By Mark Nowotarski of Markets, Patents & Alliances LLCMark Nowotarski is the President of Markets, Patents & Alliances L.L.C., and intellectual
property consulting firm, and is a registered U.S. patent agent specializing in business method patents.
He currently serves clients in the insurance, banking, medical devices, chemicals and manufacturing
industries. Mr. Nowotarski can reached at 203 975 7678, by email at mnowotarski@marketsandpatents.com, or
by visiting his website at
www.marketsandpatents.com.
KSR vs Teleflex is turning out to be a surprisingly powerful tool for helping patent
practitioners persuasively argue that their clients’ inventions are not obvious. Recent
decisions by the USPTO’s Board of Patent Appeals and Interferences (BPAI or Board) can be used as
templates for constructing these arguments. It turns out that the Board is citing KSR just as
often when it reverses an examiner as when it affirms an examiner. Apparently, the more
flexible approach of KSR cuts both ways.
There has been a tremendous concern among many in the patent bar over the
implications of the recent US Supreme Court decision, KSR Int’l v. Teleflex Inc. With the
Court using language like “expansive and flexible approach to the obviousness question”,
“Rigid preventative rules that deny recourse to common sense are neither necessary under, nor
consistent with, this Court’s case law”, and “the results of ordinary innovation are
not the subject of exclusive rights under the patent laws.”, KSR Int’l v. Teleflex
Inc., 127 S. Ct. 1727, 1740-41, 82 USPQ2d 1385, 1396 (2007) it seemed to many that the future
of patents looked grim. These misgivings were only amplified when shortly after KSR, the CAFC
rendered its Leapfrog decision stating, “Indeed, the common sense of those skilled in the art
demonstrates why some combinations would have been obvious where others would not.”
Leapfrog Enterprises, Inc. v. Fisher-Price, Inc., 06-1402 (Fed. Cir. 2007)
Fortunately, the recent decisions of the BPAI provide useful guidance on how
effectively argue for the non-obviousness of a given invention in light of KSR. The decisions are
available at www.uspto.gov/go/dcom/bpai. They can also be text searched through
Google using the search string “site:www.uspto.gov/go/dcom/bpai” plus a key word or
phrase, such as “common sense”. With about 150 decisions per month being
handed down by the BPAI directly related obviousness rejections, and with about 60% of these
decisions citing KSR, there is ample material to see what sort of arguments are persuasive and what
ones are not.
The Board has largely maintained its historical rate of reversals on obviousness
rejections despite KSR. In the two months (March, April 07) immediately prior to KSR, for
example, the Board found in favor of at least one claim of the applicant (i.e. examiner
“reversed” or “affirmed in part”) 34% of the time. In the two months
(May, June 07) immediately after KSR, that number dropped somewhat to 28% of the time. The
sky may have dropped down a notch or two, but it certainly hasn’t fallen. Remember
also, these post KSR decisions are being made on pre KSR arguments. There is about a one
year backlog at the Board. These statistics could change, therefore, as both practitioners and
examiners adapt their arguments to KSR requirements.
The Board seems to be using KSR citations in its reversals primarily to emphasize
the necessity for an examiner to first make a proper prima facie case of obviousness before rejecting a
claim. 75% of the reversals were based on either failure of the prior art to disclose an element
of a claim or failure of the examiner to articulate an adequate rationale for combining the prior art to
attain the claimed invention. Some representative language used by the Board is:
- “There is no evidence or suggestion in _____ of such a configuration” Ex Parte
Katoh et al, Appeal 20071460, Decided May 29, 2007
- “Further, the Examiner has not provided any evidence that it was conventional in the art
to_____” Ex Parte Owlett, Appeal 20070644, Decided June 20, 2007
- “We determine that the Examiner has not provided a sufficient reason or explicit analysis of
why the disclosures of the references should be combined.” Ex Parte Erkey et al,
Appeal 20071375, Decided May 11, 2007
- “We find no suggestion to combine the teachings and suggestions of ___ and ___, as
advanced by the Examiner, except from using Appellants’ invention as a template through a hindsight
reconstruction of Appellants’ claims.” Ex Parte Crawford et al, Appeal 20062429,
Decided May 30, 2007
The Board is repeatedly citing KSR as it, in turn, cited In re Kahn.
“[R]ejections on obviousness grounds cannot be sustained by mere conclusory
statements; instead, there must be some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness.” (In re Kahn, 441 F. 3d 977, 988 (CA
Fed. 2006) cited with approval in KSR)
This citation should be a powerful tool for practitioners and valuable guidance for
examiners.
Effectively rebutting a prima facie case of obviousness, however, is still hard.
The Board has used KSR in a few cases to point out that the common sense of one of ordinary skill in
the art can be used to make an effective rebuttal. Two cases that have used KSR in this manner
are Ex Parte Rinkevich et al. and Ex Parte Green. The
representative language from these cases includes:
- “In the instant case, we conclude that a person of ordinary skill in the art having common
sense at the time of the invention would not have reasonably looked to _____ to solve a problem
already solved by _____.” Ex Parte Rinkevich et al, Appeal 20071317, decided May
29, 2007
- “Therefore, we conclude that an artisan having common sense at the time of the invention
would not have reasonably considered embedding a ___________ within an existing _________ in the
manner suggested by the Examiner.” Ex Parte Green, Appeal 20071271, decided June 12,
2007
The Board cites KSR in these decisions as follows:
“[a] factfinder should be aware, of course, of the distortion caused by
hindsight bias and must be cautious of argument reliant upon ex post
reasoning.”
and
“[r]igid preventative rules that deny factfinders recourse to common
sense, however, are neither necessary under our case law nor consistent with it.” KSR
Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727, 82 USPQ2d at 1397.
Despite these decisions, however, it still remains to be seen whether or not
arguments related to the common sense of a person of ordinary skill in the art will become important
tools for overcoming prima facie cases of obviousness.
The KSR versus Teleflex decision has been a wakeup call to many patent
practitioners. The USPTO’s Board of Patent Appeals and Interferences is citing KSR in
close to 60% of its obviousness decisions. The overall reversal rate, however, has dropped only
a little. The Board is citing KSR in its reversals to emphasize that a proper case for prima facie
obviousness must include motivations to combine that are “articulated reasoning with some
rational underpinning”. Unsupported assertions are not adequate. The Board is
also citing KSR to rebut prima facie cases of obviousness where “common sense” dictates
that the claimed invention was not obvious. This is a new consideration that both examiners and
practitioners will have to incorporate into their practices.
