By Kevin E. Noonan —

The potential effect of the Supreme Court’s ruling in KSR Int’l Co.
v. Teleflex Inc. on practice before the U.S. Patent and Trademark Office has created
the most anxiety among patent applicants and their representatives at the
patent bar.  This is because the opinion is replete with dicta that can be
interpreted (and, more importantly, misinterpreted) to both make it easier to
assert a prima facie obviousness determination and make it harder to overcome
such a
case.  Thus, tea leaf-reading commentators and the blogosphere have
chattered for days about these effects, without of course any evidence as a
basis.

Today the Patent Office has provided a first look into
how it will react to KSR, in the form of a memo from Margaret A. Focarino,
Deputy Commissioner for Patent Operations.  The memo has four main points:

1.  The KSR opinion reasserts the primacy of four Graham
v. John Deere Co. of Kansas City factors for determining obviousness;

2.  The Court did not overturn the Federal Circuit’s "teaching-suggestion-motivation"
(TSM) test, which provides a "useful insight" in making an
obviousness determination under Graham;

3.  The Court did criticize application of the TSM test
rigidly to require an explicit showing of teaching, suggestion or motivation to combine
prior art references to achieve the claimed invention; and

4.  Perhaps most importantly, the Court continued to
require that a prima facie obviousness case requires an apparent reason why a
person of ordinary skill in the art would combine the references, and that the
analysis must be made explicit.  (Boldface in original).

The memo ends with the exhortation that:

Therefore, in formulating a rejection under 35 U.S.C.
103(a) based upon a combination of prior art elements, it remains necessary to
identify the reason why a person of ordinary skill in the art would have
combined the prior art elements in the manner claimed.  (Boldface in original).

Although it remains too early to tell how these
guidelines will be implemented by individual Examiners, it is gratifying to see
that Patent Office officials recognize the essentially conservative approach
taken by the Supreme Court in its KSR opinion, and that the much-anticipated
(and greatly-feared) upheaval in how obviousness is to be determined is not supported
by the opinion.

For additional information regarding this case, please see:

• "KSR Int’l Co. v. Teleflex Inc. (2007)"