As a quick note, as the initial dust from the Supreme Court’s decision settles, the question remains what does the decision mean to the small inventor? In my view, the USPTO examiners will feel more emboldened to reject claims, stating the change was within the common knowledge of a person skilled in the art or that the change would be obvious to try1
And what do you do? Justice Kennedy stated that the analysis of whether an change was a patentable advancement or a mere obvious modification is to be made explicit. The Deputy Commissioner for Patent Operations circulated a memo within the USPTO repeating the requirement that the obviousness analysis be made explicit.
But how do you get around the examiner’s conclusory, unsupported assertions that the inventor’s work was within the realm of common knowledge to a person skilled in the industry. One thought, is to try and rebut the status of the common knowledge by affidavit. I am not happy with that solution. Affidavit practice has its own faults.
My other thought is to try and isolate in the claim structure and in the detailed specification an attribute of the invention that will be very difficult to argue as common knowledge. This will require a through knowledge of the invention at the start of the drafting phase. The inventors may be a big help in this task (and therefore they may be more willing to sign affidavits). The goal is to not dilute this innovative step by incorporating parts through multiple claims.
Related to this will be drafting a specification that clearly identifies the “unpredicted results” achieved by the combination. “Under KSR, ‘the combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.”
1 In re Deuel, 51 F.3d 1552, 1559 (CA Fed 1995), but the Court of Appeals for the Federal Circuit had previously stated “obvious to try” was an inadequate standard for determining obviousness. Rather, the test was whether it was obvious to succeed. The Supreme Court clearly lowered the bar for the examiners.