Who's proving what in obviousness after KSR?
[a] If the pertinent prior art contains all the elements in the claim serving their prior art functions, the examiner should make an initial rejection of the claim. [b] At this point, the burden of production and persuasion would shift to the applicant to overcome the presumptive obviousness of the claim. [c] The only evidence the Patent Office should accept in rebuttal is clear proof that the prior art expressly taught away from making the combination in the claim under review, or that identifiable others had tried and failed to solve the problem the applicant has successfully solved.
is close to exactly what the KSR Court requires through its demand for “caution in granting a patent based on the combination of elements found in the prior art.
IPBiz notes that the Supreme Court found three errors in the CAFC analysis:
#1. The Circuit first erred in holding that courts and patent examiners should look only to the problem the patentee was trying to solve.
#2. Second, the appeals court erred in assuming that a person of ordinary skill in the art attempting to solve a problem will be led only to those prior art elements designed to solve the same problem.
#3. Third, the court erred in concluding that a patent claim cannot be proved obvious merely by showing that the combination of elements was obvious to try.
The Supreme Court did not say that it was all right for a prima facie case of obviousness to comprise ONLY a mosaic of references. The Supreme Court did not shift the burden of production and persuasion, although it certainly made the challenger's burden easier.
Looking backward, to the KSR brief and to 1883
Did KSR change the factual component of obviousness?