Implications
A great deal of debate has sprung up in the wake of the decision, particularly over the implications on the TSM test and concepts including "obvious to try," "person having ordinary skill in the art" and summary judgment. While not explicitly denouncing the TSM test, there is some harsh language in regard to it and the Federal Circuit's application of the test. The opinion stated that the application of the bar on patents claiming obvious subject matter "must not be confined within a test or formulation too constrained to serve its purpose." The opinion does denounce procedures that bar the use of "common sense" in multiple instances, including where "igid preventative rules that deny factfinders recourse to common sense, however, are neither necessary under our case law nor consistent with it." Chief Judge Paul Michel of the Federal Circuit was quoted saying that by his interpretation, the TSM test remains part of the calculation of obviousness, "but it gives us forceful instruction on the manner in which the test is to be applied."
In Leapfrog Enterprises, Inc. v. Fisher-Price, Inc., No. 05-1631 (Fed. Cir. May 9, 2007)., the Federal Circuit began applying the KSR case, holding U.S. Patent 5,813,861 invalid as obvious. A KSR-style obviousness analysis was applied in Perfect Web Technologies, Inc. v. InfoUSA, Inc., 587 F.3d 1324 (Fed. Cir. Dec. 2, 2009).
The USPTO Board of Patent Appeals and Interferences (BPAI) is citing KSR in about 60% of its decisions related to obviousness irrespective of whether it affirms a patent examiner's rejection or reverses the rejection. Overall reversal rates have stayed about the same, indicating that KSR has not suddenly made all inventions obvious. The BPAI is emphasizing that examiners must still give strong reasons for their rejections. The USPTO management has backed this emphasis up with a memorandum to all technology directors instructing them that when making an obviousness rejection "it remains necessary to identify the reason why a person of ordinary skill in the art would have combined the prior art elements in the manner claimed."
Read more about this topic: KSR V. Teleflex
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