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Tuesday Nov 24, 2009

The Impact of KSR

Blog by Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos

As you all know, the Supreme Court’s 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’s emphasis on a flexible approach clearly calls for new thinking about obviousness by patent examiners and practitioners alike.   

For its part, the Office’s first step toward addressing the implications of the KSR decision was to publish examination guidelines – available at – for its personnel to follow when determining obviousness.  In accordance with the Supreme Court’s instructions regarding flexibility, the guidelines recognized that an examiner’s approach to obviousness had been broadened beyond the strict teaching-suggestion-motivation test.  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. 

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

Now that a body of case law has been decided in light of the KSR decision, we are able to undertake that task.  Office personnel are presently reviewing court decisions with an eye toward identifying factual scenarios to illustrate the developing law of obviousness.  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.  We also recognize that this task will be on-going, as the Federal Circuit – and perhaps the Supreme Court – continues to weigh in on the question of obviousness. 

KSR has unquestionably refocused the obviousness inquiry by reinvigorating the fundamental questions of Graham.  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.  As a result, some claims that may have been found to be non-obvious before KSR will now correctly be found to be obvious. 

Inventors and practitioners will need to take these developments into account when preparing and prosecuting applications.  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.  By being proactive, practitioners will expedite prosecution and avoid unnecessary fees and RCE filings.   

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



Great idea for the blog Director Kappos. KSR attached strings to the various non-TSM rationales, with more having been placed on them since KSR by the CAFC (e.g., "obvious to try"). Neither the Court nor subsequently the CAFC sanctioned free-ranging conjectural essays on obviousness rooted in personal, subjective "common sense" - such would be indistinguishable from improper hindsight analysis - but rather tests that were based on evidence of record. Which is why I'm heartened that the PTO's post-KSR guidelines seem to recognize this aspect of the Court's decision. I believe that as long as examiners remain evidence-oriented, innovation should not be stifled by improper refusals to grant patents, which in any case are appealable, assuming prosecution is not routinely reopened following the filing of a brief. Which would make for a great future blog topic.

Posted by John Rogitz on November 28, 2009 at 02:20 PM EST #

Does the KSR ruling have an impact on the motivation? One of the issues that has been placed on the motivation factor of the TSM test is if the motivation can be implicit. Kip Ferguson

Posted by Kip Ferguson on July 25, 2010 at 07:03 PM EDT #

I agree with Kip Ferguson, Does the KSR ruling have an impact on the motivation? One of the issues that has been placed on the motivation factor of the TSM test is if the motivation can be implicit.

Posted by on July 28, 2010 at 11:13 AM EDT #

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