Friday, May 11, 2007

Obviousness: knowing it when you see it?

In January 2007, IPBiz proposed a possible form of the Supreme Court decision in KSR v. Teleflex, which was subsequently cited in an article in Intellectual Property Today.

In a February 2007 post, a different attorney suggested that the Supreme Court would give guidance to courts and the USPTO to know it [obviousness] when they see it, curiously citing to Justice Stewart's often-ridiculed statement in Jacobellis v. Ohio, 378 US 184.

On a different theme in "knowing it when you see it," one can find a post "The TSM test after KSR v. Teleflex" which is a dead on copy of a previous IPBiz post but which does not mention that the text comes from IPBiz. There is a link in the title, but the link returns one to the copied post, not to IPBiz. Well, like they say at the Harvard Business Review, plagiarize with pride! The general site of the copyist is

Separately, there has not been much discussion of the fate of In re Deuel post-KSR. Harold Wegner had discussed Deuel previously. The inclusion of an "obvious to try" standard (under some circumstances) should be really big news, and might be among the more significant aspects of KSR v. Teleflex. Wegner had also written on IPFrontline, but there may be a mistake in some text: "an elimination of the requirement for any motivation, express or implied, would be tantamount to an open door to patenting even the most trivial improvements over the prior art." IPBiz notes that eliminating the TSM requirement would make it EASIER to invalidate patents or to reject applications, and thus would tend to close the door to patenting trivial improvements. Thus, to the extent that the change as to Deuel/O'Farrell becomes ingrained, the Supreme Court, by lowering the requirements for TSM, has made it easier to challenge patents.

In this, IPBiz reminds readers of the Norvasc case (Pfizer v. Apotex), decided pre-KSR, of which IPBiz wrote:

--The CAFC got into the matter than Berge disclosed 53 pharmaceutically-acceptable anions. The CAFC emphasized that the anion used (the besylate part of the drug) had no therapeutic effect. The CAFC found there was clear motivation to combine.--

As an IPBiz commenter pointed out, one might question whether going through 53 different anions was routine experimentation, BUT the CAFC found no trouble finding such effort routine, like an optimization of a range. Thus, while the Supreme Court's kick to In re Deuel might seem extreme, the CAFC has already visited these waters. However, the CAFC test had the caveat "with a reasonable expectation of success." Given that the number 53 was not too high a number for an obvious inquiry, one wonders whether any "list" or "recipe" in the prior art might establish the presence of an obvious path. One thinks about how the USPTO (or a court) might handle the issues of the Thomson / WARF patents in the embryonic stem cell area.


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