KSR TEST - Training Update for 0 0 1 2 3 The KSR decision...

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Training Update for: 0. 0. The KSR decision; 1. Determining obviousness under 35 U.S.C. § 103; 2. Providing a rationale to support a rejection under 35 U.S.C. § 103; and 3. Considering applicant’s rebuttal evidence of nonobviousness. Training Usage 0. This training and the separate examination guidelines do not constitute substantive rulemaking. 1. Guidelines should not be cited as a basis for rejections. KSR International Co. v. Teleflex Inc. 4. 4. The Supreme Court reaffirmed Graham v. John Deere Co. as the controlling case on the topic of obviousness. 5. The Supreme Court stated that the Federal Circuit erred when it applied the well-known teaching-suggestion-motivation (TSM) test in an overly rigid and formalistic way. KSR International Co. v. Teleflex Inc. The TSM Test 0. 0. Under the TSM test, a claimed invention is obvious when there is a teaching, suggestion, or motivation to combine prior art teachings. The teaching, suggestion, or motivation may be found in the prior art, in the nature of the problem, or in the knowledge of a person having ordinary skill in the art. 1. According to the Supreme Court, the TSM test is one of a number of valid rationales that could be used to determine obviousness. It is not the only rationale that may be relied upon to support a conclusion of obviousness. The Basic Factual Inquiries of Graham v. John Deere 0. Determining the scope and content of the prior art; 1. Ascertaining the differences between the claimed invention and the prior art; 2. Resolving the level of ordinary skill in the pertinent art. Objective evidence, sometimes referred to as “secondary considerations” when timely presented by applicants must be evaluated. The Examiner as Fact Finder
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2. 2. Examiners act as fact finders when resolving the Graham inquiries. 3. Examiners must articulate findings as to the scope and content of the prior art as necessary to support the obviousness rejection being made. Key Points 0. 0. When making a rejection under 35 U.S.C. § 103, an examiner must articulate a reason or rationale to support the obviousness rejection. 1. 1. In formulating a rejection under 35 U.S.C. § 103, the rationale should be based on the state of the art and not impermissible hindsight, e.g. applicant’s disclosure. Key Points 6. Examiners need to account for all claim limitations in their rejections. 0. Either indicate how each limitation is shown by the reference(s) applied, or provide an explanation. 7. Prior art is not limited to the references being applied. 1. Prior art includes both the specialized understanding of one of ordinary skill in the art, and the common understanding of the layman.
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