
  differences between the subject matter sought to
  be patented 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 art to which said
  subject matter pertains. Patentability shall not
  be negatived by the manner in which the invention
  was made.1
• 1 Consolidated Patent Laws, MPEP January 2007

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The Obviousness Standard - rephrased

• An invention that would have been obvious to
  one of ordinary skill in the art at the time of
  the invention cannot be patented
• Need to determine obviousness.
• Need to determine one of ordinary skill
• Additional objective evidence i.e. secondary
  considerations may be submitted

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Historical Measures of Obviousness
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USPTO Examiners 35 years ago

• Examiners simply stated conclusions
• Example of Examiners decision
• Reference A discloses all claimed limitations
  except for element x
• Reference B teaches that element x is known in
  the art
• It would have been obvious to one of ordinary
  skill in the art, at the time of the invention,
  to have used element x as taught by B in the
  disclosure of A

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USPTO Examiners 30 years ago

• Simple statement of conclusion of obviousness
  made it difficult for the Board of Appeals and
  the Courts to ascertain the rationale behind the
  conclusion of obviousness, thus resulting in many
  reversals of rejections
• PTO management began to require Examiners to
  follow their statement of obviousness with the
  word because and then the reason for their
  conclusion
• The Board of Appeals and the Courts still had
  difficulty affirming many of the rejections
  because Examiners did not establish a reasonable
  basis of why it would have been obvious

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USPTO Examiners 25 years ago TSM Test

• Teaching-suggestion-motivation (TSM)
• Example of Examiners rejection
• Reference A teaches X able to perform L
• Reference B teaches Y able to perform M
• Reference A also suggests that it would be
  preferred for X to be able to perform functions L
  AND M.
• Therefore, (the motivation) it would be obvious
  to one of ordinary skill in the art to combine
  the X of A, with the Y of B so that both
  functions L AND M may be performed.

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TSM Test

• Requires at least some hard evidence that
  provides at least a minimal reason to combine
  various prior art references (provided by
  examiner or challenging third-party)
• Protects against obviousness ruling due to
  hind-sight
• Some (CAFC among others) believed this suggestion
  or teaching to combine should be explicitly
  stated in the prior art references.

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Graham Factors

• Basic 3-prong test of factual inquiries (as
  stated in Graham v. John Deere)
• Determining the scope and content of the prior
  art
• Ascertaining the differences between the claimed
  invention and the prior art and
• Resolving the level of ordinary skill in the
  pertinent art.
• The examiner is the factfinder in resolving
  the Graham inquiries the examiner must
  articulate findings as to the scope and content
  of the prior art to support the (if any)
  obviousness rejection being made.

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Historical Measures of (Non)Obviousness
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Secondary Considerations

• Additional objective evidence secondary
  considerations of nonobviousness (also addressed
  in Graham) may be considered
• These may include evidence of
• Commercial success
• Long-felt but unsolved needs
• Failure of others

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Court Precedence Considered Additional Factors

• Skepticism or disbelief before the invention
  Environmental Designs, Ltd. v. Union Oil Co. of
  Cal., 713 F.2d 693, 697-98, 218 USPQ 865,869
  (Fed. Cir. 1983)
• Copying, praise, unexpected results, and industry
  acceptanceAllen Archery, Inc. v. Browning Mfg.
  Co., 819 F.2d 1087, 1092, 2 USPQ2d 1490, 1493
  (Fed. Cir. 1987)
• Copying Diversitech Corp. v. Century Steps,
  Inc., 850 F.2d 675,679, 7 USPQ2d 1315, 1319 (Fed.
  Cir. 1988)

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Secondary Considerations

• May be provided
• In specification as filed
• In attachment to the application at filing
• At another (timely) point during prosecution
• Typically provided through affidavits under 37
  C.F.R. 1.132 (MPEP 716 and MPEP 2145)

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KSR v. Teleflex
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Background

• Teleflex owned a patent claiming technology
  useful for automobile gas pedals
• KSR invention was a pedal assembly that could be
  adjusted to accommodate drivers of different
  statures. The electronic pedal-position sensor
  was positioned on the support for the pedal
  assembly, with the pivot point being fixed
  regardless of any adjustments.
• The combination of the fixed pivot point on the
  adjustable pedal and the fixed sensor position on
  the support resulted in a simpler, lighter, more
  compact design.

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In Court

• Teleflex sued KSR for infringement.
• Summary judgment from the District Court found
  Teleflexs patent invalid for obviousness, citing
  references that separately taught adjustable
  pedals and sensors
• On Appeal, the CAFC vacated the District Courts
  decisions and remanded the case.
• the district courts analysis applied an
  incomplete teaching-suggestion-motivation test
  in arriving at the finding of obviousness
  Teleflex Inc. v. KSR Intl Co., 119 Fed. Appx.
  282, 288 (Fed. Cir. 2005)

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Supreme Court

• KSR petitioned the Supreme Court for review of
  the CAFC decision.
• Supreme Court reversed CAFC decision
• The district court had correctly determined that
  the patent was invalid for obviousness.
• CAFC erred in applying the TSM test in an overly
  rigid and formalistic way KSR, 550 U.S. at _,
  82 USPQ2d at 1391.
• Reaffirmed use of Graham factors in determination
  of obviousness.

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Lessons

• Supreme Court decision of April 30th, 2007
  overturned the CAFC decision, that analyzed the
  issue in a narrow, rigid manner inconsistent with
  103 and our precedents showing that while the
  ideas behind TSM and Graham factors are not
  necessarily inconsistent, the true test of
  nonobviousness is the Graham analysis.
• We begin by rejecting the rigid approach of the
  Court of Appeals. Throughout this Courts
  engagement with the question of obviousness, our
  cases have set forth an expansive and flexible
  approach inconsistent with the way the Court of
  Appeals applied its TSM test here (p. 11 of KSR
  slip opinion)

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KSR re TSM Test

• CAFCs version of the TSM test allows for
  evidence that is implicit, based on common
  knowledge, found generally in the prior art as a
  whole, based simply on the nature of the problem
  or simple logic, or concluded by experts.
• Therefore, while an explicit suggestion is
  sufficient to conclude obviousness, it is not
  required an implicit suggestion (i.e. advantage
  created by modification that is obvious to those
  skilled in the art, although not thusly stated in
  connection within any reference) may also be
  sufficient.

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KSR re Graham factors

• While the sequence of these questions might be
  reordered in any particular case, the Graham
  factors continue to define the inquiry that
  controls.

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Key lessons from Supreme Court interpretation/judg
ment of past rulings
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(1) Courts and PTO may look beyond the problem
the patentee was trying to solve

• The first error of the Court of Appeals in this
  case was to foreclose this reasoning by holding
  that courts and patent examiners should look only
  to the problem the patentee was trying to solve.
  The Court of Appeals failed to recognize that
  the problem motivating the patentee may be only
  one of many addressed by the patents subject
  matter. The question is not whether the
  combination was obvious to the patentee but
  whether the combination was obvious to a person
  with ordinary skill in the art. Under the correct
  analysis, any need or problem known in the field
  of endeavor at the time of invention and
  addressed by the patent can provide a reason for
  combining the elements in the manner claimed.
  (Emphasis added) page 16 of KSR slip opinion.

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(2) POSITA will be led to prior art for other
than the same problem

• The second error of the Court of Appeals lay in
  its assumption that a person of ordinary skill
  in the art (POSITA) attempting to solve a
  problem will be led only to those elements of
  prior art designed to solve the same problem.
  Common sense teaches, however, that familiar
  items may have obvious uses beyond their primary
  purposes, and in many cases a person of ordinary
  skill will be able to fit the teachings of
  multiple patents together like pieces of a
  puzzle. (Emphasis added) page 16-17 of KSR slip
  opinion.

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(3) Obviousness can be proved by showing
combination was obvious to try.

• The same constricted analysis led the Court of
  Appeals to conclude, in error, that a patent
  claim cannot be proved obvious merely by showing
  that the combination of elements was obvious to
  try. 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. In that instance the fact that a
  combination was obvious to try might show that it
  was obvious under 103. (Emphasis added) page 17
  of KSR slip opinion.

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(4) 103 does not require rigid preventative
rules that deny recourse to common sense.

• A factfinder should be aware, of course, of the
  distortion caused by hindsight bias and must be
  cautious of arguments reliant upon ex post
  reasoning. However, rigid preventative rules
  that deny factfinders recourse to common sense,
  however, are neither necessary under our case law
  nor consistent with it. (Emphasis added) page 17
  of KSR slip opinion.

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Considerations

• It is to be expected that a POSITA will exercise
  ordinary creativity, common sense and logic.
• Possible rationales (as suggested in KSR) that
  may allow for a conclusion of obviousness after
  resolution of the Graham inquiries.

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Possible rationales

• Combining prior art elements according to known
  methods to yield predictable results
• Combining known prior art elements is not
  sufficient to prove obviousness if the results
  would not have been predictable to one of
  ordinary skill in the art.
• Simple substitution of one known element for
  another to obtain predictable results
• Substituting known prior art elements is not
  sufficient to prove obviousness if the results
  would not have been predictable to one of
  ordinary skill in the art.

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More possible rationales

• Use of known technique to improve similar devices
  in the same way
• If the actual application of the technique would
  have been beyond the skill of one of ordinary
  skill in the art, then the resulting invention
  would not be obvious as one of ordinary skill in
  the art would not have been expected to achieve
  it.
• Applying a known technique to a known device
  ready for improvement to yield predictable
  results
• Obvious to try choosing from a finite number
  of identified, predictable solutions, with a
  reasonable expectation of success

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Further possible rationales

• Known work in one field of endeavor may prompt
  variations of it for use in either the same field
  or a different one based on design incentives or
  other market forces if the variations are
  predictable to one of ordinary skill in the art
• TSM (teaching, suggestion, motivation)

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Applicants Response

• 37 CFR 1.111(b) - Traversal of an obviousness
  rejection under 35 USC 103 must include a
  reasoned statement that distinctly and
  specifically points out the supposed errors in
  the examiners action and must reply to every
  ground of objection and rejection in the prior
  Office action. (why the Applicant believes the
  Office has erred substantively as to the factual
  findings of the conclusion of obviousness)

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Applicants Response

• Remember that KSR forecloses the argument that a
  specific teaching, suggestion, or motivation must
  be disclosed in the prior art to support a
  finding of obviousness.
• Ex parte Smith, USPQ2d, slip op. at 20 (Bd. Pat.
  App. Interf. June 25, 2007, citing KSR, 82
  USPQD at 1396)
• May include rebuttal evidence
• Must be considered by the examiner if presented
  in a timely manner
• May include evidence of secondary considerations
• Reconsideration must be made of any obviousness
  determinations in view of the entire record.

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Examiners Response

• If the examiner maintains the rejection after
  reconsideration of the Applicants Response and
  any submitted evidence, he/she must clearly
  explain the reasons for the rejection.

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Fantasy vs. Reality

• While legal precedents as discussed before are
  binding on PTO Examiner, there is still the human
  element
• USPTO Examiners make initial determination of
  patentability thus, while refusals to issue a
  patent may be appealed to the PTO Board of
  Appeals and later to the Courts, patent grants
  cannot be challenged until after issuance of the
  patent and only by way of reexamination requests

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Fantasy vs. Reality (contd)

• USPTO Examiners have a productivity standard for
  promotion, bonus, salary, etc.
• The only work that the Examiner receives credit
  for is a 1st examination on the merits and a
  disposal of the application (allowance, appeal,
  or abandonment)
• No credit for rejections after the 1st one
• Examiners productivity is evaluated on a
  quarterly and annual basis

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Fantasy vs. Reality (contd)

• What is obvious at the beginning of a quarter, or
  after the Examiner meets productivity goal may
  not be so obvious at the end of a quarter, or
  before the productivity goal is met
• Examiner gets the same credit for a 15 page
  detailed, well thought out analysis demonstrating
  obviousness as for a 2 minute simple completion
  of a form indicating allowance of the application
  (and thus non-obviousness)
• While quality standards and review are in place,
  those are subjective, whereas the productivity
  standard is entirely objective
• Work performed by Primary Examiners is only
  reviewed based on a small random sample

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Fantasy vs. Reality (contd)

• Examiners get the same credit whether reviewing a
  new application with which they are not familiar,
  as a continuing application, or RCE with which
  they are familiar
• Thus, Examiners have an incentive to reject, if
  they believe that an RCE or continuation would be
  filed

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Fantasy vs. Reality (contd)

• New PTO rules, if enacted, would limit the number
  of continuations and RCEs that could be filed
  from any given invention
• Will the Courts permit the PTO rules to go into
  effect? If so, would Examiners still make a
  rejection, knowing that the next step would be a
  lengthy appeal process, with no hope of RCE or
  continuation filings?
• What is obvious under current practice, may
  indeed not be so obvious if examiner productivity
  standards are affected by new rules

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Comparisons to other standards
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What is Inventive Step?

• Used in EPO and JPO
• EPO European Patent Convention (EPC) Art. 52(1)
  in conjunction with Art. 56, first sentence, EPC
  European patents shall be granted for inventions
  which inter alia involve an inventive step, that
  is, the invention, having regard to the state of
  the art, must not be obvious to a person skilled
  in the art.
• JPO Patent Law Section 29(2) where an
  invention could easily have been made, prior to
  the filing of the patent application, by a person
  with ordinary skill in the art to which the
  invention pertains, on the basis of an invention
  or inventions referred to in any of the
  paragraphs of Subsection (1) which, inter alia,
  deal with the novelty requirement, a patent
  shall not be granted for such an invention
  notwithstanding Subsection (1).

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Problem-solution Approach

• Identifying the closest prior art (most relevant
  prior art)
• Determining the objective technical problem (in
  light of the prior art, what is the technical
  problem that the claimed invention addresses and
  solves?)
• Examining whether or not the claimed solution to
  the objective technical problem is obvious for
  the skilled person in view of the state of the
  art in general.

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Determination of last step

• Is solution obvious using Could-would
  approach
• Is there any teaching in the prior art, as a
  whole, that would, not simply could, have
  prompted the skilled person, faced with the
  objective technical problem formulated when
  considering the technical features not disclosed
  by the closest prior art, to modify or adapt said
  closest prior art while taking account of that
  teaching the teaching of the prior art, not just
  the teaching of the closet prior art, thereby
  arriving at something falling within the terms of
  the claims, and thus achieving what the invention
  achieves?
• If the answer is YES, then the invention lacks an
  inventive step.

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Comparison of Inventive Step and Obviousness

• Commonalities - Each of EPO, JPO, USPTO
• Require more than just novelty
• Refer to prior art / state of the art
• Mention the person of skill in the art.
• USPTO, JPO ordinary skill in the art
• EPO skilled in the art
• EPO and USPTO both use term obvious, whereas
  JPO uses easily made (translation?)

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What is Prior Art in the USPTO?

• USPTO definition under 35 U.S.C. 102
• public knowledge or use by the claimed date of
  invention
• patents and printed documents from anywhere in
  the world with earlier publication dates than the
  applicants filing/priority date
• U.S. patent applications and patents available
  prior to applicants filing date according to
  their publication dates.
• USPTO provides one year grace period prior to
  filing date that excludes the use of certain
  events (sale, public use, publication) as prior
  art

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What is Prior Art in the EPO?

• EPO definition
• Everything known, published or available anywhere
  in the world (written or oral disclosure) prior
  to the earliest priority date
• No grace period under EPC
• Secret commercial use is not prior art
• National or regional published patent application
  as of earliest priority or filing date is
  effective only for assessment of novelty, not
  inventive step

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What is considered Prior Art?

• JPO definition
• Similar to EPO
• Limited 6 month personal grace period, if
  declaration is filed within 30 days of the filing
  date of the application.
• Biggest difference possibly arises from USPTO
  system of first-to-invent and grace period
  protection versus EPO and JPO first-to-file
  system with little or no grace period.

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Applicable Art a broadened view

• USPTO analogous prior art
• May be in the same field of endeavor as
  applicants invention
• or, may be reasonably pertinent to the problem at
  hand

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Applicable Art in the EPO

• EPO closest prior art
• should be directed to a similar purpose or
  effect as the invention or at least belong to the
  same or a closely related technical field as the
  claimed invention.
• when determining the scope and content of the
  prior art the examiner is to assess whether the
  disclosure, e.g. documents, come from similar,
  neighboring or remote technical field

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Applicable Art

• JPO similar to EPO
• Claimed invention searched in the same or related
  technical field using Japans File Indexing (FI)
  system (extended version of IPC)
• Broadest interpretation of prior art under USPTO
  due to analogous allowance if reasonably
  pertinent to the problem KSR could further
  expand the prior art to both external to the
  original field and the original problem.

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Assessment of differences between prior art and
claimed invention

• All three offices evaluate the claimed invention
  taken as a whole in assessment of the
  differences between the claimed invention and the
  prior art common knowledge (in the art) is also
  taken into account.
• All three offices require that the prior art
  (independently or in combination with common
  knowledge) disclose every limitation of the
  claimed invention
• EPO only requires prior arts full disclosure of
  the claimed technical features and not those
  that do not contribute to the solution of a
  technical problem (e.g. business administration)
• JPO recognizes commonality/differences between
  prior art and claimed invention without regard to
  effects.
• USPTO does not allow this kind of differentiation

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Determination of POSITA

• EPO and JPO allow for a person to be an
  individual or a team
• The person holds common knowledge of the field of
  endeavor, closely neighboring fields and may be
  multi-disciplined.
• Person is capable of performing routine work
  and experimentation to solve art recognized
  technical problems (same problem as invention or
  other)
• USPTO interpretation (especially post KSR) may
  provide for increased deference to possible
  creativity and possession of common sense on the
  part of POSITA

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Further comments

• The requirement in all three offices to consider
  the invention as a whole invalidates a
  potential argument that an invention comprised
  of possible combination of prior art elements is
  necessarily obvious a motivation to combine or
  new effect or function must be provided. Without
  a synergistic effect or function, combination
  is merely an aggregation of features.
• EPO/JPO Problem-solution approach may not
  necessarily work if the reconstruction of the
  objective technical problem cannot be completed
• The objective technical problem may not have been
  presented by the applicant as such in his/her
  disclosure
• What if the solution to the technical problem is
  not itself technical in nature or even an
  improvement (e.g. a step backwards or an
  alternative)?

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Further comments

• Following KSR, USPTO will deemphasize TSM test
  (motivation to combine) in determinations of
  obviousness as its absence no longer directly
  indicates nonobviousness. EPO/JPO continues to
  emphasize this factor (could-would) as key to
  the problem-solution approach, excepting old
  combination cases (old problems and old
  solutions)
• Other consistent determination factors
• Obvious to try supported by EPO Guidelines,
  referenced in KSR
• All three offices support that when the prior art
  teaches away from the claimed invention, there is
  a strong indication of inventive
  step/nonobviousness.
• All three offices prohibit the use of hindsight
  reconstruction (ex post facto view)

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Secondary considerations

• All three offices take into account
• unexpected technical advantage
• commercial success
• EPO strongly regards unexpected technical
  advantage out of longer list of such
  considerations
• JPO looks at remarkable effect produced by
  claimed invention or long felt need that has been
  unsolved
• USPTO particularly regards unexpected results,
  increasingly treated as a primary consideration

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Secondary considerations

• EPO and JPO may also look at whether removal of a
  step or element in the prior art will affect the
  inventive function
• Almost certain indicators demonstrating lack of
  inventive step include
• Automating a manual activity
• Simply changing the size or proportions or shape
  of a prior invention
• Changing the sequence of adding ingredients in a
  process
• Making a prior invention portable, integral,
  separable, continuous or adjustable
• Reversing, duplicating or rearranging parts of a
  prior invention
• Optimizing ranges of ingredients

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General observation

• USPTO practice may be similar to EPO/JPO
  considerations of v. depending on past legal
  precedence in a sufficiently similar situation
• The resulting legal presumption of obviousness
  may be overcome by demonstrating the criticality
  of a specific limitation.

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After KSR

• KSR may have further aligned USPTO practice with
  that of EPO and JPO
• Excepting certain areas, future may see greater
  similarity in allowance practice in regards to
  obviousness considerations
• USPTO grant rate 55
• EPO grant rate 54
• JPO grant rate 49
• cited in Kunin paper

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Lessons for Practitioners

• If you represent the applicant or patent owner,
  present cogent arguments as to why the Examiner
  failed to give adequate reasons for conclusion of
  obviousness do not lock Examiner in to a
  specific methodology for giving reasons
• If you represent a patent opposer, look for
  arguments made against Examiners conclusion of
  obviousness that appear to have been persuasive
  to the Examiner under the old exclusive TSM
  standard, but would no longer be persuasive in
  the post KSR era

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Where We Are Today

• Not much has changed, we are now where we should
  have been all along
• Examiners will adapt to new standards
• They will still reject where they feel
  obviousness is present, but will not feel bound
  by a single standard for demonstrating
  obviousness
• They will still allow if reason for combining
  prior art is just not there
• Data on KSR impact will not be there until a
  couple of years from now

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ENDING SLIDE

• Thank you
• The most sincere thanks to
• Stephen Kunin for his contributions to the
  section titled Comparison to Other Standards
• Jiaxiao Zhang for her assistance with preparing
  this presentation.