© 2007, Michael Kondoudis and Christopher Paul Mitchell (www.ipipblog.com)

KSR In A Nutshell

The Supreme Court’s decision in KSR International. Co. v. Teleflex, Inc., et al., 550 U.S.___(2007) modified an established test for obviousness under 35 U.S.C. § 103. Prior to KSR, Federal Circuit jurisprudence generally required a teaching, suggestion, or motivation to support a combination or modification of cited art (the TSM test) in an obviousness determination. After KSR, the TSM test is still insightful, but because it is too rigid, a broader, more flexible standard is proper. KSR did not alter the fundamental principles of obviousness.

In KSR, the Supreme Court identifies four specific Federal Circuit errors in applying the TSM test. Extrapolating from these errors, KSR provides the following guidance:

1. In searching for a reason to combine/modify elements of cited art, it is permissible for an Examiner to look not only to the problem to be solved by the inventor, but also at any known problem or need for the combination/modification.

2. One of ordinary skill in the art may be led by art other than that which solves the problem at hand.

3. A claim can be obvious merely because the combination/modification was obvious to try.

4. Common sense, whether guided by hindsight or not, properly plays a role in an obviousness analysis. KSR mentions common sense five times.

The Analytical Framework After KSR

KSR leaves a lot of open questions the answers to which are not immediately clear. That being said, the following observations appear most noteworthy:

1. There has been a further shift, however slight, against patentability. In practice, KSR makes it easier for an Examiner to make obviousness rejections by replacing the “rigid” TSM test with a more expansive, flexible standard.

2. Graham v. John Deere still controls. KSR emphasizes that “the [Graham] factors continue to define the inquiry that controls. If a court, or a patent Examiner, conducts this analysis and concludes the claimed subject matter was obvious, the claim is invalid under §103.” (KSR Opinion at p. 2).

3. An Examiner must establish “an apparent reason to combine … known elements.” (KSR Opinion at page 4).

4. An Examiner must expressly articulate the underlying analysis supporting a proffered “apparent reason.”

Patent Prosecution After KSR

After KSR, it would appear that a strategic shift in emphasis in responding to rejections under 35 U.S.C. § 103 may be prudent. When appropriate, at least the following strategies for challenging the sufficiency and/or propriety of an asserted combination may be more promising, depending on the unique circumstances of a case.

Strategy #1 - Focus on the Interdependency of Features in a Claim

KSR expressly instructs that it remains legally insufficient to conclude that a claim is obvious just because each feature of a claim can be independently shown in the cited art. (KSR Opinion at p. 14). Thus, establishing that a claimed combination is not a “predictable use of prior art elements according to their established functions” (KSR Opinion at p. 13) may be particularly effective in traversing an obviousness rejection.

Strategy #2 - Emphasize Teachings Away

KSR discussed in some detail United States v. Adams, 383 U.S. 39 (1966), stating in part that in that case, “[t]he Court relied upon the corollary principle that when the prior art teaches away from combining certain known elements, discovery of a successful means of combining them is more likely to be nonobvious.” (KSR Opinion at p. 12). Accordingly, if such teachings are present and are significant, there may be no reason to make the asserted combination/modification.

Strategy #3 - Ensure that an Office Action Provides a Sufficient Rationale for an Asserted Combination

KSR requires that an Examiner provide “some articulated reasoning with some rationale underpinning to support the legal conclusion of obviousness.” (KSR Opinion at p. 14). Remember, an Examiner must “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,” (KSR Opinion at p. 15). And, the Examiner must make “explicit” this rationale of “the apparent reason to combine the known elements in the fashion claimed,” including a detailed explanation of “the effects of demands known to the design community or present in the marketplace” and “the background knowledge possessed by a person having ordinary skill in the art.” (KSR Opinion at p. 14). Anything less than such an explicit analysis may not be sufficient to support a prima facie case of obviousness.

Strategy #4 - Focus/Present Unexpected Results or Commercial Success

These secondary considerations under Graham v. Deere remain relevant. Accordingly, presenting evidence of unexpected results or commercial success remains a possible strategy for rebutting an obviousness rejection.

Conclusion

KSR did not change the fundamental principles of obvious under U.S. Patent Law. Instead, KSR increased the challenge an applicant faces to obtain allowance. This increased challenge, however, can be met by including non-obviousness arguments that were either emphasized by or unaffected by KSR instead of arguments: (1) based on a failure to meet the TSM test; (2) that the examiner is relying on an “obvious to try” rationale; and/or (3) that cited art is too far afield because it is not directed to the problem at hand.

The Law Office of Michael E. Kondoudis, PC
Patent Attorney Washington DC
www.mekiplaw.com

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©  2007, Michael E. Kondoudis

This is the first of a two-part series on words/phrases that should be used with extreme caution in patent prosecution before the United States Patent Office.

I’ve come across a recent series of interesting discussions on the “Anything Under the Sun Made by Man” blog by Russ Krajec. In the series, Mr. Krajec makes a convincing case against the use of certain terms/phrases that all too often make their way into patent applications. Specifically, Mr. Krajec explains why the terms/phrases “prior art,” “invention,” and “must” should never be used in patent application because they needlessly expose an application to attack and complicate prosecution. This series of discussions can be respectively found here, here, and here.

This series got me thinking about the terms/phrases I often see used in responses to Office Actions that needlessly create estoppel, complicate litigation, and thus lessen the value of a resulting patent. I submit that patent prosecutors should always carefully consider the language that they select, and should very carefully (re)consider any use of the following terms/phrases in particular.

The Invention/Embodiments of the Invention

The focus of examination is on the claims of an application. It is axiomatic then that an Applicant’s focus should also be on the claims. Accordingly, patentability arguments should always focus on why claims, not “the invention,” patentably define over the cited art. (See for example Section 714.04 of the Manual of Patent Examining Procedure). Statements/characterizations about the invention are inapposite, are often ignored by examiners who are focusing on the claims, and can result in significant, needless argument estoppel.

Take the example of the recent Federal Circuit Decision in Pods, Inc. v. Porta Stor et al. (Fed. Cir. 2006-1504 decided April 27, 2007). In that case, the patentee, in attempting to traverse a rejection of a claim through argument, characterized the invention as allowing “the carrier frame to be elevated and positioned at a rectangular-shaped frame with respect to the container, the vehicle and the ground.” This assertion, the Court reasoned, supported the construction of a separate claim that recited only “a carrier frame” to mean a four-sided frame.

As the Pods case illustrates, with a blanket statement about “the invention,” a prosecutor can risk “grafting” limitations onto each and every claim in the application, even claims that were previously allowed or are later presented, since each claim defines “the invention.” Further, even if this estoppel is successfully avoided in later litigation, it will surely cause a complication that could have been avoided. Still further, these explanations tend to gain very little ground during examination, and very often provoke a form paragraph from the examiner explaining that the asserted features are not in the claims.

For these reasons, using the example of the Pods case, IF one entertains presenting a discussion about an invention, a better practice might be the following approach:

Independent claim 1 recites a carrier frame including right and left longitudinal elements [and] having front and rear transverse elements . . .

By at least these claim features, a carrier frame can be elevated and positioned at a rectangular-shaped frame with respect to a container, a vehicle and the ground. As a result, increased utility and durability can be realized.

I submit that the latter approach, focused on claim features instead of “the invention,” more safely presents an advantage by more likely limiting any argument estoppel that may result to only this claim 1.

A final note, ALWAYS be mindful of Southwall Techs., Inc. v. Cardinal IG Co., 54 F.3d 1570 (Fed. Cir. 1995) in which the Federal Circuit held that clear assertions made during prosecution, whether or not those assertions were even necessary to secure allowance, may create estoppel.

Reference/References

The word “reference” is a term of art that tends to imply status as prior art, since litigators and, more importantly, federal courts very commonly describe art cited against claims as “prior art” or a “prior art reference.” When given the option, therefore, I prefer not to use the term “reference” when referring to cited art. I submit that a patent prosecutor, as an advocate for an applicant, can be equally as accurate and persuasive during prosecution by using the alternative terms “citation” or “cited art,” while at the same time producing a prosecution history avoids any negative implications that may be associated with the term “reference.” Remember, there is no rule that any item cited against the claims must be called a reference, so why not select the least disadvantageous term?

The Law Office of Michael E. Kondoudis
Patent Attorney Washington DC
www.mekiplaw.com

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©  2007, Michael E. Kondoudis

In my opinion, quality patent prosecution can often be as challenging as quality patent application drafting, which is one of the more challenging tasks in the legal profession. The challenge in patent prosecution is not in obtaining allowed claims, but rather in obtaining the broadest claims that have the most value. That is, to convince an examiner of the patentability of the broadest claims while generating the least amount of prosecution history.

In my career, I have often been asked to consult on or take over the prosecution of applications that have already been through a significant amount of prosecution. Not uncommonly, I have been surprised by the amount of avoidable estoppel that I find, which is usually the result of thoughtless and/or careless prosecution. That is, not exercising thoughtful caution when crafting remarks, unnecessarily/inaccurately characterizing the claims or “the invention,” and/or crudely articulating patentability arguments. In essence, prosecution as clumsy as a bull in a china shop.

When prosecuting a patent, I advocate that one take the approach not unlike that of a plastic surgeon. That is, prosecuting with a definite and purposeful focus on the end result, the prosecution history. This means prosecuting with one eye focused on the examiner and the other eye focused on possible future litigation in which the prosecution history will be scrutinized by litigators, juries, and federal courts. This requires care, thoughtfulness, accuracy and caution when amending claims and crafting remarks. In this way, like plastic surgery, patent prosecution is an art.

The Law Office of Michael E. Kondoudis
Patent Attorney Washington DC
www.mekiplaw.com

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