How does the KSR decision affect the standard for substantial new question of patentability?
The KSR International Co. v. Teleflex Inc. decision, which clarified the legal standard for determining obviousness under 35 U.S.C. 103, does not directly change the standard for determining a substantial new question of patentability in ex parte reexamination. The MPEP 2216 states:
“The clarification of the legal standard for determining obviousness under 35 U.S.C. 103 in KSR International Co. v. Teleflex Inc. (KSR), 550 U.S. 398, 82 USPQ2d 1385 (2007) does not alter the legal standard for determining whether a substantial new question of patentability exists.”
This means that a reexamination request cannot be based solely on asking the Office to reconsider prior art in light of the KSR decision. The request must still present the art in a new light or different way to raise a substantial new question of patentability. However, the MPEP does allow for raising a substantial new question based on a “material new analysis of previously considered reference(s) under the rationales authorized by KSR.”
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