How does the ‘teaching, suggestion, or motivation’ (TSM) test apply in obviousness determinations?
How does the ‘teaching, suggestion, or motivation’ (TSM) test apply in obviousness determinations? The ‘teaching, suggestion, or motivation’ (TSM) test is an important concept in determining obviousness in patent examination. According to MPEP 2143, while the TSM test is not the sole test for obviousness, it remains a valid approach: “The Supreme Court in KSR…
Read MoreWhat is the “person of ordinary skill in the art” in obviousness determinations?
The “person of ordinary skill in the art” is a hypothetical figure used in obviousness determinations under 35 U.S.C. 103. The MPEP explains: “To reach a proper determination under 35 U.S.C. 103, the examiner must step backward in time and into the shoes worn by the hypothetical ‘person of ordinary skill in the art’.” This…
Read MoreHow does the level of ordinary skill in the art affect obviousness determinations?
How does the level of ordinary skill in the art affect obviousness determinations? The level of ordinary skill in the art is a critical factor in obviousness determinations under 35 U.S.C. 103. According to MPEP 2141: “The person of ordinary skill in the art is a hypothetical person who is presumed to have known the…
Read MoreHow does the KSR decision impact obviousness determinations in patent examination?
How does the KSR decision impact obviousness determinations in patent examination? The KSR v. Teleflex decision by the Supreme Court in 2007 significantly impacted obviousness determinations in patent examination. According to MPEP 2141: “In KSR, the Supreme Court particularly emphasized ‘the need for caution in granting a patent based on the combination of elements found…
Read MoreWhat is the significance of “factual findings” in patent obviousness determinations?
Factual findings play a crucial role in patent obviousness determinations. The MPEP 2142 emphasizes their importance: “The key to supporting any rejection under 35 U.S.C. 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. … [This] can often be supported by finding explicit or implicit teachings within the…
Read MoreHow does the USPTO avoid hindsight bias in obviousness determinations?
The USPTO recognizes the challenge of avoiding hindsight bias in obviousness determinations. The MPEP acknowledges: “The tendency to resort to ‘hindsight’ based upon applicant’s disclosure is often difficult to avoid due to the very nature of the examination process. However, impermissible hindsight must be avoided and the legal conclusion must be reached on the basis…
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