# Presentation: 202154

## Determining Obviousness under 35  USC 103 in view of KSR International Co. v. Teleflex

- TC3600
- Business Methods
- January 2008

##  KSR v. Teleflex Guidelines 

- KSR International Co. v. Teleflex Inc., 82 USPQ2d 1385 (2007)
- USPTO’s “Examination Guidelines for Determining Obviousness Under 35 USC 103 in View of the Supreme Court Decision in KSR International Co. v. Teleflex Inc.” published in the Federal Register, Vol. 72, No. 195, pages 57526-57535.
- See also MPEP 2141, Eight Edition, Revision 6 (September 2007).

**Notes:**
Sources of KSR information.

##  KSR v. Teleflex Guidelines 

- In KSR, the Supreme Court:
- Reaffirmed the obviousness test established in  Graham v. Deere
- Stated that the Federal Circuit had erred by applying the “teaching-suggestion-motivation” (TSM) test in a rigid and formalistic way

##  KSR v. Teleflex 82 USPQ2d 1385 

- The basic Factual Inquiries of Graham v. John Deere:
- Determining the scope and content of the prior art;
- Ascertaining the difference between the claimed invention and the prior art; and
- Resolving the level of ordinary skill in the pertinent art.

##  KSR v. Teleflex 82 USPQ2d 1385 

- The question of obviousness must be resolved on factual determinations.
- The Examiner fulfills the critical role of
- 	_fact finder_.
- The Examiner must ensure that the _written record includes finding of fact_ concerning the state of the art and the teachings of the references applied.

##  KSR v. Teleflex 82 USPQ2d 1385 

- Once the finding of facts is articulated, the examiner must provide an explanation to support an obviousness rejection under 35 USC 103.
- 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.

**Notes:**
Documentary prior art, general knowledge in the art, common sense are all findings of facts that are asserted by the Examiner. 
Still need the rationale to draw the facts together into a prima facie showing of obviousness.

##  KSR v. Teleflex 82 USPQ2d 1385 

- In many fields it may be that there is little discussion of obvious techniques or combinations, and it may be the case of _market demand_, rather than literature, will drive design trends.
- Prior art is not limited just to the references being applied, but includes the _understanding of one of ordinary skill in the art_.  The prior art references need not teach or suggest all the claim limitations.
***However ***Examiners ***must explain*** why the differences between the prior art and the claimed invention would have been obvious to one of ordinary skill in the art.

**Notes:**
Market demand – “everybody else is doing it”, e.g. putting a business function on the Internet, using modern electronics instead of old electro-mechanical devices.

Prior art references need not teach or suggest all limitations in that common sense or the understanding of those in the art may fill in these blanks.

##  KSR v. Teleflex 82 USPQ2d 1385 

- In determining obviousness, neither the particular motivation to make the claimed invention nor the problem the inventor is trying solve controls.
- The proper analysis is whether the claimed invention would have been obvious to one of ordinary skill in the art _after consideration of all the facts_.
- Factors _other than the disclosure of the prior art_ may provide the basis for concluding that it would have been obvious.

**Notes:**
Make sure the facts you are relying on are of record.
Factors other than the disclosure of prior art include common sense and the understanding of those in the art, but again put these findings of fact in the record.

##  Graham v. John Deere Test Tips

**Determining the scope and content of the prior art:**
- The search should cover the claimed subject matter and should also cover the disclosed features which might reasonably be expected to be claimed. (MPEP 904.02)
- Examiners should continue to follow the general search guidelines set forth in section 904 t0 904.03 of the MPEP.
- Prior art can either be in the field of applicant’s endeavor or be reasonably pertinent to the particular problem with which the applicant was concerned.
- Prior art that is in a field of endeavor other than that of the applicant or solves a problem which is different from that which the applicant was trying to solve should also be considered for the purpose of 35 USC 103.

##  Graham v. John Deere Test Tips

**Ascertaining the differences between the claimed invention and the prior art.**
- Ascertaining these differences between the claimed invention and the prior art requires interpreting the claim language and considering both the invention and the prior art as a whole. (MPEP 2141.02)

**Notes:**
Claim interpretation including broadest reasonable interpretation, functional language, weight of preambles, etc.

##  Graham v. John Deere Test Tips

**Resolving the level of ordinary skill in the art.**
- In many cases, a person of ordinary skill in the art will be able to fit the teachings of _multiple disclosures_ together like a piece of a puzzle.
- In addition, Examiners may rely on their _own technical expertise_ to _describe_ the knowledge and skills of a person of ordinary skill in the art.

**Notes:**
Again, no limit on the number of documents that may be combined.

You can rely on your own technical expertise, but make sure to explain it on the record.

##  Graham v. John Deere Test Tips

- If after going through the Graham factual analysis, the examiner concludes that the teaching-suggestion motivation rationale (TSM) is still applicable, then a rejection using TSM can still be made.
- TSM is still valid but it is not the only rationale to support a conclusion of obviousness under 35 USC 103 when employing the Graham analysis.
- The examiner must also consider one or more of the following rationales set forth below.

**Notes:**
Note, this is not an exhaustive list of rationales.

## A – Combining Prior Art Elements According to Known Methods

- See pages 2-5 of the Handout.
- The keys to rationale A:
- The elements are all known but not combined as claimed.
- The technical ability exists to combine the elements as claimed and the results of the combination are predictable.
- When combined, the elements _perform the same function as they did separately_.

**Notes:**
Simple example – a PC running both Microsoft Word and Microsoft PowerPoint.  Independent programs loaded onto the same machine.  Note – no need to explain why the same machine would need to have Word and PowerPoint, in other words, no motivation needed.
See the handout for an example and rejection.
Ask the class – When/How would this rationale be helpful?  Any other examples?
A good rationale to use when you have a combination of unrelated or unintegrated features. 

## B – Simple Substitution of One Known Element for Another

- See pages 6-8 of the Handout.
- The keys to rationale B:
- The prior art differs from the claim  by the substitution of some components.
- The substituted components were _known_.
- The technical ability existed to substitute the components as claimed and the result of the substitution is predictable.

**Notes:**
Simple example - touch screen claimed rather than a keyboard in a POS system.  Both touch screen and keyboard are known with no problem making the switch.  Again, no need to state a motivation why.
See the handout for an example and rejection.
Ask the class – When/How would this rationale be helpful?  Any other examples?
Could also be useful when the claim is actually a step backwards in the art, e.g. the reference is more sophisticated and the claim uses older less desirable technology.  Might be tricky to write a TSM rejection to explain why you want to step backwards, but not a problem here.

## C – Use of Known Technique to Improve Similar Art in Same Way

- See pages 9-12 of the Handout.
- The keys to rationale C:
- Claimed invention has an “improvement” over a base device (or method, product) taught in a reference.
- The prior art also teaches a “_comparable device_” _improved_ in the _same_ way.
- The technical ability existed to improve the base device in the same way and the result of the improvement is predictable.

**Notes:**
Think “analogous arts”
Simple example – Online shopping system claimed has specific encryption not taught by base reference.  You find other references in “comparable” online browsing that are “improved” in the same way, via that specific encryption.
See the handout for an example and rejection.
Ask the class – When/How would this rationale be helpful?  Any other examples?
A good rationale to use where applicant is adding improvement from other comparable environments onto a conventional system or adopting advances or techniques that improved other comparable environments.

## D – Applying Known Technique to Known Art Ready for Improvement

- See pages 13-17 of the Handout.
- The keys to rationale D:
- Similar to rationale C, but broader.
- Claimed invention has an “improvement” over a base device (or method, product) taught in a reference.
- The prior art teaches a _known technique that is applicable to the base device_.
- Those in the art would have recognized applying the known technique would have yielded an improvement and was predictable.

**Notes:**
Again, think “analogous arts”, but here there is no need to find the feature taught as a “improvement” in a “comparable” device.
Simple example – Online shopping system claimed has specific encryption not taught by base reference.  You find other references to that specific encryption (not necessarily in a browsing or other related system)
See the handout for an example and rejection.
Ask the class – When/How would this rationale be helpful?  Any other examples?
A good rationale to use where applicant is adding “bells and whistles” from other environments onto a conventional system or adopting advances or techniques from other environments. E.g. AI or object-oriented features.
Also similar to rationale A in that you have all the pieces of the claim, but no need to show the pieces perform the same as they would independently.

## E – Obvious to Try Among a Finite Number of Identified Solutions

- See pages 18-20 of the Handout.
- The keys to rationale E:
- Recognized problem or need in the art including market pressure or design need.
- _Finite number_ of identified predictable solutions.
- Those in the art could have pursued known solutions with reasonable expectation of success.

**Notes:**
“A person of ordinary skill has good reason to pursue the known options within his or her technical grasp”.
Simple example – Online shopping system where payment needs to be made.  Finite number of known solutions – credit, debit, electronic check, digital money, just pick one.  
See the handout for an example and rejection.
Ask the class – When/How would this rationale be helpful?  Any other examples?
Good rationale when reference is silent on a feature that has to be done in one of a finite number of known ways.  No need to explain why you would pick that particular one.  

## F – Design Incentives or Market Forces Prompting Variations

- See pages 21-23 of the Handout.
- The keys to rationale F:
- The prior art teaches a base device (or method, product) similar or analogous to the claims.
- _Design incentives or market forces_ would have prompted change to the base device.
- Known variations or principles would meet the difference between the claimed invention and the prior art and the implementation would have been predictable.

**Notes:**
Related to rationale D, except from the viewpoint that “Everybody else is doing it”, e.g. the market is driving the adoption of a feature.
Simple example – Taking a brick and mortar business online.
See the handout for an example and rejection.
Ask the class – When/How would this rationale be helpful?  Any other examples?
In the early 90’s AI was the new thing everyone was adding to their systems, later it was object oriented programming, later it was putting business functions on the Internet.  Good rationale for an invention that is jumping on the bandwagon.

## G – Teaching, Suggestion or Motivation to Combine

- See pages 24-27 of the Handout.
- The keys to rationale G:
- This is the familiar “motivation” rejection where a teaching, suggestion or motivation to combine appears either in the references or in the knowledge generally available to one of ordinary skill.

## Allowing in a Post-KSR World

- While KSR may provide strong support for obviousness rejections, claims will still be _allowable_ because:
- Insufficient facts, or a persuasive showing by applicant countering one or more findings of fact.
- Consider:
- Have the claims been given their broadest reasonable interpretation?  Is there a special definition?
- Is there confidence in the search?  Did you search for the missing feature by itself?
- Have the references been properly interpreted and considered for common sense conclusions and what they would teach to those in the art?

## Allowing in a Post-KSR World

- ...claims can be _allowable_ because (cont’d):
- Secondary considerations, e.g. commercial success, long felt need, and unexpected results.
- Recall that the KSR rationales rely on “predictable results” or an “expectation of success”.  Secondary considerations may be used to address this.
- See MPEP 716 through 716.04 for tips on evaluating the persuasiveness of secondary considerations.
- Further training on 132 affidavit practice coming soon.

## Allowing in a Post-KSR World

- ...claims can be _allowable_ because (cont’d):
- Claimed elements could _not _have been combined by known methods.
- E.g. due to technological difficulties.  This is different from “*would not*” have been combined because of a lack of motivation.
- Arguments concerning “teaching away” and “destroying the teachings” can apply, but be careful.
- See MPEP 2145 Section X. D. “References Teach Away from the Invention or Render Prior Art Unsatisfactory for Intended Purpose”, as well as MPEP 2141.02 and 2143.01.

**Notes:**
See latest MPEP, edition 8, revision 6 , Sept. 2007

## Allowing in a Post-KSR World

- ...claims can be _allowable_ because (cont’d):
- Claimed elements could not have been combined by known methods.
- Arguments concerning “hindsight” can still apply, but be careful.
- See MPEP 2145 Section X. A. “Impermissible Hindsight”.  A hindsight argument would have to overcome the findings of fact and conclusions expressed in the rationales.
- Arguments concerning “expectation of success” can still apply, but be careful.
- See MPEP 2143.02 “Reasonable Expectation of Success is Required”. “Expectation of Success” can be a factor in unpredictable arts, e.g. some chemical areas, but the electrical arts are more predictable and this issue would be rare.

**Notes:**
See latest MPEP revision.
Expectation of Success can be a factor in chemical cases, but the electrical arts are more predictable and this would be RARE. 

## Allowing in a Post-KSR World

- ...claims can be _allowable_ because (cont’d):
- Claimed elements do not merely perform the function that each element performs separately.
- E.g. a synergistic effect, see MPEP 716.02(a), section I.
- This is not an exhaustive list.
- If you see an allowable feature in the spec or a dependent claim, offer it to applicant.

## Allowing in a Post-KSR World

**Note**: Mere statement or argument by the applicant that the Office:
- 1) has not established a prima facie case of obviousness, or
- 2) that the Office’s reliance on common knowledge is unsupported by documentary evidence,
- _will not_ be considered a substantively adequate rebuttal or an effective traversal of the rejection.
- See 37 CFR 1.111(b).

## THE END