KSR Obviousness

KSR Obviousness Inquiry

KSR Obviousness Inquiry Cases
The cases in the 2010 KSR Guidelines Update were chosen to provide examiners with examples of both obvious and nonobvious claims.  These cases are shown below and go into more detail on the KSR Obviousness post.

Combining Prior Art Elements:
  • In re Omeprazole Patent Litigation
  • Crocs, Inc. v. U.S. Int’l Trade Comm’n
  • Sundance, Inc. v. DeMonte Fabricating Ltd.
  • Ecolab, Inc. v. FMC Corp.
  • Wyers v. Master Lock Co.
  • DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc.
Substituting One Known Element for Another:
  • In re ICON Health & Fitness, Inc.
  • Agrizap, Inc. v. Woodstream Corp.
  • Muniauction, Inc. v. Thomson Corp.
  • Aventis Pharma Deutschland v. Lupin Ltd.
  • Eisai Co. Ltd. v. Dr. Reddy’s Labs., Ltd.
  • Procter & Gamble Co. v. Teva Pharms. USA
  • Altana Pharma AG v. Teva Pharms. USA
Obvious to Try:
  • In re Kubin
  • Takeda Chem. Indus., Ltd. v. Alphapharm Pty., Ltd.
  • Ortho-McNeil Pharm., Inc. v. Mylan Labs, Inc.
  • Bayer Schering Pharma A.G. v. Barr Labs., Inc.
  • Sanofi-Synthelabo v. Apotex, Inc.
  • Rolls-Royce, PLC v. United Techs. Corp.
  • Perfect Web Techs. v. InfoUSA
Consideration of Evidence:
  • PharmaStem Therapeutics, Inc. v. Viacell, Inc.
  • In re Sullivan
  • Hearing Components, Inc. v. Shure Inc.
  • Asyst Techs., Inc. v. Emtrak, Inc.
 KSR Reaffirms Graham v. Deere obviousness methodology

1. the scope and content of the prior art;
2. the difference between the prior art and the claimed invention;
3. the level of ordinary skill in the art; and
4. secondary considerations

2007 KSR Guidelines
  • Every obviousness rejection requires:

(a) appropriate findings of fact;
(b) a reasoned explanation; and
(c) a legal conclusion of obviousness.

This is so regardless of the rationale or line of reasoning used to formulate the rejection.  No examiner may choose to disregard the Supreme Court’s decision in KSR or the associated examiner guidance materials when determining whether or not an obviousness rejection should be made.  Any determination of whether or not a claimed invention is obvious requires the examiner to consider and weigh all evidence that has properly been made of record.

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