The PTO recently issued an update, “2010 KSR Guidelines Update,” to its initial KSR examination guidelines, highlighting case law developed over the last three years. The initial guidelines were published in 2007 following the KSR Int’l Co. v. Teleflex Inc., Supreme Court decision, and provided guidelines for determining obviousness under 35 U.S.C. §103.

Recalling the KSR decision, the Court rejected the teaching-suggestion-motivation (TSM) approach as the sole basis for determining obviousness, and instead adopted a more flexible approach, providing a number of rationales that can be used for determining obviousness. The 2007 KSR Guidelines, embodied in M.P.E.P. §2141, listed 7 different rationales for supporting a finding of obviousness.

The Update specifically addresses several of the KSR rationales: 1) combining prior art elements; 2) substituting one known element for another; and 3) obvious to try. Contrasts are made between situations of obviousness and those of nonobviousness, drawn from post-KSR Federal Circuit cases. The Update is intended to guide PTO patent examiners and patent practitioners as to boundaries between obviousness and nonobviousness.

The Update excerpts particular points from each of the cited cases. These excerpts are listed below and classified based on whether they support a finding of obviousness.

1) Combining Prior Art Elements

Obviousness

  • Respective properties or functions of known prior art elements are maintained

Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356 (Fed. Cir. 2008).

“A claimed invention is likely to be obvious if it is a combination of known prior art elements that would reasonably have been expected to maintain their respective properties or functions after they have been combined.”

  • Apparent reason to combine the elements is recognized

Ecolab, Inc. v. FMC Corp., 569 F.3d 1335 (Fed. Cir. 2009).

“A combination of known elements would have been prima facie obvious if an ordinarily skilled artisan would have recognized an apparent reason to combine those elements and would have known how to do so.”

  • Applied prior art is reasonably pertinent to the problem; Obviousness by “common sense”

Wyers v. Master Lock Co., No. 2009–1412, —F.3d—, 2010 WL 2901839 (Fed. Cir. July 22, 2010).

“The scope of analogous art is to be construed broadly and includes references that are reasonably pertinent to the problem that the inventor was trying to solve. Common sense may be used to support a legal conclusion of obviousness so long as it is explained with sufficient reasoning.”

Nonobviousness

  • Suggested use of method was previously unknown

 In re Omeprazole Patent Litigation, 536 F.3d 1361 (Fed. Cir. 2008).

“Even where a general method that could have been applied to make the claimed product was known and within the level of skill of the ordinary artisan, the claim may nevertheless be nonobvious if the problem which had suggested use of the method had been previously unknown.”

  • Prior art teaches away from combination

Crocs, Inc. v. U.S. Int’l Trade Comm’n., 598 F.3d 1294 (Fed. Cir. 2010).

“A claimed combination of prior art elements may be nonobvious where the prior art teaches away from the claimed combination and the combination yields more than predictable results.”

  • Predictability includes physical capability and preservation of intended purpose

DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314 (Fed. Cir. 2009).

“Predictability as discussed in KSR encompasses the expectation that prior art elements are capable of being combined, as well as the expectation that the combination would have worked for its intended purpose. An inference that a claimed combination would not have been obvious is especially strong where the prior art’s teachings undermine the very reason being proffered as to why a person of ordinary skill would have combined the known elements.”

2) Substituting One Known Element For Another

Obviousness

  • Analogous art includes references not necessarily in the field of endeavor of the invention, but recognized as useful for applicant’s purpose

Agrizap, Inc. v. Woodstream Corp., 520 F.3d 1337 (Fed. Cir. 2008).

“Analogous art is not limited to references in the field of endeavor of the invention, but also includes references that would have been recognized by those of ordinary skill in the art as useful for applicant’s purpose.”

  • Adapting existing commonplace technologies for their functions

Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318 (Fed. Cir. 2008).

“Because Internet and Web browser technologies had become commonplace for communicating and displaying information, it would have been obvious to adapt existing processes to incorporate them for those functions.”

  • Skilled artisan would know or have reason to believe that desirable property of a mixture is derived from the claimed compound

Aventis Pharma Deutschland v. Lupin, Ltd., 499 F.3d 1293 (Fed. Cir. 2007).

“A chemical compound would have been obvious over a mixture containing that compound as well as other compounds where it was known or the skilled artisan had reason to believe that some desirable property of the mixture was derived in whole or in part from the claimed compound, and separating the claimed compound from the mixture was routine in the art.”

  • Reasoning need not be explicitly found in the prior art or in a single lead compound

Altana Pharma AG v. Teva Pharms. USA, Inc., 566 F.3d 999 (Fed. Cir. 2009).

“Obviousness of a chemical compound in view of its structural similarity to a prior art compound may be shown by identifying some line of reasoning that would have led one of ordinary skill in the art to select and modify a prior art lead compound in a particular way to produce the claimed compound. It is not necessary for the reasoning to be explicitly found in the prior art of record, nor is it necessary for the prior art to point to only a single lead compound.”

Nonobviousness

  • Analogous art depends on the problem to be solved

In re ICON Health & Fitness, Inc., 496 F.3d 1374 (Fed. Cir. 2007).

“When determining whether a reference in a different field of endeavor may be used to support a case of obviousness (i.e., is analogous), it is necessary to consider the problem to be solved.”

  • Advantageous property of proffered lead compound is destroyed

Eisai Co. Ltd. v. Dr. Reddy’s Labs., Ltd., 533 F.3d 1353 (Fed. Cir. 2008).

“A claimed compound would not have been obvious where there was no reason to modify the closest prior art lead compound to obtain the claimed compound and the prior art taught that modifying the lead compound would destroy its advantageous property. Any known compound may serve as a lead compound when there is some reason for starting with that lead compound and modifying it to obtain the claimed compound.”

  • No reasonable expectation of success for selecting and modifying lead compound

Procter & Gamble Co. v. Teva Pharmaceuticals USA, Inc., 566 F.3d 989 (Fed. Cir. 2009).

“It is not necessary to select a single compound as a ‘lead compound’ in order to support an obviousness rejection. However, where there was reason to select and modify the lead compound to obtain the claimed compound, but no reasonable expectation of success, the claimed compound would not have been obvious.”

3) Obvious To Try

Obviousness

  • Skilled artisan would have a reasonable expectation of success using standard techniques, and would have reason to try; KSR applies to all technologies, not just the ‘predictable’ arts

In re Kubin, 561 F.3d 1351 (Fed. Cir. 2009).

“A claimed polynucleotide would have been obvious over the known protein that it encodes where the skilled artisan would have had a reasonable expectation of success in deriving the claimed polynucleotide using standard biochemical techniques, and the skilled artisan would have had a reason to try to isolate the claimed polynucleotide. KSR applies to all technologies, rather than just the ‘predictable’ arts.”

  • Finite and easily traversed number of options that are narrowed down from larger set of possibilities, where outcome is reasonably predictable

Bayer Schering Pharma A.G. v. Barr Labs., Inc., 575 F.3d 1341 (Fed. Cir. 2009).

“A claimed compound would have been obvious where it was obvious to try to obtain it from a finite and easily traversed number of options that was narrowed down from a larger set of possibilities by the prior art, and the outcome of obtaining the claimed compound was reasonably predictable.”

  • “Common sense” may be used to support obviousness conclusion

Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324 (Fed. Cir. 2009).

“Where there were a finite number of identified, predictable solutions and there is no evidence of unexpected results, an obvious to try inquiry may properly lead to a legal conclusion of obviousness. Common sense may be used to support a legal conclusion of obviousness so long as it is explained with sufficient reasoning.”

Nonobviousness

  • Broad range of compounds to try, prior art teaches away from a particular lead compound, no predictability or reasonable expectation of success

Takeda Chem. Indus., Ltd. v. Alphapharm Pty., Ltd., 492 F.3d 1350 (Fed. Cir. 2007).

“A claimed compound would not have been obvious where it was not obvious to try to obtain it from a broad range of compounds, any one of which could have been selected as the lead compound for further investigation, and the prior art taught away from using a particular lead compound, and there was no predictability or reasonable expectation of success in making the particular modifications necessary to transform the lead compound into the claimed compound.”

  • Serendipitous discovery runs counter to predictability

Ortho-McNeil Pharmaceutical, Inc. v. Mylan Labs, Inc., 520 F.3d 1358 (Fed. Cir. 2008).

“Where the claimed anti-convulsant drug had been discovered somewhat serendipitously in the course of research aimed at finding a new anti-diabetic drug, it would not have been obvious to try to obtain a claimed compound where the prior art did not present a finite and easily traversed number of potential starting compounds, and there was no apparent reason for selecting a particular starting compound from among a number of unpredictable alternatives.”

  • Unexpected and unpredictable results

Sanofi-Synthelabo v. Apotex, Inc., 550 F.3d 1075 (Fed. Cir. 2008).

“A claimed isolated stereoisomer would not have been obvious where the claimed stereoisomer exhibits unexpectedly strong therapeutic advantages over the prior art racemic mixture without the correspondingly expected toxicity, and the resulting properties of the enantiomers separated from the racemic mixture were unpredictable.”

  • Possible options not either known or finite

Rolls-Royce, PLC v. United Technologies Corp., 603 F.3d 1325 (Fed. Cir. 2010).

“An obvious to try rationale may be proper when the possible options for solving a problem were known and finite. However, if the possible options were not either known or finite, then an obvious to try rationale cannot be used to support a conclusion of obviousness.”

Consideration Of Evidence

The Update also discusses the consideration of evidence rebutting a prima facie case of obviousness, otherwise known as “secondary considerations.” In this section, the Update essentially notes that this area of obviousness has remained consistent with pre-KSR precedent, and re-emphasizes that:

  • All evidence, including evidence rebutting a prima facie case of obviousness, must be considered when properly and timely presented;
  • Evidence of nonobviousness may be outweighed by contradictory evidence in the record or by what is in the specification;
  • Evidence of commercial success is pertinent where a nexus between the success of the product and the claimed invention has been demonstrated;
  • Evidence of secondary considerations of obviousness such as commercial success and longfelt need may be insufficient to overcome a prima facie case of obviousness if the prima facie case is strong.

The PTO is currently soliciting public comments on the 2010 KSR Guidelines Update, and is specifically interested in relevant case law in the field of obviousness.

The full Update can be viewed at: http://www.gpo.gov/fdsys/pkg/FR-2010-09-01/pdf/2010-21646.pdf