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Mar 22, 2006


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Looking back, it is clear that the Fed. Cir. in Kahn was providing justification for its M-T-S test in view of the impending cert in KSR. They take several pages to explain why the MST test exists and where it fits in with the Graham factors.

Hope SCOTUS adopts at least some of the M-T-S test. The Graham factors are more readily applied in a truely adveserial proceeding, such as litigation. It is hard for Examiners and prosecutors to establish what it "obvious" without a more bright-line rule. (Yes, MST is more bright line than Graham). When is the last time any Examiner actually determined the "level of ordinary skill in the art"? District Courts have a hard time determining that, even with expert testimony and discovery. If SCOTUS does drop the M-S-T test and affirm the Graham rules, expect to see way more appeals to the BPAI re: obviousness. It is not going to stop corporations from trying to protect as much IP as possible.

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