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| USPTO Board of Appeals provides guidance on the new obviousness standards following the KSR decision |
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2 August, 2007 As was reported in our news item on 8 May 2007, the US Supreme Court considered in KSR that the ‘teaching, suggestion and motivation (or TSM) test’ hitherto applied by the lower Courts to determine the question of whether or not an invention was obvious, would in many cases be too narrow, although it remains a valid tool in assisting in or buttressing such a determination. The Court in KSR reaffirmed in the context of 35 USC §103 (ie the section of the US patent statute dealing with obviousness) the applicability of the ‘objective analysis’ test verbalized by the Supreme Court in Graham v John Deere Co., 383 U.S. 1 (1966). Relevant factors that define the inquiry into obviousness include (1) determining the scope and content of the prior art, (2) ascertaining any differences between the claimed invention and the prior art, (3) resolving the level of skill in the relevant art, and (4) where in evidence, ‘secondary’ considerations (eg commercial success, long felt need, failure of others, etc). It is no sine qua non requirement for a finding of obviousness that the prior art in itself contain a suggestion or provide the motivation to combine relevant prior art documents to achieve the claimed invention. In the opinion of the BPAI in Ex parte Mary Smith , Appeal 2007-1925 (25 June 2007) and Ex parte Carolyn Ramsey Catan, Appeal 207-0820 (3 July 2007), the Supreme Court ‘reaffirmed principles based on its [own] precedent that the combination of familiar elements according to known methods is likely to be obvious where it does no more than yield predictable results.’ and ‘…the operative question in this functional approach is thus whether the improvement is more than the predictable use of prior art elements according to their established functions’. The BPAI decisions, beyond the issues of legal principle addressed therein, also contain practical guidance to applicants and their patent attorneys for dealing with obviousness objections raised by USPTO examiners. It is likely examiners will be required to ‘fully articulate and provide sound and founded support’ when raising and maintaining such an objection, if they are not to fall foul of KSR; the obviousness analysis ‘should be made explicit’; ‘…rejections 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’. Applicants are encouraged to hold USPTO examiners to such standards. However, the flip-side of the coin is that applicants pursusing patent applications at the USPTO in the mechanical, ICT, electrical and some chemical-processing fields, where many inventions relate to improvements to existing devices/apparatus and processes, or new combinations of independently known integers, will equally be forced to present well articulated ‘evidence’ to demonstrate the ‘uniquely challenging or difficult aspects’ which make their invention non-obvious for the skilled person to achieve. This evidence is likely to require increased input and assistance from the inventor(s) and/or technical experts in the field whose opinions may be submitted during examination in approved declaratory format.In the writer’s opinion, prosecution of US patent applications in future will be greatly facilitated and the need for costly supplementary evidence addressing questions of non-obviousness can be minimised, by drafting appropriately comprehensive patent specifications. The specification (including claims) should not only state what the invention(s) is (are) and what preferred or alternative features it may incorporate. It will be equally important to articulate and explain why the claimed invention is more than a ‘mere’ combination or adaptation of known technology. Consequently, applicants and inventors may need to have greater and more in depth technical background knowledge for drafting and prosecuting US patent applications, provide more detailed briefings containing such information to their patent attorneys, and/or rely on technically competent and knowledgeable patent attorney counsel to assist in rebutting (where it is possible) what may become more technically challenging obviousness rejections raised by USPTO examiners. |