The KSR decision could have been construed very broadly so as to make all inventions obvious. In the opinion, the Supreme Court held that rigid rules cannot override common sense when determining obviousness. In its broadest terms, the examiner could merely state that a modification was obvious based on common sense, and thus deem the claimed invention unpatentable.
In KSR, the invention at issue related to electronically controlling a brake pedal. The industry was moving toward electronic controls but had not done so for brakes. The Court held that it would have been obvious to make the brake system electronic since the industry was moving in that direction. In particular, the Court held that the references made of record showed that the state of the art was moving toward such electronic systems. Hence, an electronically controlled brake was deemed obvious. In contrast, prior to KSR, the Patent Office was required to provide a teaching, suggestion or motivation (“TSM”) to make a modification in order to reject a claimed invention as being obvious. This rule oftentimes precluded an obviousness determination because the examiner had to provide evidence of TSM, even when such modification was obvious based on an application of common sense.
The facts of K/S HIMPP v. Hear-Wear Technologies, LLP (Fed. Cir. 2014) were distinguished from the KSR decision, and The Federal Circuit limited applicability of KSR to the obviousness determination. In HIMPP, the invention was directed to a hearing aid, which had a behind-the-ear audio processing module, an in-the-canal module, and a connector between the modules. The connector was a multi-pronged connector. The examiner indicated during prosecution that the multi-pronged connector was “known in the art,” but did not take “official notice” of it.
When the connector is merely described as a multi-pronged connector, under KSR, it may seem that an examiner should be able to establish the existence of a multi-pronged connector without citing to a prior art reference – that would be common sense. However, the panel here held that the examiner must cite to a prior art reference in order to establish that multi-pronged connectors were known in the art. It distinguished this case from that of KSR. “[T]his case involves the lack of evidence of a specific claim limitation, whereas KSR related to the combination of references where the claim limitations were in evidence.”
This case is especially important in the context of an inter partes reexamination proceeding where new cited prior art cannot be introduced during the proceeding. To initiate the inter partes reexamination proceeding, the requester must supply new prior art references that the requester believes will invalidate the claims of the patent. After initiation of the proceeding, no new prior art references can be introduced into the proceeding. As such, if body of cited art does not contain all of the elements of the independent and dependent claims being invalidated, then the common sense approach of KSR cannot be used to supplement the body of prior art to obtain an anticipation or obviousness rejection.
I invite you to contact me with your patent questions at (949) 716-8178. Please feel free to forward this article to your friends. As an Orange County Patent Attorney, I serve Orange County, Irvine, Los Angeles, San Diego and surrounding cities.