US SCT Re-writes Patent Law on Obviousness of Claims

The US Supreme Court issued KSR International Co. v. Teleflex Inc. on 30 April 2007 in a unanimous decision which the Court eliminated the requirement that a finding of obviousness include a “teaching, suggestion or motivation” (TSM) to combine multiple prior art references.

Instead, the Court stated that the key to supporting any rejection under 35 U.S.C. 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious and that the analysis supporting a rejection under 35 U.S.C. 103 should be made explicit.   Exemplary rationales that may support a conclusion of obviousness include:

(A) Combining prior art elements according to known methods to yield predictable results;
(B) Simple substitution of one known element for another to obtain predictable results;
(C) Use of known technique to improve similar devices (methods, or products) in the same way;
(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
(E) “Obvious to try” – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art;
(G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention.

TSM was considered to be a higher standard than the standard of obviousness under KSR