Obviousness — 35 USC §103 and the Graham/KSR framework
**35 USC §103:** A patent may not be obtained if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been **obvious** before the effective filing date to a person of ordinary skill in the art (POSITA).
**Graham v. John Deere (1966) factual inquiries:** 1. Scope and content of the prior art. 2. Differences between the claimed invention and the prior art. 3. Level of ordinary skill in the art. 4. Secondary considerations (objective indicia): commercial success, long-felt but unresolved need, failure of others, copying, unexpected results, skepticism of experts, licensing, praise.
**KSR v. Teleflex (2007):** rejected the rigid TSM (teaching-suggestion-motivation) test. Under KSR, an obviousness rejection can be based on any of the following rationales (MPEP §2143): • (A) Combining prior art elements per known methods to yield predictable results. • (B) Simple substitution of one known element for another. • (C) Use of a known technique to improve similar devices. • (D) Applying a known technique to a known device/method ready for improvement. • (E) 'Obvious to try' — choosing from a finite number of identified, predictable solutions. • (F) Known work in one field prompting variations in a related field. • (G) A teaching/suggestion/motivation (the old TSM test as one of several valid rationales).
**Rebutting obviousness:** attack the factual findings; show unexpected results; show teaching-away; show secondary considerations with a nexus to the novel features; show the combination would render the prior art unsatisfactory for its intended purpose.