As all patent holders are aware, inventions must be new, useful, and non-obvious in order to be patentable. But developments in US case law over the last several years, most notably the 2007 case of KSR Intl. v. Teleflex Inc., have made obviousness rejections much more difficult to overcome.[1] Particularly, in some cases it is now permissible to use the heretofore disallowed “obvious to try” argument to find an invention obvious. The United States Patent and Trademark Office (USPTO) now routinely rejects claims that would have been allowable pre-KSR, and arguably should be allowable even now in view of KSR. Furthermore, many issued patents may now be vulnerable to invalidation under the new standard for obviousness.

In 2007 the US Supreme Court in KSR Intl. v. Teleflex Inc., 550 US 398, (2007) held that:

when there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under §103. [emphasis added]

I grudgingly admit that the Court may have a point. Every practitioner has drafted an application for a simple invention where the inventor has found a solution to a problem where there exists only a handful of potential solutions, and all of them are readily apparent. Similarly, after filing such an application, every practitioner has received a rejection from a frustrated examiner listing two or three pieces of well chosen art that taken together would produce the invention, but where the examiner can only rely on his gut to make the combination, i.e. he cannot point to a specific item in the cited art amounting to an explicit teaching, suggestion or motivation (TSM) to make the combination. It was a very difficult standard for the examiner to meet, and it was so easy for the patent practitioner to make the TSM argument that at times this practitioner almost felt guilty… Almost.

Based on the fact pattern of the KSR case, it would seem that the Court meant to address only the extreme circumstance that I just laid out, but the examining corps has taken the KSR holding to be a blank check to reject almost all claims as obvious, and to do so on rather weak grounds. Now it is not uncommon to receive a rejection composed of a dozen or more loosely related references lacking any clear reason to make the combination, but where the examiner blindly asserts that it would have been obvious to try the combination. This would have been unheard of pre-KSR because it would have been recognized as a clear violation of long standing precedent.[2] Indeed, the KSR Court itself stated that “there is no necessary inconsistency between the idea underlying the TSM test and the Graham analysis;” however, at least some members of the examining corps at the USPTO seems to have misinterpreted KSR as utterly eliminating the TSM test.[3]

The examining corps should keep in mind that the technology upon which the KSR decision is based amounts to a simple mechanical invention similar to the extreme case that I outlined above.[4] More particularly, it involves a patent to an improved automobile gas pedal, which is hardly the cutting edge of science. In that particular case the number of possible solutions was quite small, and their degree of predictability was quite high. In my view, the KSR decision (i.e. the “obvious to try” argument) was meant to be applied narrowly to similarly extreme cases. Furthermore, KSR cannot reasonably be said to apply equally to all technologies because there are varying degrees of predictability from one art to another, and similarly varying numbers of possible solutions. In fact, subsequent cases have clarified that KSR does not apply to many chemical cases, because the inherent unpredictability of the chemical arts precludes use of the obvious to try standard.[5]

So, how do we as patent holders and practitioners proceed in light of the USPTO’s questionable interpretation of KSR? Well, some inventions that were marginal by pre-KSR standards may well be hopeless by today’s standards, especially if costly appeals to the Federal Circuit and/or Supreme Court are not within the applicant’s budget. However, the KSR decision gives us a toehold in reality. Specifically, the Court stated that “when there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp.”[6] Notably, subsequent cases (e.g. Eisai Co. v. Dr. Reddy’s Labs Ltd.) have demonstrated that while the court vaguely said “finite number” they actually meant “easily traversed, small and finite number.”[7] Therefore, if we can establish that there are not an “easily traversed, small and finite number” of possible solutions, then the examiner will have to point to a reason for choosing the claimed solution, i.e. we revert to the old standard where obvious to try is not sufficient. Through skilful drafting, the patent practitioner can craft a factual basis in the patent application that can later be used to fend off an “obvious to try” attack. More specifically, the applicant needs to demonstrate that, because of the large number of potential solutions, it would have been difficult, infeasible, or impossible to try every possible option in order to arrive at the solution by chance.

Additionally, according to KSR, unpredictable solutions may also preclude application of the new obvious to try standard.[8] As a practical matter, “unpredictable solutions” manifest themselves in the laboratory as unexpected results, which have long been used to show that inventions are not obvious. Now unexpected results may also help the applicant to avoid the obvious to try standard. In inherently unpredictable arts, such as chemical arts, unexpected results may be relatively easy to obtain; however, this may be somewhat more difficult for simple mechanical inventions. Obtaining unexpected results may require spending some extra time in the lab or workshop tweaking your invention until something happens that you did not expect. That “something” that you did not expect is going to be the crux of your patent. Further, it is critical that you spend this time before filing the application. After you file it is generally too late to introduce new matter into the prosecution process.

In cases where the application has already issued, and the patent holder is concerned about its enforceability; or its value to licensees, prospective buyers, or investors, a reissue or reexamination may be in order. Specifically, if no particular threatening art is known, a reissue may be warranted to revise the specification and/or claims. Alternatively, if specific pieces of threatening art are known which may result in a substantial new question of patentability, then an ex parte re-examination may be warranted.

Regardless of whether the USPTO is correct in their interpretation of KSR, the reality is that it is now more difficult than ever to obtain a patent in many cases. Thus, skillful patent drafting is likewise more important than ever before. Great care should be taken early in the patenting process to establish unexpected results. Ideally, the inventor should collaborate with his or her patent attorney in an effort to achieve results that will be regarded as “unexpected” within the meaning of patent law, and the patent attorney should draft the application so that the unpredictability of the results is crystal clear to the examiner.