What are the rationales for obviousness rejections after KSR?

What are the rationales for obviousness rejections after KSR?

Following the KSR v. Teleflex decision, the USPTO identified several rationales that may support a conclusion of obviousness. According to MPEP 2141, these rationales include:

1. Combining prior art elements according to known methods to yield predictable results
2. Simple substitution of one known element for another to obtain predictable results
3. Use of known technique to improve similar devices (methods, or products) in the same way
4. Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results
5. “Obvious to try” – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success
6. Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art
7. Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention

The MPEP states: “These rationales exemplify the ways in which a prima facie case of obviousness may be rebutted by applicant, and are not intended to be an all-inclusive list.” Examiners should consider these and other appropriate rationales when making obviousness determinations.

To learn more:

• KSR rationales
• obviousness rejections
• patent examination
• 35 U.S.C. 103