Obviousness Case Law

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Obviousness Case Law

• KSR Case and 5 Recent CAFC Cases

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• KSR tells us that
• "a patent composed of several elements is not
  proved obvious
• merely by demonstrating that each of its
  elements was,
• independently, known in the prior art"
•  
• and that it is necessary
• "to determine whether there was an apparent
  reason to combine
• the known elements in the fashion claimed by the
  patent at
• issue. To facilitate review, this analysis
  should be made
• explicit"
•  
• and that
• "rejections on obviousness grounds cannot be
  sustained by
• mere conclusory statements instead, there must
  be some
• articulated reasoning with some rational
  underpinning to
• support the legal conclusion of obviousness".
•  
• "From binding precedents, we know that it is
  legal error to
• 'substitute supposed per se rules for the
  particularized

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BACKGROUND of the CASES

• Obviousness Law 35 USC 103 (Obviousness
  Statute) Graham Deere case (1 Case from 1966)
• PTO Rules (MPEP 2141-2142) Include Graham
  Factors plus TSM
• The KSR Case (TSM is not a rigid test)
• Recent CAFC cases Dystar (10/3/06) TSM not
  a rigid test Leapfrog
  (5/9/07) no inventive step Pfizer
  (3/22/07) routine optimization Takeda
  (6/28/07) unexpected results, teaching away
  Pharmastem (7/9/07) TSM, reasonable expectation
  of success based on patent specification.
  
• What You Should Do

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35 USC 103 Obviousness Law

• 1952 Patent Law 103(a) A patent may not be
  obtained.if the differences between the subject
  matter sought to be patented and the prior art
  are such that the subject matter as a whole would
  have been obvious.
• 1966 Supreme Court case Graham v. John Deer
  1. scope and content of the prior art 2.
  differences between the prior art and the
  claims at issue 3. the level of ordinary
  skill in the pertinent art secondary
  considerations such as commercial
  success, long felt need, failure by
  othersfailure of others, lea

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The Federal Circuit Simplified the Analysis with
the TSM Requirement
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Federal Circuit Law (and PTO Rules) Require
suggestion or motivation

• MPEP 2143.01 Obviousness can only be
  established by combining or modifying the
  teachings of the prior art to produce the claimed
  invention where there is some Teaching,
  Suggestion or Motivation to do so..1. show
  each claim element in the prior art2. show
  specific teachings/motivation or suggestion to
  combine the claim elements
• 3. reasonable expectation of
  successthers, lea

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KSR Case No TSM Requirement

• KSR v. Teleflex (E.D. Mich. 12/12/03)
• Invention car pedal (14) that has
  electronic pedal position sensor (28) that does
  
• not move but detects
• pedal rotation .
• District Court claim is obvious, because adding
  an electronic sensor that does not move, to sense
  a rotating part is a well known improvement
  Summary judgment of invalidity
• others, lea

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Teleflex appealed to The Federal Circuit
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Federal Circuit Reversed Because no specific
suggestion or motivation

• Teleflex v. KSR (Fed. Cir. 1/6/05)
• The district court was required to make
  specific findings (of) suggestion or motivation
  to combine the teachings (of the prior art) in
  the particular manner claimed.
• The District Court did not apply the correct
  teaching-suggestion-motivation test

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KSR appealed to the Supreme Court
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The Supreme Court Reversed the Federal Circuit

• KSR v. Teleflex (Sup. Ct. 4/30/07)
• The TSM test is too narrow and rigid
• Obviousness challenge is not limited to the
  problem the patentee was trying to solve or to
  only those prior art elements designed to solve
  the same problem
• The combination of (1) familiar elements
  according to (2) known methods is likely to be
  obvious when it does no more than yield (3)
  predictable results.
• obviousness challenge is not limited to "the
  problem the patentee was trying to solve" or to
  "only those prior art

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SUMMARY

• The KSR Case TSM is not a rigid test
• Recent CAFC cases (before and after KSR)
  Dystar (10/3/06) TSM not a rigid test
  Pfizer (3/22/07) routine
  optimization Leapfrog (5/9/07) no inventive
  step Takeda 6/28/07) unexpected results,
  teaching away
• Pharmastem (7/9/07) reasonable
  expectation of success admitted in the
  patent specification

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Dystar (Federal Circuit 10/03/06)

• Invention is a process for dyeing textiles using
  a pre-activated chemical (avoids two steps).
• District Court no obviousness (jury decision,
  judge did not comment on obviousness).
• Federal Circuit reversed finding implicit
  motivation to combine because the improvement
  was technology-independent and the result of the
  combination is more desirable.
• High level of skill invention was merely
  exploitation of a well known principle by a
  skilled chemist, not of an inventor.

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The Supreme Courts Comments on Dystar
The Federal Circuit in Dystar uses a broader
conception of the TSM test, which may be
consistent with the KSR case.
The TSM test in Dystar, requires, consideration
of common knowledge and common sense (quoting
the Fed. Cir.)
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Pfizer (Federal Circuit 3/22/07)

• Invention was a besylate salt of a known
  pharmaceutical that is more stable and easier to
  manufacture.
• District Court no obviousness because prior art
  only showed the salt was used in 1 of 400 drugs,
  and performance of the salt was unpredictable.
• Federal Circuit reversedThe salt combination
  was obvious only 53 different FDA approved
  salts were possible most of the salts were
  rarely used (1 of 400 is not meaningful) some
  references taught the desirability of using
  besylate (there was reasonable probability of
  success)

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Pfizer (Federal Circuit 3/22/07)

• Experiments used by Pfizers scientists to
  verify the characteristics of each salt are not
  equivalent to the trial and error procedures
  often employed to discover a new compound where
  the prior art gave no motivation or.reasonable
  expectation of success.
• The discovery of an optimum value of a
  variable in a known process is usually obvious
  and Pfizer merely followed a logical line of
  testing wherein prior art provided not only the
  means of creating (the salt) but also predicted
  the results.

Special Circumstances Declaration during
prosecution
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Leapfrog (Federal Circuit 5/9/07)

• Invention was a teaching toy that used a
  microprocessor to react to a childs selection.
• District Court obviousness because a skilled
  artisan knows to add the extra component of a
  microprocessor to a prior art toy.
• Federal Circuit confirmed obviousnessThe
  combination of familiar elements according to
  known methods is likely to be obvious when it
  does no more than yield predicable results.
  (Quoting KSR)
• Obvious because adaptation of an old idea or
  invention using newer technology that is commonly
  available and understood.
• Reason for the combination is to increase its
  marketability. replace motivation with
  reason?

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Takeda (Federal Circuit 6/28/07)

• The invention is a new drug compound that is
  structurally similar to a prior art compound.
• District court no obviousness because a) the
  closest prior art compound had unusually bad side
  effects (teaching away from use)b) the prior
  art disclosed a broad selection of compounds it
  was not obvious to tryc) unexpected results
• The Federal Circuit affirmed no obviousnessand
  cited KSR The Supreme Court acknowledged the
  importance of identifying a reason that would
  have prompted a person of ordinary skill in the
  relevant field to combine the (claim) elements.

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Pharmastem (Federal Circuit 7/9/07)

• The invention a procedure to freeze newborn cord
  blood and use stem cells from the blood for
  disease treatment.
• District court no obviousness because a)
  experts in the field did not expect the procedure
  to workb) speculations in the prior art (cord
  blood has stem cells) were unproven
• The Federal Circuit reversed found obviousness
  The specification cited prior art, which
  indicated that cord blood has stem cells. Prior
  art suggested the invention method.Thus, the
  inventors had a reasonable expectation of
  success.
• The inventors merely used routine research
  methods to prove what was already believed to be
  the case.

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UNOBVIOUS OBVIOUS
Science exploration--- Pharmastem ----
scientific confirmation
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OBVIOUSNESS LAW

• To Prove Obviousness find a reason for making
  the claimed combination a. explicit teaching or
  suggestion b. known elements, known
  functions, expected results (KSR
  rule) c. business motivation to add newer
  technology to older technology
• To Disprove Obviousness a. unexpected results
  obtained from unfamiliar elements with
  unexpected functioning is best b. teaching away
  by others can neutralize the reason for
  making the combination

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What You Should Do

• Teach your client to document literature
  statements that teach away. The inventor is
  the best source for this information.
  Consider adding claim language that matches the
  teaching away.
• Recite claim elements that emphasize unfamiliar
  claim elements (make up new words to describe new
  elements). Dont use claim terms that suggest
  the claim element is very well known.

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What You Should Do (cont.)

• Emphasize unexpected results as much as possible,
  and the other Graham factors.
• Prepare claims around the KSR triadThe
  combination of familiar elements according to
  known methods is likely to be obvious when it
  does no more than yield predicable results. a.
  any unfamiliar claim elements ? b. any
  unfamiliar methods ?
• c. unpredicted results?