WHAT EVERY PLASTICS PROFESSIONAL SHOULD KNOW ABOUT PATENTS AND PATENTING - PART 4: THE NON-OBVIOUSNESS REQUIREMENT FOR PATENTABILITY IN LIGHT OF KSR v. TELEFLEX

摘要

Obviousness is a legal conclusion that must be supported by factual findings. Prior to the U.S. Supreme Court (the Court) ruling in KSR v. Teleflex, (KSR Int'l v. Teleflex, Inc. 550 U.S. 398) (2007) the Court of Appeals for the Federal Circuit (CAFC) had adopted a test for obviousness determination, which is commonly known as the "teaching, suggestion or motivation" test (TSM test). Under this test, a patent claim is only proved obvious if "some motivation or suggestion to combine the prior art teachings can be found in the prior art, the nature of the problem or the knowledge of a person having ordinary skill in the art (Al-Site Corp. v. VSI Int'l, Inc., 174 F. 3d 1308, 1323-1324) (CA Fed. 1999). In a unanimous ruling (in KSR v. Teleflex), the Court rejected the rigid test of the CAFC and restored the applicability of its earlier precedent in Graham v. John Deere Co. of Kansas City, 383, U.S. 1 (1966). As a result, it became i) easier for an Examiner to reject a claim as obvious, ii) easier to invalidate a claim, in a patent dispute, as obvious and iii) more difficult to overcome an obviousness-based claim rejection. This article provides an overview of the KSR v. Teleflex case and the guidelines, issued by the U.S. Patent Office, that patent Examiners are expected to follow in their determination of claim obviousness (Federal Register/Vol. 72, No. 195/Wednesday, October 10, 2007/ Notices, page 57526 - 57535). Understanding these guidelines should enable inventors and patent practitioners to prepare patent applications and claims drafted to survive an obviousness rejection.