Ophir,

Thank you for your question. Backgrounds have certainly come under increased scrutiny since KSR. At present, there is no clear-cut answer to your question, however, and there appear to be two general camps on this issue and some common ground.

The first camp believes that background sections should be fully developed like in the Apple patent because they can be used to help frame the invention as a surprising discovery or the solution to a previously unappreciated problem. In some cases, this camp reasons, a key part of the invention may be rooted in the discovery.

The second camp takes the contrary point of view, and tries to minimize the background. This camp reasons that while certain statutory requirements must be met (i.e., the invention must be disclosed in an enabling manner), there is no duty to characterize the invention or to identify a problem that is solved. So, they prefer not to risk giving an examiner evidence of obviousness. I refer to this as the “safety first” approach.

When you stop to think about it, these camps appear to be in agreement that if a background is drafted to simply state the problem and the applicant’s solution (as was common and widespread before KSR), it makes sense to reconsider the risks and rewards of continuing this practice. For now, it appears that the safer course is to minimize the background section unless an applicant has a strategic reason for describing the discovery process.

Mike Kondoudis
The Law Office of Michael E. Kondoudis, PC
US Patent Law Attorney