KSR cited to the AT&T Legal Department

Within Ex parte Topfl , the Board cites KSR to the AT&T legal department, as if AT&T did not get the message on the TSM test:

Appellants argue that the Examiner erred in the conclusion of
obviousness of claims 2 and 3 by not showing “‘some teaching, suggestion or motivation’ to combine [Seligmann and Colburn] that is found ‘either in the references themselves or in the knowledge generally available to one of ordinary skill.’” Br. 12. Instead, Appellants argue that the Examiner’s reasoning is “pure conjecture.” Id.

The Supreme Court has rejected such a rigid approach to evaluating a claim for obviousness. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 415 (2007). Instead, “the analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” Id. at 418. However, “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.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). Thus, we look to determine whether the Examiner’s reason for combining Seligmann and Colburn has rational underpinning.

AND

As explained above, the test for obviousness is not so rigid; instead, we look to determine whether the Examiner has articulated a reason, with rational underpinning, to combine Seligmann and Hackbarth. See KSR, 550 U.S. at 415, 418; Kahn, 441 F.3d at 988.

Bottom line: Examiner's rejections affirmed.