LEGAL GUIDE
Written by attorney Sreenivasarao Vepachedu | Aug 20, 2015

OBVIOUSNESS (The Aftermath of KSR Intl Co. v. Teleflex Inc.(1))

A lot has been written and thousands of hours have been spent discussing the aftermath of KSR and its implications in the past 8 years, since the KSR decision by the SCOTUS chastised the CAFC invalidating TSM test. the SCOTUS was consistent regarding the standard of obviouness determination.

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REFERENCES AND NOTES: (1) KSR Intl Co. v. Teleflex Inc., 550 US 398 (2007) The Supreme Court noted that throughout the Court’s engagement with the question of obviousness, its cases have set forth an “expansive and flexible approach,” which was inconsistent with the TSM test that the Federal Circuit had been applying. (2) Dr. Rao Vepachedu is the Managing Director at Cardinal Risk Management and registered patent attorney with extensive experience in the management of intellectual property and extensive experience in research and teaching. He currently works for Cardinal Intellectual Property (CIP), Cardinal Risk Management (CRM), and Cardinal Law Group (CLG). In addition, he is the president of Vepachedu Educational Foundation Inc. (www.vepachedu.org), a 501(c) (3) educational foundation. For more information visit: www.linkedin.com/in/vepachedu; and http://www.crm-ip.com/vepachedu.html. https://www.avvo.com/attorneys/60201-il-sreenivasarao-vepachedu-764535.html Contact: [email protected] (3) VI Writings of Thomas Jefferson at 180-181 (Washington ed.). (4) A) Teaching, Suggestion and Motivation (TSM) B) McClain v. Ortmayer, 141 US 419, 427 (1891) (5) Graham et al. v. John Deere Co. of Kansas City et al., 383 U.S. 1 (1966): In a suit for the infringement of a patent that consisted of a combination of old mechanical elements for a device designed to absorb shock from plow shanks in rocky soil in order to prevent damage to the plow, the Fifth Circuit ruled that a combination is patentable when it produces an "old result in a cheaper and otherwise more advantageous way." In an opinion delivered by Justice Tom C. Clark, the SCOTUS held that the Patent Act of 1952 did not lower the standards required for the patentability of an invention by adding an inquiry into obviousness to the statutory requirements of novelty and utility. The Court found that section 103 of the 1952 Patent Act Congress added the statutory nonobvious subject matter requirement, and outlined the so-called Graham factors for the determination of obviousness. (6) The examiner bears the initial burden of factually supporting any prima facie conclusion of obviousness. Princeton Biochemicals, Inc. v. Beckman Coulter, Inc., 411 F.3d 1332, 1336-37 (Fed. Cir. 2005); In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976); In re Linter, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972); In re Saunders, 444 F.2d 599, 170 USPQ 213 (CCPA 1971); In re Tiffin, 443 F.2d 394, 170 USPQ 88 (CCPA 1971), amended, 448 F.2d 791, 171 USPQ 294 (CCPA 1971); In re Warner, 379 F.2d 1011, 154 USPQ 173 (CCPA 1967), cert. denied, 389 U.S. 1057 (1968); http://www.uspto.gov/web/offices/pac/mpep/s2142.html (7) Darrow, The Neglected Dimension Of Patent Law’s PHOSITA Standard, Harvard Journal of Law & Technology, Volume 23, Number 1, Fall 2009 (http://jolt.law.harvard.edu/articles/pdf/v23/23HarvJLTech227.pdf) (8) The CAFC wrongly concluded that because Asano’s primary purpose was solving the constant ratio problem, an inventor considering how to put a sensor on an adjustable pedal would have no reason to consider putting it on the Asano pedal. It is common sense that familiar items may have obvious uses beyond their primary purposes, and a PHOSITA often will be able to fit the teachings of multiple patents together like pieces of a puzzle. Regardless of Asano’s primary purpose, it provided an obvious example of an adjustable pedal with a fixed pivot point, and the prior art was replete with patents indicating that such a point was an ideal mount for a sensor. KSR (9) A patent claim CAN be proved obvious merely by showing that the combination of elements was obvious to try. Prior to KSR, it was well-established that "obvious to try" was not the standard for evaluating patentability. Irving et al., Obviousness Developments in U.S. Patent Law, China IP News, July 2009, (http://www.finnegan.com/resources/articles/articlesdetail.aspx?news=20c9e617-794a-4ec3-b835-002729234f91) (10) Id. (11) Castanias et al., KSR v. Teleflex: Moving Toward a More Flexible Definition of Obviousness, (http://www.jonesday.com/files/Publication/ec8c6973-eaf2-4585-bb64-4a559ff50ced/Presentation/PublicationAttachment/854236c5-85fc-472b-a5be-53cc18274bac/KSRvTeleflex.pdf) (12) The EPO has once again been rated number one for patent quality among the world's largest patent offices, according to a recent survey of patent professionals by Intellectual Asset Management (IAM) magazine, http://documents.epo.org/projects/babylon/eponet.nsf/0/4783c6465d9a2b5fc1257e5900242b3f/$FILE/IAM72_benchmarking_q_p_en.pdf Although polls conducted by various organizations are inherently flawed and unscientific, it has become the norm and accepted practice to value and depend such statistical manipulations, e.g., in the above report there is no real comparison of granted patents’ validity or invalidity. Many of the attorneys participated in the survey have known EPO and USPTO only, and never had the opportunity to review the work of any other new ISAs or PTOs, and yet were willing to judge based on their gut feelings and anecdotal evidence. Nevertheless, the USPTO is not the topper, despite the KSR, AIA and all the hoopla about quality in the recent years. (13) MPEP 2143 Examples of Basic Requirements of a Prima Facie Case of Obviousness: http://www.uspto.gov/web/offices/pac/mpep/s2143.html (14) In re Omeprazole Patent Litigation, 536 F.3d 1361, 87 USPQ2d 1865 (Fed. Cir. 2008) Example 3: http://www.uspto.gov/web/offices/pac/mpep/s2143.html (15) The SCOTUS in KSR noted that the analysis supporting a rejection under 35 U.S.C. 103 should be made explicit. (16) 2163.07(a) Inherent Function, Theory, or Advantage: http://www.uspto.gov/web/offices/pac/mpep/s2163.html#d0e215172 (17) 2163.07(b) Incorporation by Reference: http://www.uspto.gov/web/offices/pac/mpep/s2163.html#d0e215172 (18) Examination Guidelines for Determining Obviousness Under 35 U.S.C. 103 THE KSR DECISION AND PRINCIPLES OF THE LAW OF OBVIOUSNESS http://www.uspto.gov/web/offices/pac/mpep/s2141.html What To Search For? “The search should cover the claimed subject matter and should also cover the disclosed features which might reasonably be expected to be claimed.” (Not yet claimed or presented in claims, but at some point in future, may be presented in claims!) Office Personnel As Factfinders: “Office personnel must therefore ensure that the written record includes findings of fact concerning the state of the art and the teachings of the references applied.” “use of common sense does not require a “specific hint or suggestion in a particular reference,” only a reasoned explanation that avoids conclusory generalizations.” DyStar Textilfarben GmbH v. C.H. Patrick Co., 464 F.3d 1356, 1366 (Fed.Cir. 2006), (19) Covalent Bond is a chemical bond that involves the sharing of electron pairs between two atoms bonded together. All molecules are made of two or more atoms, having covalent or ionic bonding. Most of the organic chemicals are molecules with two or more atoms covalently bonded together. Inorganic bonding is seen in inorganic materials such as salts in which ions are bonded by the attraction, the electrostatic attraction between oppositely charged ions. When dissolved in a suitable polar solvent such as water, ionic compounds or molecules dissociate into anions and cations. This is the inherent nature of chemicals, both covalent molecules and ionic molecules. However, ”a lexicographer inventor or applicant” may write a claim against well-known covalent molecule by claiming the “covalent bond’ between the two atoms in the known molecule, and examiner is forced to give +ve opinion or a rejection with obviousness argument against the claim using the exact compound, which has inherently the claimed covalent bond, the reference is silent about such bonding. See for example, various frivolous an dinherent steps in the method of “coating an organic material with alkyl-silane, claims 1 and 8 in WO2015035361: ORGANIC SUBSTRATES HAVING IMPROVED WEATHERABILITY AND MAR RESISTANCE: 1. A process of forming a mar resistant organic material comprising: providing a substrate comprising a thermoplastic material, said substrate having a surface; infusing an adhesion promoter into said surface such that a first portion of said adhesion promoter penetrates said surface to form an infused substrate material, and a second portion of said adhesion promoter extends from said surface or is present at said surface, said first portion and said second portion covalently linked; and optionally depositing a mar resistant coating or hardcoat on said surface, said mar resistant coating or hardcoat adhering to said infused substrate material absent an intermediate layer. mar resistant organic material = organic material coated with (alkyl silane that is) hydrophobic and scratch resistant coating providing a substrate = organic material (place it somewhere, wherever you want to color, paint, coat, spray, layer, etc. with something else) “a thermoplastic material” = any polymer including cellulose derivatives known for hundreds of years such as paper or cellophane “having a surface” = all substrates have surfaces, including paper or wood or whatever “thermoplastic” “infusing an adhesion promoter into said surface” = coating with, immersing in, spraying with, etc., alkylsilane over the surface “into said surface such that a first portion of said adhesion promoter penetrates said surface to form an infused substrate material, and a second portion of said adhesion promoter extends from said surface or is present at said surface” = silicon part bonding with the surface, alkyl part hanging like a tail “said first portion and said second portion covalently linked” = silicon and alkyl group are bonded through a covalent bond 8. The process of any one of claims 1-4 wherein said adhesion promoter comprises the structure of formula II: (II) where R1 , R2 , and R3 are reach independently an H, OH, CI, F, C4-C20 alkyl, etc. (20) Rao Vepachedu, Doctrine of Inherency, http://www.cardinal-ip.com/ip-news-strategy/doctrine-of-inherency/ (21) MPEP 2112 (‘‘The express, implicit, and inherent disclosures of a prior art reference may be relied upon in the rejection of claims under 35 U.S.C. 102 or 103.’’). (22) Atlas Powder, Co. v. INRECO, Inc., 190 F.3d 1342, 1347 (Fed. Cir. 1999). (23) In Titanium Metals Corp. of Am. v. Banner, 778 F.2d 775 (Fed. Cir. 1985), the claims to the composition were anticipated, despite the fact that the property of corrosion resistance was not previously recognized. ‘Congress has not seen fit to permit the patenting of an old alloy, known to others through a printed publication, by one who has discovered its corrosion resistance or other useful properties, or has found out to what extent one can modify the composition of the alloy without losing such properties.’’) (24) In Schering Corp., 339 F.3d at 1381, the court held that the metabolite of a known drug was the inherent product of administering the drug and, therefore, anticipated. However, the court stated, “finally, this court’s conclusion on inherent anticipation in this case does not preclude patent protection for metabolites of known drugs. With proper claiming, patent protection is available for metabolites of known drugs.”) (25) In re Montgomery, 677 F.3d 1375, 1382 (Fed. Cir. 2012), citing Schering Corp, 339 F.3d at 1381, (internal citations omitted); In SmithKline Beecham Corp. v. Apotex Corp., 403 F.3d 1331, 1343–44 (Fed. Cir. 2005), the Court held a chemical patent inherently anticipated and stated that it was irrelevant whether the inherently disclosed chemical was ever actually produced); In Elan Pharm., Inc. v. Mayo Found. For Med. Educ., 346 F.3d 1051, 1052 (Fed. Cir. 2003)(en banc), the court stated ‘‘we clarify that invalidity based on anticipation requires that the assertedly anticipating disclosure enabled the subject matter of the reference and thus of the patented invention without undue experimentation.”) (26) A third party may submit any publication of potential relevance to a patent application before the earlier of (1) a notice of allowance; or (2) the later of six months after the date of first publication, or the date of the first rejection of any claim by the examiner. See for more information: http://www.cardinal-ip.com/products-and-services/legal-process-outsourcing/professional-services/preissuance-submission-research/ and http://www.cardinal-ip.com/ip-news-strategy/preissuance-submissions/. A third party may submit references relevant to claims in many patent offices including the USPTO, EPO and PCT, within the allowed time period after the publication of a patent application. (27) See above 20 (28) The TSM requirement: The CAFC continues to impose TSM requirement: “we required the PTO to identify record evidence of a teaching, suggestion, or motivation to combine references because omission of a relevant factor required by precedent is both legal error and arbitrary agency action. However, this did not preclude examiners from employing common sense. . . “that a patent claim cannot be proved obvious merely by showing that the combination of elements was ‘obvious to try. . . .” In addition, the USPTO interprets the caution “the need for caution in granting a patent based on the combination of elements found in the prior art” by the SCOTUS to require TSM with the “commonsense to avoid the risk of falling prey to hindsight bias.” http://www.uspto.gov/web/offices/pac/mpep/s2141.html (29) “Exytholate” is a term coined by the applicant for known word “ethoxylate.” See Rao Vepachedu, Novelty, http://www.cardinal-ip.com/ip-news-strategy/novelty (30) Mar Resistant Organic Material is a scratch resistant organic material. See above 19, 20 and 26 (31) The author abhors the improper use of the “lexicographer loophole” and DOES NOT advocate or practice such use of misleading or redefining the old, because he thinks this is deception and fraud on the public, patent office and the government of the state where patent monopoly is sought. However, this is his opinion and others may have different opinion, and hence the practice of using the lexicographer loophole in the system is presented here as a practice used by others. The reader is advised to seek assistance from a competent attorney. The author considers the judicious use of the right to be a lexicographer and prefers conformity with the accepted definitions such that there is no ambiguity, e.g., author would prefer to define a flowering plant and its flower called “rose” as “a woody perennial comprising stems that are erect, climber or trails, often with sharp prickles or thorns, and fragrant flowers of varying size, shape and color, belongs to the genus Rosa, including thousands of cultivars, within the species listed at http://plants.usda.gov/java/ClassificationServlet?source=display&classid=ROSA5; incorporated by reference. (32) Affidavits or declarations, when timely presented, containing evidence of criticality or unexpected results, commercial success, long-felt but unsolved needs, failure of others, skepticism of experts, etc., must be considered by the examiner in determining the issue of obviousness of claims for patentability under 35 U.S.C. 103. The Court of Appeals for the Federal Circuit stated in Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1538, 218 USPQ 871, 879 (Fed. Cir. 1983) that “evidence rising out of the so-called ‘secondary considerations’ must always when present be considered en route to a determination of obviousness.” Such evidence might give light to circumstances surrounding the origin of the subject matter sought to be patented. As indicia of obviousness or unobviousness, such evidence may have relevancy. Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966); In re Palmer, 451 F.2d 1100, 172 USPQ 126 (CCPA 1971); In re Fielder, 471 F.2d 640, 176 USPQ 300 (CCPA 1973). The Graham v. John Deere pronouncements on the relevance of commercial success, etc. to a determination of obviousness were not negated in Sakraida v. Ag Pro, 425 U.S. 273, 189 USPQ 449 (1979) or Anderson’s-Black Rock Inc. v. Pavement Salvage Co., 396 U.S. 57, 163 USPQ 673 (1969), where reliance was placed upon A&P Tea Co. v. Supermarket Corp., 340 U.S. 147, 87 USPQ 303 (1950). See Dann v. Johnston, 425 U.S. 219, 226 n.4, 189 USPQ 257, 261 n. 4 (1976). Examiners must consider comparative data in the specification which is intended to illustrate the claimed invention in reaching a conclusion with regard to the obviousness of the claims. In re Margolis, 785 F.2d 1029, 228 USPQ 940 (Fed. Cir. 1986). The lack of objective evidence of nonobviousness does not weigh in favor of obviousness. Miles Labs. Inc. v. Shandon Inc., 997 F.2d 870, 878, 27 USPQ2d 1123, 1129 (Fed. Cir. 1993), cert. denied,127 L. Ed. 232 (1994). However, where a prima facie case of obviousness is established, the failure to provide rebuttal evidence is dispositive. 37 C.F.R. 1.132 Affidavits or Declarations Traversing Rejections Or Objections: http://www.uspto.gov/web/offices/pac/mpep/s716.html (33) Ferring B.V. v. Barr Labs., Inc., 437 F.3d 1181, 1196-97 (Fed. Cir. 2006); Burlington Indus., Inc. v. Dayco Corp., 849 F.2d 1418, 1422 (Fed. Cir. 1988); McKesson Info. Solutions, Inc. v. Bridge Med., Inc., 487 F.3d 897, 913-26 (Fed. Cir. 2007); Critikon, Inc. v. Becton Dickinson Vascular Access, Inc., 120 F.3d 1253, 1256-57 (Fed. Cir. 1997); Therasense, Inc. v. Becton, Dickinson & Co., 649 F.3d 1276, 1292 (Fed. Cir. 2011); Hazel-Atlas Glass Co. v. Hartford-Empire Co., 322 U.S. 238, 245 (1944)) (34) “patent may be rendered unenforceable for inequitable conduct if an applicant, with intent to mislead or deceive the examiner, fails to disclose material information or submits materially false information to the PTO during prosecution” . . . “In the absence of “smoking gun” evidence, intent to deceive is normally inferred from the facts” Larson Mfg. Co. v. Aluminart Prods. Ltd., 559 F.3d 1317, 1326 (Fed. Cir. 2009) “information is material when a reasonable examiner would consider it important in deciding whether to allow the application to issue as a patent” Star Scientific, Inc. v. R.J. Reynolds Tobacco Co., 537 F.3d 1357, 1365 (Fed. Cir. 2008) “conduct sufficient to render a patent unenforceable is broader than deliberate fraud” J.P. Stevens & Co. v. Lex Tex Ltd., 747 F.2d 1553, 1559 (Fed. Cir. 1984) In McKesson, the court affirmed a finding of inequitable conduct based on the patentee’s failure to fully disclose material information from related patent applications. McKesson Info. Solutions, Inc. v. Bridge Med., Inc., 487 F.3d 897, 913-26 (Fed. Cir. 2007) See also, Critikon, Inc. v. Becton Dickinson Vascular Access, Inc., 120 F.3d 1253, 1256-57 (Fed. Cir. 1997); “where there is proof of “affirmative egregious misconduct” such as a “‘deliberately planned and carefully executed scheme[ ]’ to defraud the [USPTO],” it is not necessary to prove that the information at issue was “but-for” material”. Therasense, Inc. v. Becton, Dickinson & Co., 649 F.3d 1276, 1292 (Fed. Cir. 2011) (quoting Hazel-Atlas Glass Co. v. Hartford-Empire Co., 322 U.S. 238, 245 (1944)) (35) Tom Irving et al., Patent Claim Drafting and Construction, available at: http://media.straffordpub.com/products/patent-claim-drafting-and-construction-2012-03-13/presentation.pdf Patent Drafting Taboos: I. Words that Limit, available at: http://www.4ipt.com/Vol2003_3.htm http://www.minncle.org/attendeemats/77413/77413%20PPT%20IRVING%20013%20Surviving%20Patent%20Litigation%20with%20Well-Crafted%20Claims.pdf (36) Protest and Pre-Issuance Oppositions: http://www.uspto.gov/web/offices/pac/mpep/s1134.html; USPTO ISSUES FINAL RULES FOR THIRD-PARTY PREISSUANCE SUBMISSIONS IN PATENT APPLICATIONS, July 24, 2012; http://www.oliff.com/wp-content/uploads/2012/07/USPTO-ISSUES-FINAL-RULES-FOR-THIRD-with-header-2-.pdf Disclaimer: These materials are prepared solely as public service to contribute to the understanding of IP laws and strategies practiced in the US, and should not be construed as legal advice and do not establish any form of attorney-client relationship with the author or his current/past employers. Information presented on these pages includes not only facts available in the public domain, but also author’s interpretations, opinions and personal views that do not represent any of the views, opinions or policies of any companies the author is (was) associated with. While every attempt was made to insure that these materials are accurate, errors or omissions may be contained therein, for which NEITHER the author NOR his employers and associates are LIABLE. The reader is advised to seek proper counsel, before using any of the strategies presented here.

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