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   [TELEFLEX] New Test for Obviousness
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   Author  Topic: [TELEFLEX] New Test for Obviousness  (Read 6231 times)
JimIvey
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Re: New Test for Obviousness
« Reply #5 on: Apr 30th, 2007, 8:04pm »
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They didn't seem to discard the TSM test completely.  Aside from saying that the test shouldn't be rigidly applied, I don't think they offered alternatives.  I would have expected a complete dropping of the TSM test to revert to a full-blown Graham analysis.  That didn't happen.
 
I'd say they eliminated some of the appurtenant dogma associated with the TSM test to the extent the TSM required that the motivation found in the prior art be the same as the motivation of the applicant.  As much as it makes my job harder, I'd have to agree with that part of the opinion.
 
I would suggest to the PTO to not drop TSM analysis entirely.  I still think that, if done properly, TSM analysis suffices for establishing obviousness under Graham.  If the examiner cites A and B and explicit teaching that A and B would work well together, I have no idea how to rebut that.  Of course, that doesn't mean that something less than perfect TSM analysis wouldn't suffice, but they should go with their strongest argument and TSM would likely be it if it's available.
 
on Apr 30th, 2007, 4:17pm, patentsusa wrote:
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?

Interesting thought.  Personally, I don't think I've ever prevailed over an obvious rejection arguing the lack of a TSM for the combination.  Of course, that often results in a new rejection rendering my arguments moot, so maybe I do win on those arguments.
 
I suppose the same concern would be there for all patents issued and issuing on Notices of Allowance prior to a few days ago.  It's possible the examiner didn't assert an obviousness rejection based on an erroneous believe that missing TSMs were prerequisites to rejecting.  Personally, I find that highly unlikely.  Most of the cited motivations I've seen are pulled from the application itself (e.g., "because it would work better") or pulled out of the examiner's ... uh ... hat.  Yeah, "hat" ... that's what I was going to say.  Hat.
 
I intend to continue to push examiners to resolve the level of ordinary skill in the art -- effectively requiring something like a TSM to show that the combination itself would have been obvious to one of ordinary skill.
 
Regards.
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James D. Ivey
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Re: New Test for Obviousness
« Reply #6 on: Apr 30th, 2007, 9:47pm »
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Out of curiosity, how does one resolve the level skill of one of ordinary skill in the art--one person's opinion of what is a level of ordinary skill is not going to be the same as another person's opinion.
 
I'm reminded of a story my first trainer told me of an attorney who was trying to overcome an obviousness rejection by submitting signed affidavits from field workers that they as persons of ordinary skill in the art would not have found it obvious to combine the teachings of the prior art to arrive at the claimed irrigation system.  The inventor had a degree in civil engineering while some of the field workers couldn't even read and just made their marks on the affidavits, yet the attorney thought the field workers best reflected the level of ordinary skill in the art.
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JimIvey
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Re: New Test for Obviousness
« Reply #7 on: Apr 30th, 2007, 11:09pm »
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Yeah, it's not an easy thing to do.  Yet, it's an essential part of a prima facie case for obviousness under Graham.  
 
FWIW, I think the TSM test was a way around that -- find documentary evidence that people in the art were thinking along the same lines as the applicant.  Then, you've established that information regarding how to compose the invention was available to all in the art -- then the inquiry becomes simply whether the TSM in combination with the art was enabling.
 
I looked for the quote but couldn't find it.  The Court reaffirmed that it's entirely insufficient to merely show that each element was in the prior art taken as a whole.  If the elements are found in different references, there must be something more to show obviousness.  From what I see coming out of the examining corps, there is nothing more.
 
Obviousness analysis is hard.  There's no getting around that.  As the law currently stands, the burden is on the examiner to establish a prima facie case for unobviousness, and I think they rarely -- if ever -- actually meet that burden.  But, who decides whether they've met that burden?  Why, the examiner herself makes that determination.  So, the burden is on the applicant to show that something less that a prima facie case is, in fact, something less than a prima facie case.
 
Which all brings me back to inadequate resources to do a proper job of patent examination.  Obviousness analysis is hard, but not beyond the abilities of the patent examiner of ordinary skill -- just beyond the resources (time, mainly) allocated to the patent examiner of ordinary skill.
 
Regards.
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Bill Richards
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Re: New Test for Obviousness
« Reply #8 on: May 1st, 2007, 5:51am »
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I'd be interested in the group's thoughts on opinion practice, especially patentability opinions.  It would seem that such opinions will now take much longer, be filled with more disclaimers, and, of course, cost more.  It will also mean that many, seeing the "tilt" of the system, will just decide to walk away.
« Last Edit: May 1st, 2007, 5:52am by Bill Richards » IP Logged

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JSonnabend
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Re: New Test for Obviousness
« Reply #9 on: May 1st, 2007, 7:57am »
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Patentability opinions?  Those are easy.  Never conclude anything Wink.  
 
Of course I joke a bit by saying that, but patentability opinions are usually so highly "qualified" that clear conclusions can be difficult to discern.  And now, with Teleflex decided, attorneys can always throw in the  "well, the law has recently changed and it's unclear how it will be applied in the PTO" type language.
 
- Jeff
« Last Edit: May 1st, 2007, 7:58am by JSonnabend » IP Logged

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