Telling the Story: Impact of KSR on Background Sections in Patents

With the Supreme Court's KSR decision last April, there is an increasing need for patent drafters to consider the potential impact of obviousness. Some have suggested that the background section should be strengthened to help frame the nature of the patent as a surprising discovery, not merely applying known problem solving tools to crunch through a widely recognized problem with seemingly predictable results. I'm in that camp, in appropriate cases, sensing that the background section can help the Examiner understand that the inventor was not simply doing something that is obvious based on common sense. In some cases, a key part of the invention may be rooted in the discovery of the previously unappreciated problem that is now solved. The key to the beauty and non-obviousness of the invention may lie in finding the actual problem that needed to be solved rather than in solving it, but if a patent is drafted to simply state the problem and it's solution, it may seem obvious under KSR.

But there is also a case to be made for backing down on the background section and putting much less information there to avoid handing an Examiner or opponent information to use against your patent. The Patent Prospector reviews an article that calls, among other things, for eliminating much of the background section. The paper is "KSR-Induced PTO Obviousness Practice Changes" by Harold C. Wegner:

VI. THE "PROBLEM” SOLVED BY THE INVENTION
All too often, patent applicants needlessly include detailed "Background" sections, create "objects" and, particularly, set up "problems" in the prior art to be solved. None of this verbiage is necessary to meet statutory requirements of patentability.
A. The "Known Problem" as Fatal to Patent Validity
Setting up a strawman, a "problem", in the "Background" may now prove fatal to patentability; it is irrelevant what purpose the applicant intends to solve:

"In determining whether the subject matter of a patent claim is obvious, neither the particular motivation nor the avowed purpose of the patentee controls. What matters is the objective reach of the claim. If the claim extends to what is obvious, it is invalid under § 103. One of the ways in which a patent's subject matter can be proved obvious is by noting that there existed at the time of invention a known problem for which there was an obvious solution encompassed by the patent's claims."

I would suggest problems or limitations can be presented, especially if it is made clear that these problems were not previously appreciated and part of the discovery process for this invention was finding that these problems were at hand - problems which are somehow unique and not analogous to problems in other art areas. But don't present the specific problem solved as if it's one everyone recognizes and would be motivated to pursue with elements such as those used in the invention. Some story telling, when appropriate, might help. Otherwise a minimalist approach may be wise for the background section.