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   [TELEFLEX] New Test for Obviousness
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   Author  Topic: [TELEFLEX] New Test for Obviousness  (Read 6243 times)
george
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[TELEFLEX] New Test for Obviousness
« on: Apr 30th, 2007, 9:03am »
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The Supreme Court has apparently ruled in Teleflex Inc. v. KSR International Inc.  See an article reporting on it.
 
http://www.bloomberg.com/apps/news?pid=20601087&sid=aHigP6BkC8pE& ;refer=home
 
Not sure what the new test is.
« Last Edit: May 1st, 2007, 7:59am by JSonnabend » IP Logged
JimIvey
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Re: New Test for Obviousness
« Reply #1 on: Apr 30th, 2007, 9:48am »
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Opinion is here:
http://www.supremecourtus.gov/opinions/06pdf/04-1350.pdf
 
Regards.
 
P.S.  That link might be broken.  Here's an alternative link:
http://www.law.cornell.edu/supct/html/04-1350.ZS.html
« Last Edit: Apr 30th, 2007, 10:02am by JimIvey » IP Logged

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James D. Ivey
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Wolfcastle
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Re: New Test for Obviousness
« Reply #2 on: Apr 30th, 2007, 1:01pm »
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So what is a finite number when something is obvious to try?
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JimIvey
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Re: New Test for Obviousness
« Reply #3 on: Apr 30th, 2007, 3:26pm »
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I wondered the same thing.  But I think the point is that, when there's an infinite number of things to try, that means you really have no idea what to try.  
 
I think a clearer formulation of that particular sentence would be:  "a person of ordinary skill has good reason to pursue any and all known, predictable solutions within his or her technical grasp to solve a particular problem."
 
Lately, I've been seeing a lot of obviousness rejections that ignore the TSM test and are relying instead on the Graham factors -- presumably in hopes of a reversal in this case.  However, it's interesting to note that I have yet to see an examiner resolve the level of ordinary skill in the art.  Of course, one way to determine that one of ordinary skill in the art would have known to try a particular combination would be to find some teaching, suggestion, or motivation available to one of ordinary skill to make the combination.  While TSM may not be mandatory, it seems to suffice as a prima facie showing of obviousness if done properly.
 
Regards.
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James D. Ivey
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patentsusa
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Re: New Test for Obviousness
« Reply #4 on: Apr 30th, 2007, 4:17pm »
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The more flexible standard will make it even easier for examiners to take the position that everything is obvious.   Well, they always did that anyway, now it will be harder to argue against those rejections.  
 
The Supreme Court does seem to endorse the "teaches away" arguments.  That would seem to be the best point to argue in the future if you can make a good argument along those lines.  Sometimes you can't, though.  
 
They also endorse arguments of secondary considerations, but I've never liked the idea of submitting an affidavit that could be attacked in litigation.
 
I wonder what happens to the presumption of validity for all the patents in which attorneys argued there was no teaching, suggestion, or motivation to combine the references?
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Deepak Malhotra, JD, BSEE
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Malhotra Law Firm
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