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INTELLECTUAL PROPERTY LAW WORKSHOP
GETTING YOUR PATENT GRANTED
OVERVIEW OF SIGNIFICANT PATENT CASES
Wei Wei Jeang
Andrews Kurth LLP
1717 Main Street, Suite 3700
Dallas, TX 75201
weiweijeang@akllp.com
28th Annual Advanced IP Law Course
The State Bar of Texas
Intellectual Property Law Section
March 18, 2015

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Wei Wei Jeang*
Andrews Kurth LLP
1717 Main Street, Suite 3700
Dallas, TX 75201
weiweijeang@akllp.com
Wei Wei Jeang is a Partner at Andrews Kurth LLP, where she focuses on working with high tech
companies in the U.S. and abroad. Wei Wei assists clients to obtain patent protection, license
patent portfolios, and enforce those patents. She also works closely with clients on trademark and
other intellectual property issues. Wei Wei has a B.S. Computer Engineering degree from the
University of Illinois in Urbana-Champaign, and a Juris Doctorate degree from Southern
Methodist University Dedman School of Law.
Wei Wei is the immediate past Chair of the Dallas Bar Association Intellectual Property Section,
a Trustee of the Dallas Bar Foundation, and a Master of the Honorable Barbara M.G. Lynn
American Inn of Court. She also serves on The Institute for Law and Technology Advisory
Board of the Center for American and International Law. Wei Wei is a Co-Founder of Women in
IP, and served as President of the Dallas Asian American Bar Association.
Wei Wei’s recent recognitions include: Inspiring Women of the Southwest Award, Southwest
Jewish Conference; Best Lawyer in America; Texas Super Lawyer, Texas Monthly; and Best
Lawyers in Dallas, D Magazine. Wei Wei is a frequent speaker on intellectual property law
topics. Wei Wei is fluent in Mandarin Chinese is the proud owner of a historic fishing lodge in
Alaska.
* The opinions expressed herein are solely that of the author.

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INTELLECTUAL PROPERTY LAW WORKSHOP
GETTING YOUR PATENT GRANTED
Overview of Significant Patent Cases
By Wei Wei Jeang
Having practiced patent law for over twenty-six years, it has been remarkable to see the
pendulum swinging to and fro, and to experience the significant changes that have occurred
along the way. With the U.S. Supreme Court becoming more actively engaged in patent cases,
and sweeping changes in patent legislation in the form of AIA, patentees and patent practitioners
must do more to keep up with the fast and furious pace. This paper is a review of the legal
landscape patent attorneys must navigate in today’s prosecution practice.
35 U.S.C. § 101
When I first picked up the 37 C.F.R. and began working in-house as a patent agent in
1988, many of the engineers I encountered were doubtful that software inventions were
patentable. In 1981, the U.S. Supreme Court recognized in Diamond v. Diehr that even though
computer software implementing a mathematical formula is used to control the rubber curing
process, the protection sought is for the entire process that encompasses the mathematical
equation in conjunction with all of the other steps in the claimed process. Diamond v. Diehr, 450
U.S. 175, 187 (1981). The Court also realized that “if the computer use incorporated in the
process patent significantly lessens the possibility of ‘overcuring’ or ‘undercuring,’ the process
as a whole does not thereby become unpatentable subject matter” under 35 U.S.C. §101 by virtue
of the use of the computer. Id. (“[A] claim drawn to subject matter otherwise statutory does not
become nonstatutory simply because it uses a mathematical formula, computer program, or
digital computer.”). This is consistent with my understanding of computers’ operation. The
computer is a tool that makes computation and analysis much easier, and processes that utilize
computers should not be automatically barred from patent protection.
Diehr was consistent with prior cases Parker v. Flook (S. Ct. 1978) and Diamond v.
Chakrabarty, 447 U.S. 303 (1980). Flook dealt with a method for updating an alarm limit used to

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signal abnormal conditions in a catalytic conversion process. Chakrabarty dealt with a bacterium
capable of breaking down crude oil for cleaning up oil spills. In both cases the patents were held
as patent-ineligible under 35 U.S.C. §101.
In In Re Alappat, the Court of Appeals for the Federal Circuit held in an en banc decision
that Alappat's invention was in fact a "machine," one of the four categories of patentable subject
matter under §101. In Re Alappat, 33 F.3d 1526, 1536 (Fed. Cir. July 29, 1994) (en banc).
Alappat's claims are drawn to a so-called "rasterizer" which is used in a digital oscilloscope to
smooth waveform data prior to displaying the waveform on the oscilloscope screen. Id. at 1537.
The independent apparatus claim was written in means-plus-function language, and was deemed
by an expanded panel of the BPAI convened by the Commissioner to be a process claim and
ineligible for patent protection because it was a mathematical algorithm. Id. at 1539. The
majority en banc opinion made it clear that just because the claims cover a programmed general
purpose computer does not make them nonstatutory. Id. at 1545. Instead, a programmed general
purpose computer becomes a new machine once a computer program is loaded into memory, and
is therefore eligible for patent protection. Id. Again, as a computer engineer, this is consistent
with my understanding of how computers operated.
Four years later, we encountered the State Street Bank case that further affirmed that
computer-implemented methods for doing business are not excluded subject matter. State Street
Bank & Trust Co. v. Signature Financial Group, Inc., 149 F.3d 1368 (Fed. Cir. 1998). State
Street held that a claimed invention is eligible for patent protection if it involved some practical
application and “produces a useful, concrete and tangible result.” Id. at 1373. Because the claim
in question involved “transformation of data, representing discrete dollar amounts, by a machine
through a series of mathematical calculations into a final share price, constitutes a practical
application of a mathematical algorithm, formula, or calculation,” the requirements of §101 are
met. Id. This decision spurred patent activities and resulted in the filing of many “business
method” patents.
The pendulum began to swing in the other direction in Bilski v. Kappos, 561 U.S. 593
(2010). The Bilski patent is directed to a “method for managing the consumption risk costs of a
commodity sold by a commodity provider at a fixed price.” The patent examiner and the Board
of Appeals rejected the claim as being directed to unpatentable subject matter. On appeal, the

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Federal Circuit held that the claim was not patentable according to a “machine or
transformation” test, which required the claimed process to be tied to a particular machine or
transforms an article into a different state or thing. However, the Supreme court rejected the
Federal Circuit's holding in that the machine-or-transformation test is the sole test to determine
whether a particular process constitutes patent-eligible subject matter. Instead, the Court held
that business methods can be patentable, and this machine-or-transformation test can provide an
“important and useful clue” for the analysis. However, because the claim is directed to an
“abstract idea,” the Court held that it is ineligible for patent protection.
In a unanimous 2012 decision, the U.S. Supreme Court again opined on the question of
eligible patentable subject matter. Mayo Collaborative Services v. Prometheus Laboratories, Inc.
132 S.Ct. 1289 (2012). The Court held that “to transform an unpatentable law of nature into a
patent-eligible application of such a law, one must do more than simply state the law of nature
while adding the words ‘apply it.’” Id. at 1294 (emphasis original). The patent claims in question
recite an administering drug step, a determining step to measure the resulting metabolite levels in
the patient’s blood, and a “wherein” step describing metabolite concentration levels that are
either too high or too low. Id. at 1295. The Court pointed out the precedent set in Parker v. Flook
437 U.S. 584 (1978), which “insist[s] that a process that focuses upon the use of a natural law
also contain other elements or a combination of elements, sometimes referred to as an ‘inventive
concept,’ sufficient to ensure that the patent in practice amounts to significantly more than a
patent upon the natural law itself. Id. at 1294. Because the claims set forth laws of nature -- the
relationship between blood concentrations of metabolites and the dosages of thiopurine drug --
the Court pondered the question of “whether the claims do significantly more than simply
describe these natural relations.” Id. at 1297 (emphasis added). The Court dismissed the notion
that interpretation of patent statutes should depend on “draftsman’s art” to make inventions
patent-eligible. Id. at 1294. The Court held that the claimed steps “when viewed as a whole, add
nothing significant beyond the sum of their parts taken separately,” and are “not sufficient to
transform unpatentable natural correlations into patentable applications of those regularities.” Id.
at 1298.
The latest in this continuing saga is the case unanimously decided by the Supreme Court
last term, Alice Corporation Pty. Ltd. v. CLS Bank International, 134 S.Ct. 2347 (2014). The

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Alice Court applied the rationale developed in Mayo to a computer-implemented scheme for
mitigating settlement risk. The Court held that such a scheme is a patent-ineligible abstract idea.
The Court applied a two-step analysis that was set out in Mayo: (1) determine whether the claims
at issue are directed towards an abstract idea, law of nature, or natural phenomenon, and (2) if so,
determine whether the claim contains “an inventive concept” that is “an element or combination
of elements that is ‘sufficient to ensure that the patent in practice amounts to significantly more
than a patent upon the [ineligible concept] itself.” Id. at 2355. The Court further announced that
“the method claims, which merely require generic computer implementation, fail to transform
that abstract idea into a patent-eligible invention.” Id. at 2356. Here, the claimed steps, taken
separately, are “purely conventional,” and that considered “as an ordered combination,” the
method adds nothing that is not already present when the steps are considered separately.” Id. at
2359. After Alice, it is apparent that the recitation of generic computer limitations would not
make an otherwise ineligible claim patent-eligible. However, it is difficult to discern from the
opinion what the Court thinks is that fairy dust that would amount to what is “significantly more”
and thus push the subject matter into patent-eligible territory.
The Alice case has been widely criticized as using abstract and undefined terms such as
“significantly more,” and “inventive concept” that do not provide any objective guidance.
Moreover, the second step in the Mayo analysis appears to confuse §101 with the determination
of novelty under §102 or §103 that the Diehr Court cautioned and admonished -- “The question
therefore of whether a particular invention is novel is ‘wholly apart from whether the invention
falls into a category of statutory subject matter.’” Diehr at 190 (citing In re Bergy, 596 F.2d 952,
961 (CCPA 1979))). Justice Breyer wrote in the Mayo opinion that “[t]hese considerations lead
us to decline the Government’s invitation to substitute §§102, 103, and 112 inquiries for the
better established inquiry under §101,” which contradicts Diehr. Mayo at 1304. These critics
pointed out that the Diehr Court cautioned against this kind of analysis and referenced legislative
history of the 1952 Patent Act which provided that “Section 101 sets forth the subject matter that
can be patented, ‘subject to the conditions and requirements of this title.’ The conditions under
which a patent may be obtained follow, and Section 102 covers the conditions relating to
novelty." (citing S. Rep. No. 1979, 82d Cong., 2d Sess., 5 (1952)).

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Some further criticize that the second step of looking for an “inventive concept” in
Mayo’s two-step analysis is also in direct contradiction with Diehr in which the Court there
understood that:
In determining the eligibility of respondents' claimed process for patent protection
under 101, their claims must be considered as a whole. It is inappropriate to
dissect the claims into old and new elements and then to ignore the presence of
the old elements in the analysis. This is particularly true in a process claim
because a new combination of steps in a process may be patentable even though
all the constituents of the combination were well known and in common use
before the combination was made. The "novelty" of any element or steps in a
process, or even of the process itself, is of no relevance in determining whether
the subject matter of a claim falls within the 101 categories of possibly patentable
subject matter.
Diehr at 188-189 (emphasis added). Subsequent to Alice, a slew of lower court cases invalidated
patents on the basis of §101, and more patent applications are being challenged by Examiners on
the basis of ineligible subject matter, causing consternation among the patent bar as well as at
corporations who have advanced the state of the art in software, biotech, and medical diagnostic
areas.
The U.S. Patent and Trademark Office has now published the 2014 Interim Guidance on
Patent Subject Matter Eligibility in December 2014 (“Interim Eligibility Guidance”) that
supplements the Preliminary Examination Instructions published on June 25, 2014, but
supersedes the Procedure for Subject Matter Eligibility Analysis Of Claims Reciting Or
Involving Laws Of Nature/Natural Principles, Natural Phenomena, And/Or Natural Products
published in March 4, 2014. The Interim Eligibility Guidance includes the following flowchart
having steps 1, and 2A and 2B that Examiners should use during examination of patent
applications.

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This analysis hinges on the question of whether the claims “recite additional elements
that amount to significantly more than the judicial exception” once it is recognized that the claim
is directed to “a law of nature, a natural phenomenon, or an abstract idea.” (emphasis added).
The Interim Eligibility Guidance provides a list of illustrative concepts that have been
previously construed as abstract ideas as guidance for determining step 2A in the flowchart:

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1. mitigating settlement risk (Alice)
2. hedging (Bilski)
3. creating a contractual relationship (buySafe)
4. using advertising as an exchange or currency (Ultramercial)
5. processing information through a clearing house (Dealertrack)
6. comparing new and stored information and using rules to identify options
(SmartGene)
7. organizing information through mathematical correlations (Digitech)
8. the Arrhenius equation for calculating the cure time of rubber (Diehr)
9. a mathematical formula relating to standing wave phenomena (Mackay Radio)
10. a mathematical procedure for converting one form of numerical representation to
another (Benson)
Step 2B is the “search for an ‘inventive concept,” which focuses on the finding that the
claim “amounts to significantly more” than “a law of nature, a natural phenomenon, or an
abstract idea.” The Interim Eligibility Guidance also provides a list of limitations that have been
shown to be “significantly more”:
1. improvements to another technology or technical field
2. improvements to the functioning of the computer itself
3. applying the judicial exception with, or by use of, a particular machine
4. effecting a transformation or reduction of a particular article to a different state or
thing
5. adding a specific limitation other than what is well-understood, routine and
conventional in the field, or adding unconventional steps that confine the claim to
a particular useful application
6. other meaningful limitations beyond generally linking the use of the judicial
exception to a particular technological environment
In contrast, limitations that have been found to be insufficient to qualify as “significantly
more”:
1. adding the words “apply it” (or an equivalent) with the judicial exception, or mere
instructions to implement an abstract idea on a computer

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2. simply appending well-understood, routine and conventional activities previously
known to the industry, specified at a high level of generality, to the judicial
exception, e.g., a claim to an abstract idea requiring no more than a generic
computer to perform generic computer functions that are well-understood, routine
and conventional activities previously known to the industry
3. adding insignificant extrasolution activity to the judicial exception, e.g., mere data
gathering in conjunction with a law of nature or abstract idea
4. generally linking the use of the judicial exception to a particular technological
environment or field of use
The Interim Eligibility Guidance cautions that some obvious cases would not require the
application of the full eligibility analysis. For example, “a robotic arm assembly having a control
system that operates using certain mathematical relationships,” “an artificial hip prosthesis
coated with a naturally occurring mineral” are not attempts to tie up the use of the mathematical
relationships or the mineral, and are patent eligible subject matter.
As a final note, some have speculated that in the wake of Alice, patent practitioners
should consider using means-plus-function claims to avoid the ineligibility question under §101,
and to include as much of the technological alternatives in the specification as possible. The
Ramifications of Alice: A Conversation with Mark Lemley,
http://www.ipwatchdog.com/2014/09/04/the-ramifications-of-alice-a-conversation-with-mark-
lemley/id=51023/ (September 4, 2014).
35 U.S.C. §112
When I first started drafting patent applications, I was trained to always include means-
plus-function claims because according to §112 ¶6, means-plus-function elements “shall be
construed to cover the corresponding structure, material, or acts described in the specification
and equivalents thereof.” Patent practitioners have historically employed "means for" limitations
in claims with the intent and expectation that in litigation they will be able to argue that the
limitation reads on any means for performing the claimed function, known and unknown at the
time the application for patent was filed, so long as such an interpretation would not render the
claim invalid. In the Patent Office during prosecution, a means-plus-function limitation was
construed as literally covering all means or structures for performing the claimed function. Thus

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as the basis of a rejection, the Patent Office could rely on prior art that disclosed the claimed
function but no specific structure for performing the function. See Harry F. Manbeck,
Applicability of the Last Paragraph of 35 U.S.C. § 112 to Patentability Determinations Before
the Patent and Trademark Office, 1134 OFF. GAZ. PAT. OFFICE 631, 636 (Jan. 7, 1992),
reprinted in 1135 OFF. GAZ. PAT. OFFICE 8 (Feb. 4, 1992) (discussing the Patent Office's
sweeping and long-standing practice of ignoring section 112(6) and construing means plus
function limitations so as to cover any means for performing the function, such that a prior art
reference that met the recited function met the limitation). However, there was tension with the
Federal Circuit. In litigation, a means-plus-function limitation was construed under §112(6) as
literally covering only the structure disclosed in the specification and equivalents thereof that
perform identically the function recited. A claim thus cannot be literally infringed unless the
accused device includes a structure for performing the claimed function that is the same as or
equivalent to the structure disclosed in the patent specification for performing the claimed
function.
The Patent Office was brought in line with the Federal Circuit by the unanimous en banc
ruling in In re Donaldson Co., 16 F.3d 1189, 1194, 29 USPQ2d 1845, 1850 (Fed. Cir. 1994). The
Court held that the Patent Office may not disregard the structure disclosed in the specification
corresponding to means-plus-function claim language when rendering a patentability
determination. As a result, §112(f) or pre-AIA §112(6) limitations are likely to be afforded a
more narrow interpretation than a limitation that is not crafted in “means plus function” format.
Non-structural generic placeholders that have been held to invoke 35 U.S.C. §112(f) or
pre-AIA 35 U.S.C. §112(6) include: “mechanism for,” “module for,” “device for,” “unit for,”
“component for,” “element for,” “member for,” “apparatus for,” “machine for,” or “system for.”
Welker Bearing Co., v. PHD, Inc., 550 F.3d 1090, 1096, 89 USPQ2d 1289, 1293-94 (Fed. Cir.
2008); Massachusetts Inst. of Tech. v. Abacus Software, 462 F.3d 1344, 1354, 80 USPQ2d 1225,
1228 (Fed. Cir. 2006); Personalized Media, 161 F.3d at 704, 48 USPQ2d at 1886–87; Mas-
Hamilton Group v. LaGard, Inc., 156 F.3d 1206, 1214-1215, 48 USPQ2d 1010, 1017 (Fed. Cir.
1998).
However, §112(6) will not apply if persons of ordinary skill in the art reading the
specification understand the term to be the name for the structure that performs the function,

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even when the term covers a broad class of structures or identifies the structures by their function
such as “circuit,” “detent mechanism,” “digital detector,” “reciprocating member,” “connector
assembly,” “perforation,” “sealingly connected joints,” and “eyeglass hanger member.” Linear
Tech. Corp. v. Impala Linear Corp., 379 F.3d 1311, 1321, 72 USPQ2d 1065, 1071 (Fed. Cir.
2004); Apex Inc. v. Raritan Computer, Inc., 325 F.3d at 1373 (2003); Greenberg v. Ethicon
Endo-Surgery, Inc., 91 F.3d at 1583-84 (Fed. Cir. 1996); Personalized Media Commc’ns, LLC v.
ITC, 161 F.3d at 704-05; CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1369-70, (Fed.
Cir. 2002); Lighting World, Inc. v. Birchwood Lighting, Inc., 382 F.3d at 1358-63 (20024); Cole
v. Kimberly-Clark Corp., 102 F.3d 524, 531 (Fed. Cir. 1996); Watts v. XL Sys. Inc., 232 F.3d at
881(Fed. Cir. 2000); Al-Site Corp. v. VSI Int’l, Inc., 174 F.3d 1308, 1318-19 (Fed. Cir. 1999).
MPEP 2181.
Turning to other parts of the statute, the Court in Ariad v. Eli Lilly decided that 35 U.S.C.
§112, first paragraph, contained two separate requirements - enablement AND written
description. Ariad Pharmaceuticals, Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1344 (Fed. Cir.
2010) (en banc). The statute thus requires “a written description [i] of the invention, and [ii] of
the manner and process of making and using [the invention].” Id. (emphasis original). Further,
these two separate requirements apply to all claims - original as well as amended. Id. at 1349.
In LizardTech, claims to a generic method of making a seamless discrete wavelet
transformation (DWT) were held invalid under 35 U.S.C. §112, first paragraph, because the
specification taught only one particular method for making a seamless DWT (by maintaining
updated sums) and there was no evidence that the specification contemplated a more generic way
of creating a seamless array of DWT coefficients. LizardTech v. Earth Resource Mapping, Inc.,
424 F.3d 1336, 1344 (Fed. Cir. 2005). Although “it is unnecessary to spell out every detail of the
invention in the specification; only enough must be included to convince a person of skill in the
art that the inventor possessed the invention and to enable such a person to make and use the
invention without undue experimentation.” Id. at 1345. Here, a person of skill in the art would
not have understood how to make a seamless DWT except by using the method explicitly taught
by the specification, i.e., by maintaining updated sums. Id.
Along the same line, there is also recognition that the disclosure of a species (prosthesis
in the shape of a conical cup) in the parent application is not sufficient to provide written

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description support for the genus (generically-shaped cup) in a child patent application where the
specification taught against other species. Tronzo v. Biomet, Inc., 156 F.3d 1154, 1159 (Fed. Cir.
1998). The Court pointed out that the specification does discuss other shapes but only in the
context of prior art that are inferior to the conical-shaped cup and never suggesting that the
invention encompasses these additional shapes. Id.
35 U.S.C. §102 and §103
The America Invents Act’s First-Inventor-To-File provision became effective on March
16, 2013, and we have embarked on a journey into the unknown. However, as there is not much
post-AIA case law to discuss, we turn to pre-AIA case law that are still relevant.
Before AIA, we operated in the first-to-invent realm that also gave inventors an one-year
grace period to pursue patent protection after an occurrence of public use, public disclosure, or
offer for sale. The determination of “on sale” is still applicable under AIA, as a claimed
invention that is “on sale” before the effective filing date of the patent application is barred from
patent protection.
In Pfaff v. Wells Elecs., Inc., 525 U.S. 55, 66-68 (1998), the Supreme Court enunciated a
two-prong test for determining whether an invention was “on sale” within the meaning of pre-
AIA 35 U.S.C. §102(b) even if it has not yet been reduced to practice. “[T]he on-sale bar applies
when two conditions are satisfied before the critical date [more than one year before the effective
filing date of the U.S. application]. First, the product must be the subject of a commercial offer
for sale…. Second, the invention must be ready for patenting.” Id. at 67.
There may be a nonpublic, e.g., “secret,” sale or offer to sell an invention which
nevertheless constitutes a statutory bar. Hobbs v.United States, 451 F.2d 849, 859-60 (5th Cir.
1971). However, the phrase “or otherwise available to the public” in AIA §102(a)(1) appears to
indicate that “on sale” does not now cover secret sales or offers for sale when, for example, the
activity involves individuals that are obligated to keep the sale confidential. MPEP §2152.02(d).
Under AIA, public use that occurred prior to the effective filing date of the patent
application would bar patent protection of the claimed invention regardless of geographic scope.
Under pre-AIA §102(b), “public use” included use that was accessible to the public and

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commercial exploitation of the invention. American Seating Co. v. USSC Group, Inc., 514 F.3d
1262, 1267 (Fed. Cir. 2008) (citing Invitrogen Corp. v. Biocrest Mfg., L.P., 424 F.3d 1374, 1380
(Fed Cir. 2005); Woodland Trust v. Flowertree Nursery, Inc., 148 F.3d 1368, 1370 (Fed. Cir.
1998)). The fact that the inventor revealed the prototype to a select group of individuals without
a written confidentiality agreement is not dispositive, but rather an understanding of
confidentiality can be implied from the relationships of the observers and the inventor in a
controlled environment. Id. at 1268 (citing Bernhardt, L.L.C. v. Collezione Europa USA, Inc.,
386 F.3d 1371, 1381). The Court pointed out that the inventor solicited feedback from the group
after the demonstration, and then removed and stored the invention under his control. Id.
However, “public use” under AIA only applies to those uses that are available to the public by
the inventor or a third party. MPEP §2152.02(c).
Nearly fifty years ago, Graham v. John Deere Co. set out the basic analytic framework
for obviousness. Graham v. John Deere Co., 383 U.S. 1 (1966). In order to determine whether an
invention is obvious one must work through this analytical framework: (1) Determine the scope
and content of the prior art; (2) Ascertain the differences between the claimed invention and the
prior art; (3) Resolve the level of ordinary skill in the pertinent art; and (4) Consider objective
indicia of non-obviousness, i.e. secondary considerations such as commercial success, long felt
but unsolved needs, failure of others, etc. Id. at 17.
Concerned with hindsight construction, the Federal Circuit had been applying the TSM or
teaching-suggestion-motivation test that required the prior art that rendered the claimed
invention obvious to include some explicit teaching, suggestion, or motivation to combine the
prior art and arrive at the claimed invention. If there was no teaching, suggestion or motivation to
combine the prior art references then the invention would not be obvious. The U.S. Supreme
Court, in KSR Int'l Co. v. Teleflex Inc., held that the application of TSM in the obviousness
inquiry by the lower courts is too narrow, rigid, and formalistic. KSR Int'l Co. v. Teleflex Inc.,
550 U.S. 398, 400 (2007). It was wrong to assume “that a person of ordinary skill in the art
attempting to solve a problem will be led only to those prior art elements designed to solve the
same problem.” Id. at 402. Instead, “any need or problem known in the field and addressed by
the patent can provide a reason for combining the elements in the manner claimed.” Id. The
Court further provided that “[c]ommon sense” can now teach “that familiar items may have

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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.” Id. at 420. Further, a
claimed invention is not obvious merely because the combination of elements was “obvious to
try.” Id. at 402.
Post-KSR, the Graham factual inquiries are still valid, but the absence of TSM does not
immediately lead to a conclusion of non-obviousness. The proper analysis is whether the claimed
invention would have been obvious to one of ordinary skill in the art after consideration of all the
facts. MPEP §2141. The USPTO provided a list of exemplary rationales that may support a
conclusion of obviousness:
(A) Combining prior art elements according to known methods to yield
predictable results;
(B) Simple substitution of one known element for another to obtain predictable
results;
(C) Use of known technique to improve similar devices (methods, or products) in
the same way;
(D) Applying a known technique to a known device (method, or product) ready
for improvement to yield predictable results;
(E) “Obvious to try” – choosing from a finite number of identified, predictable
solutions, with a reasonable expectation of success;
(F) 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;
(G) 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.
MPEP §2143.
In rebuttal, applicants may submit evidence or argument to demonstrate that, for
example:
(A) one of ordinary skill in the art could not have combined the claimed elements
by known methods (e.g., due to technological difficulties);
(B) the elements in combination do not merely perform the function that each
element performs separately; or
(C) the results of the claimed combination were unexpected.

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MPEP §2141.
After KSR, applicants should take steps to preserve and submit evidence that would
support unpredictable and unexpected results as well as technical challenges and difficulty in
arriving at the claimed invention. Applicants may even be well-advised to include evidence of
unexpected or superior results, functions or properties in the specification to provide a solid
foundation for subsequent discussions of non-obviousness with the Examiner.
Conclusion
With KSR and Alice, we currently appear to be mired in a patent-hostile swamp. The
Supreme Court issued more than twice as many patent law opinions in the last five years than
issued in the entire 1990’s. Going forward, we can expect that this trend will continue or even
ramp up as courts turn to disputes and issues arising from AIA. I am holding on to my cowboy
hat and hanging on for a wild ride!