The Guidelines also note that patent examiners must continue to explain the reasoning that leads to a legal conclusion of obviousness when rejecting claims on that ground. The reasoning may still include the established Court of Appeals for the Federal Circuit standard that a claimed invention may be obvious if the examiner identifies a prior art teaching, suggestion, or motivation (TSM) to make it. However, in keeping with the KSR decision, the Guidelines explain that there is no requirement that patent examiners use the TSM approach in order to make a proper obviousness rejection. Furthermore, the Guidelines point out that even if the TSM approach cannot be applied to a claimed invention, that invention may still be found obvious.
IPBiz notes that the "identify the reason" requirement is consistent with an early pronouncement of the USPTO on KSR:
[I]n formulating a rejection under 35 U.S.C. 103(a) based upon a combination of prior art elements, 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.
In the post
Was the TSM test rejected as a prerequisite for finding obviousness? , Chief Judge Paul Michel of the CAFC was quoted as saying that under his reading of the opinion, the teaching, suggestion, or motivation test remains part of the calculation of obviousness. HOWEVER, the USPTO text: in keeping with the KSR decision, the Guidelines explain that there is no requirement that patent examiners use the TSM approach in order to make a proper obviousness rejection. Furthermore, the Guidelines point out that even if the TSM approach cannot be applied to a claimed invention, that invention may still be found obvious suggests TSM need not be part of the calculation of obviousness.
A comment by Rick at fireofgenius in May 2007 stated:
Barclay says the SCOTUS “abolished the TSM test” and Bromberg describes the KSR decision as “sweeping away” the TSM test. But Zura says “the SCOTUS has whittled back” the TSM test. And Albainy-Jenei states that “while the Supreme Court knocked” the TSM test “down a notch, it didn’t reject it outright.” At the other end of the spectrum, Mandel writes that the court’s “decision itself appears to leave the TSM requirement roughly intact .”
As if it were not plain enough from the murkiness of the opinion itself, the diversity of views of these experts makes clear that the KSR decision, while providing specific analysis of the controversy before it, is vague and full of dicta regarding the details of the obviousness analysis more generally. As Mandel notes, I think correctly, “the contours of how to apply KSR will have to be worked out by the Patent Office, district courts, and the Federal Circuit.”
In the post-KSR CAFC decision in Takeda, one has:
That test for prima facie obviousness for chemical compounds is consistent with the legal principles enunciated in KSR. While the KSR Court rejected a rigid application of the teaching, suggestion, or motivation (“TSM”) test in an obviousness inquiry, the Court acknowledged the importance of identifying “a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does” in an obviousness determination. KSR, 127 S. Ct. at 1731. Moreover, the Court indicated that there is “no necessary inconsistency between the idea underlying the TSM test and the Graham analysis.” Id. As long as the test is not applied as a “rigid and mandatory” formula, that test can provide “helpful insight” to an obviousness inquiry. Id. Thus, in cases involving new chemical compounds, it remains necessary to identify some reason that would have led a chemist to modify a known compound in a particular manner to establish prima facie obviousness of a new claimed compound.
See also other posts on IPBiz:
Do the published applications of 2001 tell us about patent grant rate? and
John Doll on state of the patent system