Friday, August 15, 2008

Ex parte Whelen, interpreting KSR v. Teleflex

The patenthawk blog has a post about Ex Parte Whelen, in which the BPAI stated:

The U.S. Supreme Court recently held that rigid and mandatory
application of the “teaching-suggestion-motivation,” or TSM, test is
incompatible with its precedents. KSR Int’l Co. v. Teleflex Inc., 127 S.Ct.
1727, 1741 (2007). The Court did not, however, discard the TSM test
completely; it noted that its precedents show that an invention “composed of
several elements is not proved obvious merely by demonstrating that each of
its elements was, independently, known in the prior art.” Id.

The Court held that the TSM test must be applied flexibly, and take
into account a number of factors “in order to determine whether there was an
apparent reason to combine the known elements in the fashion claimed.” Id.
at 1740-41. Despite this flexibility, however, the Court stated that “it can be
important to identify a reason that would have prompted a person of
ordinary skill in the relevant field to combine the [prior art] elements in the way
the claimed new invention does.” Id. “To facilitate review, this
analysis should be made explicit.” Id.

There was a comment on the blog which stated: "No-one ever said TSM was dead".

A comment by LBE included:

My reference to the words of Michael Barclay was merely to give one example to negate the statement "No-one ever said TSM was dead".

Further discussion is on the IPBiz post titled
The TSM test after KSR v. Teleflex, dated May 5, 2007.

See also

***Separately, on Patently-O, concerning a subpoena of Eric Albritton to Google

***Separately, note a free webinar on KSR.


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