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.
Thomas Jefferson"Stable ownership is the gift of social law, and is given late in the progress of society. It would be curious, then, if an idea, the fugitive fermentation of an individual brain, could, of natural right, be claimed in exclusive and stable property. If nature has made anyone thing less susceptible than all others of exclusive property, it is the action of the thinking power called an idea, which an individual may exclusively possess as long as he keeps it to himself; but the moment it is divulged, it forces itself into the possession of everyone, and the receiver cannot dispossess himself of it. Its peculiar character, too, is that no one possesses the less because every other possesses the whole of it. He who receives an idea from me receives instruction himself without lessening mine, as he who lights his taper at mine, receives light without darkening me. That ideas should freely spread from one to another over the globe, for the moral and mutual instruction of man and improvement of his condition, seems to have been peculiarly and benevolently designed by nature when she made them, like fire, expansible over all space, without lessening their density in any point, and, like the air in which we breathe, move, and have our physical being, incapable of confinement or exclusive appropriation. Inventions then cannot, in nature, be a subject of property. Society may give an exclusive right to the profits arising from them, as an encouragement to men to pursue ideas which may produce utility, but this may or may not be done according to the will and convenience of the society, without claim or complaint from anybody." "The law books abound with similar instances of the care the judges take of the public integrity. Laws, moreover, abridging the natural right of the citizen, should be restrained by rigorous constructions within their narrowest limits." Thomas Jefferson(3)
IntroducitonA 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 Supreme Court Of The United States (SCOTUS) chastised the Court of Appeals for the Federal Circuit (CAFC) invalidating the strict interpretation of the Teaching, Suggestion and Motivation (TSM) requirement(4). The rejection of TSM requirement was consistent with the SCOTUS's stand that nonobviousness cannot be precisely defined, because it was a question which cannot be answered by applying the test of any general definition(4a). Yet, after 8 years, obviousness is still a complicated and contentious subject matter, when in reality the SCOTUS did not deviate from, but reiterated, the time-honored Graham factors(5): 1. The scope and content of the prior art, 2. The level of ordinary skill in the art, 3. The differences between the claimed invention and the prior art, and 4. Objective evidence of non-obviousness: a) Commercial success, b) Long-felt unsolved needs, and c) Failure of others. Also, the SCOTUS did not change the fact that the prima facie obviousness is a legal concept and a procedural tool of examination with the burden of production of evidence in the prosecution allocated to the USPTO(6). However, the SCOTUS found the CAFC's analysis was flawed on three counts in applying the Graham's factors: 1) The CAFC erred in its holding that "patent examiners should look only to the problem the patentee was trying to solve," because under the correct analysis, the SCOTUS stated, any need or problem known in the field and addressed by the patent can provide a reason for combining the elements in the manner claimed. Thus SCOTUS broadened the field of prior art and increased the possibility of obviousness through the combination of references. 2) The CAFC erred in assuming that a Person Having Ordinary Skill In The Art (PHOSITA)(7) attempting to solve a problem will be led only to those prior art elements designed to solve the same problem(8). Obviously, the SCOTUS has broadened the PHOSITA's knowledge and skill by removing this limitation imposed by CAFC. Therefore, the PHOSITA gained some commonsense by losing the robust robotic mind with blinders imposed by the CAFC (automaton), and is no longer narrowly pigeonholed into a niche to find motivation to combine, thereby increasing the possibility of obviousness of a given claim; and 3) The CAFC erred in concluding that a patent claim CANNOT be proved obvious merely by showing that the combination of elements was obvious to try(9). Therefore, a patent claim CAN be proved obvious merely by showing that the combination of elements was obvious to try.
AnalysisThe Court envisioned that the hypothetical PHOSITA having access to the entire relevant prior art available to public anywhere in the world, at the time the invention was made, then the court or the examiner would step into the shoes of the hypothetical PHOSITA to find the alleged invention obvious or not. Further, the SCOTUS in KSR, declared that the PHOSITA is a person of ordinary creativity with commonsense and ingenuity, but not an automaton, and invalidated the patent in question by reiterating old rules and the patent obviousness test that the USPTO had misapplied to electromechanical technology of 1999 vintage. The SCOTUS stated that when there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, 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 to be an obvious product of ordinary skill and common sense, and not the product of innovation. To facilitate an inquiry into a reason to combine, the SCOTUS said that any obviousness analysis should be made explicit, though a non-automaton PHOSITA may take into account broad sources of prior art, commonsense and ingenuity for motivation to combine that prior art. This doctrinal construction was considered an unacknowledged conceptual shift and the legal equivalent of trying to elevate oneself by standing in a bucket and pulling upward on the handle, undermining fundamental patent law objectives, because this shift of PHOSITA from the mechanic's perspective to the researcher's perspective is analogous to a unilateral change in the contractual terms(7). These experts thought that the commonsense and ingenuity bestowed upon the PHOSITA makes this "entity" equivalent to an ordinary researcher, who apparently routinely elevates itself by standing in a bucket and pulling upward on the handle. Obviously, this is counterproductive, not only because the ordinary researcher PHOSITA will never go up and find something worth patenting, but also because the PHOSITA might find every novel combination invention to be obvious to try. Many experts(10) thought that obvious to try to be an easy avenue for the USPTO in demonstrating obviousness of every alleged novel invention concocted by the ordinary researcher in the bucket. Per anecdotal evidence(10) shortly after the KSR decision, there was a drop in the number of cases granted by the USPTO, i.e., more obviousness rejections using newly minted PHOSITA concept. The USPTO issued new guidelines and protocols for examiners to deal with the situation, making it more challenging to obtain patents, including the biotech and pharmaceutical fields(11). The USPTO has been trying to improve the quality of patents since then. This is the strength, which may be a problem for troll inventors, in theory. However, a recent survey(12) by Intellectual Asset Management (IAM) identified the EPO as the best in granting quality patents, not the USPTO. This is a weakness that still needs to be fixed. The USPTO has provided guidelines to examiners in line with the KSR and post-KSR case law. However, the problem seems to be implementation of the guidelines, especially when the rules have to be applied on a case by case involving subjectivity. Examples of Basic Requirements of a Prima Facie Case of Obviousness(13): Exemplary rationales that may support a conclusion of obviousness include: (A) Combining prior art elements according to known methods to yield predictable results; (B) Simple substitution of one known element for another to obtain predictable results; (C) Use of known technique to improve similar devices (methods, or products) in the same way; (D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results; (E) "Obvious to try" - choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success; (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 are predictable to one of ordinary skill in the art; (G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention. Other rationales to support a conclusion of obviousness may be relied upon by Office personnel. Any rationale employed must provide a link between the factual findings and the legal conclusion of obviousness. The rationale to support a conclusion that the claim would have been obvious is that 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 yielded nothing more than predictable results to one of ordinary skill in the art. In the Omeprazole case(14), in view of the expectations of those hypothetical PHOSITAs, adding the subcoating would not have been expected to confer any particular desirable property on the final product. Rather, the final product obtained according to the proposed modifications would merely have been expected to have the same functional properties as the prior art product. The USPTO requires office personnel to note that although the Federal Circuit invoked the idea of common sense(15) in support of a conclusion of obviousness, it did not end its explanation there. Rather, the court explained why a hypothetical PHOSITA at the time of the invention, in view of the facts relevant to the case, would have found the claimed inventions to have been obvious. The key to supporting any rejection under 35 U.S.C. 103 is the clear articulation of the reason why the claimed invention would have been obvious. By disclosing a device that inherently performs a function or has a property, operates according to a theory or has an advantage, a patent application necessarily discloses that function, theory or advantage, even though it says nothing explicit concerning it(16). Instead of repeating some information contained in another document, an application may attempt to incorporate the content of another document or part thereof by reference to the document in the text of the specification. The information incorporated is as much a part of the application as filed as if the text was repeated in the application, and should be treated as part of the text of the application as filed(17). Although a rejection need not be based on a teaching or suggestion to combine, and contrary to the explicit rejection of such rejections by the SCOTUS as explained above, the USPTO suggests that it is preferred to provide such a teaching or suggestion(18). This makes the SCOTUS formulation irrelevant, resulting in invalid claims being allowed, as before KSR. The USPTO has not changed the procedures, but reverted to what was before KSR, after acknowledging the SCOTUS guidance, and the commonsense of a hypothetical non-automaton PHOSITA in the USPTO guidelines(18), by requiring the examiner to document the motivation to combine with "the need for caution in granting a patent based on the combination of elements found in the prior art" as required by the SCOTUS(18)., which practically makes "the commonsense" obsolete and substituted by "documentation of evidence" of such commonsense(18), so that the examiner may not take the easy route of "conclusory statements," and "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. In certain circumstances, it may also be important to include explicit findings(18)," in light of CAFC guidance: The "use of common sense does not require a "specific hint or suggestion in a particular reference," only a reasoned explanation that avoids conclusory generalizations(18)." Due to the subjectivity and uniqueness of each claimed invention and considering the courts' (juries' and judges') lack of technical knowledge, even the most knowledgeable examiner that field is forced to avoid appearance of a conclusory statement, for example, a claim containing a limitation of a "covalent bond(19)." In addition, obviousness argument is preferred over anticipation when inherency is involved. Rejections based on obviousness argument can be overcome by showing non-obviousness, when in fact, the invention is anticipated all along by the prior art, inherently. This USPTO policy also results in allowance of anticipated claims as novel and non-obvious due to non-obviousness indicia, defeating the public policy behind inherency doctrine. This is because the case law regarding inherency(20) is imprecise, the USPTO examiners often have trouble discerning a clear path to claim rejections in the face of inherent anticipation and obviousness. Although one must use care in asserting inherent obviousness, it can be used successfully to invalidate or reject a claim. The Patent and Trademark Office provides instructions on the application of inherency to 35 USC 103(21). Further, the burden is on the examiner to provide an explanation as to why the limitation is inherent in the prior art. The public policy behind inherency is preventing removal of inventions available in the public domain from the public simply due to the recognition of its existence. Therefore, inherency is based on the maxim that ''the discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art's functioning, does not render the old composition patentably new to the discoverer(22).'' Although the burden is on the examiner to provide a reason for the existence of an inherent feature, rationale is not required to provide absolute proof of the inherent feature's presence(23). In anticipation analysis, there is no requirement that a person of ordinary skill in the art would have recognized the inherent disclosure at the time of invention. Therefore, the recognition of the inherent property or feature in the prior art can occur after the filing date of the application. The fact that a characteristic is a necessary feature or result of a prior-art embodiment is enough for inherent anticipation, even if that fact was unknown at the time of the prior invention. When the claims are based on a structural or functional feature of the invention, and that structure or functional feature is identical or substantially identical to that taught in the prior art, then the claimed properties or functions are presumed to be inherent. Similarly, for compositions of matter, if the composition is physically the same, it necessarily has the same properties, i.e., a chemical composition and its properties are inseparable. A new use must be distinguished from a newly recognized result or outcome of a prior art use of a known compound. The previously unrecognized result of an existing method was already in the public domain and is therefore not patentable(24). In addition, the inherent result of a prophetic example might serve as anticipatory prior art even though the inherent result of the constructive reduction to practice was unrecognized by the scientific community at the time of publication of the prior art. Likewise, anticipation by inherency requires only an enabling disclosure, not actual creation or reduction to practice(25).
ConclusionAs a result of the above discussed complex and murky policies contradicting each other, the USPTO has a tough time to improve the quality of granted patents(12), awarding monopolies to entities that wrongfully take away the known inventions from the public domain. However, the world at large can help the patent systems around the world by doing the following: 1) Using the opportunity to submit third party anonymous submissions(26) in the patent applications of your interest to make sure that the inventions dedicated to public remain in the public domain and improve the quality of granted patents in the US as well as Internationally. 2) Inventors and Applicants may use the techniques used by trolls and other entities that use the loopholes in the system such as "applicant is the lexicographer," "difficulty to articulate inherency(27)," "hindsight of inherency" and "the TSM requirement(28)" that continues to be used by the USPTO examiners so that patents are granted easily, as explained above. See for example, Exytholate(29) and a process for making mar resistant organic material with alkylsilane that has a covalent bond(30). These examples may be used(30), (Caution: at the discretion of the reader through proper counsel(31)), to write patent applications and present claims in such a way that the examiners are forced to give positive opinions or obviousness rejections that can be easily overcome by showing non-obviousness indicia using affidavits/declarations(32). However, it should be noted that deliberately misleading the examiners and the PTO is fraud and inequitable conduct that may lead to invalidation of the patent grant. Infringers of patents routinely argue in patent infringement law suits against them that asserted patents are unenforceable due to inequitable conduct. Despite the understanding that the inequitable conduct has become an absolute plague and inequitable conduct defense continues to be raised in most cases, the plague continues to infect careless patent owners(33). Therefore, as the list of improper conduct and activities deemed sufficient to render a patent unenforceable has increased, patent applicants should avoid the conduct and activities that might ultimately render their patent unenforceable(34). 3) Avoid "patent profanity(35)." Words and phrases, when used in the patent specification or in communications with the USPTO, may lead a court to attach an unfavorable meaning to a claim term leading to invalidation or narrowing of the claim, resulting in a finding of non-infringement. 4) Use an applicant's right to be "a lexicographer(31)." Courts assess the case by interpreting the claim language by reviewing the specification. However, as indicated above, patent applicants should avoid the conduct and activities that might ultimately render their patent unenforceable(34). 5) Third parties may also submit evidence, not only related to novelty and non-obviousness, but also related to issues of enablement, written description, lack of utility or indefiniteness could be addressed if the submitter's position is supported by appropriate documents in their observations in Protest and Pre-Issuance Oppositions(36).