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Using KSR to Overcome an Obviousness Rejection






By Mark Nowotarski of Markets, Patents & Alliances LLC

Mark 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 unde...

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