Introduction

When it comes to combining prior art to arrive at each and every element of a claim, if there is no way that one of skill in the art could have, does it make any sense to argue about whether they would have? We think (usually) not. And it would appear — since KSR,2 not to the exclusion of before — that the Federal Circuit agrees.

In our view, this rhyme-time approach to obviousness is not only relatively easy to understand, remember, and explain, it is also an important construct to help avoid the temptation to argue the “would have” (perhaps relying on KSR) when doing so may very well be a walk backwards on the arc of persuasion, implying as being open a question one had already asserted was closed, and simply giving the art at issue too much credit. That is, don’t get into the weeds if you are not even in the right garden.

And although the Supreme Court’s guidance in KSR undeniably bears on the “would have,”3 it seems just as clear that it does not bear on the “could have.”4 As such, for the most part, applicants and patentees should only invoke KSR when there is as little doubt as there was in that case that the cited art (which certainly can but almost never does include something that is cited as simply being within the knowledge of one of ordinary skill) could have been combined into the totality of the claim at issue.

Indeed, Federal Circuit case law since KSR reinforces the canons of logic in suggesting that applicants and patentees may quite often be well-advised to refrain from invoking KSR, and in fact to refrain generally from arguing that there is no way that one of skill in the art “would have” (combined the cited art to arrive at the totality of a claim) when, unlike in KSR, a compelling—or even colorable—argument can be made that there is no way that one of skill in the art “could have;” in other words, if all of the pieces just aren’t there, who cares whether one of skill in the art (or The Cat in the Hat®5, or the Easter Bunny, or even a real person) might have had one or more reasons to combine whatever pieces are there into something else?