{"id":217793,"date":"2009-11-24T13:58:30","date_gmt":"2009-11-24T18:58:30","guid":{"rendered":"http:\/\/www.uspto.gov\/blog\/director\/entry\/the_impact_of_ksr"},"modified":"2009-11-24T14:06:22","modified_gmt":"2009-11-24T19:06:22","slug":"the-impact-of-ksr","status":"publish","type":"post","link":"https:\/\/mereja.media\/index\/217793","title":{"rendered":"The Impact of KSR"},"content":{"rendered":"

<\/p>\n

As you all know, the Supreme Court\u2019s April 2007 decision in KSR v. Teleflex<\/u> was a landmark case in the law of obviousness.  <\/span>Although the  <\/span>KSR Court reaffirmed the well-known Graham v. John Deere<\/u> inquiries as the appropriate framework for evaluating claims under 35 U.S.C. 103, the Court\u2019s emphasis on a flexible approach clearly calls for new thinking about obviousness by patent examiners and practitioners alike.  <\/span> <\/span><\/font><\/span><\/p>\n

For its part, the Office\u2019s first step toward addressing the implications of the KSR<\/u> decision was to publish examination guidelines \u2013 available at <\/font>http:\/\/www.uspto.gov\/web\/offices\/com\/sol\/notices\/72fr57526.pdf<\/font><\/a> \u2013 for its personnel to follow when determining obviousness.  <\/span>In accordance with the Supreme Court\u2019s instructions regarding flexibility, the guidelines recognized that an examiner\u2019s approach to obviousness had been broadened beyond the strict teaching-suggestion-motivation test.  <\/span>At the same time, they also stressed that in order to arrive at a proper conclusion of obviousness, examiners still needed to couple sound reasoning with particular findings of fact.  <\/span><\/font><\/span><\/p>\n

It has now been just over two years since the publication of the guidelines, and I think it\u2019s understandable that practitioners have been asking the Office for additional guidance.  <\/span>We have heard the public\u2019s concerns about the manner in which the Office is applying the KSR<\/u> decision.  <\/span>Some have suggested that the Office is determining obviousness in a way that stifles innovation by refusing patents for truly inventive subject matter.  <\/span>They\u2019ve asked us to provide examples of non-obvious claims in view of KSR<\/u>.  <\/span>Such examples would serve as a complement to the examples of obvious claims already in the guidelines.  <\/span><\/font><\/span><\/p>\n

Now that a body of case law has been decided in light of the KSR<\/u> decision, we are able to undertake that task.  <\/span>Office personnel are presently reviewing court decisions with an eye toward identifying factual scenarios to illustrate the developing law of obviousness.  <\/span>The obvious-to-try rationale is one that seems to be garnering quite a bit of interest, and has already been addressed in several such court decisions.  <\/span>We also recognize that this task will be on-going, as the Federal Circuit \u2013 and perhaps the Supreme Court \u2013 continues to weigh in on the question of obviousness.  <\/span><\/font><\/span><\/p>\n

KSR<\/span><\/u> has unquestionably refocused the obviousness inquiry by reinvigorating the fundamental questions of Graham.  <\/span>Because the Supreme Court clarified that teaching-suggestion-motivation was not the sole test of obviousness, the Graham analysis is not to be carried out in a rigid manner.  <\/span>As a result, some claims that may have been found to be non-obvious before KSR<\/u> will now correctly be found to be obvious.  <\/span><\/font><\/p>\n

Inventors and practitioners will need to take these developments into account when preparing and prosecuting applications.  <\/span>For example, it may be necessary to review a broader cross-section of prior art than was previously necessary, or to consider filing evidence of unexpected results earlier rather than later in the course of prosecution.  <\/span>By being proactive, practitioners will expedite prosecution and avoid unnecessary fees and RCE filings.  <\/span> <\/span><\/font><\/span><\/p>\n

I am committed to providing appropriate and ongoing education for examiners and managers to ensure that the Office is applying KSR<\/u> and other relevant obviousness decisions as faithfully and clearly as possible.  <\/span>To that end, I would like to continue to hear your concerns about applying the law and developing appropriate additional guidance.  <\/span>I look forward to hearing from you as we continue to work together to understand the contours and boundaries of the Supreme Court\u2019s KSR<\/u> decision.  <\/span><\/font><\/span><\/p>\n

 <\/font><\/p>\n

<\/span><\/p>\n","protected":false},"excerpt":{"rendered":"

As you all know, the Supreme Court\u2019s April 2007 decision in KSR v. Teleflex was a landmark case in the law of obviousness.  Although the  KSR Court reaffirmed the well-known Graham v. John Deere inquiries as the appropriate framework for evaluating claims under 35 U.S.C. 103, the Court\u2019s emphasis on a flexible approach clearly calls for […]<\/p>\n","protected":false},"author":4031,"featured_media":0,"comment_status":"open","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[7],"tags":[],"class_list":["post-217793","post","type-post","status-publish","format-standard","hentry","category-news"],"_links":{"self":[{"href":"https:\/\/mereja.media\/index\/wp-json\/wp\/v2\/posts\/217793","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/mereja.media\/index\/wp-json\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/mereja.media\/index\/wp-json\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/mereja.media\/index\/wp-json\/wp\/v2\/users\/4031"}],"replies":[{"embeddable":true,"href":"https:\/\/mereja.media\/index\/wp-json\/wp\/v2\/comments?post=217793"}],"version-history":[{"count":0,"href":"https:\/\/mereja.media\/index\/wp-json\/wp\/v2\/posts\/217793\/revisions"}],"wp:attachment":[{"href":"https:\/\/mereja.media\/index\/wp-json\/wp\/v2\/media?parent=217793"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/mereja.media\/index\/wp-json\/wp\/v2\/categories?post=217793"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/mereja.media\/index\/wp-json\/wp\/v2\/tags?post=217793"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}