Obviousness Rejections (35 USC 103)
This article provides a framework for traversing an obviousness rejection(s) during the patent prosecution phase of a patent application and highlights the 2010 USPTO KSR Guidelines.
Background | Supreme Court Jurisprudence | Graham | KSR
Obviousness is defined by statute (35 USC 103(a)) as follows:
“A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.”
The Supreme Court in Graham v. John Deere (1966) indicated that obviousness is ultimately a question of law based upon factual findings. The fact-finder is required to: 1) determine the scope and content of the prior art; 2) ascertain the differences between the prior art and the claims at issue; and 3) resolve the level of ordinary skill in the pertinent art. The aforementioned factual inquiries “remain the foundation of any determination of obviousness” (2010 KSR Guidelines Update). Additionally, it should be noted that a patent examiner acts as the fact-finder in furthering the aforementioned inquiries during patent prosecution.
In addition to the aforementioned primary inquiries, the Supreme Court indicated that objective evidence (or “secondary considerations”) may be utilized to “give light to the circumstances surrounding the origin of the subject matter sought to be patented” which include: “commercial success, long-felt need but unsolved needs, failure of others, etc.”
In a more recent case, the Supreme Court in KSR v. Teleflex (2007) arguably restricted patentability by holding that the Federal Circuit was applying their “Teaching-Suggestion-Motivation” (TSM) test “in an overly rigid and formalistic way.” (see MPEP 2141 – Examination Guidelines for Determining Obviousness under 35 USC 103) Further, the court in KSR affirmed the Graham framework and provided a number of exemplary rationales (indicated below) that may be employed in an obviousness inquiry.
The patent prosecution framework for traversing obviousness rejections described below is guided by and incorporates a number of key items from the KSR decision.
Patent Prosecution Framework for Traversing Obviousness Rejections
The following patent prosecution framework will in many instances allow a patent practitioner to traverse an obviousness rejection(s) by argument (post-KSR) and thereby minimize having to amend the claim(s) or submit affidavits/declarations.
Verification that Cited References are Prior Art
As there are occasions where references are incorrectly cited as prior art, every reference which is cited in an Office Action should be verified as prior art in view of the effective filing date of the subject patent application. MPEP 2141.01 states:
“’Before answering Graham’s ‘content’ inquiry, it must be known whether a patent or publication is in the prior art under 35 U.S.C. § 102.’ Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1568, 1 USPQ2d 1593, 1597 (Fed. Cir.), cert. denied, 481 U.S. 1052 (1987). Subject matter that is prior art under 35 U.S.C. 102 can be used to support a rejection under section 103. Ex parte Andresen, 212 USPQ 100, 102 (Bd. Pat. App. & Inter. 1981) … a 35 U.S.C. 103 rejection is based on 35 U.S.C. 102(a), 102(b), 102(e), etc. depending on the type of prior art reference used and its publication or issue date … for an overview of what constitutes prior art under 35 U.S.C. 102, see MPEP § 901 - § 901.06(d) and § 2121 - § 2129.”
For further information regarding 35 USC 102, the reader is invited to review the following articles which were published previously on this blog entitled: “Shortcut Table for Analyzing 35 USC 102” and “Statutory Bars.”
Initial Burden Upon the Examiner to Further a Prima Facie Case of Obviousness
As indicated in MPEP 2142: “the examiner bears the initial burden of factually supporting any prima facie conclusion of obviousness. If the examiner does not produce a prima facie case, the applicant is under no obligation to submit evidence of nonobviousness.” (see MPEP 2142 entitled “Legal Concept of Prima Facie Obviousness) Additionally, the Federal Circuit has stated:
“The Supreme Court in Graham v. John Deere Co., 383 U.S. 1, 86 S.Ct. 684, 15 L.Ed.2d 545, 148 USPQ 459 (1966), focused on the procedural and evidentiary processes in reaching a conclusion under section 103. As adapted to ex parte procedure, Graham is interpreted as continuing to place the ‘burden of proof on the Patent Office which requires it to produce the factual basis for its rejection of an application under sections 102 and 103′. In re Warner, 379 F.2d 1011, 1016, 154 USPQ 173, 177 (CCPA 1967).” (In re Piasecki, 745 F.2d 1468, 1472 (Fed. Circ. 1984)
Furthermore, the In re Warner Court additionally held:
“The Patent Office has the initial duty of supplying the factual basis for its rejection. It may not, because it may doubt that the invention is patentable, resort to speculation, unfounded assumptions or hindsight reconstruction to supply deficiencies in its factual basis.”
It should be noted that the Federal Circuit in In re. Oetiker stated that “if the examination at the initial stage does not produce a prima facie case of unpatentability, then without more the applicant is entitled to grant of the patent. See In re Grabiak, 769 F.2d 729, 733, 226 USPQ 870, 873 (Fed.Cir.1985).” (In re. Oetiker, 977 F.2d 1443 (Fed. Circ. 1992))
Factual Evidence Provided for All Claim Features
Although KSR may have loosened the required reasoning that may be employed for combining prior art references in an obviousness rejection, it is submitted that the Examiner must still provide a factual basis for each of the claimed features of a rejected claim. MPEP 2143.03 entitled “All Claim Limitations must be Considered” states: “all words in a claim must be considered in judging the patentability of that claim against the prior art.” In re Wilson, 424 F.2d 1382, 1385, 165 USPQ 494, 496 (CCPA 1970).”
If an examiner fails to address all of the recitations of a rejected claim, it is submitted that a prima facie case of obviousness has not been established as such a deficiency fails to satisfy the evidentiary requirements articulated by the Supreme Court in KSR (e.g. “the key to supporting any rejection under 35 U.S.C. 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious” and that “a rejection under 35 U.S.C. 103 should be made explicit.”)
The BPAI in a recent decision (Ex parte Wehling et al.) stated: “the dispositive issue in this case is whether the Examiner has explicitly articulated a prima facie case of obviousness which addresses all of the limitations of the claimed invention.” The BPAI was guided by the following legal principles:
“When determining whether a claim is obvious, an Examiner must make ‘a searching comparison of the claimed invention – including all its limitations – with the teachings of the prior art.’ In re Ochiai, 71 F.3d 1565, 1572 (Fed. Cir. 1995) (emphasis added). Thus, ‘obviousness requires a suggestion of all limitations in a claim.’ CFMT, Inc. v. Yieldup Int’l. Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003) (citing In re Royka, 490 F.2d 981, 985 (CCPA 1974)). Furthermore, in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), the Supreme Court noted that ‘[t]o facilitate review, this [obviousness] analysis should be made explicit.’” (Ex parte Wehling et al., Appeal No. 2009-8111 (BPAI))
The BPAI in Ex Parte Wehling et al. held that “absent a fact-based analysis which explicitly compares all the limitations of the claimed invention with the combined teachings of Gioffre and Rockliffe, we are constrained to reverse the rejection of claims 1, 21, 29, and 31 and the claims dependent thereon under § 103 over the combined teachings of Gioffre and Rockliffe.”
Articulated Reasoning with some Rational Underpinning
The Supreme Court in KSR v. Teleflex stated that: ”it can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.”
To “Establish a Prima Facie Case of Obviousness” (as indicated in MPEP 2142):
“The key to supporting any rejection under 35 U.S.C. 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR International Co. v. Teleflex Inc., 550 U.S. ___, ___, 82 USPQ2d 1385, 1396 (2007) noted that the analysis supporting a rejection under 35 U.S.C. 103 should be made explicit. The Federal Circuit has stated that ‘rejections on obviousness cannot be sustained with mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’ In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006). See also KSR, 550 U.S. at ___ , 82 USPQ2d at 1396 (quoting Federal Circuit statement with approval).” (MPEP 2142)
The MPEP states that “when the motivation to combine the teachings of the references is not immediately apparent, it is the duty of the Examiner to explain why the combination of the teachings is proper. Ex parte Skinner, 2 USPQ2d 1788 (Bd. Pat. App. & Inter. 1986)” (MPEP 2142). Furthermore, the 2007 USPTO KSR Guidelines specify that 35 USC 132 requires the Examiner to provide an explanation for an obviousness rejection:
“Once the findings of fact are articulated, Office personnel must provide an explanation to support an obviousness rejection under 35 U.S.C. 103. 35 U.S.C. 132 requires that the applicant be notified of the reasons for the rejection of the claim so that he or she can decide how to proceed. Clearly setting forth findings of fact and the rationale(s) to support a rejection in an Office Action leads to the prompt resolution of issues pertinent to patentability.” (2007 USPTO KSR Guidelines)
Further, 35 USC 132 specifically states:
“(a) Whenever, on examination, any claim for a patent is rejected, or any objection or requirement made, the Director shall notify the applicant thereof, stating the reasons for such rejection, or objection or requirement, together with such information and references as may be useful in judging of the propriety of continuing the prosecution of his application; and if after receiving such notice, the applicant persists in his claim for a patent, with or without amendment, the application shall be reexamined. No amendment shall introduce new matter into the disclosure of the invention.” (35 USC 132 Notice of Rejection; Reexamination)
An “articulated reasoning” (not just a conclusory statement such as “well within the art”) is required even if all aspects of a claim are individually known in the art, MPEP 2143.01 entitled “Suggestion or Motivation to Modify the References” states:
“A statement that modifications of the prior art to meet the claimed invention would have been ‘well within the ordinary skill of the art at the time the claimed invention was made’” because the references relied upon teach that all aspects of the claimed invention were individually known in the art is not sufficient to establish a prima facie case of obviousness without some objective reason to combine the teachings of the references. Ex parte Levengood, 28 USPQ2d 1300 (Bd. Pat. App. & Inter. 1993).’”
The 2010 USPTO KSR Guidelines indicate that it is important to identify a reason for combining references especially when “a combination requires a greater expenditure of time, effort, or resources than the prior art teachings” even for combining known elements in a known manner to obtain predictable results.
Although the teaching or suggestion to modify a reference/combine teachings may be found “in the references themselves or in the knowledge generally available to one of ordinary skill in the art”, the Federal Circuit has explicitly stated that “the teaching or suggestion to make the claimed combination and the reasonable expectation of success must both be found in the prior art, not in applicant’s disclosure. In re Vaeck, 947 F.2d 488, 20 USPQ2d 1438 (Fed Cir. 1991)” (MPEP 2143)
It is submitted that when an Office Action fails to provide a “clear articulation of the reason(s) why the claimed invention would have been obvious“, it is likely that the rejection is based upon improper hindsight reasoning. The BPAI recently stated in Ex parte Schoemann et al.: “it is improper to base a conclusion of obviousness upon facts gleaned only through hindsight” and held that “absent hindsight, we see no reason, and the Examiner has not provided an adequate articulation of a reason, why a person of ordinary skill in the art would have been led to modify Stein by the teachings of Io in the manner suggested by the Examiner.” In support of the foregoing, the BPAI cited the following Federal Circuit precedent:
“To draw on hindsight knowledge of the patented invention, when the prior art does not contain or suggest that knowledge, is to use the invention as a template for its own reconstruction — an illogical and inappropriate process by which to determine patentability.” Sensonics, Inc. v. Aerosonic Corp., 81 F.3d 1566, 1570 (Fed. Cir. 1996) (citing W.L. Gore & Assoc. v. Garlock, Inc., 721 F.2d 1540, 1553 (Fed. Cir. 1983)).” (Ex Parte Schoemann et al., Appeal No. 2009-4371 (BPAI))
In view of the above, it is submitted that if an obviousness rejection only includes conclusory statements (and does not provide an “articulated reasoning with some rational underpinning”) it is likely that the Office Action has failed to establish a prima facie case of obviousness.
Official Notice Taken of Facts | “Well Known” | “Common Knowledge”
There arises situations where an Office Action will merely assert that a feature is “well known” or “common knowledge in the art” (or some variant thereof). In such situations, the Examiner is likely taking Official Notice of facts not in the record or relying on “common knowledge” in furthering an obviousness rejection. For further information re. this topic, the reader is invited to review an article which was published previously on this blog entitled: “Official Notice | Avoiding a Possible Patent Prosecution Pitfall.” It should be noted that by failing to adequately traverse such a taking, the Applicant risks having the Examiner’s statement construed as admitted prior art.
Teaching Away in the Cited References
A strong “teaching away” argument may be furthered when the prior art actively disparages a particular combination and the combination yields more than predictable results. More specifically, “teaching away” typically arises when a reference provides an explicit disclosure which “criticizes, discredits, or otherwise discourages“ a claimed combination.
“It is improper to combine references where the references teach away from their combination. In re Grasselli, 713 F.2d 731, 743, 218 USPQ 769, 779 (Fed. Cir. 1983)” (MPEP 2145) The Federal Circuit stated in In re. Gurley:
“A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant. The degree of teaching away will of course depend on the particular facts; in general, a reference will teach away if it suggests that the line of development flowing from the reference’s disclosure is unlikely to be productive of the result sought by the applicant. See United States v. Adams, 383 U.S. 39, 52, 86 S.Ct. 708, 714, 15 L.Ed.2d 572, 148 USPQ 479, 484 (1966) (‘known disadvantages in old devices which would naturally discourage the search for new inventions may be taken into account in determining obviousness’); W.L. Gore & Assoc., Inc. v. Garlock, Inc., 721 F.2d 1540, 1550-51, 220 USPQ 303, 311 (Fed.Cir.1983) (the totality of a reference’s teachings must be considered), cert. denied, 469 U.S. 851, 105 S.Ct. 172, 83 L.Ed.2d 107 (1984); In re Sponnoble, 405 F.2d 578, 587, 160 USPQ 237, 244 (CCPA 1969) (references taken in combination teach away since they would produce a ‘seemingly inoperative device’); In re Caldwell, 319 F.2d 254, 256, 138 USPQ 243, 245 (CCPA1963) (reference teaches away if it leaves the impression that the product would not have the property sought by the applicant).”
Further, “where the teachings of two or more prior art references conflict, the examiner must weigh the power of each reference to suggest solutions to one of ordinary skill in the art, considering the degree to which one reference might accurately discredit another. In re Young, 927 F.2d 588, 18 USPQ2d 1089 (Fed. Cir. 1991)” (MPEP 2143.01)
The MPEP indicates that “‘the prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed..’ In re. Fulton” (MPEP 2143.01) The Federal Circuit recently stated: “a reference does not teach away if it merely expresses a general preference for an alternative invention but does not criticize, discredit, or otherwise discourage investigation into the applicant’s claimed invention.” DePuy Spine Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009).
In view of the above, if a cited reference merely describes multiple alternatives, it is unlikely that a “teaching away” argument would be successful. Conversely, a “teaching away” argument would likely be successful if a cited reference “criticizes, discredits, or otherwise discourages” a claimed combination.
The Federal Circuit in at least one case (see KSR Guidelines at example 4.2 - Crocs, Inc. v. U.S. International Trade Commission (Fed. Cir. 2010)) held that where the prior art discourages the use of a foam strap because it would likely stretch and deform/cause discomfort for the wearer, a proper “teaching away” showing was produced regarding the use of foam straps.
Proposed Modification would Render the Prior Art Invention being Modified Inoperable for its Intended Purpose
MPEP 2143.01 states: “if a proposed modification would render the prior art invention being modified unsatisfactory for its intended purpose, then there is no suggestion or motivation to make the proposed modification. In re Gordon, 733 F.2d 900, 221 USPQ 1125 (Fed. Cir. 1984)”
The Federal Circuit in In re Gordon reversed the Board stating that: “if the prior art device was turned upside down it would be inoperable for its intended purpose because the gasoline to be filtered would be trapped at the top, the water and heavier oils sought to be separated would flow out of the outlet instead of the purified gasoline, and the screen would become clogged.”
Fuirther, the BPAI reversed the Examiner and found the following argument furthered by the Appelants persuasive: “Appelants argue (Br. 6, 7) that ‘the system in Inoue et al. requires the broad range of the bass speaker in the dashboard to provide the entire bass range in the three speaker system,’ and ‘[t]o replace this speaker with a subwoofer would render the Inoue et al. system inoperative over a substantial portion of the frequency range, namely, from about 100-300 Hz.’” (see Ex parte Irby et al. Appeal No. 2010-3460 (BPAI))
Proposed Modification Would Change the Principle of Operation of a Reference
MPEP 2143.01 states: “if the proposed modification or combination of the prior art would change the principle of operation of the prior art invention being modified, then the teachings of the references are not sufficient to render the claims prima facie obvious. In re Ratti, 270 F.2d 810, 123 USPQ 349 (CCPA 1959)”
Claim Interpretation | Broadest Reasonable Interpretation
During patent prosecution, Examiners give claims their “broadest reasonable interpretation consistent with the specification.” (see MPEP 2111 Claim Interpretation – Broadest Reasonable Interpretation)
During patent prosecution, “the claims must be interpreted as broadly as their terms reasonably allow. In re American Academy of Science Tech Center, 367 F.3d 1359, 1369, 70 USPQ2d 1827, 1834 (Fed. Cir. 2004)” and “it is the use of the words in the context of the written description and customarily by those skilled in the relevant art that accurately reflects both the ‘ordinary’ and the ‘customary’ meaning of the terms in the claims. Ferguson Beauregard/Logic Controls v. Mega Systems, 350 F.3d 1327, 1338, 69 USPQ2d 1001, 1009 (Fed. Cir. 2003)” (see MPEP 2111.01 Plain Meaning)
Regarding unreasonably broad claim interpretations furthered by the USPTO, the Federal Circuit has stated:
“Although the PTO emphasizes that it was required to give all ‘claims their broadest reasonable construction’ particularly with respect to claim 4′s use of the open-ended term ‘comprising,’ see Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501 (Fed.Cir.1997) (‘the open-ended term comprising . . . means that the named elements are essential, but other elements may be added’), this court has instructed that any such construction be ‘consistent with the specification, . . . and that claim language should be read in light of the specification as it would be interpreted by one of ordinary skill in the art.’ In re Bond, 910 F.2d 831, 833 (Fed.Cir.1990) (quoting In re Sneed, 710 F.2d 1544, 1548 (Fed.Cir.1983)).
The PTO’s construction here, though certainly broad, is unreasonably broad. The broadest-construction rubric coupled with the term ‘comprising’ does not give the PTO an unfettered license to interpret claims to embrace anything remotely related to the claimed invention. Rather, claims should always be read in light of the specification and teachings in the underlying patent. See Schriber-Schroth Co. v. Cleveland Trust Co., 311 U.S. 211, 217, 61 S.Ct. 235, 85 L.Ed. 132 (1940) (“The claims of a patent are always to be read or interpreted in light of its specifications.”).” (In re Suitco Surface, Inc., 603 F.3d 1255 (Fed. Cir. 2010)
In view of the above, it is improper if an obviousness rejection is “premised on an unreasonable claim construction and a strained reference interpretation that is inconsistent with the reach of the claimed subject matter when given its broadest reasonable interpretation consistent with the subject Specification as it would have been understood by one of ordinary skill in the art.” (see Ex parte Ma et al., Appeal No. 2010-3794 (BPAI)).
Claim Interpretation | Applicant as their own Lexicographer
If an Applicant provides an explicit definition for a claim term, that definition controls. Accordingly, “an applicant is entitled to be his or her own lexicographer and may rebut the presumption that claim terms are to be given their ordinary and customary meaning by clearly setting forth a definition of the term that is different from its ordinary and customary meaning(s). See In re Paulsen, 30 F.3d 1475, 1480, 31 USPQ2d 1671, 1674 (Fed. Cir. 1994).” (MPEP 2111) Accordingly, “where an explicit definition is provided by the applicant for a term, that definition will control interpretation of the term as it is used in the claim. Toro Co. v. White Consolidated Industries Inc., 199 F.3d 1295, 1301, 53 USPQ2d 1065, 1069 (Fed. Cir. 1999)
USPTO Resources
USPTO Examination Training Materials in view of KSR v. Teleflex
2010 USPTO KSR Examination Guidelines
2007 USPTO KSR Examination Guidelines
USPTO BPAI Decisions
MPEP 2141 – Examination Guidelines for Determining Obviousness under 35 U.S.C. 103
2010 USPTO KSR Guidelines Update: Developments in the Obviousness Inquiry After KSR v. Teleflex (35 USC 103)
The USPTO recently released (August 2010) updated KSR guidelines to provide USPTO personnel (and patent practitioners) with additional guidance regarding obviousness (35 USC 103) inquiries by examining post-KSR U.S. Court of Appeals for the Federal Circuit (CAFC) decisions. The 2010 KSR Guidelines reference six rationales (annunciated by the Supreme Court in KSR) in addition to a less rigid TSM test that may be used to support an obviousness determination:
“1. Combining prior art elements according to known methods to yield predictable results;
2. Simple substitution of one known element for another to obtain predictable results;
3. Use of a known technique to improve similar devices, methods, or products in the same way;
4. Applying a known technique to a known device, method, or product ready for improvement to yield predictable results;
5. Obvious to try – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success; and
6. 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 are predictable to one of ordinary skill in the art.” (e.g., “design choice”)
The 2010 USPTO KSR guidelines state:
“Since it is now clear that a strict TSM approach is not the only way to establish a prima facie case of obviousness, it is true that practitioners have been required to shift the emphasis of their nonobviousness arguments to a certain degree. However, familiar lines of argument still apply, including teaching away from the claimed invention by the prior art, lack of a reasonable expectation of success, and unexpected results. Instead, they may have even taken on added importance in view of the recognition in KSR of a variety of possible rationales.”
Further, the KSR guidelines also provide 24 “teaching points” which are extracted from a number of post-KSR Federal Circuit cases. For the reader’s convenience, the “teaching points” are reproduced hereafter.
2010 USPTO KSR Guidelines – Teaching Points
| Case |
Teaching Point |
|
|
|
Combining Prior Art Elements |
| In re Omeprazole Patent Litigation, 536 F.3d 1361 (Fed. Cir. 2008) |
Even where a general method that could have been applied to make the claimed product was known and within the level of skill of the ordinary artisan, the claim may nevertheless be nonobvious if the problem which had suggested use of the method had been previously unknown. |
Crocs, Inc. v. U.S. Int’l Trade
Comm’n., 598 F.3d 1294 (Fed.
Cir. 2010) |
A claimed combination of prior art elements may be nonobvious where the prior art teaches away from the claimed combination and the combination yields more than predictable results. A claimed combination of prior art elements may be nonobvious where the prior art teaches away from theclaimed combination and the combination yields more than predictable results. |
| Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356 (Fed. Cir. 2008) |
A claimed invention is likely to be obvious if it is a combination of known prior art elements that would reasonably have been expected to maintain their respective properties or functions after they have been combined. |
Ecolab, Inc. v. FMC Corp., 569
F.3d 1335 (Fed. Cir. 2009) |
A combination of known elements would have been prima facie obvious if an ordinarily skilled artisan would have recognized an apparent reason to combine those elements and would have known how to do so. |
Wyers v. Master Lock Co., No.
2009–1412, —F.3d—, 2010 WL
2901839 (Fed. Cir. July 22,
2010) |
The scope of analogous art is to be construed broadly and includes references that are reasonably pertinent to the problem that the inventor was trying to solve. Common sense may be used to support a legal conclusion of obviousness so long as it is explained with sufficient reasoning. |
DePuy Spine, Inc. v. Medtronic
Sofamor Danek, Inc., 567 F.3d
1314 (Fed. Cir. 2009) |
Predictability as discussed in KSR encompasses the expectation that prior art elements are capable of being combined, as well as the expectation that the combination would have worked for its intended purpose. An inference that a claimed combination would not have been obvious is especially strong where the prior art’s teachings undermine the very reason being proffered as to why a person of ordinary skill would have combined the known elements. |
|
Substituting One Known Element for Another |
| In re ICON Health & Fitness, Inc., 496 F.3d 1374 (Fed. Cir. 2007) |
When determining whether a reference in a different field of endeavor may be used to support a case of obviousness (i.e., is analogous), it is necessary to consider the problem to be solved. |
| Agrizap, Inc. v. Woodstream Corp., 520 F.3d 1337 (Fed. Cir. 2008). |
Analogous art is not limited to references in the field of endeavor of the invention, but also includes references that would have been recognized by those of ordinary skill in the art as useful for applicant’s purpose. |
| Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318 (Fed. Cir. 2008) |
Because Internet and Web browser technologies had become commonplace for communicating and displaying information, it would have been obvious to adapt existing processes to incorporate them for those functions. |
| Aventis Pharma Deutschland v. Lupin, Ltd., 499 F.3d 1293 (Fed. Cir. 2007) |
A chemical compound would have been obvious over a mixture containing that compound as well as other compounds where it was known or the skilled artisan had reason to believe that some desirable property of the mixture was derived in whole or in part from the claimed compound, and separating the claimed compound from the mixture was routine in the art. |
| Eisai Co. Ltd. v. Dr. Reddy’s Labs., Ltd., 533 F.3d 1353 (Fed. Cir. 2008 |
A claimed compound would not have been obvious where there was no reason to modify the closest prior art lead compound to obtain the claimed compound and the prior art taught that modifying the lead compound would destroy its advantageous property. Any known compound may serve as a lead compound when there is some reason for starting with that lead compound and modifying it to obtain the claimed compound. |
| Procter & Gamble Co. v. Teva Pharmaceuticals USA, Inc., 566 F.3d 989 (Fed. Cir. 2009). |
It is not necessary to select a single compound as a ‘‘lead compound’’ in order to support an obviousness rejection. However, where there was reason to select and modify the lead compound to obtain the claimed compound, but no reasonable expectation of success, the claimed compound would not have been obvious. |
| Altana Pharma AG v. Teva Pharms. USA, Inc., 566 F.3d 999 (Fed. Cir. 2009). |
Obviousness of a chemical compound in view of its structural similarity to a prior art compound may be shown by identifying some line of reasoning that would have led one of ordinary skill in the art to select and modify a prior art lead compound in a particular way to produce the claimed compound. It is not necessary for the reasoning to be explicitly found in the prior art of record, nor is it necessary for the prior art to point to only a single lead compound. |
|
The Obvious to Try Rationale |
| In re Kubin, 561 F.3d 1351 (Fed. Cir. 2009) |
A claimed polynucleotide would have been obvious over the known protein that it encodes where the skilled artisan would have had a reasonable expectation of success in deriving the claimed polynucleotide using standard biochemical techniques, and the skilled artisan would have had a reason to try to isolate the claimed polynucleotide. KSR applies to all technologies, rather than just the ‘‘predictable’’
arts. |
| Takeda Chem. Indus. v. Alphapharm Pty., Ltd., 492 F.3d 1350 (Fed. Cir. 2007) |
A claimed compound would not have been obvious where it was not obvious to try to obtain it from a broad range of compounds, any one of which could have been selected as the lead compound for further investigation, and the prior art taught away from using a particular lead compound, and there was no predictability or reasonable expectation of success in making the particular modifications necessary to transform the lead compound into the claimed compound. |
| Ortho-McNeil Pharmaceutical, Inc. v. Mylan Labs, Inc., 520 F.3d 1358 (Fed. Cir. 2008) |
Where the claimed anti-convulsant drug had been discovered somewhat serendipitously in the course of research aimed at finding a new anti-diabetic drug, it would not have been obvious to try to obtain a claimed compound where the prior art did not present a finite and easily traversed number of potential starting compounds, and there was no apparent reason for selecting a particular starting compound from among a number of unpredictable alternatives. |
| Bayer Schering Pharma A.G. v. Barr Labs., Inc., 575 F.3d 1341 (Fed. Cir. 2009) |
A claimed compound would have been obvious where it was obvious to try to obtain it from a finite and easily traversed number of options that was narrowed down from a larger set of possibilities by the prior art, and the outcome of obtaining the claimed compound was reasonably predictable. |
| Sanofi-Synthelabo v. Apotex, Inc., 550 F.3d 1075 (Fed. Cir. 2008) |
A claimed isolated stereoisomer would not have been obvious where the claimed stereoisomer exhibits unexpectedly strong therapeutic advantages over the prior art racemic mixture without the correspondingly expected toxicity, and the resulting properties of the enantiomers separated from the racemic mixture were unpredictable. |
| Rolls-Royce, PLC v. United Technologies Corp., 603 F.3d 1325 (Fed. Cir. 2010) |
An obvious to try rationale may be proper when the possible options for solving a problem were known and finite. However, if the possible options were not either known or finite, then an obvious to try rationale cannot be used to support a conclusion of obviousness. |
| Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324 (Fed. Cir. 2009) |
Where there were a finite number of identified, predictable solutions and there is no evidence of unexpected results, an obvious to try inquiry may properly lead to a legal conclusion of obviousness. Common sense may be used to support a legal conclusion of obviousness so long as it is explained with sufficient reasoning. |
|
Consideration of Evidence |
| PharmaStem Therapeutics, Inc. v. ViaCell, Inc., 491 F.3d 1342 (Fed. Cir. 2007) |
Even though all evidence must be considered in an obviousness analysis, evidence of nonobviousness may be outweighed by contradictory evidence in the record or by what is in the specification. Although a reasonable expectation of success is needed to support a case of obviousness, absolute predictability is not required. |
| In re Sullivan, 498 F.3d 1345 (Fed. Cir. 2007) |
All evidence, including evidence rebutting a prima facie case of obviousness, must be considered when properly presented. |
| Hearing Components, Inc. v. Shure Inc., 600 F.3d 1357 (Fed. Cir. 2010) |
Evidence that has been properly presented in a timely manner must be considered on the record. Evidence of commercial success is pertinent where a nexus between the success of the product and the claimed invention has been demonstrated. |
| Asyst Techs., Inc. v. Emtrak, Inc., 544 F.3d 1310 (Fed. Cir. 2008 |
Evidence of secondary considerations of obviousness such as commercial success and long-felt need may be insufficient to overcome a prima facie case of obviousness if the prima facie case is strong. An argument for nonobviousness based on commercial success or long-felt need is undermined when there is a failure to link the commercial success or long-felt need to a claimed feature that distinguishes over the prior art. |
