More than three years after KSR, Applicants continue to file Appeal Briefs that respond to obviousness rejections with "There is no teaching, suggestion or motivation to combine the references." As the Board is quick to point out, KSR makes it clear that this is not the proper test for obviousness:
Appellant additionally argues throughout the Appeal Brief that the prior art does not teach, suggest, or motivate the proposed combination of the teachings of Ohayon and Watanabe. The correct standard, however, is whether the Examiner has articulated a reason with rational underpinning to support the proposed combination. In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (requiring "some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness") (cited with approval in KSR, 550 U.S. at 419 (holding a rigid insistence on teaching, suggestion, or motivation [TSM] is incompatible with its precedent concerning obviousness)).
(Ex parte Diamond.)
Under KSR, TSM is one rationale for combining references, but is not the only one:
Appellants also argue that the Examiner has not set forth a proper obviousness rejection because the Examiner has not articulated all of the findings “require[d]” by Manual of Patent Examining Procedure (MPEP) § 2143(G). This cited section of the MPEP pertains to the discussion of a Teaching, Suggestion, or Motivation (TSM) as one of several exemplary rationales that may be used to support a conclusion of obviousness – but the Examiner does not rely on such a rationale. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418-19 (2007) (characterizing the TSM test as a helpful insight, but rejecting the rigid requirement of a TSM).
(Ex parte Lyons.)
Here are a few cases in which the Applicant attacked TSM but didn't attack the rationale actually provided by the Examiner:
Appellants then rely on outdated case law in arguing that "[t]he motivation to combine these references is not found in any of the references." Appeal Br. 16. The Examiner, on the other hand, has provided reasoning articulating why it would have been obvious to combine the references as proposed. Ans. 9-10 (Grandey discloses materials used for noise/sound attenuation (col. 1, ll. 20-21), Brown discloses a noise/vibration absorbing media used in turbine applications (paras. 17 and 31)). The Examiner's proposed combination thus appears to merely select a suitable material according to its intended use.
(Ex parte Hardwicke.)
The underpinning of the Examiner's conclusion of obviousness is premised on a teaching of Matsuno to suspend a diagnosis under certain conditions that may lead to a misdiagnosis. While the Examiner does not explain in detail all of the underlying bases supporting this rational underpinning, one of ordinary skill in the art, reviewing the record before us, would recognize the support. As we have discussed above, the references describe a great desire to accurately diagnose the various components in the powertrain. ... As such, the Examiner's proposed combination is nothing more than predictably applying known techniques to a device ready for improvement. ...
The Examiner need only provide a reason with rational underpinning, which, as we have identified, the Examiner has done. The background knowledge, inferences, and creative steps that a person of ordinary skill in the art would employ need not always be explicitly laid out by the Examiner. Appellants have not provided any evidence, nor articulated any explanation, as to why the Examiner's reason is lacking rational underpinning. Instead, Appellants focus on the outdated TSM test. As such, we are not persuaded that the Examiner erred in concluding that the disclosures of Eich and Matsuno render obvious the subject matter of claim 9.
(Ex parte Langer, internal citations omitted.)
The Examiner first concludes that it would have been obvious to select an elastomer with an appropriate hardness. Appellants merely state that the art does not teach or suggest a vulcanized polymer having a Shore A hardness of 90 or less. However, a teaching or suggestion is not required to support a conclusion of obviousness. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007) ...
The Examiner articulates that one of ordinary skill would recognize the range of hardness values that would be suitable for oral brushes. This appears to be supported by similar statements in Libby and Coleman that we noted in our fact findings above. Appellants give no explanation why the Examiner's reason is lacking rational underpinning.
(Ex parte Roberts.)
My two cents: I don't think that mentioning teaching, suggestion or motivation is itself fatal. Nor is attacking the motivation relied on by the Examiner. But focusing too much on TSM may lead you to ignore the bigger picture: whether or not the Examiner provided "articulated reasoning with some rationale underpinning."
To increase your chances of winning on appeal, don't stop at TSM, but instead look carefully at the Examiner's rejection to see if he used a rationale like substitution, predictable results, or finite number of predictable solutions. If so, argue against that rationale. Even if the Examiner didn't use one of those rationales, you should think carefully about appealing if one of the rationales is appropriate. It's not unusual for the Board to fill in a rationale that the Examiner merely hinted at but didn't expound on. Though less common, it's not unheard of for the Board to discover such a rationale themselves.
Right.
ReplyDeleteI think it is still important to mention that the Examiner has not satisfied TSM, if he hasn't, while making absolutely clear that TSM is not the final test.
TSM is like the MOT test after Bilski: an important clue, but not the definitive test.
You also have to be extremely careful arguing MPEP 2143. The Office, in the 2010 KSR Update, reaffirmed that the Examiner still has to make the proper fact findings if traversed. But the Board does not seem to be bound by 2143 (so have fun filing a petition!). Further, examiners never frame their rejections in terms of a 2143 rationale (even if it is obvious that the Examiner is implicitly relying on one of those rationales).
What's worse: MPEP 2141 states that "These guidelines do not constitute substantive rule making and hence do not have the force and effect of law. [...] Consequently, any failure by Office personnel to follow the guidelines is neither appealable nor petitionable." That principle doesn't seem to apply to MPEP 2143 (see the 2010 KSR Update discussion above). But the principle seems to be roughly followed by the Board.
>examiners never frame their rejections in terms
ReplyDelete>of a 2143 rationale
I'm really surprised that Examiners continue to rely on TSM rather than trotting out one of the KSR rationales. I see rejections with a crappy motivation which is easily attacked, when a substitution rationale would probably make more sense.
The BPAI, on the other hand, is not afraid to use one of the KSR rationales.
I think what you mean is that examiners continue to cite passages from the art as providing a reason to combine. But the examiners don't explicitly invoke the TSM test ("teaching, suggestion, or motivation") test or MPEP 2143G.
ReplyDeleteThus is what I mean when I say that, frequently, examiners *implicitly* rely on one of the KSR/2143 rationales, even though they do not explicitly cite to - or make all of the factual findings that the 2143 requires them to make, to support the given rationale.
For example, 2143G requires the examiner to "articulate" each of the following:
(1) a finding that there was some teaching, suggestion, or motivation, either in the references themselves or in the knowledge generally available to one of ordinary skill in the art, to modify the reference or to combine reference teachings;
(2) a finding that there was reasonable expectation of success; and
(3) whatever additional findings based on the Graham factual inquiries may be necessary, in view of the facts of the case under consideration, to explain a conclusion of obviousness.
But how often do examiners fail to say anything about a reasonable expectation of success? Or cite some conjured "motivation" without showing that it is "either in the references themselves or in the knowledge generally available to one of ordinary skill in the art"?
I just won a Pre-Appeal Brief where the examiner had cited a motivation without any citation to the art. I did a google search and found it in a web page. The WayBack Machine only tracked the page to a date after the critical date, so the motivation wasn't shown to be prior art.
If examiners actually explicitly cited 2143 rationales, and made the factual findings to the support them (as 2143 is supposed to require), we would avoid a lot of these baseless rejections.
>think what you mean is that examiners continue
ReplyDelete>to cite passages from the art as providing a
>reason to combine.
Yes.
>But the examiners don't explicitly invoke the
>TSM test ("teaching, suggestion, or
>motivation") test or MPEP 2143G.
Ah. By "don't explicitly invoke" you mean the Examiner's don't make the required fact findings. Yeah, I'll agree with that.
How about an Examiner invokes the TSM test by claiming he found a motivation-to-combine, but he makes an error in obviousness analysis, by failing to do the other stuff that's required by law to to *apply* the test.
I think we're really on the same page, just quibbling about semantics. As lawyers do :-)
"look carefully at the Examiner's rejection to see if he used a rationale like substitution, predictable results, or finite number of predictable solutions"
ReplyDeleteGood luck with that. Those rationales are what is used by the BPAI as a post hoc rationalization. The Examiner rarely makes the proper findings needed to employ these particular rationales, which are all tied to particular court cases.
For example, the BPAI will mention "predictable results" yet neither they nor the Examiner identify either the results or why they were predictable.
Regardless, the Examiner's analysis in making an obviousness rejection is rarely more than a couple sentences. Being a bunch of former Examiners, the BPAI is renowned for inserting their analysis/findings after everything has been briefed and then affirming the Examiner's rejection, when in fact they are introducing new grounds of rejection.
>The Examiner rarely makes the proper findings
ReplyDelete>needed to employ these particular rationales,
>which are all tied to particular court cases.
I agree that Examiners don't always make the findings required by the MPEP, as required to *properly* use the rationale.
I still think that you might increase your chances of winning on appeal by looking for words like "substitute" and "predictable results" in the rejection, and addressing the not-properly-applied rationale. ie, explain why it's not a mere substitution or the results are not predictable.
Maybe we're not legally required to take this extra step and address stuff that the Examiner didn't put in the record. But as a practical matter, if you don't address a rationale, the BPAI may do it for you, without the benefit of your side of the argument.