知財ニュース

KSR最高裁判決後の米国の自明性の審査ガイドライン

最高裁によるKSR判決を受けて，米国特許庁は自明性について審査ガイドラインを以下の通り発表しました。ガイドラインには，自明性について７つの類型（A）〜（G）が含まれています。
KSR判決では，高裁が行ってきた先行技術の組み合わせを示唆する記載が先行技術内に明示されなければならないという硬直的な判断基準が却下され，必ずしも明示される必要がなく市場の動向など総合的に判断して先行技術を組み合わせられるか否かを判断するというフレキシブルルールが採用されました。今回発表された類型（Rationals）にあるとおり，組み合わせによる予期しない効果を主張するなど，自明性に対する反論方法が大きく変更されることになりました。

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.
The key to supporting any rejection under 35 U.S.C. 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 U.S.C. 103 should be made explicit. The Court quoting In re Kahn stated that Rejections on obviousness 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.

Rationales

    （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 would have been 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.

III. Rationales To Support Rejections Under 35 U.S.C. 103
A. Combining Prior Art Elements According to Known Methods To Yield Predictable Results
To reject a claim based on this rationale, Office personnel must resolve the Graham factual inquiries. Office personnel must then articulate the following:

    （1）
    a finding that the prior art included each element claimed, although not necessarily in a single prior art reference, with the only difference between the claimed invention and the prior art being the lack of actual combination of the elements in a single prior art reference;
    （2）
    a finding that one of ordinary skill in the art could have combined the elements as claimed by known methods, and that in combination, each element merely would have performed he same function as it did separately;
    （3）
    a finding that one of ordinary skill in the art would have recognized that the results of the combination were predictable; and
    （4）
    whatever additional findings based on the Graham factual inquiries may be necessary, in view of the facts of the case under consideration, to explain a conclusion of obviousness.

The rationale to support a conclusion that the claim would have been obvious is that all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded nothing more than predictable results to one of ordinary skill in the art at the time of the invention.\43\ “[I]t can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.” \44\ If any of these findings cannot be made, then this rationale cannot be used to support a conclusion that the claim would have been obvious to one of ordinary skill in the art.

B. Simple Substitution of One Known Element for Another To Obtain Predictable Results
To reject a claim based on this rationale, Office personnel must resolve the Graham factual inquiries. Office personnel must then articulate the following:

    （1）
    a finding that the prior art contained a device (method, product, etc.) which differed from the claimed device by the substitution of some components (step, element, etc.) with other components;
    （2）
    a finding that the substituted components and their functions were known in the art;
    （3）
    a finding that one of ordinary skill in the art could have substituted one known element for another, and the results of the substitution would have been predictable; and
    （4）
    whatever additional findings based on the Graham factual inquiries may be necessary, in view of the facts of the case under consideration, to explain a conclusion of obviousness.

The rationale to support a conclusion that the claim would have been obvious is that the substitution of one known element for another would have yielded predictable results to one of ordinary skill in the art at the time of the invention. If any of these findings cannot be made, then this rationale cannot be used to support a conclusion that the claim would have been obvious to one of ordinary skill in the art.

C. Use of Known Technique To Improve Similar Devices (Methods, or Products) in the Same Way
To reject a claim based on this rationale, Office personnel must resolve the Graham factual inquiries. Office personnel must then articulate the following:

    （1）
    a finding that the prior art contained a “base” device (method, or product) upon which the claimed invention can be seen as an “improvement;”
    （2）
    a finding that the prior art contained a “comparable” device (method, or product that is not the same as the base device) that was improved in the same way as the claimed invention;
    （3）
    a finding that one of ordinary skill in the art could have applied the known “improvement” technique in the same way to the “base” device (method, or product) and the results would have been predictable to one of ordinary skill in the art; and
    （4）
    whatever additional findings based on the Graham factual inquiries may be necessary, in view of the facts of the case under consideration, to explain a conclusion of obviousness.

The rationale to support a conclusion that the claim would have been obvious is that a method of enhancing a particular class of devices (methods, or products) was made part of the ordinary capabilities of one skilled in the art based upon the teaching of such improvement in other situations. One of ordinary skill in the art would have been capable of applying this known method of enhancement to a “base” device (method, or product) in the prior art and the results would have been predictable to one of ordinary skill in the art. The Supreme Court in KSR noted that if the actual application of the technique would have been beyond the skill of one of ordinary skill in the art, then using the technique would not have been obvious. If any of these findings cannot be made, then this rationale cannot be used to support a conclusion that the claim would have been obvious to one of ordinary skill in the art.

D. Applying a Known Technique to a Known Device (Method, or Product) Ready for Improvement To Yield Predictable Results
To reject a claim based on this rationale, Office personnel must resolve the Graham factual inquiries. Office personnel must then articulate the following:

    （1）
    a finding that the prior art contained a “base” device (method, or product) upon which the claimed invention can be seen as an “improvement;”
    （2）
    a finding that the prior art contained a known technique that is applicable to the base device (method, or product);
    （3）
    a finding that one of ordinary skill in the art would have recognized that applying the known technique would have yielded predictable results and resulted in an improved system; and
    （4）
    whatever additional findings based on the Graham factual inquiries may be necessary, in view of the facts of the case under consideration, to explain a conclusion of obviousness.

The rationale to support a conclusion that the claim would have been obvious is that a particular known technique was recognized as part of the ordinary capabilities of one skilled in the art. One of ordinary skill in the art would have been capable of applying this known technique to a known device (method, or product) that was ready for improvement and the results would have been predictable to one of ordinary skill in the art. If any of these findings cannot be made, then this rationale cannot be used to support a conclusion that the claim would have been obvious to one of ordinary skill in the art.

E.“Obvious To Try”--Choosing From a Finite Number of Identified, Predictable Solutions, With a Reasonable Expectation of Success
To reject a claim based on this rationale, Office personnel must resolve the Graham factual inquiries. Office personnel must then articulate the following:

    （1）
    a finding that at the time of the invention, there had been a recognized problem or need in the art, which may include a design need or market pressure to solve a problem;
    （2）
    a finding that there had been a finite number of identified, predictable potential solutions to the recognized need or problem;
    （3）
    a finding that one of ordinary skill in the art could have pursued the known potential solutions with a reasonable expectation of success; and
    （4）
    whatever additional findings based on the Graham factual inquiries may be necessary, in view of the facts of the case under consideration, to explain a conclusion of obviousness.

The rationale to support a conclusion that the claim would have been obvious is that ``a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under Sec. 103. If any of these findings cannot be made, then this rationale cannot be used to support a conclusion that the claim would have been obvious to one of ordinary skill in the art.

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 Would Have Been Predictable to One of Ordinary Skill in the Art
To reject a claim based on this rationale, Office personnel must resolve the Graham factual inquiries. Office personnel must then articulate the following:

    （1）
    a finding that the scope and content of the prior art, whether in the same field of endeavor as that of the applicant's invention or a different field of endeavor, included a similar or analogous device (method, or product);
    （2）
    a finding that there were design incentives or market forces which would have prompted adaptation of the known device (method, or product);
    （3）
    a finding that the differences between the claimed invention and the prior art were encompassed in known variations or in a principle known in the prior art;
    （4）
    a finding that one of ordinary skill in the art, in view of the identified design incentives or other market forces, could have implemented the claimed variation of the prior art, and the claimed variation would have been predictable to one of ordinary skill in the art; and
    （5）
    whatever additional findings based on the Graham factual inquiries may be necessary, in view of the facts of the case under consideration, to explain a conclusion of obviousness.

The rationale to support a conclusion that the claimed invention would have been obvious is that design incentives or other market forces could have prompted one of ordinary skill in the art to vary the prior art in a predictable manner to result in the claimed invention. If any of these findings cannot be made, then this rationale cannot be used to support a conclusion that the claim would have been obvious 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
To reject a claim based on this rationale, Office personnel must resolve the Graham factual inquiries. Office personnel must then articulate the following:

    （1）
    a finding that there was some teaching, suggestion, or motivation, either in the references themselves or in the knowledge generally available to one of ordinary skill in the art, to modify the reference or to combine reference teachings;
    （2）
    a finding that there was reasonable expectation of success; and
    （3）
    whatever additional findings based on the Graham factual inquiries may be necessary, in view of the facts of the case under consideration, to explain a conclusion of obviousness.

The rationale to support a conclusion that the claim would have been obvious is that “a person of ordinary skill in the art would have been motivated to combine the prior art to achieve the claimed invention and that there would have been a reasonable expectation of success.” \80\ If any of these findings cannot be made, then this rationale cannot be used to support a conclusion that the claim would have been obvious to one of ordinary skill in the art.