Most decisions by the Board of Patent Appeals and Interferences (the Board) are non-precedential. However, these decisions are a window into the examining corps’ understanding of the legal issues at the heart of the patent process. We have studied a random sampling of post-KSR decisions from the Board. In the cases reviewed, we have found that the basis for the Board’s reversal of a 103 rejection can be mapped to an argument that the Examiner has failed to make one of the required findings identified in the PTO’s KSR Guidelines for the rationale used by the Examiner.



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. (Federal Register, Vol. 72, No. 195, pages 57526-57535) published Oct. 10, 2007.

Posted: May 1, 2010

The information contained herein is not intended as legal advice but merely conveys general information about law and/or court decision(s).  This information should not be relied upon or used as a substitute for consultation with a licensed professional.  Please consult a licensed professional to obtain advice with respect to any particular legal issue or problem.