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?