Still Ignoring the Obvious: The USPTO’s Outdated Approach Hurts Innovation

Alex Moss | June 25, 2025

Seventeen years after the Supreme Court’s landmark decision in KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007), the U.S. Patent and Trademark Office (USPTO) continues to flout the Court’s clear instruction: to apply a flexible and broad test for obviousness. Unfortunately, the USPTO still clings to the rigid formulaic test came before KSR and should have fallen by the wayside after it. Because of this, the Patent and Trial Appeal Board (PTAB) routinely requires specific evidence of a “motivation to combine” well-known features before it will recognize combinations of them obviousness. The result? More invalid patents that tax competitors and consumers, but less space for genuine innovation that could improve people’s lives. It’s long past time for the PTO to catch up with the law.

What KSR Said

In KSR, the Supreme Court rejected the Federal Circuit’s rigid application of the “teaching, suggestion, or motivation” (TSM) test, which had effectively required an express statement in the prior art (i.e., publicly available information predating a patent application) pointing to a combination of references. The Court rejected that rigid rubric and required an “expansive and flexible approach” to obviousness. In essence, KSR mandates taking look at the whole picture – the nature of a technical problem, the background knowledge of practitioners, the predictability of the field, and the interplay of design incentives and market forces. Explicit “motivation” documented in the prior art was just one possible factor, not an absolute prerequisite.

Yet the USPTO, despite officially acknowledging KSR, often acts as if the decision never happened.

USPTO’s Guidance Still Embeds Rigid, Pre-KSR Thinking

The USPTO's primary guidance document for examiners (who review and decide whether to grant patent applications) is the Manual of Patent Examining Procedure (MPEP). Although the MPEP was supposedly revised in response to KSR, it continues to enshrine outdated thinking.

For example, instead of instructing examiners to consider the circumstances of a case to determine whether combining known elements would have been obvious, the MPEP provides a list of specific “rationales” deemed acceptable (MPEP § 2143.01 (III)). Yet it provides no such rationales arising from “implicit disclosures,” (MPEP § 2144.01), while emphatically warning examiners against relying on common sense without explicit documentary support. (MPEP § 2144.03). And it heavily relies on overruled or abrogated case law (MPEP §§ 2143 & 2144), providing so many citations to pre-KSR cases that it is impractical to count them all.

Given the MPEP’s guidance, it’s no surprise that many examiners and PTAB judges continue to treat “motivation to combine” as a rigid and mandatory hurdle long after the Supreme Court said that approach is wrong.

The Federal Circuit Keeps Cleaning Up the PTO’s Mess

The Federal Circuit has repeatedly been forced to step in and correct the PTAB for precisely this error – applying an overly rigid motivation requirement post-KSR.

One striking example of the Federal Circuit rejecting the PTAB’s rigid application of obviousness law came in Intel Corp. v. PACT XPP Schweiz AG, 21 F.4th 801 (Fed. Cir. 2022). There, the Board dismissed Intel’s argument that it would have been obvious to combine two prior art references—Kabemoto and Bauman—because they both addressed the same problem of cache coherency in multiprocessor systems. The Board faulted Intel for not showing that Bauman’s technique would be a categorical improvement. But the Federal Circuit reversed, explaining that KSR does not require proof of superiority—only that a known technique has been used to solve a known problem in one context and would be recognized as suitable to apply in a similar one. As the court put it, “Nothing more is required to show a motivation to combine under KSR.”

Another is Cisco Systems, Inc. v. K.Mizra LLC, No. 2022-2290, 2024 WL 3841809, at *4 (Fed. Cir. Aug. 16, 2024), where the Federal Circuit again faulted the PTAB for disregarding KSR’s flexible framework. Cisco had argued for obviousness not only on the basis of potential benefits, but also on the ground that its proposed combination applied a known technique from one reference to improve a similar method in another in a predictable way. The Board, however, focused exclusively on whether the combination offered identifiable benefits, effectively requiring a benefit-based rationale. The court held this was legal error, reaffirming that under KSR and Intel, a petitioner does not need to prove that a combination offers an improvement—only that it involves applying a known technique to address a known problem in a predictable way.

Unfortunately, the PTAB still didn’t get the message, the Federal Circuit is still having to clean up its mess. Earlier this year, in United Servs. Auto. Ass'n v. PNC Bank N.A., No. 2023-2171, 2025 WL 339662, at *4 (Fed. Cir. Jan. 30, 2025), the PTAB found no motivation to combine known technological features because more than one way of combining them would have been possible. The Federal Circuit reversed, explaining that under KSR, the existence of an alternative solution does not negate obviousness. A proposed combination need not be the best or only path—it only needs to be a known, predictable solution to a known problem. Once again, the Board imposed an improperly rigid test that defies KSR’s flexible approach.

Why This Matters

Relying on an overly rigid approach to obviousness artificially inflates the number of granted patents, including low-quality ones that do little more than combine known ideas in predictable ways. These patents burden innovators with unnecessary costs and litigation risk. They deter investment in new products and technologies. And they disproportionately harm the public by blocking innovation and competition for critical goods like lifesaving medicines.

The Supreme Court provided the tools to prevent this in KSR. That should have been enough to ensure courts and agencies use them. But seventeen years later, the USPTO is still refusing to do so. Until and unless that changes, patent quality—and public trust—will continue to suffer.