# Presentation: 377415

## Training Update

**for**
**Determining Obviousness Under 35 U.S.C. § 103****After the Supreme Court Decision in **
***KSR International Co. v. Teleflex Inc.,***
-  **550 U.S.—, ****82 USPQ2d 1385 (2007). ***** ***

## Training Update for:  

**The *****KSR***** decision;**
**Determining obviousness under 35 U.S.C. § 103;**
**Providing a rationale to support a rejection under 35 U.S.C. § 103; and**
**Considering applicant’s rebuttal evidence of nonobviousness.**

## Training Usage

**This training and the separate examination guidelines do not constitute substantive rulemaking.**
**Guidelines should not be cited as a basis for rejections.     **

**Notes:**
These training slides have been developed for internal training only. All rejections will continue to be based upon substantive law.

## KSR International Co. v. Teleflex Inc.  

**The Supreme Court reaffirmed *****Graham v. John Deere Co. *****as the controlling case on the topic of obviousness.**
**The Supreme Court stated that the Federal Circuit erred when it applied the well-known teaching-suggestion-motivation (TSM) test in an overly rigid and formalistic way. **

**Notes:**
Specifically, the Supreme Court stated that the Federal Circuit had erred in four ways:  (1) “by holding that courts and patent examiners should look only to the problem the patentee was trying to solve;” (2) by assuming “that a person of ordinary skill attempting to solve a problem will be led only to those elements of prior art designed to solve the same problem;” (3) by concluding “that a patent claim cannot be proved obvious merely by showing that the combination of elements was ‘obvious to try;’ ” and (4) by overemphasizing “the risk of courts and patent examiners falling prey to hindsight bias” and as a result applying “[r]igid preventative rules that deny factfinders recourse to common sense.”  KSR, 82 USPQ2d at 1397.

## KSR International Co. v. Teleflex Inc.

_**The TSM Test**_
**Under the TSM test, a claimed invention is obvious when there is a **_**teaching, suggestion, or motivation**_** to combine prior art teachings.  The teaching, suggestion, or motivation may be found in the prior art, in the nature of the problem, or in the knowledge of a person having ordinary skill in the art.**
**According to the Supreme Court, the TSM test is one of a number of valid rationales that could be used to determine obviousness.  It is not the only rationale that may be relied upon to support a conclusion of obviousness.**

**Notes:**
If TSM cannot be applied, then examiners should consider one or more of the other rationales set forth herein in support of a conclusion of obviousness.

Not finding TSM does not imply non-obviousness.

## Determining the scope and content of the prior art; 

Ascertaining the differences between the claimed invention and the prior art; 

Resolving the level of ordinary skill in the pertinent art.

	Objective evidence, sometimes referred to as “secondary considerations” when timely presented by applicants must be evaluated.

**Ascertaining the differences between the claimed invention and the prior art; **
**Resolving the level of ordinary skill in the pertinent art.**
**  **
**	****Objective evidence, sometimes referred to as “secondary considerations” when timely presented by applicants must be evaluated.**

**The Basic Factual Inquiries of *****Graham v. John Deere***

**Notes:**
When resolving the level of ordinary skill in the art, the examiner need not always include an explicit indication of the level of ordinary skill in the art in the statement of the rejection, because the level of ordinary skill in the art may be implicit in view of the prior art applied.  However, in certain situations it may be necessary to explain the level of ordinary skill in order to support the examiner's conclusion of obviousness.  

MPEP §§ 716 and 2145 discuss how to evaluate evidence of secondary considerations.  There will be additional training on treating affidavits under 37 CFR 1.132.  Examiners must consider objective evidence that is presented before FAOM when making the original obviousness determination.  

## The Examiner as Fact Finder

**Examiners act as fact finders when resolving the *****Graham***** inquiries. **
**Examiners must articulate findings as to the scope and content of the prior art as necessary to support the obviousness rejection being made.****  **

**Notes:**
Factual findings made by examiners are the necessary underpinnings to establish obviousness.  

In short, when making a determination of obviousness, the focus should be on what a person of ordinary skill would have known at the time of the invention, and on what such a person would have reasonably expected to have been able to do in view of that knowledge.  

This is so regardless of whether the source of that knowledge and ability was documentary prior art, general knowledge in the art, or common sense. 

See In re Zurko and In re Gartside on standard of review; deference given to agency on findings of fact.

## Key Points

**When making a rejection under 35 U.S.C. ****§ 103****, an examiner must articulate a reason or rationale to support the obviousness rejection. **
**In formulating a rejection under 35 U.S.C. ****§ 103****, the rationale should be based on the state of the art and ****not impermissible hindsight, ****e.g. applicant’s disclosure.**

**Notes:**
There is some guidance in cases cited in MPEP §§ 2141-2145 as to what constitutes impermissible hindsight.  

## Key Points

**Examiners need to account for all claim limitations in their rejections.  **
**Either indicate how each limitation is shown by the reference(s) applied, or provide an explanation. **** **
**Prior art is not limited to the references being applied.  **
**Prior art includes both the specialized understanding of one of ordinary skill in the art, and the common understanding of the layman. **
**Examiners may rely on, for example, official notice, common sense, design choice, and ordinary ingenuity.***** ***

**Notes:**
See, for example, Dann v. Johnston, 425 U.S. 219, 189 USPQ 257 (1976) and Leapfrog Enterprises, Inc. v. Fisher-Price, Inc., --F.3d--, 82 USPQ2d 1687 (Fed. Cir. 2007).

Where an examiner’s findings of fact are based on, for example, official notice, common sense, design choice or ordinary ingenuity, a mere statement that a particular claim limitation is design choice is not adequate.  Examiners must provide an explanation as to why the difference(s) between the prior art reference(s) and the claimed invention would have been obvious to one skilled in the art. 

## Rationales

**One or more of the rationales set forth in the following slides may be relied upon to support a conclusion of obviousness. **
**	****Note that the list of rationales provided herein is not intended to be an all-inclusive list.**** **
**Again, a key to supporting any rejection under 35 U.S.C. § 103 is the **_**clear articulation**_** of the reasons why the claimed invention would have been obvious.**

**Notes:**
Other rationales to support a conclusion of obviousness may be relied upon by the examiner.  MPEP § 2144 discusses various rationales which may be used to support a conclusion of obviousness.  

## Rationales

**Examiners must: **
**Resolve the *****Graham *****inquiries.**
**Articulate the appropriate findings as identified by the Examination Guidelines.**
**Explain how the rationale leads to a conclusion of obviousness under ****§ 103.**

**Notes:**
Examiners should look through the list of rationales and pick the best rationale.

If any of the findings under the various independent rationales cannot be made, then that particular rationale cannot be used to support a conclusion of obviousness.

Note that the rationales that follow are culled from the KSR decision, but are not exclusive. The distinctions between them may appear slight. Often, more than one rationale may be applicable. Furthermore, the particular findings set forth for each rationale are not from the KSR decision, but an attempt to give guidance as to how an examiner may make a prima facie case of obviousness under 35 U.S.C. 103.

## Examiners must articulate the following:
a finding that the prior art included each element claimed although not necessarily in a single reference;
a finding that one of ordinary skill in the art could have combined the elements as claimed by known methods and that in combination, each element merely would have performed the same function as it did separately; and
a finding that one of ordinary skill in the art would have recognized that the results of the combination were predictable.

**a finding that the prior art included each element claimed although not necessarily in a single reference;**
**a finding that one of ordinary skill in the art could have combined the elements as claimed by known methods and that in combination, each element merely would have performed the same function as it did separately; and**
**a finding that one of ordinary skill in the art would have recognized that the results of the combination were predictable.**
** **

- Rationale A. Combining prior art elements according to known methods to yield predictable results.

**Notes:**
Note that all elements may be taught by a single reference without a teaching of the combination as claimed.  

A showing of findings 1-3 above establishes that the combination is “likely to be obvious” (i.e., establishes a prima facie case of obviousness). This presumption may be overcome by secondary considerations or other arguments. That is why it is helpful to explain why it would have been obvious to one of ordinary skill in the art to combine the elements.

## 	Rationale:  All the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded predictable results to one of ordinary skill in the art at the time of the invention. 

**	**
** **

- Rationale A. Combining prior art elements according to known methods to yield predictable results.

**Notes:**
Background: (Adapted from Anderson’s Black Rock Inc. v. Pavement Salvage Co.)  
The claim is drawn to a paving machine which combined several well-known elements onto a single chassis.  The claim includes a radiant-heat burner attached to the side of the paver for the purpose of preventing cold joints during continuous strip paving. 

Sample Rejection: The claim is rejected under 35 U.S.C. 103 as being unpatentable over Reference A in view of Reference B. Reference A teaches that paving machines typically combine equipment onto a single chassis for spreading and shaping asphalt. Reference A does not explicitly teach a radiant-heat burner attached to the side of the paver chassis. Reference B teaches radiant-heat burners for softening the asphalt to make patches, but does not use radiant-heat burners to achieve continuous strip paving.  
All of the component parts are known in References A and B.  The only difference is the combination of the “old elements” into a single device by mounting them on a single chassis. 
Thus, it would have been obvious to one having ordinary skill in the art to mount the radiant heat burner taught by reference B onto the chassis of a standard paving machine as shown in Reference A, since the operation of a radiant-heat burner is in no way dependent on the operation of the other equipment of the paver, and a heater could be used in combination with a standard paving machine to achieve the predictable results of preventing cold joints during continuous strip paving.  

## Rationale B.  Simple substitution of one known, equivalent element for another to obtain predictable results

**Examiners must articulate the following:**
**a finding that the prior art contained a device which differed from the claimed device by the substitution of some components with other components;**
**a finding that the substituted components and their functions were known in the art;**
**a finding that one of ordinary skill in the art could have substituted one known element for another and the results of the substitution would have been predictable.**
**      **

## Rationale B.  Simple substitution of one known, equivalent element for another to obtain predictable results

**	****Rationale:  T****he claim would have been obvious because the substitution of one known element for another would have yielded predictable results to one of ordinary skill in the art at the time of the invention.**
**	**

**Notes:**
Background: (Adapted from In re Fout)
The claim is drawn to a method for decaffeinating coffee or tea by trapping the caffeine in a fatty material and then extracting the caffeine by evaporative distillation.

Sample Rejection: The claim is rejected under 35 U.S.C. 103 as being unpatentable over Reference A in view of Reference B. Reference A teaches a method for producing a decaffeinated vegetable material and trapping the caffeine in a fatty material (such as oil).  The caffeine was then removed from the fatty material by an aqueous extraction process. Reference A does not teach extracting the caffeine through evaporative distillation. Reference B teaches suspending coffee in oil and then directly distilling the caffeine through the oil through evaporative distillation. Because both Reference A and Reference B teach methods for separating caffeine from oil, it would have been obvious to one skilled in the art to substitute one method for the other to achieve the predictable result of extracting the caffeine from the oil.   

## Rationale A and B Caution

**Note that combining known prior art elements is not sufficient to render the claimed invention obvious if the results would not have been predictable to one of ordinary skill in the art.**

**Notes:**
For example, a parts catalogue does not render any device constructed from such parts per se obvious.  

## Rationale C.  Use of known technique to improve similar devices (methods, or products) in the same way.

**Examiners must articulate the following:**
**a finding that the prior art contained a “base” device upon which the claimed invention is an improvement;**
**a finding that the prior art contained a comparable device that was improved in the same way as the claimed invention; and**
**a finding that one of ordinary skill could have applied the known “improvement” technique in the same way to the “base” device and the results would have been predictable.**
**       **

## Rationale C.  Use of known technique to improve similar devices (methods, or products) in the same way.

**	****Rationale:  The claim would have been obvious because the technique for improving a particular class of devices was part of the ordinary capabilities of a person of ordinary skill in the art, in view of the teaching of the technique for improvement in other situations.**
**	**

**Notes:**
Background: (Adapted from In re Nilssen) 
The claim is directed to a “means by which the self-oscillating inverter in a power-line-operated inverter-type fluorescent lamp ballast is disabled in case the output current from the inverter exceeds some pre-established threshold level for more than a very brief period.” In other words, the current output was monitored, and if the current output exceeded some threshold for a specified short time, an actuation signal was sent and the inverter was disabled to protect it from damage.

Sample Rejection: The claim is rejected under 35 U.S.C. 103 as being unpatentable over Reference A in view of Reference B.  Reference A teaches a device for protecting an inverter circuit in an undisclosed manner via a control means.  The device indicates the high-load condition by way of the control means, but does not indicate the specific manner of overload protection. Reference B discloses disabling an inverter in the event of a high-load current condition in order to protect the inverter circuit.  That is, the overload protection was achieved by disabling the inverter by means of a cutoff switch. It would have been obvious to one of ordinary skill in the art to use the threshold signal produced in the device of Reference A to actuate a cutoff switch to render the inverter inoperative as taught by Reference B.  Using the known technique of a cutoff switch for protecting a circuit to provide the protection desired in the inverter circuit of Reference A would have been obvious to one of ordinary skill. 

## Rationale C Caution

**The Supreme Court in *****KSR***** noted that 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 have been obvious because one of ordinary skill could not have been expected to achieve it.**** **

## Rationale D.  Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results.

**Examiners must articulate the following:**
**a finding that the prior art contained a “base” device;**
**a finding that the prior art contained a known technique that is applicable to the base device; and**
**a finding that one of ordinary skill in the art would have recognized that applying the known technique would have yielded predictable results.**
**  ****	**

## Rationale D.  Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results.

**	****Rationale:  The claim would have been obvious because a particular known technique was recognized as part of the ordinary capabilities of one skilled in the art.**
**	**

**Notes:**
Background:  (Adapted from Dann v. Johnston)
The claim is drawn to a system (i.e., computer) for automatic record keeping of bank checks and deposits.  In this system, a customer would put a numerical category code on each check or deposit slip.  The check processing system would record these on the check in magnetic ink, just as it does for amount and account information.  This enabled reporting of data by category as opposed to only allowing reporting by account number.  

Sample Rejection: The claim is rejected under 35 U.S.C. 103 as being unpatentable over Reference A in view of Reference B. Reference A teaches the general state of the art in banking, specifically that banks are routinely known to use data processing equipment and computer software to do much of their record-keeping automatically. Reference A specifically teaches that data processing systems are used to read the amount of a check and then print that value in a designated area of the check. The check is then sent through a further data processing step which uses magnetic ink information to generate the appropriate records for transactions and for posting to appropriate accounts.  These systems include generating periodic statements for each account, such as the monthly statements sent to checking account customers. Reference A does not teach applying the technique of adding further digits designating categories to account numbers. Reference B teaches a system of tracking transactions of individual business units within a larger organization by associating an account number code with each business unit with further digits added to designate subunits.  The additional code applied to all transactions allows the tracking, sorting and generation of reports at any level of granularity as desired. Thus, it would have been obvious to one of ordinary skill in the art to apply the technique of adding further digits designating categories to account numbers as taught in reference B, to improve the banking system of Reference A for the predictable result of enabling standard sorting, searching, and reporting by category.  

## Rationale E.  “Obvious to try” – choosing from a finite number of predictable solutions.

**Examiners must articulate the following:**
**a finding that there had been a recognized problem  or need in the art including a design need or market pressure to solve a problem;**
**a finding that there had been a finite number of identified predictable potential solutions;**
**a finding that one of ordinary skill in the art could have pursued the known potential options with a reasonable expectation of success.**
**	**

## Rationale E.  “Obvious to try” – choosing from a finite number of predictable solutions.

**	****Rationale:  The claim would have been obvious because “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.”**** **
**	**

**Notes:**
Background:  (Adapted from Pfizer v. Apotex)
The claim is drawn to a salt form of a drug product X-Y, wherein X is the therapeutically active part of the product, and Y is the anion used to form the salt.  

Sample Rejection: The claim is rejected under 35 U.S.C. 103 as being unpatentable over Reference A in view of Reference B. Reference A teaches that the uncombined form of the drug X is known to be useful for a particular therapeutic purpose.  A person of ordinary skill in the art, upon reading the reference, would also have recognized the desirability of improved methods of formulating drug X. Reference B teaches that Y is one of a finite number of anions known to be useful for formulation of salts of drugs.   Furthermore, Reference B teaches methods of making salts of drugs that would reasonably have been expected to be applicable to drug X.  Reference B also inherently discloses to one of ordinary skill in the art that combining a known drug with one of the anions disclosed in order to make a salt does not affect the therapeutic properties of the drug. Thus, it would have been obvious to a person of ordinary skill in the art to try the anions of Reference B in an attempt to provide an improved formulation of drug X, as a person with ordinary skill has good reason to pursue the known options within his or her technical grasp.  In turn, because drug product X-Y as claimed has the properties predicted by the prior art, it would have been obvious to make drug product X-Y.  

## Rationale F.  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 would have been predictable to one of ordinary skill in the art.

**Examiners must articulate the following:**
**a finding that the scope and content of the prior art, whether in the same or different field of endeavor, included a similar or analogous device.**
**a finding that there were design incentives or market forces which would have prompted adaptation of the known device.**
**a finding that the differences between the claimed invention and the prior art were encompassed in known variations or in a principle known in the prior art.**
**a finding that one of ordinary skill in the art, in view of the design incentives or market forces, could have implemented the claimed variation of the prior art, and the claimed variation would have been predictable.**
**       **

**Notes:**
This rationale reflects the situation in KSR.  

## Rationale F.  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 would have been predictable to one of ordinary skill in the art.

**	****Rationale:  The claim would have been obvious because the design incentives or market forces provided a reason to make an adaptation, and the invention resulted from application of the prior knowledge in a predictable manner.****  **
**	**
**       **

**Notes:**
Background: (Adapted from Leapfrog Enterprises, Inc. v. Fisher-Price, Inc.)   
The claim is drawn to an interactive electronic learning device to help young children read phonetically.

Sample Rejection: The claim is rejected under 35 U.S.C. 103 as being unpatentable over Reference A in view of Reference B. Reference A teaches an electro-mechanical toy for phonetic learning. Reference A does not teach electronic components within the toy responsive to the child’s actions. Reference B teaches an electronic reading toy that generates sounds corresponding to the first letter of a word using electronic means. Since the marketplace reflects the reality that applying modern electronics to older mechanical devices is commonplace, it would have been obvious to one of ordinary skill in art of children’s learning toys to update older mechanical devices such as shown in Reference A with modern electronic components that are commonly available and understood in the art as shown in Reference B, in order to gain the commonly understood benefits of such adaptation, such as decreased size, increased reliability, simplified operation, and reduced cost. 

## Rationale G. TSM Test

**Examiners must articulate the following:**
**a finding that there was some teaching, suggestion, or motivation, either in the references themselves or in the knowledge generally available to one of ordinary skill in the art, to modify the reference or to combine reference teachings; **
**a finding that there was reasonable expectation of success.**

## Rationale G. TSM Test

**	****Rationale:  The claim would have been obvious because a person of ordinary skill in the art would have been motivated to combine the prior art to achieve the claimed invention and that there would have been a reasonable expectation of success.  **
**	**

**Notes:**
Background: The claim is drawn to a portable audio player with mp3-playing capability.

Sample rejection: The claim is rejected under 35 U.S.C. 103 as being unpatentable over Reference A in view of Reference B. Reference A teaches a portable audio player. Reference A does not teach the audio player having mp3 capability. Reference B teaches an mp3 player, and discloses that mp3 player capability increases the listening options of the user and provides a simple way to receive audio content from other sources, such as computers. It would have thus been obvious to one of ordinary skill in the art to include the mp3-playing capability disclosed in Reference B in the portable audio player of Reference A to achieve the claimed invention.  As disclosed in Reference B, the motivation for the combination would be to increase the listening options of the user.

Note: See In re Kahn for discussion re implicit motivation to combine the relevant prior art.    

## Applicant’s Response 

**	****If an applicant traverses an obviousness rejection under ****§ 103****, a reasoned statement must be included explaining why the applicant believes the Office has erred substantively as to the factual findings or the conclusion of obviousness.  37 CFR 1.111(b).  **

## Rebuttal Evidence

**Examiners should consider all rebuttal evidence that is presented by the applicant in a timely manner.  **
**Rebuttal evidence may include evidence of secondary considerations such as commercial success, long felt but unsolved needs, failure of others, and unexpected results. **
**If the examiner nevertheless maintains the rejection after reweighing all of the evidence, he or she must clearly explain the reasons for doing so.**
**	****Additional training will be provided on treating affidavits under 37 CFR 1.132.**

## Questions

**    ****Questions regarding the examination guidelines for determining obviousness under 35 U.S.C. ****§ 103 in view of *****KSR***** should be e-mailed to:**
**    ****	****	****KSR Questions**

## Thank You