Another KSR Retrospective

On that fateful day some 27 months ago, April 30, 2007 to be precise, the United States Supreme Court decided that the well established and functional bright line rule for obviousness was too rigid.  No longer must there be a teaching, motiviation or suggestion to render an invention unpatentable for obviousness reasons.  No in this new brave world we need to go case by case and determine for every invention whether it would be within the common sense knowledge base of someone of skill in the art. But what is common sense exactly?  If the teaching, suggestion and motivation test was viewed by the high court as being inappropriate, how could any rational individual who is informed about the patent process think that a “common sense” based test would be better?  Patent examiners are skilled at reviewing prior art and interpreting claims, but the overwhelming majority are not lawyers, and even if they were attorneys, a test that means different things to different people is hardly calculated to lead to uniformity and similarly situated people being treated similarly.  The last time I checked that is still what the US Constitution requires, unless I missed something tucked away in some legislation that wasn’t read before voted on and signed into law.

So where are we now?  We are at a time and place where the Board of Patent Appeals has interpreted KSR v. Teleflex to mean that “obvious to try” is back on the table.  I can’t argue with the Board, although the obvious to try standard will make absolutely nothing patentable.  It is completely reasonable that if the obviousness inquiry is all about common sense then the question has to be whether it was obvious to try, and if it were obvious to try then you have no invention at all.  You see, despite the fact that the Supreme Court wants a case-by-case approach to obviousness we all know that is impossible.  So the Board and the Federal Circuit have to try and make sense of this mess.  What this mean, of course, is that if you actually set out to try and succeed with an invention you have conclusively proved that the invention is not patentable.  If on the other hand you accidentally and unintentionally stumble across something then you might be able to get a patent.  Ridiculous.

So how is the Patent Office handling KSR?  From what I can tell they are not handling it very well, or perhaps perfectly, depending upon your view of KSR and the unrealistic obviousness standard announced by the Supreme Court and left for lower courts and the Patent Office to figure out.  I see very little evidence that KSR is being applied in any way, shape or form, at least with respect to many categories of invention.  For example see:

Footboard supporting a stowable bench
US Patent No. 7,360,260
Issued April 22, 2008

Forced air vent in siderail
US Patent No. 7,543,583
Issued June 9, 2009

Truck height measuring pole
US Patent No. 7,543,395
Issued June 9, 2009

In light of the Supreme Court’s decision in KSR can anyone tell me how any of these are patentable?  How is it possible that these are not within the common sense knowledge base of someone of skill in the art?  How are these not at least obvious to try, which is the test that some of the panels of judges on the Board of Patent Appeals has endorsed in the post-KSR era?  For all you out there who have had KSR thrown at you by the Patent Office, and particularly those of you who have not been able to overcome such rejections, these patents should really get your blood pressure boiling.  If the Supreme Court wants a case-by-case approach then shouldn’t they also want equal treatment under the law?


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Join the Discussion

4 comments so far.

  • [Avatar for OldTimer]
    July 27, 2009 03:08 pm


    I think you’re coming around to the view I’ve expressed on this and other boards. The current crisis in patent law is not based solely in the PTO (yes, the PTO has problems, but that’s another post) but in the underlying substantive law of KSR and to a lesser extent Bilsky.

    I have been practicing for almost 20 years now and in my entire practice I have never seen an invention that could be considered non-obvious under a strict application of KSR. In fact, I’m unaware of any inventions in history which would be considered non-obvious under a strict application of KSR. Stated otherwise, nothing is patentable under KSR.

    The reality is that science and technology advance in incremental steps which are built upon the foundation laid by others working in the same art areas. In fact, the entire purpose of the patent system is to encourage inventors to disclose their advances to the public so they become a part of the foundation upon which further development can build.

    The KSR decision is hopelessly at odds with this reality. As you indicated, under KSR any advance in the art that is not completely contrary to the expectations of one skilled in the art is now per se obvious. The patent office may well let KSR slip, primarily out of a bureaucratic instinct for self-preservation, but there’s no indication that the courts will. The Federal Circuit now appears to be an anti-patent court, and the SC isn’t going to revisit this issue anytime soon. The courts will be no help.

    Absent Congressional intervention to undo the damage done by KSR the US patent system is going to implode, slowly but surely. It’s no coincidence that maintenance fee renewals have tanked right after KSR, thereby robbing the PTO of its major source of funding. Next the number of filings will tank, further depriving the PTO of revenue. Mass cutbacks and layoffs at the PTO are all but inevitable already.

    We’re at the front end of an unfolding crisis. Congress can forestall this crisis by amending 103 to restore the TSM test or a similarly objective test for obviousness. Five years from now it will be too late.

  • [Avatar for Gene Quinn]
    Gene Quinn
    July 25, 2009 01:44 pm


    I am afraid you are correct, and we may be entering into another dark age for patents. Those patents that get issued and are lucrative enough to litigate will be in jeopardy until the Federal Circuit can undo KSR or Congress steps in. Since Congress is slow to act even in the face of a patent system that is falling apart, it will likely take another few years before the Federal Circuit can successfully retreat from much of the craziness that is KSR.


  • [Avatar for Ron Laurie]
    Ron Laurie
    July 25, 2009 12:04 pm

    KSR (and eBay) represent a clear signal from the Supremes that District Court judges should have more discretion in patent cases to apply broadly stated legal “standards” (like Graham v. John Deere) rather than more concrete “tests” developed by the Fed Circuit (like TSM), without fear of reversal. Witness the dramatic rise of summary judgment motions of invalidity based on obviousness. Given a general anti-patent bias among the Federal trial bench, the result is, shall we say, “obvious.”

  • [Avatar for flann lippincott]
    flann lippincott
    July 25, 2009 09:07 am

    The truck measuring device is no different than the way horse height has been measured for centuries.