Winds of Change

Winds of Change

Those of us involved in US practice all know and love the "all elements test" for obviousness which says that:

 To establish prima facie obviousness of a claimed invention, all the claim features must be taught or suggested by the prior art. 
[In re Royka, 490 F.2d 981, 180 USPQ 580 (CCPA 1974)]

Frequent readers of the MPEP noticed that reference to In re Royka was removed from section 2143.03 and replaced with:

"All words in a claim must be considered in judging the patentability of that claim against the prior art."

[In re Wilson 424F2d 1382.1385,165 USPG 494,496 (CCPA 1970)]

It is interesting that the Wilson decision predates the Royka decision by four years, is less instructive and was still selected by the editors of the MPEP to replace the Royka citation. 

Of course, the MPEP is not the law, but it does influence the attitude of Examiners during prosecution and it is usually the first place we look when trying to steer prosecution in the desired direction.

The relevant question is:

 "Does the switch from Royka to Wilson in MPEP 2143.03 represent an effort on the part of the USPTO to aliggn policy with judicial trends?"

That question is difficult to answer.

In its precedential decision in Unigene V Apotex (CAFC 2010-1006) the court ruled: "Obviousness requires more than a mere showing that the prior art includes separate references covering each separate limitation in a claim under examination."  citing the SCOTUS decision in KSR V Teleflex.

Unigene V Apotex suggests that the CAFC feels the standards for obviousness are even more stringent than what we would understand from In re Royka.

So we can relax, right?

Not necessarily.

In another precedential decision in Tokai V Easton (2010-1057, -1116) the CAFC ruled :
“...nature of the mechanical arts is such that identified, predictable solutions to known problems may be within the technical grasp of a skilled artisan.”  and concluded  “It would have been obvious to one of ordinary skill and creativity to adapt the safety mechanisms of the prior art cigarette lighters, as disclosed in Floriot and/or Morris, to fit a utility lighter as disclosed by Shike, even if it required some variation in the selection or arrangement of particular components.”

All of this with a nod to KSR v Teleflex:

"One of ordinary skill in the art would 

not have viewed the subject matter of the asserted claims 

as unpredictable.  As the Supreme Court recognized in 

KSR, the nature of the mechanical arts is such that 

“identified, predictable solutions” to known problems may 

be within the technical grasp of a skilled artisan."

Of course the Unigene decision is after the Tokai decision so it must control, right?

Is there anybody out there besides me that misses the "bright line rules" that were easy to understand but disparaged by SCOTUS in KSR and in Bilski.

On the bright side, there is a precedential decision for every occasion here.