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JimIvey
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Re: patent drafting post KSR
« Reply #10 on: Jun 28th, 2007, 8:58pm »
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Maybe I should read the case again, but I see TSM as alive and well.  For all the bashing of TSM they did, they only explicitly overruled the Fed Circuit's requirements that (i) the motivation in the prior art be exactly the same as applicant's and (ii) ... I forget the second one, but it was a similar rather onerous technical thingy that I never asserted anyway.  Other than that, I never saw where TSM was any more than insulted -- not overruled and not significantly modified (aside from the two technical thingies).  I recall some suggestions that TSM could be one of a number of ways to show obviousness, but nothing eliminated it as a viable framework for showing obviousness and nothing else was offered as an alternative.
 
But the Court was very clear that merely finding all the parts in the prior art somewhere was insufficient.  As I recall, they may have described a rather modest level of requisite motivation -- perhaps lowering the bar in that respect.  And, as I've ranted before, I have yet to see an examiner ever assess the level of skill in the art as required by Graham -- and addressed implicitly in TSM analysis.  Until the examiners start addressing that, I'll be taking nearly all my cases through the BPAI.
 
Regards.
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Re: patent drafting post KSR
« Reply #11 on: Jul 15th, 2007, 10:25am »
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The biggest problem is that the Court did not like TSM being applied in a rigid fashion.  Jim is correct, TSM is alive and well, it's just not the "be-all and end-all" it used to be.  In fact, if one reviews the post cert grant CAFC opinions and the post KSR opinion opinions, it's still there.
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