By Kevin E. Noonan --
The potential effect of the Supreme Court's ruling in KSR Int'l Co. v. Teleflex Inc. on practice before the U.S. Patent and Trademark Office has created the most anxiety among patent applicants and their representatives at the patent bar. This is because the opinion is replete with dicta that can be interpreted (and, more importantly, misinterpreted) to both make it easier to assert a prima facie obviousness determination and make it harder to overcome such a case. Thus, tea leaf-reading commentators and the blogosphere have chattered for days about these effects, without of course any evidence as a basis.
Today the Patent Office has provided a first look into how it will react to KSR, in the form of a memo from Margaret A. Focarino, Deputy Commissioner for Patent Operations. The memo has four main points:
1. The KSR opinion reasserts the primacy of four Graham v. John Deere Co. of Kansas City factors for determining obviousness;
2. The Court did not overturn the Federal Circuit's "teaching-suggestion-motivation" (TSM) test, which provides a "useful insight" in making an obviousness determination under Graham;
3. The Court did criticize application of the TSM test rigidly to require an explicit showing of teaching, suggestion or motivation to combine prior art references to achieve the claimed invention; and
4. Perhaps most importantly, the Court continued to require that a prima facie obviousness case requires an apparent reason why a person of ordinary skill in the art would combine the references, and that the analysis must be made explicit. (Boldface in original).
The memo ends with the exhortation that:
Therefore, in formulating a rejection under 35 U.S.C. 103(a) based upon a combination of prior art elements, it remains necessary to identify the reason why a person of ordinary skill in the art would have combined the prior art elements in the manner claimed. (Boldface in original).
Although it remains too early to tell how these guidelines will be implemented by individual Examiners, it is gratifying to see that Patent Office officials recognize the essentially conservative approach taken by the Supreme Court in its KSR opinion, and that the much-anticipated (and greatly-feared) upheaval in how obviousness is to be determined is not supported by the opinion.
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