You Suggest What? How KSR Returned Bite to Nonobviousness
![handle is hein.journals/fedcb16 and id is 263 raw text is: Note
You Suggest What? How KSR Returned
Bite to Nonobviousness
S. Jafar Ali-
Introduction
The patentability standard of nonobviousness enables the courts and the
Patent and Trademark Office to filter out non-innovative claims. There are
several prerequisites to establishing aprimafacie case ofobviousness.' The most
controversial of these requirements is the suggestion test, requiring particular
findings of a teaching, suggestion, or motivation to modify or combine prior
art references before a claimed invention can be considered obvious.2 Some
criticize the test as anti-competitive because it does not do enough to prevent
the patenting of trivial improvements.' In its recent petition to the Supreme
Court of the United States (Supreme Court)4 KSR International Co. criticized
. The author is a Patent Law Clerk for Pillsbury Winthrop Shaw Pittman, LLP, and a
former Patent Examiner for the United States Patent and Trademark Office (J.D. from George
Mason University School of Law expected 2008; B.S. in Computer Science from University
of Maryland at College Park awarded 2001)
' U.S. PATENT & TRADEMARK OFFICE, U.S. DEP'T OF COMMERCE, MANUAL OF PATENT
EXAMINING PROCEDURE § 2142, at 2100-133 to -134 (8th ed., rev. Oct. 2005) [hereinafter
MPEP].
2 See In re Vaeck, 947 E2d 488, 493 (Fed. Cir. 1991).
3 See, e.g., FED. TRADE COMM'N, To PROMOTE INNOVATION: THE PROPER BALANCE OF
COMPETITION AND PATENT LAWAND POLICY, Executive Summary, at 11-12 (2003) (advocat-
ing applying the suggestion test in a way that reflects the knowledge of those having ordinary
skill in the relevant art); COMM. ON INTELLECTUAL PROP. RIGHTS IN THE KNOWLEDGE-BASED
ECON., NAT'L RESEARCH COUNCIL, A PATENT SYSTEM FOR THE 21ST CENTURY 62, 87-95
(Stephen A. Merrill et al. eds., 2004) (expressing concern over the judicial interpretation of
nonobviousness and advocating reinvigorating the standard); John R. Thomas, Formalism
at the Federal Circuit, 52 AM. U. L. REV. 771, 802 (2003) (arguing that the rigid evidence
requirements of the suggestion test fail to reflect the variance of the level of ordinary skill
in different arts).
' The petitioner, KSR International Co., challenges various aspects of the suggestion
test, including its validity within the Supreme Court obviousness construct, as well as the
Federal Circuit's alleged pro-patentee application of the test, as embodied by the decision
in Teleflex, Inc. v. KSR Int'l Co, 119 E App'x 282 (Fed. Cir. 2005), cert. granted, 126 S.
Ct. 2965 (2006).](ViewImageLocal?handle=hein.journals/fedcb16&div=17&collection=&method=preview&ext=.png&size=3)
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You Suggest What? How KSR Returned Bite to Nonobviousness
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