Should Presumptions Be Used for Obviousness?

Professor Timothy Holbrook wrote a brief article prior to the KSR decision which discusses the use of a presumption-based approach for obviousness:

This situation is ripe for the use of presumptions. If all of the limitations of the claim are present in the prior art, then the court would look for either a motivation to combine the prior art or a teaching away from the claimed invention.

The presence of a suggestion to combine should create a presumption of obviousness, rebuttable by strong secondary considerations, such as the failure of others, unexpected results, or long-felt but unsolved need, or by contrary evidence from the prior art.

Similarly, the presence of a teaching away should create a presumption of non-obviousness, rebuttable by other secondary considerations suggesting the advancement was merely trivial or by other parts of the prior art demonstrating that one of skill in the art would not view this combination as being discouraged by the prior art.

Importantly, in the absence of either a suggestion to combine or a teaching away, no presumption arises and the court should apply the Graham methodology alone, absent any presumptions. Indeed, the absence of either a motivation or a teaching away says very little about the state of the art one way or the other; it is merely an absence of evidence and not evidence of a lack of technical knowhow.

After KSR, this idea seems to make sense, in light of the SCOTUS opinion. An interesting proposition that is worth a read.

T. Holbrook: "Obviousness in Patent Law and the Motivation to Combine: A Presumption-Based Approach" (SSRN link; Wash. U. link)