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Home > Nanotechnology Columns > Magda Carvalho PhD, JD > Obviousness: KSR rationale applied to nanotechnology.

Magda Carvalho
Patent Attorney
Patent Law at M. Carvalho

There are three statutory requirements for patentability: an invention must be new, nonobvious, and useful. This column focus on the requirement of nonobviousness. Obviousness rejections are the most prevalent at the United States Patent and Trademark Office (USPTO). Simply put, an "ordinary innovation" the kind an artisan could have foreseen without any toiling is not patentable. The nanotechnology industry, much of whose value derives from patents, needs to take note of this not so small issue. In 2007, the Supreme Court decision in KSR v. Teleflex has introduced new challenges for passing the obviousness test.(1) Six months after KSR's decision, the USPTO published new obviousness rules, and its impact on patent prosecution is now coming to light.(2) In nanotechnology some of the patentability issues relating to post-KSR rationales come from creation of a new nano-sized material by simple substitution of familiar materials in known methods or devices. The creation of a new nano-sized material is awesome. The trouble arises when the Examiner issues a final rejection of the claim based on post-KSR ruling. That is not the end of the issue, however. The rejection is appealable to the Board of Patent Appeals and Interferences (Board).(3) However, the Board has warned of a strict application of KSR on nanotech patent applications: that simply substituting "familiar materials" to do the same job that the prior art does may be obvious; and a conclusion of obviousness requires a showing that there existed a "reasonable expectation of success."

June 27th, 2008

Obviousness: KSR rationale applied to nanotechnology.

This column compared two cases decided by the Board: Ex-parte Kamins et. al., (4) and Ex-parte Yoshizawa et. al. (5) In Kamins, the Board upheld the rejection. The invention is related to a familiar method for producing pores using an etching mask but the pores were of nano size. The Board found obviousness because the technology was known to the prior art, the results were predicted and the inventor disclosed that the materials were available. In contrast, Yoshizawa offered a view into why the Board reversed the rejection. The inventors devised a material useful for batteries made of lithium iron phosphate that was "pore free." The Board found that the Examiner had not made a prima facie case due to the lack of evidence supporting a "reasonable expectation of success" that the new combination would work.

Criteria for Obviousness.

Section 103 of Title 35 of the U.S. Code forbids issuance of a patent when its subject matter is obvious. Section 103 sets forth that even if an invention is new, a patent may not be obtained "if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains."
Back in 1966, the Supreme Court in Graham (6) ruled that the obviousness inquiry turns on: (i) the scope and content of the relevant prior art; (ii) the differences between the prior art and the claims at issue; (iii) the level of ordinary skill in the pertinent art; and (iv) secondary considerations such as commercial success, long felt but unsolved needs, failure of others. The Graham test requires that the challenger must show that each element of the claimed invention is present in the prior art.

The Court of Appeals for the Federal Circuit interpreted the Graham factors and ruled that conclusion of obviousness needed evidence of some teaching, suggestion, or motivation to combine elements found in the prior art, the nature of the problem or the knowledge of a person having ordinary skill in the art (TSM test). (7) In addition, to reject claims as prima facie obvious the challenger must show that there was a reasonable expectation of success in achieving the results of the claimed invention by modifying or combining the prior art.(8) Evidence showing that the results of the claimed invention were unexpected may support a conclusion of nonobviousness.(9) The challenger bears the initial burden of providing a prima facie case for obviousness.(10)

In 2007, the Supreme Court returned to the issue of obviousness in the landmark case, KSR v. Teleflex. The Court found that the TSM test was "rigid," because it ignored that "common sense teaches…that familiar items may have obvious uses beyond their primary purposes, and in many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle," that a person of ordinary skill is also a "person of ordinary creativity" and revived the "obvious to try" standard.(11) KSR advices us that "a patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art." Therefore, it must be a showing of "an apparent reason to combine the known elements in the fashion claimed by the patent at issue." Additionally, "rejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness."(12)

Obviousness and the Patent Office.

The Patent Office applies the Graham factors, TSM test and KSR standards in conducting its obviousness analysis. The Examiner must establish a prima facie case to reject a claimed invention as obvious by meeting three criteria. First, the prior art reference, or combined references, must teach or suggest all the claim elements. Second, there must be some suggestion or motivation, either in the references themselves or in the knowledge generally available to the artisan, to modify or to combine the reference teachings. (13) Finally, there must be a reasonable expectation of success.

Ex parte Kamins et. al.

Kamins' invention was aimed at electronic devices. Kamins claimed to have created a method for forming pores of nanometer size useful as mold for depositing a material or for aligning molecule(s). The invention introduced a nanoparticle size etch mask to make nanopores in an insulating layer. The etching process was of chemical nature, by using reactive ions, and the etching was directional.

The Examiner found two references that rendered the invention obvious. The Kikuchi reference revealed a method for forming micropores using microspheres as masks for etching in an insulating layer and taught that it was desirable to make smaller sized pores. But, Kikuchi did not disclose nanoparticle sized mask, directional etching and reactive ion etching. These additional elements were revealed by Deckman reference. Deckman taught that nanoparticle sized masks were available, and that directional etching and etching with reactive ions were well-known in the art. In addition, the inventor has admitted that "nanoparticles" were prior art as it was set forth in the best mode for practicing the method. The Examiner concluded that an artisan would have expected that substituting "nanoparticles" for "micropheres" would form pores of nanosize and they would work for their intended purpose. The Board agreed.

The Board concluded that an artisan could have combined the information from the two prior art references to develop the same invention that Kamins was trying to patent. The Board's reasoning was based on several findings. Both Kikuchi and the claimed invention methods were equivalent but for the nanometer size and chemical etching of directional type; nonetheless Kikuchi taught of the desirability of using smaller sizes. Deckman rendered the method of etching with reactive ions well known in the art. The invention's best mode conveyed that the 2-250 nanometers particles usable in etching masks were readily available in commerce; specifically, inventors conceded that an artisan would be "familiar with the existence of the nanoparticles and would have thought of making the claimed nanopores."

As the Board noticed, the test is what the combined teachings of those references would have suggested to one of ordinary skill in the art. The suggestion statement from Deckman showing that both etching with reactive ions and mask particles of nanosize were familiar in the art upheld the obviousness rejection. Thus, the Board found that both Kikuchi and Deckman provided adequate reasons for an artisan to pursue working with smaller mask particles. Relying on KSR, the Board concluded that "the combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results."(14)

Ex parte Yoshizawa.

In Yoshizawa, the technology relates to lithium batteries. The invention was directed to a material useful for a positive electrode of a non-aqueous electrolyte battery. The material was made of pore free 1-300nm particles of a compound containing lithium (Li) and iron (Fe) including lithium iron phosphate (LiFePO4).

The Examiner found two references, Goodenough and Kumar, that when combined made a case for an obviousness rejection. Goodenough has developed LiFePO4 which was useful for lithium batteries. What was missing from this reference was a method of making "pore free" material. That is supplied by Kumar which described a process of producing lithium metal oxide particles of 1 micron in size and pore free. Combining both references met the requirement that all elements of the claimed invention must be present in the prior art (LiFePO4 and a method for making pore free material). Thus, the Examiner concluded that it would have been obvious to an artisan to make the LiFePO4 material by the Kumar method. The Board disagreed.

The Board's rationale was based on the fact that Kumar taught only of a method to make metal products. Since phosphorous is a non-metal, phosphorous was thus not included in the genus of Kumar's products. Thus, Kumar did not teach a method to make non-metal materials such as the LiFePO4 of Goodenough. The Board specifically stated that KSR tell us that "[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness."(15) Accordingly, it must be shown that an artisan would have had reason to pursue the use of LiFePO4, the claimed invention material. There must be some evidence showing that the artisan could have a reasonable expectation of success to produce the results achieved by the claimed invention when combining the references. The Examiner blew it here because he/she failed to provide evidence or rationale of a reasonable expectation of success to sustain a prima facie case of obviousness.

Rebutting a post-KSR obviousness rejection.

In Kamins, the prima facie case of obviousness was especially difficult to rebut. The invention merely combined materials and methods which performing functions have been demonstrated previously; thus, it failed the obviousness test. In this scenery, the strategy is to work the claim terms around KSR principle, "the combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predicable results." One approach is to rely on persuasive language in support of nonobviousness such as (i) choosing claim terms which turn away from suggesting the element or method is familiar; (ii) selecting claim language that "teaches away;" (16) and (iii) stressing that the artisan could not have a reasonable expectation of success because of unexpected difficulties, the results were thus unexpected.(17)

In Yoshizawa, the combination of two references disclosed the elements of the claimed invention. However, the proper legal question was whether an artisan engaging in the production of composite metal oxide material starting with Kumar would have expected to succeed in creating what was claimed by using a non-metal. In order for the Examiner to sustain a prima facie case he needed to come up with additional prior art references or a rationale providing a reason for (i) using a non-metal material in Kumar's method, (ii) evidence that the marketplace created a strong incentive to use non-metal material in Kumar method, or (iii) the prior art taught a number of methods that advanced the claimed invention.

(1) KSR Int'l Co v. Teleflex Inc., 127 S.Ct 1727 (2007).
(2) The USPTO published examination guidelines for determining obviousness under 35 U.S.C. 103, in view of the Supreme Court decision in KSR International Co. v. Teleflex Inc.
Examination Guidelines for Determining Obviousness Under 35 U.S.C. 103 in View of the Supreme Court Decision in KSR International Co. v. Teleflex Inc. [PDF] (10Oct2007)
(3) In fact, there are two responses to a final rejection that are considered fully responsive; (a) an appeal, or (b) a request for continued examination (RCE).
(4) Ex Parte Kamins et. al, No. 2007-2983 (Bd. Pat. App. & Int. August 3, 2007)
(5) Ex Parte Yoshizawa, No. 2007-3414 (Bd. Pat. App. & Int. October 4, 2007)
(6) Graham v. John Deere Co., 393 U.S. at 17-18 (1966).
(7) In re Kahn, 441 F.3d 977, 986-88 (Fed. Cir. 2006) (the Federal Circuit provided a detailed account of its obviousness standard; perhaps perceiving that the Supreme Court would grant certiorari in KSR after the Court asked the solicitor general for a brief regarding KSR's petition). See generally Alan P. Klein, Understanding the Doctrines of "Reason, Suggestion, or Motivation to Combine and "Reason, Suggestion, or Motivation to Modify," 45 IDEA 293 (2005).
(8) In re Merck & Co., Inc., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
(9) In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976).
(10) 37 C.F.R. section 1.56(b)(2)(ii).
(11) KSR Int'l Co. v. Teleflex Inc., at 1727 (Court noted that an invention might be obvious "[w]hen there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp.").
(12) See, In re Ochiai, 71 F.3d 1565, 1571, (Fed. Cir. 1998); In re Wright, 343 F.2d 761, 769-770 (CCPA 1965).
(13) It should be noted that the teaching or suggestion to make the claimed combination and the reasonable expectation of success must both be found in the prior art, and not based on patent application's disclosure.
(14) KSR Int'l Co v. Teleflex Inc. at 1739.
(15) In re Kahn, 441 F.3 977, 988, 78 USPQ2D 1329, 1336 (Fed. Cir. 2006). Statement quoted with approval by the Supreme Court in KSR Int'l Co. at 1741 (2007).
(16) In KSR, the Court looked favorably on situations "when the prior art teaches away from combining certain known elements, discovery of a successful means of combining them is more likely to be non-obvious," citing United States v. Adams, 383 U.S. 39 (1966).In Adams, the Court found the invention to be non-obvious. The invention was directed to a "wet battery," which was atypical because of the water element and different electrode materials. The Court in KSR told that in Adams the "prior art warned that risks were involved" in combining types of electrodes employed in the invention. But, the combination of that elements worked well, which was "an unexpected and fruitful manner" thus the invention was not obvious to the artisan. (emphasis added). Also, other ways include size-dependent unexpected results and absence of an enabling method for producing nanoscale materials of certain properties, as discussed in Vivek Koppikar, Stephen B. Maebius & J. Steven Rutt, Current Trends in Nanotech Patents: A View From Inside the Patent Office, 1 NANOTECH. L. & BUS. 24, 30 (2004).
(17) KSR and Graham, as well as a myriad of precedents, teach that secondary considerations such as unexpected results may confer patentability.

Please send your comments to Magda Carvalho at

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