Practical Prosecution Advice After KSR

May 29, 2007

in KSR,Prosecution Strategy

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.


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.

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© 2007, Michael E. Kondoudis

The Law Office of Michael E. Kondoudis
DC Patent Attorney

{ 5 comments… read them below or add one }

Hephaestus June 5, 2007 at 9:02 pm

Great blog – keep up the good work!

I have a few observations I’d like to add regarding KSR. As you indicated, the Supreme Court reinforced the fact that “Graham v. John Deere still controls.” Regarding the motivation for taking the case, it seems to me that the Court’s primary underlying motivation was rather simple – upholding precedent. Obviously, two of the most common motivating factors underpinning the Supreme Court’s decision to hear cases are a split among the Circuit Courts (which is clearly inapplicable here) and upholding precedent. Where the latter is the motivation, the Supreme Court rarely affirms the lower court’s decision. Such was certainly the case here, and will nearly always be for patent cases. It is unlikely that the Court will take a Federal Circuit case where they agree with the outcome as this would be redundant (unless they want to send an occasional reminder of their role as the supreme arbiter of patent law, but this is hardly in dispute).

The Court strives to keep lock-step with existing precedent wherever possible. Clearly, the Court recognized that the TSM test was a different, stricter standard than originally articulated in Graham, and they wanted to reassert their previous test. In reading the statements actually made by the justices during the KSR oral arguments, it was clear that they were apprehensive about the basis of TSM. In fact, Breyer candidly admitted that he did not understand “motivation” as required buy this standard. I believe that the Supreme Court has set itself up to take a more active role with respect to patent law and, for better or for worse, will assert itself to reject Federal Circuit decisions with much more regularity. While there is some risk that they will return to “spark of genius” and other bad law prior to Graham, I do not feel that they will go so far.

Despite the likelihood of more Supreme Court “activism”, I believe all the commotion about KSR and other decisions that may arise in the future is largely unfounded. The Supreme Court certainly did not intend to have a profound impact on patent law, and I submit that such an effect will not arise from this decision. What will result, rather, is a slight increase in patent litigation as defendants find a little more wiggle room under 35 U.S.C. 103(a) and a slight decrease in patent prosecution with respect to minor “improvement patents.” From personal experience, most 35 U.S.C. 103(a) rejections can be overcome because a feature of the claim is not disclosed and making a TSM argument was something I only went to as a last resort. As such, I believe that KSR only has a meaningful impact upon a limited number of patents.

Menschkeit August 10, 2007 at 5:12 pm

Point 4 of the first list in the blog says common sense controls, whether a common sense conclusion is reached via hindsight or not. Why do the authors feel this way? Isn’t hindsight reasoning verboten even under KSR?

mike August 16, 2007 at 8:05 pm

Menschkeit – Thank you for your question.

In KSR, the Court criticized the Federal Circuit’s rigid application of the TSM test (intended to prevent hindsight bias) and the Federal Circuit’s view that “obvious to try” cannot be equivalent to § 103 obviousness, stating:

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 the product not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under § 103.

The Court noted that the TSM test had been used to protect factfinders and Examiners from improper hindsight bias. And, the Court agreed that factfinders and Examiners should be wary of hindsight biases. Nonetheless, the Court held that “[r]igid preventative rules that deny factfinders recourse to common sense, however, are neither necessary under our case law nor consistent with it.”

It appears to the authors that attempts to determine “design needs” or “market pressures” at the time of invention (using common sense) will necessarily open the door to some level of hindsight, as a practical matter. In this way, hindsight will likely creep into these analyses.

SAMI October 13, 2007 at 11:06 pm

The problem with the PTO’s new guidelines for obviousness is that it does not tell the examiners when an invention is NOT obvious (Completely illogical)

Mike Fortkort February 13, 2008 at 4:22 pm

At page 16 of the KSR opinion, the Court states: “One of the ways in which a patent’s subject matter can be proved obvious is by noting that there existed at the time of invention a known problem for which there was an obvious solution encompassed by the patent’s claims.”

So, something is obvious if obvious solution to known problem. Seems rather circular to me. Certainly no help to the patent practitioner.

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