I had reason to read several obviousness-related cases over the weekend. While I wasn’t surprised when my review led me back to Graham v. John Deere, I was a bit surprised when I read this paragraph from the opinion where the Court discussed, of all things, the inconsistent patentability standards being applied during examination….and the application backlog at the Patent and Trademark Office:

“While we have focused attention on the appropriate standard to be applied by the courts, it must be remembered that the primary responsibility for sifting out unpatentable material lies in the Patent Office. To await litigation is, for all practical purposes, to debilitate the patent system. We have observed a notorious difference between the standards applied by the Patent Office and by the courts. While many reasons can be adduced to explain the discrepancy, one may well be the free rein often exercised by Examiners in their use of the concept of “invention.” In this connection, we note that the Patent Office is confronted with a most difficult task. Almost 100,000 applications for patents are filed each year. Of these, about 50,000 are granted, and the backlog now runs well over 200,000….This is itself a compelling reason for the Commissioner to strictly adhere to the 1952 Act as interpreted here. This would, we believe, not only expedite disposition, but bring about a closer concurrence between administrative and judicial precedent.” (emphasis added)

I hadn’t noticed this paragraph in previous readings of the case, but it caught my eye this time – perhaps because I was researching the impact of KSR v. Teleflex on examiner actions. As I was trying to determine if KSR is leading to more consistent application of the Graham framework during examination, I see the Supreme Court telling the patent world that the then-new Graham framework would do exactly that…in 1966.  Oh, and it will address the backlog, too.

It would be interesting to investigate whether Graham ever provided the anticipated consistency in the Office…and if the backlog ever receded after the framework was announced.