KSR v. Teleflex: In Support of the Status Quo

 KSR v. Teleflex (Supreme Court 2006).

By Dennis Crouch [dcrouch@gmail.com]

Background: Teleflex and its supporters have now filed their briefs in defense of the Federal Circuit’s methodology for determining whether a patent is “obvious.” [Copies of briefs are provided below]. The doctrine of nonobviousness is fundamental to our patent system.  In order to be eligible for a patent an invention must be both novel and non-obvious.  Novelty is generally narrowly applied to cases where the invention is identical to something already in the public domain.  Obviousness, however, is a more difficult beast and is intended to ensure that patent rights are only granted to inventions that move us a significant distance past the prior art. 

Obviousness has always been a “squishy” term, but over the past twenty-five years, the Court of Appeals for the Federal Circuit has developed a somewhat objective nonobviousness doctrine using a teaching/suggestion/motivation (TSM) test. According to the test, when various pieces of prior art each contain elements of an invention, the prior art can be combined together to invalidate a patent on the invention only when there is some motivation, suggestion, or teaching to combine the prior art. One problem with any obviousness test is hindsight bias. It is all-to-easy to look-back and assert that an invention would have been obvious. One purpose of the objective TSM test is to avoid this type of hindsight bias.

KSR has asked the Supreme Court to rethink that approach and take a fresh look at the obviousness standard for patentability. The petition questions whether obviousness should require any proof of some suggestion or motivation to combine prior art references.

Question Presented: Whether the Federal Circuit erred in holding that a claimed invention cannot be held "obvious," and thus unpatentable under 35 U.S.C. sec. 103(a), in the absence of some proven "'teaching, suggestion or motivation' that would have led a person of ordinary skill in the art to combine the relevant prior art teachings in the manner claimed"?

Interestingly, the Supreme Court has not heard an obviousness since well before the founding of the Federal Circuit. In that case (Sakraida 1976), the Court held that a combination which only unites old elements with no change in their respective functions is precluded from patentability under 103(a).  Under the Sakraida standard, the Teleflex patent is arguably obvious.  In an article several years ago, Professor John Duffy identified this obviousness issue as one that should attract the Supreme Court’s attention.

[The Federal Circuit’s suggestion] test, which tends to make even seemingly trivial developments patentable, is entirely the Federal Circuit’s product.  It has no basis in the Supreme Court’s case law and may, in fact, be inconsistent with the Court’s most recent pronouncement on the subject (though that precedent is now more than a quarter century old).

Duffy, The Festo Decision and the Return of the Supreme Court to the Bar of Patents, 2002 S.Ct. Rev. 273, 340-41 (2003).  Now, Duffy, a former clerk of Justice Scalia, is part of the KSR team that is trying to change the rule of law. The KSR case itself concerns a patent covering a gas pedal for an automobile. KSR makes pedals for GM & Chevy trucks and was sued for infringement of the Teleflex patent.

A discussion of briefs in support of the petitioner are found here: Discussion of Breifs Supporting Petitioner.

What follows is a discussion of briefs in support of the respondent: (i.e., in support of the status quo).

Respondent Teleflex: Brief on the Merits

Settled Law: Respondent begins with a compelling exposition on the power of stare decisis. “Millions of patents” have issued based on the suggestion test, and modifying that test would in Hal Wegner’s words, “threaten the validity of literally hundreds of thousands of existing patents still in force.”

Non-Rigid Test: Respondent defines the suggestion test as a “flexible [test that] looks to any available indication that a practitioner in the art would have had some reason to select the elements of the invention from among the prior art and combine them in the manner claimed by the invention.”  Relying heavily on the CAFC’s very recent obviousness pronouncements of Dystar and Alza, the brief points out that a suggestion does not need to be found in prior art, but rather can be implicit in the nature of the problem, customer demand, similarity between references, knowledge of PHOSITA, wide knowledge of value of feature to be combined, etc.  [DDC: Query whether the broad application of implicit suggestions would constructively eliminate the rule.]

The suggestion test can be contrasted with the “synergy” test proposed by petitioner and the “extraordinary level of innovation” test from the Solicitor General. Those approaches essentially mirror the pre-103 requirement of an “invention.” According to Judge Rich, “The first policy decision underlying Section 103 was to cut loose altogether from the century-old term ‘invention.’”

Intellectual Property Owners Association (IPO) in Support of Respondent:

The IPO is an organizatoin of intellectual property owners. MBHB (where I am of counsel) filed the brief on behalf of IPO. IPO’s brief supports the motivation requirement as an objective but flexible and practical approach to the obviousness problem.  IPO hits on the hindsight problem:

[The test must rely on] objective evidence, not mere unsupported opinion or argument. Otherwise, the inevitable use of hindsight will tend to render meritorious inventions "obvious" by using the inventor’s own teachings as a roadmap to piece together prior art references in ways that would not have been obvious at the time of the invention.

IPO also takes-issue with any “synergy” requirement. Synergy occurs when the "the interaction of elements that when combined produce a total effect that is greater than the sum of the individual elements." There are many patent-worthy inventions, however, that lack true synergy. In addition, the Solicitor General’s proposed "extraordinary level of innovation" requirement goes too far. “Nothing in the patent statute suggests that patents should only be awarded to Nobel laureates.”

Paul Berghoff, Jeremy Noe, and Aaron Barkoff (of OrangeBookBlog) are on the brief.

American Intellectual Property Law Association (AIPLA) in Support of Respondent:

AIPLA’s brief is a fun read — it starts off with quotes from Billy Wilder and King Solomon, both of which give us pause on the question of hindsight.

What has been is what will be,
and what has been done is what will be done;
there is nothing new under the sun.

According to AIPLA, King Solomon wasn’t so wise — perhaps because his vision of the past was colored by hindsight. The CAFC’s test of obviousness is useful because it helps avoid hindsight.

TSM is a well-established, thoughtfully-analytic framework that provides certainty and uniformity in obviousness determinations while allowing proper flexibility. By requiring a showing of why someone of ordinary skill in the relevant art would think the invention obvious, it functions as a critical evidentiary device that prevents arbitrary decisions driven by hindsight.

As is typical of opposition briefs, the AIPLA correctly notes that the CAFC’s suggestion test does not require that the suggestion be explicit or written.

I can concieve of a strong [and thus far unstated] argument that it would be sensible to require that the suggestion be written and explicit.  At this point in history, we have more people writing than ever before and those people are each writing more than earlier writers. At the same time, search costs are dropping dramatically and will continue to drop. In this scenario, why would we need to allow the evidentiary nightmare of giving weight to previously unstated suggestions to find an invention obvious?

Professor Thomas Field of Franklin Pierce in Support of Respondent:

Professor Field looks at the CAFC and its role in the patent process.  Unlike its predecesor CCPA, the CAFC hears both administrative patentability and litigation based cases. That means that the CAFC must “confront the consequences of unwaranted grants.” 

If the problem is the grant of too-many patents, the CAFC has little to say there because the court has no role in granting patents except to occasionally rule that the BPAI’s bases for rejection are unsupported.

Pre- and post-grant opposition proceedings may be the answer, but those decisions are for Congress.

ABA in Support of Respondent:

ABA amicus briefs are always difficult to obtain becauase they need the support of both the IP Section and the entire ABA House of Delegates.  Here, the way to consensus was not to argue that the TSM test is the best test, but rather to note that it is useful, objective, and deeply rooted in the Supreme Court’s John Deere jurisprudence. In addition, the test is well settled, and messing with the test would have a far-reaching and complex impact on the economy and state of innovation.


If some elusive method not based on evidence were to be substituted for the present inquiry, hundreds of thousands of patents granted under the teaching-suggestion-motivation methodology would be immediately placed under a cloud.

Harold Milton in Support of Respondent:

Harold Milton drafted the claims being asserted by Teleflex and has filed a very interesting brief in support of Teleflex.  Interesting because he begins with a statement that the suggestion test is illusory, or at least a misnomer. There is no requirement that there be any specific statement of suggestion in the prior art. Nonetheless, the test is important to maintain an “objective standard of patentability” and “consistent evaluation.”  It also prevents chaos:

Without an objective standard, chaos would be multiplied across thousands of patent examiners, judges, juries, attorneys, etc. and would result in inconsistent decisions on patentability.

According to Milton, the Court should reject the suggestion test and stick to its prior decisions that obvious is found when there is a “mere selection of prior art elements combined to perform the identical function as they did separately in the prior art.”

Lee Thomason in Support of Respondent:

Thomason is a Kentucky-based patent attorney. One interesting aspect of his argument involves the law/equity distinction.  According to Thomason, challenges to validity are equitable in their origins as evidenced both by the recited equitable factors of 103(a) (“as a whole”) and by Blackstone’s recitation of the writ fo scire facias. As such, any changes to the rule should be to review obviousness decisions “according to the standard applied to equitable rulings.” Equitable review requires a full discussion of the record and results in more predictability.

[Please e-mail briefs in support of respondent to me at dcrouch@gmail.com]

Documents:

Links:

Cite as Dennis Crouch, “KSR v. Teleflex: In Support of the Status Quo,” Patently-O, available at http://www.patentlyo.com.

170 thoughts on “KSR v. Teleflex: In Support of the Status Quo

  1. Tom

    “Yes, I’ve noticed that Malcolm has trouble responding in a reasonable and logical manner. He seems to focus on one idea or thought to continue his rants.”

    In the future I’ll try to dedicate every other comment to psychoanalyzing you, Frederik and pds.

    Reply
  2. Fredric asked:
    “Perhaps Tom and others have the same impression?”

    Yes, I’ve noticed that Malcolm has trouble responding in a reasonable and logical manner. He seems to focus on one idea or thought to continue his rants.

    Reply
  3. pds, you’re right about our pal Mal (as usual I might add, as you’re right in your other postings on patent issues as well). Malcolm’s burnt out, at least on this issue (he actually wrote a coherent post on the Halliburton patent so he can function when he wants to). But what is it here that sets him off like someone who has his foot caught in a bear trap? When he starts writing about burning babies, we all know he’s more than “imploded”, he’s gone nuclear, and there’s something off about his rantings on this issue like two week old unrefrigerated take-out food.

    Both our ripostes to him have had their own sting, I admit, but always justifiably so in response. It’s beyond academic disagreement. Here again he’s back in his yesterday’s 8:53 post with his “toilet patent” analogy. Are we supposed to be happy that now the toilet paper is no longer wet? (question Malcolm, how then is it going to stick to the bathroom wall?).

    I would also like to hear Malcolm explain the “strategy” of changing examiners in order to get a more compliant one? “Client’s dream”? Boy, would Freud love this case.

    There no point in trying to discuss issues with him since it deteriorates into a obsessive compulsive interchange. To me, these postings just reek of disrespect for his own profession. It reflects very badly on legal profession and I dare say it’s an embarassment. Perhaps Tom and others have the same impression?

    To be sure, there will be some, if not many, who see these as ad hominem attacks on such a site and as unfortunate, and it is unfortunate. Listening to Mooney, is this is the state of patent prosecution today?
    I agree, perhaps a career change, perhaps the fast food industry beckons if one hates patent prosecution (including patents, examiners, patent attorneys, clients, CAFC, etc) as much as he apparently does.

    Hopefully he’ll follow your advice and give it a long rest, at least in this debate.
    By the way, regarding his post reply to you, Dr.Phil can’t help him so I don’t see the point in him watching anymore.

    Reply
  4. pds, thanks for the awesome advice. I’m a huge fan of Dr. Phil, too.

    Reply
  5. Mr. Mooney:

    After reading your many posts, I have a deep concern for your well being. Since you’ve described yourself as having prosecution clients, you are undoubtedly forced to work with a patent system that you believe should be dismantled or at least drastically revamped. To zealously represent your client, you have to make arguments before the USPTO you don’t believe in. I must imagine that you absolutely hate having to practice before the USPTO because every time you make a winning argument before the USPTO, in your heart, you know that your argument probably shouldn’t have carried the day and the client didn’t deserve to receive the patent.

    Now that I’ve looked at your situation with fresh eyes, I can see where your hostility comes from. I think you would be much happier if you were true to your heart instead of working to obtain junk patents. I’m sure the USPTO would value someone with your talent and enthusiasm for advocating that the job of rejecting patent application should be made easier for examiners. If not the USPTO, perhaps some law school or legal think tank (they must exist somewhere) would value your teachings as to how the world can be rid of bad patents. Who knows, perhaps you can make your name as the man who successfully leads the effort in getting a constitutional amendment that eliminates all forms of intellectual property (or at least patents). Regardless of what path you pursue, I’m sure you’ll be much happier if you leave patent prosecution altogether and are able to publicly express your true feelings about the patent system.

    I know you are trying to stick it out for client’s sake, but sometimes, for your own sanity, you have to be selfish. You are like a song bird trapped in a sound proof cage … you need to be set free.

    I wish you the best of luck, and remember, you have the full support of everybody here.

    Reply
  6. “And please, stop taking everyone’s remarks and denying YOU ever made them.”

    Huh? Syntax error.

    “When you make a comment, even I think you have some purpose for it and clearly the remark about gaining an early advantage by coining a phrase was alluding to it as a false tactic …”

    Really? “Clearly”? Hmm. Let’s see. I said it was to the applicant’s advantage to coin a new term for some element of his invention. Then you said, “Hey you said it was to the applicant’s advantage to coin a new term.” Then I said, “Yes, I said that.”

    And now you accuse me of “taking everyone’s remarks and denying I made them”??

    I think you imploded last Friday with your “officer of the court” nonsense. My expectations are pretty low but I think I will give up trying to parse these non-sequiturs.

    Reply
  7. “Tom and I then disuss the critical issue IN YOUR HYPOTHETICAL of when the examiner’s argument is nonetheless erroneous.”

    Except the examiner’s argument is not erroneous in my hypothetical. My hypothetical was (clearly and plainly) directed to the relevant and interesting question: whether tangible prior art support MUST be presented for EVERY assertion in an Examiner’s obviousness argument in order for that argument to suffice to deny a claim’s patentability.

    You don’t get to add friendly facts to someone else’s hypothetical and then claim to be addressing their hypothetical, particularly when those facts (“examiner was wrong”) render the hypothetical pointless and irrelevant.

    Geez, it’s like when you ask a fundie if they would rather save a frozen embryo or a baby from a burning building and they say “the baby because the embryo is already thawed.”

    That’s called “a cop out”.

    By the way, since some folks here love anecdotes, here’s a fresh one. I just got the phone with a fellow attorney and we were discussing the brilliance of another colleague whose dead-on-arrival claims were suddenly deemed allowable when, after years of dodge and delay and obfuscation, the “old Examiner” was replaced with a fresh recruit. The client was ECSTATIC.

    But nothing about that strategy resembles throwing toilet paper up against a bathroom wall until it sticks, right? Does anyone want to argue that this strategy (aka “The Client’s Dream”) for achieving patentability is not employed routinely when nothing else is working?

    Reply
  8. Malcolm, it “weakens my position to discuss [your hypothetical] honestly”? What the hell are you talking about?

    You earlier had wrote:
    “If the Examiner’s argument is REASONABLE and LOGICAL then why in the world would anyone demand that such an argument be judged improper on a technical evidentiary basis? Other than simply wanting more patents to issue, of course.”

    Tom and I then disuss the critical issue IN YOUR HYPOTHETICAL of when the examiner’s argument is nonetheless erroneous. And you call it “irrelevant” and “uninteresting”. You jest, surely. An examiner draws incorrect factual conclusions, leaving the applicant to argue basic facts (most likely again)to show that the patent is non-obvious, and that’s “uninteresting”? Petulance. Like the class clown on this site, you never cease to amaze and amuse.

    And please, stop taking everyone’s remarks and denying YOU ever made them. When you make a comment, even I think you have some purpose for it and clearly the remark about gaining an early advantage by coining a phrase was alluding to it as a false tactic of trying to differentiating two structure which are in reality the same. Make your remark and stand by it, even if it’s hammered.

    Reply
  9. I wrote

    “Because that seems to me to be a patentable non-obvious rejection.”

    Correction: should be “invention,” not “rejection.”

    Reply
  10. pds

    “As I have written time and time again, replacing the TSM standard with a subjective test is the loophole to impermisslbe hindsight reconstruction that will essentially eliminate impermisslbe hindsight reconstruction as an argument by applicant.”

    Nobody is proposing replacing TSM with a “subjective” test. The proposal is simply that the Examiner need not provide an explicit art-based citation suggesting the combination of every element in the claim when a REASONABLE LOGICAL ARGUMENT BASED ON WIDELY RECOGNIZED FACTS will suffice.

    “If I (as an examiner) don’t have to worry about providing a suggestion for the modification while not having to worry about impermissible hindsight reconstruction (my “reasonable and logical argument” could be identical to applicant’s reasoning for the combination), then I can easily reject any claim.”

    How about a novel recombinant protein that I created, selected, identified and isolated whose sequence was unknown prior to my characterization of it and whose useful and valuable properties are not clearly related to its sequence in a presently understood way?

    You can easily reject that as obvious? Really?

    Because that seems to me to be a patentable non-obvious rejection.

    As for the other sorts of alleged inventions you believe can “easily” tank with your imaginary arguments, I suspect most of them fall into two categories: the ones you are dead wrong about and aren’t easily tanked, and the ones that are garbage and deserve to be tanked.

    Reply
  11. “As to coining a new term to “give the applicant an early advantage”, firstly I would think that giving an advantage to a client is part of a patent attorneys advocacy, and secondly, as you are aware of course, an inventor can be his own lexicographer.”

    Uh, yeah. Did I say otherwise?

    Reply
  12. Frederik

    “This was the hypothetical Tom offered”

    No kidding. I thought we were discussing the hypothetical I offered. My bad. You don’t want to discuss my hypothetical? I can understand that. It weakens your position to discuss it honestly.

    So let’s discuss this irrelevent and uninteresting hypothetical where the Examiner gets his facts wrong. It seems to me that if the Examiner gets the facts wrong you inform the Examiner that his facts are wrong and perhaps provide some proof that his facts are wrong. You know, EXACTLY LIKE YOU DO NOW.

    As I said, this hypothetical is uninteresting.

    Reply
  13. Malcolm, a few things spring to mind from your post (thanks for the compliment, by the way).
    First, the issue of “facts”, right or wrong, IS a part of your hypothetical. One can get the facts right but draw the wrong conclusions or, simply, get the facts wrong yet proceed on to a reasonable and logic argument which is nevertheless erroneous. This was the hypothetical Tom offered but which only elicited your sarcastic colloquial response.

    An examiner may decide two structures perform the same function and/or do that function in the same way, but get it wrong- this is a fact based inquiry. The very nature of subjective determination allows for drawing fact based conclusions and then running with them. The examiner decides, then states as fact, it would be obvious to use the well known ribuzak as a substitute for a whamisham and viola, the patent is obvious. He then explains why. The ribuzak moves the rhombom as does the whamisham. Sounds great until you find out the ribuzak uses suction in a reciprocating action to draw in the rhombom while the whamisham uses centrifugal force to push it. And the former does it for cooling while the latter does it for advancement through the device. Yet the examiner says it is “not different in any relevant way”. But suppose it is. Then he would have to explain why one of ordinary skill in the art would find it obvious to use it.

    This is sticking to the subject. Typo hunting, as you did in a post to Tom, is not sticking to the subjekt (oops, spellcheck went off). Perhaps no one on either side is suggesting examiners make up their own facts but remove the TSM standard and allow for more subjective conclusions, then that is exactly what the result will be at times. It already can be dodgy. I once had an examiner reject claims solely due to a non-numbered part of a drawing less than the size of a dime in a Japanese prior art which lacked a single reference to it in the specification, meaning it took a guess as to what it actually did (if anything). It took an appeal to overcome that rejection. Is this an issue of law or is it an administrative one? Who would disagree that the PTO should get a bigger budget?

    As to coining a new term to “give the applicant an early advantage”, firstly I would think that giving an advantage to a client is part of a patent attorneys advocacy, and secondly, as you are aware of course, an inventor can be his own lexicographer. You were the one who coined “ribuzak with a falling genekdezoink”, which actually was clever.

    Reply
  14. Reject claim 1 based upon Beltzig, U.S. Patent No. 4,943,046 in view of link to motherearthnews.com by John Vivian, and further in view of U.S. Patent No. 1,493,913.

    Referring to column 6, lines 40-51 of Beltzig, “FIG. 16 shows a swing 400 in which a rigid ground mounted frame 401 in the form of an inverted “U”, with the cross-piece of the “U” being straight is used with sections of the suspension chain described earlier to mount a swing seat 402. Here the sections of suspension chain are used not only to provide a pair of vertical suspensions 403, 404 between the top of the frame and each side of the seat 402 but a further section 405 is attached between the center of the underneath of the seat and the ground. The seat 402 is thus mounted for resilient displacement up and down, clockwise and counter-clockwise, side to side and back and forth.” Since Beltzig discloses side to side motion on a swing, Beltzig inherently teaches that user would have to pull alternately on one vertical suspension to induce movement of the user and the swing toward one side, and then on the other vertical suspension to induce movement of the user and the swing toward the other side.

    Vivian discloses a method of swinging on a swing, the method comprising the steps of:

    suspending a seat for supporting a user between only two ropes that are hung from a tree branch; and positioning a user on the seat so that the user is facing a direction perpendicular to the tree branch. It would have been obvious to modify the swing of Beltzig to suspend the swing from a tree because a tree swing obviates the problem of “flimsy metal frame sets.”

    The combination of Vivian and Beltzig fail to disclose that two chains are used to support the seat. It would have been obvious to one having ordinary skill in the art to use chains instead of ropes because chains are stronger than ropes and are less likely to break. U.S. Patent No. 1,493,913 discloses the use of a chain to support a baby swing. The replacement of ropes with chains has been well known for the last couple hundred years.

    The hardest part of this rejection was to find a description of side to side motion on a swing. However, all I did was use the following search parameters on paid, and I came up with it: spec/”side to side” and spec/swing and spec/rope
    Could I have come up with better prior art and a better rejection? Sure, but for 45 minutes and being the very first rejection I ever made, it isn’t bad (I wish I could get away from the inherency argument, but I think it would stick), and it wasn’t necessary to provide me with any tools that aren’t currently available to today’s examiner.

    “If you’re an Examiner, do you need really need multiple references with explicit ‘suggestions’ for every limitation in order to tank my application?”
    Yes because if you don’t need suggestions for every limitation (your requirement for “explicit” suggestions isn’t consistent with Federal Circuit case law), then you don’t need suggestions for any limitations. As I have written time and time again, replacing the TSM standard with a subjective test is the loophole to impermisslbe hindsight reconstruction that will essentially eliminate impermisslbe hindsight reconstruction as an argument by applicant.

    If I (as an examiner) don’t have to worry about providing a suggestion for the modification while not having to worry about impermissible hindsight reconstruction (my “reasonable and logical argument” could be identical to applicant’s reasoning for the combination), then I can easily reject any claim.

    If the intent is not to issue patents, then while we are at it, let’s rename the name of the agency to “the Rejection and Trademark Office.”

    Reply
  15. “Again, I fail to see how a more natural environment relates to a horizontal member. ”

    The claim recited a TREE BRANCH, Tom. You remember trees? Those planty things that we see in … nature.

    “Take the claim limitation, find some implied/inherent characteristic that has no bearing on the purpose of the limitation”

    Hmm. So, uh, what WAS the purpose of reciting a “tree branch” in the claim as opposed to reciting a “horizontal member” as the prior art did?

    “Granted, the tree branch is typically found in a natural environment.”

    Ah, so “a natural environment” DOES have something to do with the claim after all! In fact, “a natural environment” has a LOT to do with swings that hang from tree branches. Personally, I can recall dozens of swings that I played on as a child (including swinging back and forth, by the way) and guess what: every single one of them that hung from a tree branch was outdoors, many of them in natural surroundings. Other swings that I was on which were indoors were hung from “horizontal members”. Of course, some swings that were outside were also on horizontal members. Mix and match. A swing is a swing is a swing. Everybody KNOWS that even if the literature on the subject is not widely read and archived.

    So if you’ve got art that recites a swing hanging from a “horizontal member” then it’s pretty darn obvious to anyone who’s ever been on a swing that the swing could be indoors or outdoors, on a tree branch or not.

    Period.

    “So what. Branches are also brown. The color brown does not clash with rusty chains, but does that provide motivation to use a tree branch to support a seat hung with chains?”

    Seats hung with chains from trees are old in the art, I’m betting, and easy to find.

    But how about a seat hung from a chain from a steel pipe where the seat is a big circular section cut from a tree and the chain goes through the middle of the seat and you stand on the seat with your feet on either side of the chain and swing in a elliptical orbit. I’m pretty certain that my invention (swing composition and/or method of use thereof) is not anticipated.

    If you’re an Examiner, do you need really need multiple references with explicit “suggestions” for every limitation in order to tank my application? Should it matter if I’m a “small inventor”?

    Reply
  16. Malcolm’s previous post said:

    “Tree branches are horizontal. Period. There is no unexpected advantage that flows from using a tree branch versus a metal pole versus a two-by-four or a giraffe’s backbone. That’s the end of analysis.” 10-19-2006 @ 06:40am

    I think that would be good grounds to reject the claim. But, where did you discuss a more natural environment in your post?

    “But the Examiner decided to go further and say, well, yeah it’s nice to swing outside under a tree so the skilled swing designer would know that a nice sturdy TREE BRANCH would suffice to achieve that effect. That’s how I understand the Examiner’s very reasonable and PROPER (albeit inarticulate) argument.”

    You say the examiner’s response was inarticulate. I say he sidestepped the issue entirely. Again, I fail to see how a more natural environment relates to a horizontal member.

    I believe that the test is that the art, at the time of the invention, includes some motivation to combine references to make the invention. The art cited by the examiner was for a horizontal member. Hmm. Nothing about a horizontal member suggests the outdoors.

    Oh, wait, you want me to use the teachings of the claim to find obviousness. Take the claim limitation, find some implied/inherent characteristic that has no bearing on the purpose of the limitation, and say anyone wanting to do that unrelated characteristic would, of course, find motivation to combine.

    Why should the examiner pick a characteristic that has nothing to do with the purpose of supporting the seat and make up some reason for finding obviousness? You said that the important characteristic was being horizontal. The rejection should have been on that basis.

    Granted, the tree branch is typically found in a natural environment. So what. Branches are also brown. The color brown does not clash with rusty chains, but does that provide motivation to use a tree branch to support a seat hung with chains? Such a reason would make as much sense to me as what the examiner said.

    Reply
  17. “Maybe you can explain why the examiner’s reason was relevant to the claim and provided a reason for finding obviousness. ”

    I did that last week, upthread.

    By the way, you just asserted that a “natural environment” has “nothing to do” with a claim which recites a swing hanging from a tree branch (as opposed to a “horizontal member” taught in the prior art).

    If you think that is an intellectually honest position to take, then we really have nothing further to discuss. On the other hand, perhaps instead of “nothing to do” you really meant to type in the factually correct phrase, “something to do.”

    Reply
  18. Malcolm asked:
    ‘Please explain why the Examiner’s reason had “nothing to do with the invention.”‘

    The claim was for a method requiring suspending a seat between two chains hung from a tree branch. The examiner said using a tree branch was obvious “since such a modification would have provided a more natural environment (under the trees).” Neither the claim nor the spec addressed the environment for practicing the method. A natural environment has nothing to do with supporting a seat in the manner claimed. In the world I live in, I fail to see what a “more natural environment” has to do with practicing the claimed method or rejecting the claim.

    Maybe you can explain why the examiner’s reason was relevant to the claim and provided a reason for finding obviousness.

    Reply
  19. “The reason I cited the swing patent was to provide such an example. The examiner said the motivation to use a tree limb was to have a natural setting. The reason, by itself, made sense and was logical, but it had nothing to do with the invention.”

    Please explain why the Examiner’s reason had “nothing to do with the invention.”

    “Examiners are not infallable.”

    Nobody is and nobody is claiming otherwise. It’s “infallible,” by the way.

    Reply
  20. “it’s entirely possible to make a reasonable and logical argument but still have it flawed if the facts upon which this argument is based are wrong.”

    Oh, you’re so clever, Frederik! Too bad that “wrong facts” were obviously not part of my hypothetical. Can we try sticking to the subject?

    Nobody on either side of this debate is suggesting that an Examiner should be able to make up their own facts and it’s simply misleading to represent otherwise.

    You are aware, of course, that coining a new term (not found in the art) is one way to give an applicant an early advantage …

    Reply
  21. Well, well, seems those who scream for patent reform as if some mugging victim of trolls with pumpkin bags sing a different tune when it suits them.

    Today’s article NY Times by Steve Lohr, on the new patent suit IBM filed on Amazon, so recent that Amazon claims not to even have seen it yet.

    “Recently, I.B.M. has been a strong supporter of overhauling patent law with the aim of making it more difficult to get “junk” patents that tend to make sweeping and vague claims but do not represent real technical innovation. And I.B.M. has been critical of some business method patents as being broad descriptions of ideas, without technical specifics.”

    Without looking at the merits of the case, at first impression it certainly looks like odd timing in view of their amicus briefing in the KSR case.

    By the way, it’s entirely possible to make a reasonable and logical argument but still have it flawed if the facts upon which this argument is based are wrong. Which planet, Malcolm? Not a nice way to question an obviously very skilled patent attorney like Tom, but at times I’d like to ask you which planet you are coming from. Perhaps the seventh?

    Reply
  22. “Why would Congress pass a law allowing such a thing? The answer is that it did not. But a U.S. appeals court ruled in 1998 that business methods could be patented, and since then the U.S. Patent and Trademark Office has issued 50 tax- strategy patents, with many more pending.”

    Actually, Congress set the stage when it enacted 35 USC 101, and its breadth, as noted by the Supreme Court in Diamond v. Chakrabarty (1980), was intentional.

    Reply
  23. Malcolm asks “Uh …. what planet is this?”

    I live on the planet whre the PTO exists. At least, I work on that planet. I see reasonable and logical reasons from examiners, but then, I ask myself, what does that reason have to do with the invention?

    The reason I cited the swing patent was to provide such an example. The examiner said the motivation to use a tree limb was to have a natural setting. The reason, by itself, made sense and was logical, but it had nothing to do with the invention. In that case, the examiner got the right result, but the wrong way. Examiners are not infallable.

    Reply
  24. I note that Daily Kos has weighed in on the subject:

    link to dailykos.com

    There will never be enough money to throw at the PTO to fix the problem of crap patents. And giving patent attorneys another tool (i.e., the explicit/strict TSM test) to bash Examiners over the head with is simply throwing napalm on a wildfire.

    The bogeyman of “unpredictability” is just that: a bogeyman. I’m not afraid. Why are some patent prosecutors afraid?

    Reply
  25. Tom

    “But, what if the Examiner’s argument is REASONABLE and LOGICAL, but FLAWED?”

    Uh …. what planet is this?

    Reply
  26. aren’t business method patents great?

    /*** from a recent news article ***
    As the American tax law gets more and more complicated, lawyers have come up with one more way to make life difficult for taxpayers: Now you may face a patent infringement suit if you use a tax strategy that someone else thought of first.

    “I can’t even imagine what it will be like in 5 or 10 years,” said Dennis Drabkin, a tax lawyer with Jones Day in Dallas, “if anytime a lawyer or accountant gives tax advice, they have to find out if there is a patent on this.” He notes that researching patents, and then licensing them, would just make tax compliance more costly.

    Drabkin is chairman of an American Bar Association task force on the issue. He said that at one conference where tax strategies were discussed, participants later got a letter warning that using one idea mentioned would be in violation of a patent.

    Why would Congress pass a law allowing such a thing? The answer is that it did not. But a U.S. appeals court ruled in 1998 that business methods could be patented, and since then the U.S. Patent and Trademark Office has issued 50 tax- strategy patents, with many more pending.

    There is even one case pending in U.S. court in Connecticut, in which an organization called the Tax Strategies Group complains that John Rowe, the chairman and former chief executive of Aetna, infringed on its patent by using a certain type of trust to minimize taxes on profits from stock options. The group wants Rowe to be barred from using that strategy unless he buys a license from it.

    To patent lawyers, all this makes some sense. Others might see it as an example of judicial absurdity.

    But if it is legal, the mind boggles at the possibilities. Could I get a patent on taking a deduction for dependents, so that every parent in America would have to pay a royalty to me to take advantage of the tax law passed by Congress? I presume the patent office would find that obvious, and thus not patentable, but there are plenty of slightly more complicated strategies that might be patentable, particularly considering the fact that patent examiners may not be tax experts.

    Indeed, Cheryl Hader, a partner in Ropes & Gray representing Rowe, argues that a strategy she uses is clearly authorized by the tax law and that no patent should have been granted.

    One can imagine lawyers and accountants rushing to the patent office as soon as a new tax law is passed, seeking to claim credit for dreaming up ideas that were made possible by the new tax law. Lobbyists who get tax breaks inserted into such bills would be in a preferred position to win the race to patent them.

    In an article in Legal Times this week, Paul Devinsky, John Fuisz and Thomas Sykes, who are lawyers with McDermott, Will & Emery, suggested that a company might figure out a tax strategy that would save it a lot of money and then patent it. Then the company could refuse to license the patent to its competitors, thus raising their cost of doing business.

    Tax patents, the lawyers wrote, amount to “government-issued barbed wire” to keep some taxpayers from getting equal treatment under the tax code.

    In an ideal world, Congress might pass tax laws so simple that clever strategies would be impossible and tax lawyers would need to find other employment. But until that happens, it would seem obvious that Congress would want to assure that tax benefits are not walled off from some.

    After all, as Devinsky and his colleagues wrote, “the successful patenting of tax strategies now limits Congress’s ability to shape economic policy through legislation and places that power in the hand of individual patent holders.” But in Washington, such things are seldom simple. Asked what he thought Congress would do, Fuisz said action was possible, recalling that six years ago doctors got Congress to protect them from patent infringement suits over surgical techniques.

    Reply
  27. Malcolm said:
    “Examiner argues that “since a genekdezoink and ribuzak are not different in any relevant way and one of skill in the art would understand that a genekdezoink is subject to gravity just as a ziberdonk is, the invention is obvious.”

    If that was the case, I agree, who would argue it. But, what if the Examiner’s argument is REASONABLE and LOGICAL, but FLAWED? For example, the figures show the two have a similar shape, but there is an important functional or other characteristic that differentiates a genekdezoink from a ribuzak that the examiner fails to consider in his argument.

    If a genekdezoink and a ribuzak are enough different that they have different names and I believe that there are relevant differences (as shown by evidence), then I would expect the examiner to provide documented evidence to support a continued rejection.

    Reply
  28. pds asks

    “Could someone explain to me what is “nondocumentary evidence” and where can I find it?”

    Let’s see an invention includes a “ribuzak with a falling genekdezoink.” Applicant argues that “nowhere in the art has anyone shown a ribuzak with a falling genekdezoink.”

    The Examiner does have art showing a ribuzak with a falling ziberdonk. The Examiner argues that “since a genekdezoink and ribuzak are not different in any relevant way and one of skill in the art would understand that a genekdezoink is subject to gravity just as a ziberdonk is, the invention is obvious.”

    If the Examiner’s argument is REASONABLE and LOGICAL then why in the world would anyone demand that such an argument be judged improper on a technical evidentiary basis? Other than simply wanting more patents to issue, of course.

    Reply
  29. Acme Novelty Company makes balloons, the kind that people dressed as clowns blow up at kids’ birthday parties and form into dogs, bicycles, crowns, etc. for the kids. The people who use these balloons, whether bought from Acme or its competitors, Bubba and Campy, have very recently started complaining that way too many of them are bursting, so much so that many kids are suffering from the emotional trauma that comes with the balloons bursting and preventing them from getting their very own balloon freebies.

    Acme’s head of balloon R&D, Lester, is told about the problem and asked to find a fix. Now Lester is not the brightest bulb in the lamp, but he knows balloons, so much so that even Bubba and Campy (Acme’s only two competitors) have been tempting him with offers to join their balloon teams.

    That night Lester retreats into his garage, turns on his favorite CD (Lynrd Skynrd’s Christmas Album), grabs a brew, and then goes to work trying to figure out what can be done. After a couple of weeks he comes up with a design solution that will make Acme’s balloons virtually “un-burstable”.

    Acme is so pleased with what Lester has done, and believing this new design will stand the “clown balloon blowing” market on its head, it decides to try and get a patent to get a leg up in the clown balloon market over Bubba and Campy.

    A fully compliant (per Title 35) application for this new balloon is prepared and submitted. Some months later Peter (the PTO examiner in the clown balloon arts) takes the application up for action. Peter takes a look at every clown balloon reference he can find going back to 1790, but nothing brings 102 into play. Even references for regular balloons are of no help. Peter then has a bright idea! Why not look in the aeronautical arts and see if any dirigibles might have faced a similar problem. Lo and behold, Peter finds a paper published in Luxembourg many years ago that talks about the problem Lester faced. Bang! Rejected under 103, citing a Bubba patent about clown balloons and the dirigible publication. Acme’s lawyer argues that a clown balloon maker would never think about seeing what dirigible people were up to, much less a paper published in Luxembourg (if you wish pretend that the paper was published in Akron, the dirigible capital of the world).

    Peter will not budge on his 103 rejection. The Board of Appeals affirms the rejection. Acme goes to the local federal court and loses again. Acme, which has just started selling these new balloons, hears about the CAFC and figures “what the heck, go for it.”

    Question for the CAFC: What is the “art” to which the “subject matter relates”? Mind you, all Acme applied for was “an improved balloon for clowns to blow up and twist into various shapes to keep otherwise whinny kids at birthday parties happy.” Should the Luxembourg paper somehow fit into the scheme of things insofar as 103 is concerned? Remember, Lester is not exactly Albert Einstein, but he is pretty good when it comes to these kind of balloons. As for dirigibles, Lester believes they are a rock group, or something like that. The same goes for his counterparts at Bubba and Campy.

    Based upon these entirely silly facts, what would the rationale propounded by KSR supporters, if adopted by the Supreme Court, do to poor Acme at the CAFC? Without the patent any competitive edge it might later enjoy in the clown balloon market would evaporate instantly. What about the rationale propounded by those supporting the respondent in KSR? Clown balloons are a part of a distinctive commercial market. Should innovation in this market be encouraged, or is this just a silly market not comprehended by Article I?

    To make things a bit more interesting, what if secondary considerations could not as yet be shown by Acme (no commercial success as yet; no long felt want since the problem only recently came to light; no way of showing that the “etc.” in Graham is involved)?

    Should Acme’s balloon bubble be burst, or should Acme get the patent so that it can achieve the commercial edge that it knows lurks on the horizon?

    Stripped of all the academic gobbledygook that proliferates in KSR, isn’t this really the question: what is worthy and what is not?

    Reply
  30. As you debate the meaning of PHOSITA reflect on how low a standard it is to say that an invention can be patented unless it is obvious to a PHOSITA if we are to take those words literally. Such a test for patentability is inconsistent with the limited constitutional authority for congress to confer monopolies.

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  31. Found my prior post 4 October re: the Dystar case, apropos Michael’s above post on needing to better define the art (and,it follows, the person of ordinary skill in that art):

    Key issue is who the real adjudicator of obviousness is, e.g. the man of ordinary skill in the art. The problem is who is he, meaning what exactly is that level of skill? And how do you find that guy so he can make these judgments (allow attorneys to speak for him? I think not). And worse, that this make-believe guy changes for every patent.
    You can argue to kingdom come that he has to have this or that degree, x years experience in this or that field (can any party ever agree?), etc but how do you decide then what he may or may not find obvious? For example, you put a cover on a container to keep the contents in- obvious. You make some modification so that something else also occurs, for instance only some contents fall out- well, is it obvious or not. And is it really obvious vis-a-vis the problem to be solved or is it obvious for some ancillary problem. What is “obvious” to anyone- it’s a judgment call, hence calling for that most precious and oft missing commodity in patent litigation- common sense and fair play.

    The law also states that for simple mechanical devices, the man of ordinary skill in the art is, in effect, dumbed down with lower qualifications, so he’s not expected to find most anything obvious. Easy to second guess someone not as smart as all these lawyers and paid experts,I guess. Little wonder the poster child for all these motive to combine whinings, including the KSR case, are mostly patents covering simplier devices.

    I say fix the PTO budget shoplifting, stop taking their revenue away from them, and hire more examiners with more resources. Anyone can see the Dystar decision is an appeal (pun intended) to the Supreme Court to leave well enough alone. If it ain’t broke… And if it is, don’t take it apart if you have no clue how to fix it.

    Posted by: Fredric Goldstein | Oct 04, 2006 at 12:21 PM

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  32. Michael, I didn’t disagree with you and in fact tried your game as you asked. That was the first impression I had afterwards. It would appear as a reasonable interpretation that the issue is what do the claims cover and is that the subject matter of the invention at issue in such an analysis? “Invention” is an extremely broad term, especially when one throws in “inventive step” when discussing a particular invention, clearly denoting the broad term invention as opposed to that which the inventor seeks patent protection for. As we all know, some inventors cannot even practice their own invention without infringing on another patent. In that regard, is it their invention that is patented or the subject matter of that invention? It’s less than straightforward, I think, as we are talking sub-sets here.

    I don’t recall statutory semantics being any central issue in the KSR case and even if it were, surely that’s something for Congress to address. This could be an interesting point for SCOTUS to discuss but I am not sure it has escaped everyone’s attention until now.

    On some other posting a couple weeks ago, I wrote quite a bit about the same problem vis-a-vis PHOSITA, and touched on the same problem as well as you do now on the determination of which art is involved. Clearly, until you know what the art is, how can one determine who the person of ordinary is in the art? It’s a very valid point.

    Even with semantic precision in 103, the TSM debate remains as it is. It will just be better when it’s in play post-SCOTUS decision.

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  33. One of the reasons I suggested the “game” is that people seem to get wrapped around the axle when it comes to relating the terms “art” and “subject matter”.

    So, one makes a better mousetrap. Who is this mythical person we call one of ordinary skill in the art against which obviousness is measured? The question that none of the many participants in the wealth of KSR briefs has answered is “What art?” Mousetraps? Pest control? Mechanical or structural engineer? Physicist? Rodent anatomist? Someone else?

    Therein lies the problem. Define the relevant “art” one way and the invention is obvious even to one in that art with less than ordinary skill. Define it another way and the invention is still not obvious to one with extraordinary skill.

    In Sakraida, for example, would the outcome have been different if the art had been defined as people who worked within the industry dealing with farm animals? Viewed from the perspective of a “tsunami” researcher, what was used to caused the desired result would have been obvious. From the perspective of one trying to solve the unsavory task associated with removing “cow chips” from a dairy barn might have had an entirely different view.

    Precedent, briefs, academic publications, etc. all wax poetic on how this Solomon-like question should be approached. As yet, however, none of them have suggested what I view as the most pressing need of all: Define terms with specificity before launching into an argument about what is the proper construction of 103.

    It goes without saying that inventors seek to patent inventions, and not subject matter. Perhaps it would help if all of the “experts” flinging paper on the desks of the Justices would try and keep this in the back of their minds.

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  34. As to “subject matter” and “invention”, it seems to me that the different use was deliberate and not really interchangable- one creates an invention but that is not necessarily, per se, what one seeks a patent for but rather the subject matter that is the improvement.

    In other words, you invent a better mouse trap. The subject matter you seek to patent is that which is novel, useful and non-obvious over the prior art, for example a better way of disposing of the trapped mouse. I would think “subject matter” references the claims, as opposed to the specification which can have a good part of the text describing aspects of the invention which are not in the claims, hence not the “subject matter” of the patent, e.g. what’s important is that what you are claiming was not obvious otherwise you are not entitled to any legal title. Of course it doesn’t help when phrases also exist referring to the “invention as a whole”.

    This is just a guess.

    Reply
  35. Doubt definitions as being a problem? Compare 100 of Title 35 to 101 of Title 17.

    The latter is hardly a paragon or virtue and clarity, but at least an attempt has been made to give meaning to terms.

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  36. In a most insightful manner 100 informs us: The term “invention” means invention or discovery.

    In pertinent part 103 informs us: …subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.

    The phrase “subject matter” is nowhere defined, though in keeping with the casualness of 100 it would likely read: “Subject matter” means subject matter or matter pertaining to a subject.

    Small wonder there is such a wide range of opinions on issues such as nonobviousness exemplifies. Look at the definition of invention. An “invention” means a, well, “invention”. Look at 103. It uses “subject matter” and “invention” interchangably.

    In high school, no make that elementary school, I would have flunked English if I wrote like this.

    Try a game. Substitute the word “invention” wherever the phrase “subject matter” appears in 103.

    The acronym GIGO comes to mind. You start with meaningless definitions and what follows will likely be largely meaningless as well.

    Reply
  37. P.A. wrote:

    “How about section 102: “A person shall be entitled to a patent unless –”
    If CAFC, CCPA caselaw and MPEP rules are not good enough of an argument for you, how about congress? If a person is presumed entitled to a patent unless the examiner can prove otherwise in a 102 context, then it makes no sense to place the burden on the applicant for a 103…”

    103 is NOT written the same way.
    102 is about finding/verifying facts such as prior art, filing dates, etc.
    103 is about judgement of whether the incremental addition to the prior art found under 102 would be obvious to PHOSITA.
    In effect, Congress’ different writing of 103(a) allowed SCOTUS to expressly shift the burden of nonobviousness to applicant with lisiting of secondary considerations.

    Reply
  38. pds:

    “Applicant is burdened with providing “a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains” (i.e., 35 U.S.C. § 112)…”

    Any person skilled in the art… so examiners will have to put on the PHOSITA hat in determining whether applicant has met his/her burden when the application does not describe how to put a bolt through a nut. BUT examiners have to take the PHOSITA hat completely off when determining whether it would be obvious to put a bolt through a nut? Seems like the burden is a bit skewed in favor of the party that is “entitled” to potential millions.

    Reply
  39. “Professor Strandburg’s utter destruction of Professor Wagner’s arguments is truly a beautiful thing to behold. Break out the chianti, pour yourself a glass, and enjoy.”

    Honestly, after reading both Professor Wager and Professor Strandburg, I thought both arguments were unfocused and somewhat divorced from the realities of the practice. For anybody wanting to read a better discussion of the issues, I would recommend reading some of the briefs that were filed.

    Since Professor Strandburg purportedly opposes the position I’ve been advocating, I’ll pick on her (if she reads this … please, no offense meant).

    She writes:
    “The Federal Circuit’s demand for evidence of these suggestions and its restrictive view of PTO “official notice” belie the apparent breadth of the TSM test. Patent examiners’ limited ability to seek nondocumentary evidence will force them to rely primarily on documentary evidence, even though a broader range of evidence is available in principle.”

    Could someone explain to me what is “nondocumentary evidence” and where can I find it? Are we looking for DNA evidence? But seriously, what is the “broader range of evidence” the refers to? [after reading other writings of hers, I have a better idea]

    The following is her proposal in place of the TSM inquiry:
    A TSM inquiry could provide a “first cut” to weed out the most obvious claims. Since the TSM inquiry would no longer bear the brunt of the obviousness determination, it would not have to be stretched beyond its reasonable meaning, but could focus on what the prior art itself suggests about combining references. Beyond such a “first cut,” Graham provides a workable structure for the obviousness analysis. The analysis should encompass a robust inquiry into the PHOSITA’s skills, the tools used in the field, and the kinds of experiments performed and problems solved as a matter of course. The Federal Circuit should continue the task it abandoned after TSM took center stage and develop a structure for determining the level of skill in the art. Unlike the search for a suggestion to combine particular prior art references, defining the level of skill in a particular art is a recurring question about which the PTO could develop reusable expertise. A focus on the baseline innovative activity in a particular field provides for consistency while at the same time being sensitive to differences between practices in different fields. Expertise as to the level of routine problem solving could then inform the legal determination of what degree of effort in coming up with a particular combination renders that combination obvious.

    Professor Strandburg appears to be advocating placing greater emphasis on the “resolving the level of ordinary skill in the pertinent art” factual inquiry described in Graham. In particular, I find the following comment very interesting: “The analysis should encompass a robust inquiry into the PHOSITA’s skills, the tools used in the field, and the kinds of experiments performed and problems solved as a matter of course.” This comment is indicative that Professor Strandburg really doesn’t understand how much time the average patent examiner has to examine a patent application and how much time (and resources) it would take for this robust inquiry. I don’t want to put too much into this, but IMHO this robust inquiry is not workable at the Patent Office. If one thinks the complaints by the Corp of examiners are bad now, I would imagine that the number of complaints would increase substantially if they had to make the inquiry advocated by Professor Strandburg.

    “My patent citation network study, for example, evidences the issuance of increasingly trivial patents at around the same time as the TSM test became “standard” in evaluating obviousness (reversing a previous trend in the opposite direction).”

    Patent citation network study??? I have no idea what that is … actually I just did the research, and this is what it is:
    We find that, since the late 1980s, the disparity in likelihood of citation between the most “citable” and least “citable” patents has grown, suggesting that the least citable patents may represent increasingly trivial inventions. One possible explanation of this increasing stratification is increasing reliance by the Federal Circuit Court of Appeals on the widely criticized “motivation or suggestion to combine” test for nonobviousness, which is at issue in the case of KSR v. Teleflex, currently pending at the Supreme Court. We also discuss how network science may be employed to address other issues of patent law.

    I just read a PowerPoint presentation on her theory. What I take from her presentation and from her writings is that she needs to prosecute about 100 patent applications and perform about 20 face-to-face examiner interviews. If she had, I think she would be singing a much different tune.

    I just read the brief she submitted in this case. Of the 28 page brief, she only spends a smidgen more than 2 pages describing her proposal, which is best summarized by the title of the section “This Court Should Mandate a Return to the Graham Approach, Asking Whether the Claimed Invention Could Be Made By Routine Application of the Level of Ordinary Skill in the Art.”

    She also writes:
    The factual determination of the level of ordinary skill in the art should not be limited to the content of prior art references, the common knowledge of those in the art, and any suggestions to combine the art that are found in those references or knowledge. It should also encompass the PHOSITA’s ordinary inventive skills, the tools and methods routinely applied in her field, and the kinds of experimentation she does and problems she solves as a matter of course. As with the determination of analogous arts, the determination of level of ordinary skill should evolve with the technology itself, incorporating, for example, the extent to which research and development in a particular field routinely draws on interdisciplinary teams.

    Perhaps one of the examiners that post (ANON?) could share his/her opinion as to the feasibility of the examiner performing this factual inquiry at the Patent Office?

    Reply
  40. “Personally, I believe that whatever comes out of the Court will have little real world impact.”

    Personally I think that SCOTUS is going to administer a bitch slapping to CAFC and CAFC knows it which is why they tried to do a pre-emptive strike with their recent whining that everyone is misinterpreting their TSM decisions. TSM as practised by the CAFC is unconstitutional and SCOTUS is going to have to step in and set them right in a meaningful way – which means real world impacts at the PTO and in the trial courts.

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  41. The link up top re “Professor Wagner and Strandburg debate obviousness in Penn’s new online law review:PENNumbra” is worth clicking on. I think all the relevant issues discussed in this thread are touched on. Professor Strandburg’s utter destruction of Professor Wagner’s arguments is truly a beautiful thing to behold. Break out the chianti, pour yourself a glass, and enjoy.

    It’s worth noting one subject where these two advocates find common ground: “The problem of bad patents is real.”

    Reply
  42. Quick answer as I understand your question- infringement and invalidity are two separate inquiries and therefore don’t clash. Obviously, though, if the patent is found invalid (or unenforceable) for whatever reason, there cannot be infringement, e.g one cannot infringe as a matter of law an invalid or unenforceable patent. Bear in mind, though, there are more ways a patent can be declared invalid than obviousness.

    If the patent is however valid and enforceable, the infringement claim, whether literal or under DOE, will go forward. Because however affirmative defenses of invalidity and/or unenforceabilty are near universal in patent litigation today, it is rare indeed when the two issues are not litigated together at some stage of the action, even if one or both parties seek summary judgment on both or either.

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  43. One more question for any attorney out there: Would’nt the Doctrine of Equivalents asked for by a patent holder in an infringement case (judgement to enforce or implement it) and the infringers obviousness arguement( to invalidate or degenerate the patent)- would’nt these two posturing procedures by the warring factions completely clash in a courtroom-that is, would’nt the judge have to throw one out and rule on the other or could he make a ruling on both-either way somebodys going to loose. As a layperson,this scenario seems complicated but maybe this kind of thing happens in infringement cases all the time already. Anyways,answer if you’ld like. Thanks.

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  44. Michael

    “Personally, I believe that whatever comes out of the Court will have little real world impact. I daresay it will be a long-winded opinion that when examined will prove to be underwhelming.”

    No doubt. As was the case with Festo, many patent prosecutors will wring their hands and gnash their teeth and claim that the sky is falling on their clients. Then when the decision comes down, these prosecutors will continue to do exactly what their clients demand: submit overly broad claims to the PTO and pray for a generous Examiner.

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  45. Michael, very insightful. I think there’s a very good chance you’ll be proven right.
    And maybe that’s that.

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  46. Does anybody really think that whatever words are reduced to paper by the Supreme Court will change current practices in any meaningful way? Inventors will still file applications. The PTO will still review and object to claims much as it is doing now. Potential infringers will still be upset that they might actually have to deal with the business impact a patent may pose.

    Personally, I believe that whatever comes out of the Court will have little real world impact. I daresay it will be a long-winded opinion that when examined will prove to be underwhelming.

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  47. “First, ‘equal protection’ does not refer to ‘equal application.’ It actually refers to equal protection of people, not things.”

    I got my info from: link to law.cornell.edu

    The notion that the law is equally applied (at least seems to me) easily flows from the concept that people are equally protected.

    “Second, the government treats people “unequally” all of the time. Prisoners have less liberty than the rest of us. Women aren’t subject to the same draft registration requirements as men. Children can’t vote. Mentally incompetent people can’t make valid wills. Etc.”

    We are getting into constitutional law. The court will review the law, subject to a level of scrutiny, based upon how someone is classified. If the law makes a classification based upon race, national origin, and religion, for example, the law will be subject to strict scrutiny, which requires that the challenged classification serves a compelling state interest and that the classification is necessary to serve that interest.

    Anyway, although the laws may discriminate based upon some classification (i.e., treat people differently), there must be, at the very minimum, a rational relationship between a legitimate state purpose and the classification.

    As far as treating patents differently, the PTO can go to Congress and ask for the ability to discriminate based upon particular classifications. However, one shouldn’t expect the Supreme Court to bless such a discrimination without evidence of express intent from the Congress to do so.

    Also, this is a point that I was thinking of adding to my prior point (but decided not to), but this point is salient now … which is simply that I believe that it is very difficult to classify patents, for example, as to their relative worth. Using the pumpkin trash bag patent as an example, given the whims of the consumer, this “invention” could have blossomed into a multi-million dollar market, in which case, I would classify this invention as important. On the contrary, there may be some patents directed to computer software or semiconductors, for example, which although looking, on their face, as being very important, may, in fact, be frivolous. These are very difficult classifications to make and I believe that having the Patent Office making these classifications would only add another (unwanted) burden to the already overburdened patent examiners.

    Moreover, I would imagine that even the classification itself would be appealable for reasons of due process, which would further add additional work to both the patent examiner and applicant.

    I’m not going to disagree that treating more important patents different is a bad idea (but I’m not going to agree that treating patents different is a good idea either … I’m neutral). However, the devil is in the details of the implementation of such classification, and I think that will be the downfall of that idea. Unless, of course, as suggested by the Patent Office recently, applicants may able to pay for different levels of examination.

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  48. pds,

    Great comments, but at the end I have to add two nits about equal protection.

    First, “equal protection” does not refer to “equal application.” It actually refers to equal protection of people, not things. The full phrase is that no state may “deny to any person within its jurisdiction the equal protection of the laws.” Inventions have no rights under the constitution. Different emissions standards for cars and light trucks wouldn’t raise a 14th Amendment issue.

    Second, the government treats people “unequally” all of the time. Prisoners have less liberty than the rest of us. Women aren’t subject to the same draft registration requirements as men. Children can’t vote. Mentally incompetent people can’t make valid wills. Etc.

    Once you get beyond race and gender-based classifications (and possibly some others I’ve neglected), courts only ask whether there’s a rational basis for the disparate treatment. Whatever your views on patents, I think it would be difficult to convince a court that there is no rational basis to distinguish between the law that applies to a patent for swinging and a new cancer drug (or the requirements imposed on their respective inventors).

    Reply
  49. “Another thing about the swing patent, can you honestly say that examiner’s time would be better spent in searching for the motivation of using a tree branch? I know you don’t agree with Mooney’s point of view, but be open minded about this and consider whether focusing prosecution on such things would take examiner’s time away from other searches.”

    One of the hallmarks of our constitutional system is the concept of “equal protection.” This concept also applies to equal application of the law. As a result, there should be no discrimination as to how the law applies regardless of whether the invention is frivolous, just an average invention, or an invention that allows for the easy implementation of fusion reactors.

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  50. Tom:

    Thanks for the compliment.

    With regard to your question as to: “In the event of an infringement or an attempt at an invalidation of my patent by an infringer, is my patents weakened by this fact and in case a new subjective TSM is adopted in this pending court case is there any chance all patents granted before the judgement will be ‘grandfathered’ in under the current TSM, after all, they recieved a pass under that rule?”
    I am no litigator, but the answer to that question is probably yes. If you read the briefs in support of the respondent, many of them suggest that any substantial change to the TSM test will put all the issued patents at risk for subsequently being invalidated.

    Just a suggestion regarding drafting and prosecuting your patent pro se. I completely understand an inventor’s reluctance to pay a patent attorney many thousands of dollars to draft a patent application, particularly when there is no guarantee that the patent will issue. That is a lot of money to just about anybody, and one of the reasons why I really get irritated when certain posters dismiss the impact these proposed changes will have on small time inventors because I believe small time inventors will be disproportionately be affected.

    Anyway, just a suggestion, and this is a suggestion I have given to many inventors who want to save money, which is to do a search on the PTO website site for patents similar to the technology of your invention. What you see is basically what you have to write, so try to get a feel for how the drawings look and how the invention is described. Do your best to draft a written description of the invention and then go to a good patent attorney and see if you can have the attorney draft the claims for a set fee (which is hopefully much less than it would take to draft the whole thing).

    The reason I say it is because the issued claims are the most important part of the application and the hardest part to do right. If your invention does have value, a potential licensee/infringer is going to go over those claims with a fine tooth comb, and if the claims aren’t really good, it is very possible that they will find away to get around your invention.

    Every word of a claim is important, so it is crucial that the claims truly claim your invention as broadly as possible instead of just painting a word picture of one embodiment of your invention.

    As to an examiner writing the claims, my experience is that although examiners provide very good suggestions with regard to claim language that is able to overcome the prior art, the proposed claim language is usually very, very narrow. So narrow that in most instances I don’t take the suggestions because the application could be easily designed around.

    Anyway, best of luck with your ventures!!!

    Reply
  51. “So government grant rules stipulating: “a person shall be entitled to a million dollar grant unless he is an incompetent idiot” means there is NO burden on the applicant to prove that he has the qualifications to not be certified as an incompetent idiot?”
    This question reflects so much misunderstanding of the constitutional basis for patent law, patent law itself, and the commercial realities surrounding patents that it will be very difficult to answer this question.

    Read Article 1, Section 8 of the U.S. Constitution regarding the basis of patent law. As I alluded to above, the basis for providing an inventor exclusive rights to his/her discovery is based upon the inventor disclosing the discovery so as “to promote the progress of science and useful arts.”

    As for your interpretation of the government rules, I have no idea how you derived them and they don’t seem to be even marginally related to the code/rules I know of.

    BTW: The government doesn’t give the inventor any monetary grant. In fact, all the government does is give applicant the right to buy a lottery ticket. Moreover, even if applicant does “win the lottery,” applicant either needs to be really lucky or spend a considerable amount of time and/or money to have that lottery ticket pay off.

    Reply
  52. “pds, why won’t you answer anon’s question?
    Why should the government be burdened with proving that you deserve a patent?”

    The government is NOT “burdened with proving that [applicants] deserve a patent.”

    Applicant is burdened with providing “a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains” (i.e., 35 U.S.C. § 112). This is the disclosure portion so as to meet the Constitutional requirements “to promote the progress of science and useful arts.” The quid pro quo for that disclosure is the “securing [of] for limited times to … inventors the exclusive rights to their … discoveries.”

    Patent applicants meet their initial burden by providing the disclosure. It is up to the government to say why applicant should not be entitled to the patent, e.g., by establishing a prima facie case of novelty and/or obvious under 35 U.S.C. §§ 102, 103. In other words, the government is saying that applicant’s ivnention isn’t really inventive.

    If anybody doesn’t like that the government has the burden of proving novelty and or obviousness, they should take it up with Congress.

    Reply
  53. As Malcolm Mooney apparently recognizes, the client must make the business decision whether to file application: “I do recall referring to the many bogus patent applications which are shoved under Examiners noses by attorneys **at the behest of their clients**.” (empahsis added)

    If ideas are bogus because they’re likely obvious, patent attorneys should have a candid discussion with their clients. The patent attorneys should explain the risk that the patent examiner may repeatedly reject the patent claims as obvious, which may be time consuming (and thus expensive) to respond to. The patent attorneys should also explain that preparing the patent application may cost significantly more because the application may need more detail to provide backup claiming options and to provide arguments for patentability.

    The great thing is that, after being so counseled by their patent attorneys, clients can make their decisions using a cost-benefit analysis. And this cost-benefit analysis will deter many clients from filing applications for borderline obvious ideas. After all, patent applications are not cheap to draft, prosecute, or maintain.

    Of course, there are exceptions. For example, I believe the “swing” patent was prepared by a patent attorney to cover his child’s allegedly novel method of swinging. In that case, since the attorney had very little costs (only the USPTO fees), there was little deterrent. Also, some business are very profitable and are willing to file patent applications on any new idea (obvious or not) because there’s a chance that some borderline cases may be allowed. Finally, some patent attorneys will prepare a cheap, bare-bones patent application for a much lower price, which is less likely to deter clients.

    In any event, if the client ultimately wants to agressively seek patent protection, I say let them. It’s their right. But don’t be surprised that patent examiners agressively look for (or brainstorm) a TSM in response.

    Reply
  54. Fredric, exam,

    To reiterate my posting of 10/18 4:19…

    Give the PTO more $ so that:
    1) More examiners are hired,
    2) The examiners have more time to find good art/provide better rejections (for those that are not presently well supported), and
    3) There is more time for better oversight of the rejections (i.e. quality review for all rejections by primaries and/or review boards).

    These are not new ideas and have been raised time and time again. As noted above, the solution may be centered around more adequate funding of the PTO and less time pressure on the examiners rather than changing the statute/patentability requirements/burden of proof.

    In a country as economically important and viable as the US, surely there must be a way to fund the PTO to dispose of applications (whether to issue or reject them) relatively quickly without compromising the quality of issued patents.

    As it is clear, I have a great deal of respect for the examiners and the difficulty of their jobs. I have less respect for crappy rejections or allowances caused by lack of time, training, and oversight.

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  55. Exam: Oh sure, Mooney and pds were having a great time. “Butting in”? I thought that was the purpose of this site, otherwise they have their respective email links listed for a private little chat. Of course I wasn’t the only one to weigh in his sometimes wacky comments, but the others didn’t have a go at you as well, did they?

    Why digress to discussing government grants if it were not relevant to the isue of inventors getting these alleged obvious patent grants? Maybe using inflammatory “incompetent idiot” instead of, say, “undeserving grant applicant” was intentional, perhaps innuendo didn’t cross your mind? We are discussing here inventors allegedly getting undeserving grants, are we not?

    I’ll ignore (again) your “you’re talking about yourself!!!” swipe like we used to do as kids when ranking out each other.

    Here is my bottom line, including agreeing with your final comment. No one wants invalid patents in force. It dilutes the value of valid patents by calling in question the credibility of patents in general. As such, a would-be infringer will infringe and take his chances in court where he can hope on obtaining the “correct” result, e.g. that the patent is obvious and never should have been issued. A patent should elicit the respect it deserves. If anything,it keeps the litigation down, while also provides the patentee the best chance for fully exploiting his patent via licensing.

    Having said all this, what is the issue here? This is not some new law just concocted that has caused this recent near hysteria about trolls, bad stupid patents, and such, all ranting and rambling interspersed between some great comments in this board. TSM has been the standard for the past 25 years, therefore every patent now in force was granted under that standard. 25 years of TSM jurisprudence, so what, are there suddenly mountains of obvious patents during this time as compared to before then? Seems to me that every Blackberry wielding fan, who faced losing their connection due to that case, is now taken up arms against patent trolls and obvious patents (of which NTP was considered both)and has fixated on the TSM standard. But again,its a legitimate viewpoint and no disrespect should be shown that side nor to any side, including inventors and their patent attorneys

    If you look at the Congress Patent Reform report from last year. there is absolutely nothing in this report to Congress which addresses or even discusses any deficiency or defect in the current Fed Cir test for § 103. Had there been any need, surely Congress would be a great place to go for change. That doesn’t mean the system is perfect but why not perfect the PTO first by starting with their budget? If you really want a mess, give more subjective power to examiners without empowering them with more resources, experience, etc

    You offer some very good suggestions to improve the system but I don’t see them as really on point with the KSR case and TSM.

    Reply
  56. Frederik:
    “And admit it, it was directed at inventors seeking a patent.”
    I am not going to admit to something that’s absoultely untrue. Maybe you should admit that deep down, some of the “caustic” remarks are relevant to you. BTW, Mooney and pds were doing fine in their interesting discourse without your butting in.

    “The application itself is supposed to explain in the spec why the invention is novel and useful, how it solves a particular problem, as well as how to practice it. Often it will address particular known prior art and argue how the invention is novel and non-obvious. Isn’t this an argument that right out of the starting block the patent applicant has to persuade the examiner that he has something patentable?”
    I agree that’s how the current process starts and it can perhaps be improved by having applicants provide better background and IDSs. But my question is why not have the process then continue with the examiner finding the prior arts; have the presumption of PHOSITA to judge obviousness; and shift the burden of proof to the applicant in disproving obviousness? Isn’t that how it was with the secondary considerations before TSM erased PHOSITA out of the picture?
    I wonder if there are statistics of how many applications have secondary considerations submitted before and after TSM.
    Isn’t it much easier for attorneys to take ten minutes and argue about motivation of hanging a swing from a tree branch (thanks to Kulaga for demonstrating the ludicrosity) than having to work a bit longer and come up with proof of why the invention is not obvious and deserving of a patent worth potential millions?
    Another thing about the swing patent, can you honestly say that examiner’s time would be better spent in searching for the motivation of using a tree branch? I know you don’t agree with Mooney’s point of view, but be open minded about this and consider whether focusing prosecution on such things would take examiner’s time away from other searches.
    Bottom line is, I don’t think we would be debating this issue today if some attorneys didn’t argue that it would not be obvious to hang a swing from a branch, resulting in the TSM being applied stringently in the issuance of obvious patents that have made the public question the quality of patents.

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  57. I see arguments ad hominem are alive and well among the American Patent Bar.

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  58. “Yes, read some of the archived comments you made and ask if it’s worthy of an officer of the court,”

    My god, man, give it a rest.

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  59. Malcolm, since you asked, it’s not your professional qualifications at issue for me but your professional attitude. Yes, read some of the archived comments you made and ask if it’s worthy of an officer of the court, the distain you do show for inventors, even the system. You were the one who wrote “Prosecuting patent applications is a game of throwing wet toilet paper up against the restroom wall to see how much of it you can get to stick”. Is this your view of how thousands of patent attorneys practice their trade? And bizarrely you complain about the state of patent prosecution today.
    You mock inventors whose applications may be rejected as in effect delusional (“would be saving the world and making everybody rich in the process”). It dilutes some otherwise rather coherent musings you’ve made (even if not everyone agrees with your arguments). I am certainly not the only one who has had that impression here.

    It’d be nice to maintain some degree of decorum here, it’s not a high school chat room.

    Reply
  60. Tom

    “The examiner located art that was very close, but the swing was hung from a horizontal member, which the examiner said was not explicitly the same as a tree branch. The examiner said using a tree branch was obvious “since such a modification would have provided a more natural environment (under the trees).” Huh? What does nature have to do with the TSM for using a tree branch instead of a horizontal member?”

    Frankly, the fact that the Examiner felt compelled to make ANY argument to support the idea that a tree branch was an obvious species of a horizontal member is a sad testimony to the games being played at the patent office.

    Tree branches are horizontal. Period. There is no unexpected advantage that flows from using a tree branch versus a metal pole versus a two-by-four or a giraffe’s backbone. That’s the end of analysis.

    But the Examiner decided to go further and say, well, yeah it’s nice to swing outside under a tree so the skilled swing designer would know that a nice sturdy TREE BRANCH would suffice to achieve that effect. That’s how I understand the Examiner’s very reasonable and PROPER (albeit inarticulate) argument.

    The question for the strict TSM promoters is: does the Examiner need to spend ANY time finding a citation in the prior art to support this sort of trivial assertion?

    As a patent prosecutor, I say: “Let’s not insult the human race by pretending we’re all morons.”

    I thank you, Tom, for providing this great example of how ridiculous the strict TSM test really is in practice.

    Reply
  61. “Gee, Mal, so you won’t take me as a client (nyah, nyah, nyah??).”

    Right. You can dish it out, Frederik, but when it gets dished right back at you, you pretend that I went petty on you first. Brilliant plan! Except the comments are all archived and its plain that you launched your petty attack at my professional qualifications first. Why did you bother to do that, Frederik?

    You also wrote, clearly to me:

    “you could barely care less when the final rejection comes and your client is denied his patent on his silly idea.”

    And when I explained to you why your conclusion was off-base, you respond by accusing ME for misquoting you. Get real, Frederik.

    “And “small inventors already get breaks at the PTO”?”

    Yeah, they do. I’m terribly sorry if the fees are still too high in your mind, Frederik. Really, I’m all choked up about it.

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  62. Tom,

    The “prove a negative” objection is the most common objection to shifting the burden of proof. But as I said before, the Supreme Court cases generally palce the burden on the patentee/applicant, and those cases suggest several objective ways to prove nonobviousness. First, you could prove that your combination is particularly useful versus the elements in isolation (i.e. synergy–a slight misnomer–or new and useful function for the individual elements). The Federal Circuit even has a variation of this used in one particular context: genus-species, where you have to prove “new and unexpected results”. Second, you can prove that the prior art in the field was focused on some other particular problem. Third, relatedly, you can prove that the prior art taught away from your solution. Other objective indicia of nonobviousness abound (e.g. failure of prior attempts).

    Is there a category of inventions that are intuitively nonobvious even though you can’t point to specific reasoning and evidence to prove it? Probably. But that is the exact same problem that there is a category of inventions that are intutively obvious even though you can’t point to specific reasoning and evidence. What TSM right now is award that entire gray zone to the applicant by default. There are two alternatives, (1) award it entirely to the government by default, or (2) allow the examiner/court/jury to judge it, with a lip-service effort to be objective and non-hindsight influenced but with no way to police that gray zone. I don’t see why the TSM default rule of favoring the applicant makes sense, as I’ve said before, we don’t usually err in favor of applicants by default in any other context.

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  63. Malcom,

    Several hundred lines above you called me to task to show you “a concrete example” of a case in which the examiner provided an improper rejection. I was reading the briefs of the KSR case and looked at the file wrapper for 6,368,277. This is a ‘silly’ patent cited in many of the briefs. (Thanks to pds for referencing the Inventors brief as one of his favorites. 10/18 @ 02:58pm) The claim included hanging a swing from a tree branch. The examiner located art that was very close, but the swing was hung from a horizontal member, which the examiner said was not explicitly the same as a tree branch. The examiner said using a tree branch was obvious “since such a modification would have provided a more natural environment (under the trees).” Huh? What does nature have to do with the TSM for using a tree branch instead of a horizontal member?

    The examiner, hopefully, could have very easily said that the horizontal member had a function that was also performed by a tree branch and a PHOSITA would readily recognize the equivalency of function, particularly considering that tree branches were known to be used as horizontal members for swings and the real problem being solved (providing for side-ways swinging) was not affected by the type of horizontal member being used. Such a rejection would have provided a much firmer basis for rejection instead of saying that motivation comes from wanting a natural environment.

    In your last post you say that there are “many bogus patent applications.” I do not dispute that bogus apps exist (the patent listed above is a good example of one), but I do dispute that there are a great number of them relative to the 7 million plus patents issued. I see many more improper rejections of the above-type than I do silly or bogus patents. Which is the bigger problem? I would much rather address the issues of what standard to use to determine patentabilty and how it should be applied and enforced than how to eliminate a few bogus applications that have a questionable affect on society.

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  64. Gee, Mal, so you won’t take me as a client (nyah, nyah, nyah??). And I was able to give you a call about patenting my new wet toilet paper drier. You are one piece of work, I’ll give you that.

    You write of “those” and “these” attorneys forced to file bogus patent applications, but not you of course. You weed out the “bogus” ones yourself, naturally. But the way you describe the patent scene today, 9 out of 10 potential clients of yours are sent packing.

    And right you are, you didn’t use the word “silly idea”, your favorite is “bogus”. Sorry for the mix-up but again, watch the quotation marks. I never attributed “silly” or “your client” to you.
    Surely you don’t vent at the PTO as you do here, as you say and I believe you. Would you care to provide a patent number for one of your works?

    And “small inventors already get breaks at the PTO”? Oh, right, the small entity fee, that’s a real saver.

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  65. anon,

    You’re right, I should have been more precise. TSM is but one of the three elements of a prima facie case of obviousness.

    My problem with shifting the burden is how to prove a negative. What of the inventions where no prima facie case of obviousness can be made by the examiner. Many obviousness rejections fail to satisfy the prima facie case for reasons other than TSM (usually by not having all the elements and/or limitations). Those rejections disappear after 2) without requiring your 3).

    I guess my real question is what are the elements of a prima facie case of not being obvious? What happens with your 3) if the Graham factors do not apply because the invention is just now being marketed and does not have a history, or the problem being solved was never recognized as the problem, etc?

    Secondary considerations are, well, secondary. What are the primary considerations for the applicant to prove non-obviousness if that is where the burden lies?

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  66. Tom,

    Good point, but strictly speaking, TSM is not a standard for obviousness. It is simply a evidentiary requirement before the standard for obviousness ever sets in.

    Current Fed. Cir. law is this: (1) the applicant is presumptively entitled to the patent; (2) the examiner must establish a prima facie case by proving TSM; (3) the applicant rebuts the prima facie case by showing secondary considerations; and (4) the case dissolves and obviousness is assessed using a standard that nobody has yet really figured out.

    My view simply cuts out (1) and (2), which were the additions that the Fed. Cir. grafted onto Graham.

    Reply
  67. ” I see the toe to toe you’ve been doing with pds but I have to tell you that if I were looking for a patent attorney, I would gladly give pds, not you, a call.”

    Oh yeah? Well if you were looking for a patent attorney and you wanted me to represent you, I wouldn’t accept you as a client anyway, so nyah nyah nyah!

    Give me a break. Yes, pds long-winded “arguments” and goalpost moving would no doubt wear down the will of many of the PTO’s finest. Hooray.

    But let’s face it: it’s ludicrous to imply that anyone writes Responses to Office Actions like they write my blog comments.

    “Your comments seem to tell us all that you could barely care less when the final rejection comes and your client is denied his patent on his silly idea.”

    I don’t recall ever referring to “my client” or my client’s “silly idea.” I do recall referring to the many bogus patent applications which are shoved under Examiners noses by attorneys at the behest of their clients.

    Do you think those clients and those applications and those attorneys don’t exist? I find the hostility towards any discussion of these applications and these clients and these attorneys confusing. It’s almost as if some people post their “PTO was unfair to my client” screeds here in an attempt to generate business for themselves.

    I don’t need to do that.

    “why is the small inventor so insignificant all of a sudden?”

    The small inventor is no more or less signficant than he or she was before pds brought up the alleged discriminatory “harm” to the small inventor as an ARGUMENT that patents should not be harder to obtain.

    It’s a bogus argument. Small inventors already get breaks at the PTO.

    Reply
  68. I will go out unless it rains (after I finish writing or examining these accursed applications, take your pick).

    The default is I will go out.

    As this is the most usual interpretation of phrases using unless, and there is no evidence that the legislature intended otherwise when writing 102 (or other sections), the default is that a patent should be granted.

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  69. Mooney: pds doesn’t need defending but I will anyway. Malcolm, your writings simply reek of someone who really REALLY doesn’t like his job, I suppose that’s your prerogative though, who knows maybe you’re just venting. Maybe you’re just unlucky, that you think every Rube Goldberg with some stupid invention has shown up on your doorstep, that he calls you every month asking for progress on his application since he is awaiting his MILLIONS on his SAVE THE WORLD invention, and you have to put up with it all. If the patent system were on trial, as it seems to be, you’d be a hostile witness (and a few others here).

    You have already been gently advised by Tom Barniak, Jr (great post, Tom, by the way)to tone down the rhetoric but up it goes anyway. It is unfortunately bearing down upon your credibility, a shame since you seem to be a smart guy, and who doesn’t love your sarcasm? I see the toe to toe you’ve been doing with pds but I have to tell you that if I were looking for a patent attorney, I would gladly give pds, not you, a call. Your comments seem to tell us all that you could barely care less when the final rejection comes and your client is denied his patent on his silly idea. The small inventor client, that is. Different for the big guys? Certainly, the Framers weren’t thinking of multi-national corporations when they conceived of the patent system, so why is the small inventor so insignificant all of a sudden? So hint again- take a hint and disagree if you wish but stay on point.
    Well, whatever. We all wish you and your clients the best. And I am sure we all wish the patent system the best. It IS an important part of our society.

    Reply
  70. pds, tugging at our heartstrings again:

    “Some small-time inventor spends hundreds of hours perfect his or her invention, maybe five or ten thousand dollars to have a patent attorney prepare the application, and an examiner rejects the application based upon a couple hours of searching and a one paragraph motivation to combine based upon “reasonable references,” which took about 15 minutes to write.”

    I’d advise not watching “American Idol,” pds. It might break your heart.

    “If the examiners can use common knowledge to generate their obviousness rejections, why cannot attorneys do the same?”

    Hint: what is the ratio of Examiners to attorneys?

    Reply
  71. Anon, you want the burden shifted to the applicant. OK. I do a search. I explain why the prior art does not render the invention obvious. I provide evidence to support my conclusions.

    Then what? I made a prima facie case of novelty and non-obviousness. What criteria should the PTO use to reject my application? That is what I see as a major issue. Should the examiner’s opinion trump my submittal or do I easily obtain my patent?

    With current examining practice, the examiner often tries to shift the burden of proof to the applicant by not stating reasons for their rejection. Because I know my clients will not appeal, in order to have a hope of obtaining allowance I sometimes assume the burden of supplying proof that the invention is not obvious. (This is after I make the procedural arguments.) So, after receiving an office action I sometimes find myself doing what you advocate.

    But, what should be the examiner’s response? Should he say, “Good job, here is your patent number”? Should the examiner be required to give reasons for rejecting my prima facie case? Or, can the examiner just state that the evidence was not persuasive?

    I have submitted affidavits defining a PHOSITA and providing analysis and evidence of non-obviousness of the art. Many times the examiner moots the original rejection and then cites similar art in a new rejection. The process repeats.

    The problem with proving a negative, as you suggest by having the applicants assume the initial burden of proving the invention is not obvious, is that the examiner need only find one piece of art and reject the claims on that basis. Then, we are right back to where we are today. I have to prove that the newly cited art does not render the invention obvious. Regardless of who has the burden of proof, we need criteria that defines what is patentable and what is not. Is TSR that criteria? If so, let’s enforce it.

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  72. pds and Fredric,

    I must disagree with your answers. First, the section 102 point. Yes, that is what the CCPA and Federal Circuit hold. Yes, it is a plausible interpretation of the statute. But it is not the ONLY plausible interpretation of the statute, and the Supreme Court doesn’t seem to have ever interpreted it that way, and seems to go the other way (placing the burden on the applicant). And I would say the burden of proof is very much on the table in KSR, so I would not agree that my post is irrelevant to this thread.

    I go back to every other context where a statute says: so-and-so shall be entitled to a permit/benefit/license/etc. if he is qualified/disabled/has a well-founded fear/etc. In every one of those, it is the applicant’s burden to prove every element with a prima facie case. Why it is patent applicants alone who get the prima facie case with just new and useful? The requirements of a patent are new, useful, and nonobvious, and logically it is the applicant who needs to make an initial case for all three elements.

    Section 282 doesn’t answer my point either, because my point is focused on the PTO examiner, to whom 282 does not apply.

    pds rejects my analogy to a trial judge. But the examiner is no different to many other bureaucrats. Ever applied for anything from the government other than a patent? Even applying for a drivers license, you need to convince a driving examiner that you are skilled enough to drive. And that driving examiner is acting as both judge and prosecutor, in your words, but only if he denies you a license.

    And yes I think the applicant should have to find the prior art himself and establish that the invention is not obvious compared to the prior art, because the prior art teaches away, evidences a long felt need for the invention, etc. Again, if you were applying for asylum, you would need to submit evidence that your home country is killing people of your religion.

    There is no hindsight problem with a rule that the applicant needs to prove by objective evidence that the invention is nonobvious. There is no more uncertainty than TSM, since it is essentially placing the TSM burden on the other foot. The only difference is that an applicant would have to do much more work, and the examiner much less, and it will be harder to get a patent. My suspicion is that prosecution lawyers know this and it is why they are fighting like made to save the Fed. Cir. test.

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  73. pds

    “Let me guess, you are so good with the clients you are your firm’s biggest rainmaker, which frees you up from the everyday drudgery of dealing with the patent office (which is my lot in life) and allows you all the free time in the world to post of this board.”

    LOL, coming from Dr. Verbosity himself. Earlier, the key word was “unpredictable”. Now it’s “pissing contest.” Well, we all know who has the longest comment.

    Please excuse me while I find an umbrella.

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  74. “exam”: Maybe you have touched a nerve since like most who have tried to articulate something intelligent on this site, we have a problem with an “incompetent idiot” (your phrase, though I would chose something less incendiary). You can in fact help me with that though by sticking to the point of these postings without the hyperbole. Admit it, that prior posting about “incompetent idiot” was meaningless tribble. And admit it, it was directed at inventors seeking a patent.
    And I haven’t mistaken anything as to burden of proof and financial burden. The application itself is supposed to explain in the spec why the invention is novel and useful, how it solves a particular problem, as well as how to practice it. Often it will address particular known prior art and argue how the invention is novel and non-obvious. Isn’t this an argument that right out of the starting block the patent applicant has to persuade the examiner that he has something patentable?

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  75. anonymous, great work on finding the Warner case. But I am assuming the case is referring to the factual basis as established in Grahm by SCOTUS. In which case, I wonder how you would establish PHOSITA on a factual basis. If PHOSITA is established somehow, does TSM become moot?

    Frederik, you have mistaken financial and work burden with burden of proof. The “incompetent idiot” remark wasn’t directed at anyone — just to cover the most undeserving people of grant money. If it touched a tell tale nerve on your part, I can’t help you with that.

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  76. Apropos anonymous’ 11.11am posting, yes, true, but it is worthless if he articulates his reasons as simply a matter of his opinion. I am not asking for longer office actions but rather for articulating fully why two (or even three) prior art references would be combined by PHOSITA. I say “why” he would think to combine it, not “why” it would work if he did, which is sometimes all you get in an OA.

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  77. Last comment by P.A. was good- its written law. Have a nice day. Unfortunately, laws can be recinded or changed.
    My observation: As the owner of two patents( one that was rejected initially as obvious)-both written by myself( cheapskate-patent attorney wanted 4 grand upfront-come back for more when that’s gone) and working on a third(pro-se,of course- said I was a cheapskate), I have learned a lot from this thread from reading the intellectuals(aka patent attorneys) have at it. Neither of my patents are valueless but that is only my opinion until they are actually bought and consumed by the public. I am stiving towards that goal now. Being a novice claims writer, my claims were rejected in both applications and in both applications i petitioned my examiner to write new claims for me (pro-se can do this as all patent attorneys know). Henceforth, both of my patent applications were granted (actually think my claims were better in the patent that I am now commercializing but hey,he was my Examiner-he’s got at least a B.A. in an engineering field-go ahead and write ‘em, beats throwing wet toilet paper at walls).
    Questions for one of the patent attorneys: In the event of an infringement or an attempt at an invalidation of my patent by an infringer, is my patents weakened by this fact and in case a new subjective TSM is adopted in this pending court case is there any chance all patents granted before the judgement will be ‘grandfathered’ in under the current TSM, after all, they recieved a pass under that rule?
    One more observation: Pds has a thorough and complete perspective on this complicated issue( not asskissing,just an observation)- Mr. Mooney makes compelling arguements about change that seem to make sense also, but then he goes on these tangential rantings whereas i loose all faith in him(as an attorney,not a homo sapien-nothing personal,just an observation.

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  78. 35 USC sec. 132(a) requires that an examiner state his reasons for rejecting a patent, btw. That’ll still be there, regardless of what happens to TSM. KSR might just revise what reasons will be sufficient.

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  79. Anonymous, thanks for getting back on point in the interim.

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  80. Well, I think this ends this board of postings. Really, where does “incompetent idiot” fit into a debate about statutory requirements in patent law? Some might find it cathartic to vent nonsense but it does foul this site. If you think a $10,000+ patent application (that’s just the cost of filing it) does not fit any degree of burden of proof in the path to be granted a patent, together with responses to office actions at further cost, then what, is the applicant supposed to find any and all potential prior art himself and one by one argue against obviousness even before the examiner’s first OA? No one is arguing for an end to office actions, in which the burden of proof, if that is really what it is, falls then to the applicant if, and only if, the examiner makes his prima facie case for obviousness. Is it so much to ask that the examiner articulate it fully? Isn’t that a standard requirement in any prima facie analysis in law in general? Or are we to get to a “is not, is too, is not, is too..” series of exchanges between examiner and attorney if the TSM test is expelled from prosecution?

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  81. As far as I can tell from a 5-minute westlaw search, the origin of the notion that the burden of proof lies with the examiner is In re Warner, 379 F.2d 1011, 1016 (CCPA 1967). In that case, the CCPA thought that the language in 102 and 103 “a person shall be entitled to a patent unless” put the burden on the PTO.

    The Warner panel also drew support from statements the Supreme Court’s opinions in Graham and Adams. Id. at 1017.

    Here’s the main paragraph (though the reasoning starts well before and continues for a few pages after):

    ———————————
    We think the precise language of 35 U.S.C. § 102 that ‘(a) person shall be entitled to a patent unless,’ concerning novelty and unobviousness,’ clearly places a burden of proof on the Patent Office which requires it to produce the factual basis for its rejection of an application under sections 102 and 103, see Graham and Adams. Where such proof is lacking we see no necessity for resolving doubt in favor of the Patent Office’s position, for example, where, as in the above cases, the factual basis to support the legal conclusion of obviousness under section 103 is missing, and the record there supported the applicant’s position that the invention was reconstructed through hindsight. Nowhere in these cases was there the necessary factual basis to support the conclusion that it would have been obvious to one of ordinary skill to bring the elements together. United States v. Adams, supra.
    —————————-

    As one might expect, the full 1967 opinion doesn’t seem to be available for free on the internet, but if you want to evaluate the argument for putting the burden on the PTO, I’d look there.

    It might be worth noting that the Supreme Court also denied cert in that case. 389 U.S. 1057 (1968).

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  82. So government grant rules stipulating: “a person shall be entitled to a million dollar grant unless he is an incompetent idiot” means there is NO burden on the applicant to prove that he has the qualifications to not be certified as an incompetent idiot?

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  83. “I realize that the examiner’s burden of proving a rejection is standard Federal Circuit law right now. You’ll notice that all of the cases you cite from the MPEP are Fed. Cir. or CCPA cases. My question is, after putting the complete abandonment of the Fed. Cir. test on the table (and it is on the table), what is the argument for keeping the burden on the government to disprove obviousness, versus putting the burden on the applicant to prove non-obviousness?”

    How about section 102: “A person shall be entitled to a patent unless –”

    If CAFC, CCPA caselaw and MPEP rules are not good enough of an argument for you, how about congress? If a person is presumed entitled to a patent unless the examiner can prove otherwise in a 102 context, then it makes no sense to place the burden on the applicant for a 103…

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  84. pds, why won’t you answer anon’s question?

    Why should the government be burdened with proving that you deserve a patent?

    If I believe my invention is worth millions, I think a little burden on my part to prove validity is certainly justified.

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  85. Anon:

    Applicant doesn’t just go into the PTO and demand a patent applicant.

    Applicant has to prepare and file a patent application that meeds the requirements of 35 USC 101, 112 and pay the filing fee. That is their meeting their initial burden.

    “If you want a permit of some kind, you have to submit things to the government and convince them to grant it. If you want disability benefits, you have to convince a poor overworked bureaucrat that you are, in fact, disabled. If you want asylum, you have to convince a biased immigration judge that you really will be tortured if sent home.”
    In both instances, I’m sure both requirements are met by an application. Your arguments have completely ignored that an inventor has filed an application for patent, which meet the inventor’s initial burden.

    The examiner’s burden, in rejecting the invention, is to identify prior art and ***explain why*** that prior art prevents the application for issuing under 35 USC 102, 103.

    The problem with you requiring that an applicant prove non obviousness is the application of 35 USC 282. You want a better explanation, look at some of the Briefs for Respondants and do a search (the PDF files are searchable) for 35 USC 282.

    “In your view, I hazard to guess, the examiner is simply an obstacle to be overcome and an advocate for rejection. But that is no more the examiner’s role than it is the jury’s role or the trial judge’s role.”
    You need to bone up on the law if that is your belief.

    If you think the examiner is impartial, then you haven’t read this board or haven’t read your own prior comments on this board.

    If you want to compare the examiner to a judge, then you need the defenese (i.e., the application) and the prosecutor … so who represents the prosecutor? … well the obvious answer is the examiner.

    Now I don’t know about you, but I wouldn’t want to go to court as a defendant when the prosecutor and the judge are one in the same.

    Perhaps a better analogy would be the examiner and applicant are two parties engaged in a negotiation. If they eventually disagree, then they go to the judge (i.e., the BPAI). In this sense, when talking about “evidence,” I would imagine the judge would weigh the declarations of applicant’s experts and the examiner’s “subjective” rejection equally.

    Remember, the examiner’s “subjective” rejection is not based upon the examiner’s expertise as a patent examiner, but instead, it is based upon the examiner being considered as one having ordinary skill in the art (because that is the standard under 103). Thus, applicants’ experts can also submit their respective opinions regarding obviousness in that role.

    As such, as I stated above, using the subjective belief (whether by the examiner or applicant’s expert) to determine obviosness just results in a p**sing contest.

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  86. pds:

    I realize that the examiner’s burden of proving a rejection is standard Federal Circuit law right now. You’ll notice that all of the cases you cite from the MPEP are Fed. Cir. or CCPA cases. My question is, after putting the complete abandonment of the Fed. Cir. test on the table (and it is on the table), what is the argument for keeping the burden on the government to disprove obviousness, versus putting the burden on the applicant to prove non-obviousness? It is not how we do any other appliation to the government for a right/monopoly/benefit/etc. (since people don’t like the word handout). If you want a permit of some kind, you have to submit things to the government and convince them to grant it. If you want disability benefits, you have to convince a poor overworked bureaucrat that you are, in fact, disabled. If you want asylum, you have to convince a biased immigration judge that you really will be tortured if sent home. All of these are fraught with possible arbitrary error, and believe me the option of appellate review in all of them is pretty limited.

    You argument about declarations from experts misses the point. Sure appliants could submit them, they do it all the time now. But the difference between an examiner and an expert is that the examiner is also the decision-maker. In other words, in my view, the examiner is a neutral person of skill in the art the government has hired to figure out if an invention deserves a reward. In your view, I hazard to guess, the examiner is simply an obstacle to be overcome and an advocate for rejection. But that is no more the examiner’s role than it is the jury’s role or the trial judge’s role. Once a trial judge decides to grant summary judgment (or rule for one side on a bench trial), of course, he becomes as much an advocate of invalidity as an examiner who decides to issue a rejection. And of course a trial judge must articulate his reasons within the law. But one of those reasons has always been so-and-so failed to present evidence sufficient to meet their burden of proof (and in the examiner’s context, there is no statutory presumption of validity).

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  87. For fun I copied the above comments into Wordperfect which tells me that these comments now have over 22,000 words and fill 47 pages.

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  88. “I have still yet to see any reason for the antecedent question, which is why it is the examiner’s burden to find a reason to reject a patent, not a patentee’s burden to prove that they deserve one.”
    Try reviewing M.P.E.P. § 2142. The following is the first paragraph:

    The legal concept of prima facie obviousness is a procedural tool of examination which applies broadly to all arts. It allocates who has the burden of going forward with production of evidence in each step of the examination process. See In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976); In re Linter, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972); In re Saunders, 444 F.2d 599, 170 USPQ 213 (CCPA 1971); In re Tiffin, 443 F.2d 394, 170 USPQ 88 (CCPA 1971), amended, 448 F.2d 791, 171 USPQ 294 (CCPA 1971); In re Warner, 379 F.2d 1011, 154 USPQ 173 (CCPA 1967), cert. denied, 389 U.S. 1057 (1968). The examiner bears the initial burden of factually supporting any prima facie conclusion of obviousness. If the examiner does not produce a prima facie case, the applicant is under no obligation to submit evidence of nonobviousness. If, however, the examiner does produce a prima facie case, the burden of coming forward with evidence or arguments shifts to the applicant who may submit additional evidence of nonobviousness, such as comparative test data showing that the claimed invention possesses improved properties not expected by the prior art. The initial evaluation of prima facie obviousness thus relieves both the examiner and applicant from evaluating evidence beyond the prior art and the evidence in the specification as filed until the art has been shown to suggest the claimed invention.

    “If the specification is missing gaps for the claims, those gaps can be filled by “ordinary skill in the art.” No case I am aware of has ever required an express TSM to combine the spec with known prior art elements to achieve the claim. We just allow juries to fill the in blank using hindsight to find enablement. The only check there against jury hindsight is an instruction not to use hindsight (which is also the case in every other area of law, such as negligence).”

    The two issues are very different. Regarding enablement, for example, consider a claim to a computer comprising a first processor configured to do X, and a second processor configured to do Y after receiving X from the first processor. An enablement issue may be that there was nothing mentioned in the specification (or claims) about a power supply used to power the computer. However, one having ordinary skill in the art would have easily known how to provide a power supply to the claimed computer because the evidence is abundant.

    However, let’s suppose for the same claim, reference A discloses a processor configured to do X and reference B discloses a processor configured to do Y. However, no TSM exists that shows a motivation to modify A in view of B. The difference is that the evidence is not abundant.

    I’ve never been exposed to an enablement issue, but if an examiner did raise an enablement issue, my response would not be “well I think that feature A would have been known by one having ordinary skill in the art based upon my 10 years of experience practicing patent law in this field.” Instead, I would look at the art to make sure that what I did assert was enabled actually was because if I could not find evidence, then I would most likely be SOL.

    What I find particularly funny with regard to many of these comments about providing examiners the ability to reject applications based upon their subjective belief is M.P.E.P. § 2145, which is entitled “Consideration of Applicant’s Rebuttal Arguments.” In particular, I am referring to subsection (I), which is entitled “Argument Does Not Replace Evidence Where Evidence Is Necessary.” Here is a snippet:

    The arguments of counsel cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965); In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997) (“An assertion of what seems to follow from common experience is just attorney argument and not the kind of factual evidence that is required to rebut a prima facie case of obviousness.”).

    What is good for the goose is good for the gander?

    If the examiners can use common knowledge to generate their obviousness rejections, why cannot attorneys do the same? As I noted in a post in another thread regarding KSR, by allowing examiner to base their obviousness rejection on subjective evidence, it opens the door for applicants’ experts (which makes it more advantage to the well-heeled clients with money to spend on experts) to introduce declarations that propose their own “subjective” findings regarding obviousness. In the end, all you end up is a p**sing contest between the examiner and applicants’ experts.

    As I reproduced in an earlier post from M.P.E.P. § 2142. The ultimate determination of patentability is based on the entire record, by a preponderance of evidence, with due consideration to the persuasiveness of any arguments and any secondary evidence. In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). This means that Applicants just need to get about dozen or so declarations supporting the position that the proposed combination of references, based upon the declarant’s subjective belief, would not have been obvious. That’s a lot of evidence for the PTO to overcome … again, the whole procedure will devolve into a p**sing contest.

    Are you so sure that this proposed refinement to obviousness jurisprudence will create more problems that it will solve?

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  89. “Please note that the Government is NOT saying that Examiners should be able to reject claims without providing their reasoning for doing, i.e., for supporting their rejections.”
    You, I, anybody with half a brain (so between the two of us, maybe we can come up with a full brain based upon our unending posts) can come up with a rationale for combining the references. If I was an examiner, all I would do is take applicants’ problem statement, state that the combination would solve the problem based upon the predictable results of combining the prior art — applicant already should me how to do it. You could get an examiner racking up 2-3 rejections a day using that technique. Then again, that is what you want, which is that “a significantly greater percentage of patent applications [be] rejected by the PTO.”

    But of course, you are not hostile to patents, inventors, and patent attorneys … I don’t how I ever came up with that idea.

    “Gosh, my heart bleeds for these “small inventors”, the riches that will be denied to them, and the 17 year monopolies that will never be if we allow Examiners to make reasonable inferences without citing a prior art reference.”

    Some small-time inventor spends hundreds of hours perfect his or her invention, maybe five or ten thousand dollars to have a patent attorney prepare the application, and an examiner rejects the application based upon a couple hours of searching and a one paragraph motivation to combine based upon “reasonable references,” which took about 15 minutes to write.

    Again, I must have been drinking when I accused you of being hostile patents, inventors, and patent attorneys. I deeply apologize to you, as I must have really taken your statements out of context, since you appear to have a deep respect for inventors.

    “Maybe I should invent a better kleenex to dry all the tears of ‘small inventors’.”
    Let me guess, you are so good with the clients you are your firm’s biggest rainmaker, which frees you up from the everyday drudgery of dealing with the patent office (which is my lot in life) and allows you all the free time in the world to post of this board.

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  90. It really does seem like people are writing law review articles here. To summerize the posts of the pro-patent people (who I hazard to guess are small inventors and prosecuting attorneys) think that (1) TSM is great because it forces examiners to back rejections with evidence, (2) examiners already don’t use TSM and will be even less accomodating if the Supreme Court reverses, and (3) delay costs small inventors money that they can’t afford.

    I have still yet to see any reason for the antecedent question, which is why it is the examiner’s burden to find a reason to reject a patent, not a patentee’s burden to prove that they deserve one. The most common answer is that it forces the applicant to prove a negative; but that is not quite true. The Supreme Court cases cited by the Teleflex amici generally (with a couple of notable exceptions) use the language of “suggestion” to find validity when the prior art teaches away from the invention. It is possible to prove nonobviousness by objective evidence, it is just raising the patentability bar a lot higher.

    The other answer is that reference to the person of ordinary skill without TSM introduces hindsight into the analysis. I don’t really see how that argument applies, but in any event, the person of ordinary skill, TSM, and hindsight are not inseperable. No brief in KSR has yet mentioned this, but we have another area of patent law that involves a person of ordinary skill at the time of invention — enablement. If the specification is missing gaps for the claims, those gaps can be filled by “ordinary skill in the art.” No case I am aware of has ever required an express TSM to combine the spec with known prior art elements to achieve the claim. We just allow juries to fill the in blank using hindsight to find enablement. The only check there against jury hindsight is an instruction not to use hindsight (which is also the case in every other area of law, such as negligence).

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  91. “All the Government wants to do is to be able to reject the application without the having to engage in the messy (but necessary in my opinion) business of providing evidence for that rejection.”

    Please note that the Government is NOT saying that Examiners should be able to reject claims without providing their reasoning for doing, i.e., for supporting their rejections. That is why I characterized your complaint above (i.e., “Wouldn’t life be much easier if nobody had to support his or her assertions”) as a strawman.

    “These additional costs for prosecution aren’t much a deal breaker for the big clients, but for the small clients, even one extra office action may be enough for the client to give up on the patent.”

    Gosh, my heart bleeds for these “small inventors”, the riches that will be denied to them, and the 17 year monopolies that will never be if we allow Examiners to make reasonable inferences without citing a prior art reference.

    Seriously, this is the weakest argument yet for issuing obvious patents: the “small inventor” will go extinct if patentable inventions become less obvious!

    Maybe I should invent a better kleenex to dry all the tears of “small inventors”. I got it: a combination kleenex and disposable cell phone which automatically connects to the users representatives in Congress. After the inventor finishes crying, she can quickly and easily call her Senator to complain about the unfair costs of obtaining a 17 year monopoly on the Greatest Thing Ever. Under the strict TSM test, do you suppose that would be patentable? The only thing stopping me from filing is the darn fees. Good thing I have a prototype handy or I’d forced to pet my cat to calm my nerves. Say, that gives me another idea …

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  92. “Sikmply because I want to see less obvious patents get issued does not mean I’m hostile to patents, inventors and patent attorneys.”

    You may pretend not to be hostile to these patents, inventors and patent attorneys, and deep down you may actually believe that as well, but everything I have read from you indicates otherwise.

    “Wouldn’t life be much easier if nobody had to support his or her assertions.
    Strawman.”

    Strawman? This is what the Government advocated in their brief:

    The obviousness inquiry should not require the PTO to conduct an unnecessary search for evidence showing a particular suggestion, teaching, or motivation to make insubstantially innovative combinations of elements that are known in the prior art. The PTO should instead be allowed to bring to bear its full expertise— including its reckoning of the basic knowledge and common sense possessed by persons in particular fields of endeavor— when making the predictive judgment whether an invention would have been obvious to a person of ordinary skill in the art.

    The Government doesn’t want conduct an “unnecessary search for evidence” when they have already determined that the combination of elements is “insubstantially innovative.” As I have written time and time again, this is the classic example of an examiner (i.e., the Government) determining, a priori, that an invention is obvious without evidence. At least today, once the examiner predetermines that an invention is obvious, the examiner has to search the prior art for a TSM to support the rejection. The Government, however, doesn’t even want the examiner to take that step. All the Government wants to do is to be able to reject the application without the having to engage in the messy (but necessary in my opinion) business of providing evidence for that rejection.

    Another reason why the Patent Office needs to supply objective evidence (which has been touched upon by a few of the briefs) regards application of the Administrative Procedure Act (APA) as codified in 5 U.S.C. § 706 to decision by the Patent Office. This was the basis of the decision in In re Zurko. The following section of the APA was cited in Zurko:

    To the extent necessary to decision and when presented, the reviewing court shall decide all relevant questions of law, interpret constitutional and statutory provisions, and determine the meaning or applicability of the terms of an agency action. The reviewing court shall–
    (1) compel agency action unlawfully withheld or unreasonably delayed;
    and
    (2) hold unlawful and set aside agency action, findings, and conclusions
    found to be–
    (A) **arbitrary, capricious** , an abuse of discretion, or otherwise not in accordance with law;
    (B) contrary to constitutional right, power, privilege, or immunity;
    (C) in excess of statutory jurisdiction, authority, or limitations, or
    short of statutory right;
    (D) without observance of procedure required by law;
    (E) **unsupported by substantial evidence**

    The court in Zurko was concerned about the portions that I emphasized with **asterisks**. Although the decision was directed to decisions by the BPAI, when the court stated that “we review factual findings for clear error, and thereby review board decisions on our own reasoning, we hope the board understands that we are more likely to appreciate and adopt reasoning similar to its reasoning when it is both well articulated and sufficiently founded on findings of fact,” it is readily apparent that the BPAI’s “findings of fact” can only be derived by the efforts of the examiner.

    “Based on your anecdote? Give me a break.”
    Although it seems that I have written enough in this thread for a law article, I cannot support every argument I make with a couple pages of original analysis, citations, and a couple of studies on point. Regardless, if you want me to elaborate on that point I will. I think small inventors will become extinct, because at this time, many potential inventors are already turned off from obtaining patent protection because of the very cost of obtaining protection. As an aside, you, of course, realize that every time I (or any other patent attorney) has to fight a bad obviousness rejection based upon a weak TSM, the costs of patent protection raises. These additional costs for prosecution aren’t much a deal breaker for the big clients, but for the small clients, even one extra office action may be enough for the client to give up on the patent.

    However, now that you’ve thrown in the subjective standard, which now allows for “a significantly greater percentage of patent applications [to be] rejected by the PTO,” the cost/benefit ratio becomes a lot worse for a small inventor. If a small inventor comes to me the day after the Supreme Court approves a “subjective analysis” and asks me what the chances are for their invention, my response (I like to be brutally honest with clients) may be “well, although you may spend anywhere between 10-15K over the lifetime of patent prosecution (including patent and drafting fees), odds now are that it is very unlikely you will get a patent.” Based upon that very honest assessment, it will only be the very well heeled inventors or the hardcore believers (with a lot of credit cards to max out on cash advances) that will proceed with having a patent application prepared.

    The problem is further exacerbated because even if an inventor is able to get a patent under this new subjective standard and tries to license the invention to the big corporations, it may very well be more profitable, on average, to infringe the patent than to license the patent because the prospects of invalidating the patent during litigation is much better if a subjective standard is employed instead of the current TSM test.

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  93. pds

    “Wouldn’t life be much easier if nobody had to support his or her assertions.”

    Strawman.

    Nobody is saying that Examiners should not have to support their assertions. The issue is whether that support must be, in every instance, backed up by explicit teaching in the prior art. That is what a strict application of the explicit TSM test would require in practice (when Examiners are forced by zealous prosecutors to back up their obviousness arguments). Anything less than that strict test is, well, fine with me.

    “Why should attorneys spend so much time poring over case law to prove a legal argument that the attorneys knows must obviously be true?”

    Huh? “Proving a legal argument”? We’re talking about a legal test and what facts must be shown to meet the requirements of that test. As you know, depending on the circumstance, the requirements vary. And the way in which those requirements vary is mostly a matter of public policy, based on society’s understanding (or perception, at least) of the risks of setting the bar too low or too high.

    “In fact, under your proposal to significantly reduce the number of patents being issued, I highly suspect that small time inventors will become extinct, or at least at very endangered species.”

    Based on your anecdote? Give me a break.

    “BTW: What was it about the practice that made you so hostile to patents, inventors, and patent attorneys?”

    Sikmply because I want to see less obvious patents get issued does not mean I’m hostile to patents, inventors and patent attorneys. It’s odd that someone like you who seems so obsessed with “proof” is so willing to make snap judgments. No harm done, though. ;)

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  94. “Time is money. I thought I made that clear but I will spell it out for you: forcing Examiners to find explicit support in the literature for EVERY assertion they make in their arguments supporting the obviousness of a claim is time-consuming.”

    Wouldn’t life be much easier if nobody had to support his or her assertions. Imagine how we could revolutionalize the legal industry. Why should attorneys spend so much time poring over case law to prove a legal argument that the attorneys knows must obviously be true? We can save money by not having to subscribe to Westlaw/Lexus Nexus or purchasing case reporters. No more Shepardizing of cases. All you need to do, based upon your own experience as an attorney, is make your legal argument. Imagine the millions and millions of billable hours that could be saved.

    We can use the same procedure at the other governmental agencies. For example, imagine the FDA when the issue of people serving raw fish at restaurants came up. The decision could have gone something like this … “well, everybody know that eating raw fish is bad for you, that’s why we cook it, so we do we need to investigate this further … I think we should ban this practice.”

    “It proves that most patent applications waste the PTO’s limited resources. Remember?”
    So how does the changing the obviousness standard change anything besides eventually reducing the number of patents being filed? Your argument inherently presumes that valueless patents are also obvious patents for which a TSM does not exist. However, I don’t think anyone has alleged that definitely non-obvious inventions are, on average, more likely to be valuable than inventions that would be considered obvious were it not for the TSM requirement or vice versa.

    “If the problem is Examiners bringing in their own “opinions” (albeit reasonable and fact-based opinions) into the determination, then it seems that “indicia” such as “commercial success” and “long felt need” should be evaluated against equally strict and explicit bright-line guidelines.”
    Have you ever picked up the MPEP? You claim to have litigated patents, and I admit that I have not. However, I find it hard to believe that you are ignorant as to the case law that surrounds secondary considerations. A discussion of the guidelines for these secondary considerations are found in M.P.E.P. §§ 716.01 (objective evidence of nonobviousness), 716.02 (allegations of unexpected results), 716.03 (commercial success), 716.04 (long-felt need and failure of others), 716.05 (skepticism of experts), 716.06 (copying). As you are well aware, the M.P.E.P. is, in a large part, a discussion of case law regarding certain issues, and as apparent from the sections of the M.P.E.P. I cited above, there are many cases that discuss the requirements for establishing secondary considerations.

    On the contrary, as noted in many of the briefs I have recently read in support of Respondent, many of the briefs for the other side, in particular the Petitioners brief, spend a lot of time attacking the TSM standard set forth by the Federal Circuit, but spend very little time describing the standard they want to apply. This reminds me to ask a question of you, which is to have you describe, in as great as detail as possible, how you believe patent examiners should be able to apply a subjective standard.

    “The strict/explicit TSM will not increase the “predictability” of the patent system. It will not make issued patents less subject to groaning ridicule by the public and by experts in the field.”

    You should take the time and read the briefs in support of Respondents. I cannot think of one that didn’t argue that the TSM test provides much more certainty that the “subjective” test proposed by Petitioner.

    As I noted earlier, I liked the brief filed by the Intellectual Property Investors. Regarding the “cherry picked” patents described as examples of the Federal Circuit’s jurisprudence gone bad, by my of the briefs in support of Petitioner cited, the brief addressed many of them. For example, with regard to the Halloween trash bag, the brief stated:
    The Halloween trash bag patent, mentioned in at least seven briefs filed in support of petitioner, was denied by the PTO at two levels of review. In re Dembiczak, 175 F.3d 994, 996 (Fed. Cir. 1999). The Federal Circuit, contrary to the statements of some amici, did not order the PTO to grant the patent; it merely held that the PTO had not made the necessary findings for an obviousness rejection. The opinion lays out what the PTO would have had to do to properly reject the patent. In particular, the Federal Circuit explained that, if the arguments made by the Commissioner in the court of appeals regarding a motivation to combine had been made and supported in the patent office, the rejection would have been upheld. Id. at 1001. Amici thus entirely misdescribe the case when they say that “the Federal Circuit concluded that the trash bag was patentable,” Br. of Intel Corp. and Micron Tech., Inc. (“Intel”) 8.

    Regarding the swing patent:

    In any case, it is not as if the problem with the swing patent was the Federal Circuit’s standard. There is no reason to believe the patent covered patentable subject matter, or was new and useful, let alone nonobvious. More generally, if one combs the bowels of any government agency long enough, one is bound to find more than a few ridiculous decisions. A silly aberration far removed from the facts of this case is not evidence that an entire system is broken.

    “But I do think that if a significantly greater percentage of patent applications are rejected by the PTO, fewer and better patent applications will be filed.”
    Now who could possibly object to that result?”

    The Founding Fathers? I’m also sure that most patent examiner’s would be very unhappy since the vast majority of them would lose their jobs. As for patent attorneys, instead of prosecuting patent applications, we’ve got a couple of million of patents that we can now invalidate based upon this new standard, so we’ll be OK. As noted by a few of the briefs, any substantial change to the TSM test will open up any issued patent to being invalidated.

    Personally, I know of an inventor, a classic example of a small-time inventor, who has a pending application for a very easy-to-understand product. There is a good chance, under the proposed “subjective” standard, this product wouldn’t pass muster under 103 (then again, I don’t think any invention has a good chance of passing muster under the subjective standard for obviousness). Anyway, this inventor has contacts with a few very large companies that are very willing to negotiate, but they won’t until the inventor achieves patent protection for the product. Under your proposal, this inventor is up the proverbial creek without a paddle. In fact, under your proposal to significantly reduce the number of patents being issued, I highly suspect that small time inventors will become extinct, or at least at very endangered species. As such, I would imagine that if the Supreme Court rules in favor of the supreme court that the lobby for small inventors (which is a very vocal lobby) will lobby the Congress to change that ruling.

    BTW: What was it about the practice that made you so hostile to patents, inventors, and patent attorneys? You sound like a nurse that hates patients and advocates that only those patients that have achieved as certain level of fame or success (or some other subjective standard) should receive treatment and everybody else is out of luck. I’m surprised it was Joe Smith, and not you, that advocated that the Supreme Court “strike down the system entirely.”

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  95. Malcolm Mooney’s comment on the biotechnology industry illustrates one of the problems with the patent system – namely that invention as such is frequently a small and insignificant part of a longer process which may involve basic research, search for a problem, the actual inventive step of solving a problem in principle, the engineering step of implementing the solution, product design, manufacturing and marketing. For pharmaceuticals the patent system is being used to try to protect the cost of proving that drugs are safe and effective(as opposed to the cost of discovering new drugs). There are companies out there (some might call them trolls) who try to stake a claim to the inventive step so that they can capture the value that someone else has invested in product design , engineering and marketing (see e.g. NTP v. RIM)

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  96. I predict that the Supreme Court will retain a requirement for some evidence of a teaching, suggestion, motivation or *other reason* (the obligatory catch-all) for combining references at the time the invention was made.

    I also predict that they will state that the evidence may be written or not and may be explicit or implicit, depending upon the particular facts of the case.

    Any different predictions out there?

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  97. Guys,

    Let’s be realistic here. No matter how much money gets thrown at the patent system, some applications that are, well, to be diplomatic less than extraordinary, will get issued.

    In essence, the PTO needs to have its funding increased to increase the number of examiners, the amount of hours the examiners spend on rejections (probably by at least 50%), and the amount of review (by primary examiners or some other review entity) should increase to get relatively consistent rejections under the current system.

    Otherwise, no matter what the system, someone is always going to gripe about how bad it is in some respect.

    Just my 2 cents.

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  98. One quick comment re the Biotechnology Industry Organization: these folks should be more concerned about what’s going to happen when the Supreme’s get the chance to take another shot at the LabCorp. v. Metabolite issue.

    This is an industry whose “intellectual property” consists in large part of (1) discovering some natural fact about animal biology and (2) dumping claims off at the PTO reciting all the obvious methods that anyone with a bachelor’s degree in the field would tell you can be practiced with that information.

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  99. pds

    “These patents will be issued regardless, so what is the harm?”

    Time is money. I thought I made that clear but I will spell it out for you: forcing Examiners to find explicit support in the literature for EVERY assertion they make in their arguments supporting the obviousness of a claim is time-consuming. And that is what a strictly applied TSM will force Examiners to do. Or to put it more plainly, that is what a good attorney will force the Examiner to do. And if most “inventions” put before the PTO are garbage — which is almost surely the case given what comes out of the PTO as a valid patent — then those inventors with real inventions are being harmed by the noise and distraction created by those who are clogging the system.

    “‘What percentage of issued patents are valueless? I would bet that most VALID patents are valueless.'”

    … and if true, proves what?”

    It proves that most patent applications waste the PTO’s limited resources. Remember? The problem is: too many garbage patent applications being filed because applicants perceive that it is worth the money to file them to see what “invention” hasn’t been explicitly disclosed or suggested. One solution: make sure that the burden of “proving” obviousness is not onerous by allowing Examiner’s the freedom to make reasonable obviousness arguments without providing an explicit citation to the literature showing where every “combination” of elements in a claim was “suggested” or where every scientific fact at issue was proven.

    Lastly, your response to my criticism of the secondary factors simply begs the question. If the problem is Examiners bringing in their own “opinions” (albeit reasonable and fact-based opinions) into the determination, then it seems that “indicia” such as “commercial success” and “long felt need” should be evaluated against equally strict and explicit bright-line guidelines. Otherwise, once again, we have Examiners making decisions about matters in which they are (allegedly) unskilled and to which they may bring their own personal biases and cause all of these “unpredictable” outcomes which drives people nuts.

    The strict/explicit TSM will not increase the “predictability” of the patent system. It will not make issued patents less subject to groaning ridicule by the public and by experts in the field.

    But I do think that if a significantly greater percentage of patent applications are rejected by the PTO, fewer and better patent applications will be filed.

    Now who could possibly object to that result?

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  100. ” What percentage of issued patents are valueless? I would bet that most VALID patents are valueless.”

    … and if true, proves what? or supports what position? I don’t disagree that many patents, taken in isolation, are valueless.

    A good indication of whether or not an issued patent is considered to have value would be to look at the rate percentage of patents have their maintenance fees paid. If someone pays the maintenance fees, then a determination had been made that the patent has some value. I wonder how we could get that information.

    “I provided you with an example of the harm that results from the strict application of an explicit TSM test.”

    Oh right, I forgot, you wrote “Off the top of my head, I’d say that the inventors of desirable and less obvious inventions are harmed by the fact that the securing of their rights is made more difficult when the USPTO is stretched to the breaking point trying to find art with which to squash intentionally inarticulately worded garbage.”

    I could not, however, follow your logic. I’m not sure how inventors of “desirably and less obvious inventions are harmed.” These patents will be issued regardless, so what is the harm?

    If the harm is caused because these patents aren’t issued as quickly because of the backlog at the patent office, then I’m not sure that the proposed change (i.e., allowing examiners to make subjective obviousness determinations) is the only way to improve the backlog. In fact, either making it very easy to obtain patent (or make it extremely difficult to obtain a patent) will reduce backlog because the dispositions can be done much more easily. Also, adding additional examiners will reduce the backlog.

    Regardless, your allegation of “harm” doesn’t seem to me to be very persuasive.

    The following brief (I have tried to read them all) is one of my favorites,

    link to scotusblog.com

    and this paragraph address the issue of the backlog at the PTO:

    If there is a real problem with patent quality, the source of it is the PTO, not the Federal Circuit’s standard. The PTO has a massive backlog, and it is universally acknowledged to be underfunded and understaffed. Examiners have historically operated under a regime of incentives that rewards them for disposing of applications quickly, not well. Morale is low, and the turnover rate among examiners is 50% in a five-year period. See, e.g., Jeff Nesmith, Patents Pending, AUSTIN AM.-STATESMAN, Aug. 27, 2006. In these circumstances, it is not at all surprising that the PTO would make some mistakes in issuing patents. If they see fit, Congress and the Executive could address the problems by giving the PTO additional funding and additional staffing, or mandating a reform of incentive structures. This Court, however, is not in a position to fix problems at the PTO, and ultimately it would be counterproductive to try to address those problems by substituting either an amorphous or a hindsight-driven test for the Federal Circuit’s studied handiwork in a corner of patent law that is not the real problem.

    “This is the crux of the problem. Strict application of an explicit TSM test which pretends that Examiners are lying scientifically illiterate morons who must provide textual backup for every one of their assertions just leads to endless goalpost moving by attorneys as they keep adding elements to their invention as necessary to find that combination that “wasn’t taught in the art.””

    You are a tough nut to figure out. No one has accused the examiners of being “lying scientifically illiterate morons.” If you read the numerous briefs in support of Respondent, they all caution about the problem associated with preventing hindsight reconstruction from coloring the determination of obviousness. No matter how scientifically literate a particular examiner is, the examiner is not “one having ordinary skill in the art” and the examiner is not working **only** with knowledge available to one having ordinary skill in the art the time of the invention.

    “I think that bringing up the secondary factors is shooting your pro-strict TSM arguments in the foot. After all, who decides what “commercial success” is? And why should these “secondary factors” play any role in determining obviousness? If there isn’t an explicit TSM under the strict test, then there isn’t an explicit TSM and the invention is non-obvious. End of analysis. Why go further?”

    The following is from the Biotechnology Industry Organization brief:

    “That is because the commercial success of an invention sought to be patented suggests it was nonobvious or else someone would have developed it earlier as an obvious means of further profit from the prior art. A long felt unsolved need in an area similarly suggests that an invention that comes along to meet the need was nonobvious or else others would have long ago developed it. And, the failure of others, of course, serves as a strong objective indication that an invention was not obvious or else others would not have met failure when they tried to develop it.”

    The way I like to look at is that when an examiner establishes a prima facie case of obviousness, he or she has establish that one having ordinary skill in the art *could* have arrived at the claimed invention based upon the asserted TSM. However, the requirement for obviousness is that one having ordinary skill in the art *would* have arrived at the claimed invention. Once a prima facie case of obviousness has been made, the secondary considerations are additional evidence because as stated by In re Oetiker, the ultimate determination of patentability is based on the entire record, by a preponderance of the evidence, with due consideration to the persuasiveness of any arguments and any secondary evidence.

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  101. I am not a patent attorney. However, it appears to me that the TSM test for obviousness results in patents for inventions which needed no encouragement from a patent system.

    We now know that technological progress is essentially inevitable. The founding fathers did not have the same confidence. If persons skilled in the art were divided by into quintiles then it would be those in the third quintile who would be the yardstick for obviousness (they being those of ordinary, as opposed to superior, skill).

    If patents are only disallowed when they are obvious to those of ordinary skill then we are allowing patents which would have been obvious with a few minutes thought by a practioner in the first or second quintile. Those patents need no encouragement and allowing one person to stake a monopoly on such an advance does enormous harm to the overall economy.

    The real problem is that obviousness as currently interpreted by the courts results in the grant of monopolies beyond what Congress is permitted to do. There is no natural property right in an idea (although most patent practioners seem to assume that there is) and the common law abhorred monopolies (which patent practioners uniformly ignore).

    SCOTUS should either save the statute by giving “obvious” a meaning which sets a MUCH higher standard for patents or strike down the system entirely.

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  102. A couple quickies as I drive by this morning…

    pds writes

    “I don’t recall anybody arguing that an obvious patent is “likely to be valueless.”

    What percentage of issued patents are valueless? I would bet that most VALID patents are valueless.

    “valueless patents ***for which a TSM cannot be found*** should be allowed to issued because there is no harm to the public.”

    I provided you with an example of the harm that results from the strict application of an explicit TSM test.

    “I have seen thousands (if not tens of thousands) of 103 (i.e., obviousness) rejections, but I do not recall not even one rejection in which an examiner used more than a single reference to support the modification for a single limitation.”

    Without addressing possible lapses of memory, there is a simple answer to this problem: the Examiners are under time constraints which simply do not permit them to craft perfect rejections where every possible claim is supported by a literature citation.

    This is the crux of the problem. Strict application of an explicit TSM test which pretends that Examiners are lying scientifically illiterate morons who must provide textual backup for every one of their assertions just leads to endless goalpost moving by attorneys as they keep adding elements to their invention as necessary to find that combination that “wasn’t taught in the art.”

    This is inventing?????

    “the fact that the patent has value is evidence of commercial success which is a recognized indicia of non-obviousness.”

    I think that bringing up the secondary factors is shooting your pro-strict TSM arguments in the foot. After all, who decides what “commercial success” is? And why should these “secondary factors” play any role in determining obviousness? If there isn’t an explicit TSM under the strict test, then there isn’t an explicit TSM and the invention is non-obvious. End of analysis. Why go further?

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  103. The rest of the bottom-side briefs are here
    link to scotusblog.com

    Sometimes it’s interesting to look at the lineup of amici in these cases–like if you’re not sure if a criminal law rule would help or hurt defendants, look to see where the defense bar is lining up. In this case, as far as I can tell, there are big and small companies on both sides, as well as the usual assortment of law professors.

    Why do you suppose the amici supporting the TSM test do so? Is it: (1) they think it’s great, (2) they think that it’s flawed but still the best available, (3) they think it’s awful, but it’s the “devil you know” and they’re afraid the Supreme Court will screw it up, or (4) something else?

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  104. “It seems that the pro-patent people here are trotting out a frequent argument in support of lax patentability standards: If the patent is obvious, issue it anyway because it is also likely to be valueless.”

    Nice try at trying to twist my argument. First, I’m not sure where you derived the “lax” in your assertion of “lax patentability standards.” The patentability standard being discussed (i.e., the TSM test) is the CURRENT standard.

    With regard to the assertion “if the patent is obvious,” no one has argued that obvious patents should be issued. As I have previously discussed and for many reasons, I believe that neither you (as an examiner) nor I (as a patent attorney) can make a proper determination of obviousness based upon 35 U.S.C. § 103, since we are not “a person having ordinary skill in the art to which said subject matter pertains.” Therefore, when you state “if the patent is obvious,” you are making an assumption that the “pro-patent people” have not made. To make it clear, the assumption that I have made is that the patent may be looked at as being obvious by the layperson, but a proper obviousness determination has not been made because lack of a proper TSM. Just because an invention may be obvious to a layperson does not mean that the invention is obvious within the meaning of 35 U.S.C. § 103 for the simple reason that the layperson has the benefit of impermissible hindsight reconstruction.

    As for the statement “issue it anyway because it is also likely to be valueless,” that has also a misstatement of my argument. First, I don’t recall anybody arguing that an obvious patent is “likely to be valueless.”

    Moreover, my statements (which referred to valueless patents) is two pronged. First, valueless patents ***for which a TSM cannot be found*** should be allowed to issued because there is no harm to the public. The second prong is that valuable patents ***for which a TSM cannot be found*** should also be allowed to issue because the person to which the most harm can be brought upon (i.e., an infringer/licensee) has an incentive to do a much better search for TSM (or even 102 art) than what was done by the patent office. Regardless of the results of the search (better art found, or no art found), the ultimate patentability of the invention is clearer.

    “A patent’s economic value and the technical skill required to overcome obviousness rejections pretty much have nothing to do with each other.”
    Are you sure you worded this correctly? What exactly is the “technical skill required to overcome obviousness rejections”? Correct me if I wrong, but doesn’t this refer to the skill of the patent attorney because only the patent attorney overcomes an obviousness rejection?

    If, while referring to “technical skill,” you mean one having ordinary skill in the art, then I disagree with your statement. As discussed in M.P.E.P. §§ 716.03, 2141, “commercial success” is described as an indicia of nonobviousness. Therefore, both the “patent’s economic value” (i.e., commercial success) and the “technical skill” (i.e., of one having ordinary skill in the art) are both relevant to an obviousness determination.

    “I read the patent and realize that it is a great idea to use the cold fusion described to produce electricity. The patent office issues a rejection but I scream there is no TSM for combining this particular cold fusion process with producing electricity, and the examiner, finding no TSM, issues the patent. I now get a claim to the entire economic value of the cold fusion process.”

    I’m glad you raised the issue of the problem of finding a good TSM for an invention that “screams” obviousness, and is a perfect segue of what I see as a major failure by examiners when putting together an obviousness rejection. I have seen thousands (if not tens of thousands) of 103 (i.e., obviousness) rejections, but I do not recall not even one rejection in which an examiner used more than a single reference to support the modification for a single limitation. I’m not talking about using multiple references to teach multiple limitations, but instead about multiple references for a single limitation.

    What I have garnered from the posting on this board (presumably by patent examiners) and from the writings within the briefs in support of petitioner is a general feeling that certain “obvious” patents cannot be rejected for lack of a TSM. The problem I see is that all examiners are looking for a single “silver bullet” reference that provides all the teachings/suggestions/motivations for supplying the missing references. However, what they don’t recognize is that sometimes you cannot go from A to B in one step. Sometimes, you need to go from A to F (with reference X), go from F to J (with reference Y), and then go to from J to B (with reference Z).

    Is this harder for an examiner to do? … absolutely yes, but to prove obviousness where the prior art does not provide the perfect reference, it is absolutely necessary.

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  105. Malcolm raises an interesting point about per capita patent rates, even if that was not quite what I was referring to. With a population increasing exponentially, over a period of time there will be millions more patents with or without a per capita increase.

    I was making the point that since the primary issue here is that of the TSM for prior art patents, with millions more patents available to reference the elements in the invention seeking the patent, it is far easier to justify the hindsight one has to avoid. It’s just too big a shopping list at seven million plus patents now. Therefore, as stated, strick guidelines for citing these patents are required.

    As to the per captita rate today, it’s totally skewed by big corporations trying to get as many patents as possible, many of which are commercially worthless, as if these are real assets that will provide a return, a sort of get the biggest IP portfolio as possible game. I wonder if individual inventors, where the patent, if assigned, is to a small entity, has increased or decreased in patents. I am guessing the later. Now is this due to economics of commercializing the invention or is it due to the cost of a patent today?

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  106. “No one is attacking anyone’s humanity here, as there are quite a few other websites with lawyers jokes which do that just fine. These are not court filings but rather bloggs which should have some degree of spice to them, dry but not shaken. Nothing wrong with some animated discourse.”

    I would have to agree with Frederique. We are all big boys here who can give and take some. The descriptive adjectives are the spices that enlivens the discourse of this obviously very divisive topic.

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  107. It seems that the pro-patent people here are trotting out a frequent argument in support of lax patentability standards: If the patent is obvious, issue it anyway because it is also likely to be valueless.

    I think the petitioner’s brief refutes this argument pretty well, but here we go again. A patent’s economic value and the technical skill required to overcome obviousness rejections pretty much have nothing to do with each other. Suppose tomorrow a scientist discovers cold fusion and patents the process of cold fusion-no question that it is well deserved. I read the patent and realize that it is a great idea to use the cold fusion described to produce electricity. The patent office issues a rejection but I scream there is no TSM for combining this particular cold fusion process with producing electricity, and the examiner, finding no TSM, issues the patent. I now get a claim to the entire economic value of the cold fusion process.

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  108. “Off the top of my head, I’d say that the inventors of desirable and less obvious inventions are harmed by the fact that the securing of their rights is made more difficult when the USPTO is stretched to the breaking point trying to find art with which to squash intentionally inarticulately worded garbage.”

    I believe harm definitely happens in the following situation. A patent application is filed on an invention, which when anybody looks at it, that person says “this is so obvious and simple, anybody could have come up with.” The additional facts are that it has value (i.e., commercial success), because not only are the inventors are selling it but it is being copied by competitors. However, the examiner (based upon a new Supreme Court ruling allowing for obviousness rulings by patent examiners based upon the examiner’s subjective belief) rejects the application as being obvious despite there being no TSM to support the obviousness rejection. In this situation, not only is great harm done unto the inventors, the goal set forth in the U.S. Constitution to promote the progress of science and the useful arts is frustrated.

    As I’ve discussed before, for those inventions that are completely valueless (i.e., nonsensical inventions that are easily designed around, incredibly narrow, or are to directed to subject matter that no one would want to practice), then what is the harm if no TSM can be found and the application issues as a patent? If the public isn’t practicing the invention or could easily get around the claimed invention, then what is the harm?

    However, if the patent does have value (even marginal value) and the Examiner cannot discover a TSM within the prior art, then I would rather have the patent issue (instead of being rejected based upon some subjective standard) for two reasons. First, the fact that the patent has value is evidence of commercial success which is a recognized indicia of non-obviousness.

    Second, a potential infringer (or licensee) has considerably more resources and incentive to find prior art references that provide a TSM. I have no doubt that a potential infringer would spend 10x (if not much more) the resources that the Patent Office would spend in order to invalidate a patent. If, after spending those resources, TSM cannot be found, then I think that absence of a TSM leads great credence to the PTO’s determination that the claimed subject matter is patentable. However, in many instances, because of the greater resources employed during the search for both TSM (and 102 art), odds are very great that better art can be applied against the invention. I think that many patent litigators would agree with the statement that the real test of patentability does not happen at the PTO, but instead, the real test of patentability occurs during litigation.

    Given these arguments, let us look at the downside of allowing an application that would otherwise be rejected if it not were for the TSM test. For valueless patents, there is no downside to the public, since the public simply does not care. For valuable patents, a potential infringer/licensee will have both the incentive and the resources to do a much better search than the Patent Office. As such, if the second (more comprehensive) search discovers good prior art that wasn’t discovered by the Patent Office, then not only is the harm reduced to the public, but the part of the public (i.e., the licensee/infringer) that is most directly affected by the patent pays for those costs. However, if the second search doesn’t find better art, then the invention was not as obvious as originally thought.

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  109. LawStudent:

    “The same applies to the combination lint remover. It’s a perfectly silly example that illustrates the point. Where’s the harm in issuing a patent on it? If it turns out to be useful, people will use it and no one can argue it’s obvious or frivolous or a waste of time.”

    Well, utility is one of statutory requirements so let’s assume that the DentoLintoLight(TM) is “useful” in the abstract sense.

    Whether in fact anybody actually WANTS to use the invention is another issue. Is there a harm in issuing dubious borderline obvious patents on stuff that nobody wants to use?

    Off the top of my head, I’d say that the inventors of desirable and less obvious inventions are harmed by the fact that the securing of their rights is made more difficult when the USPTO is stretched to the breaking point trying to find art with which to squash intentionally inarticulately worded garbage.

    Fredric brings up a good point about the changing landscape. Does anyone have any data which suggests that, per capita, humans are more innovative in 2006 than they were in 1956?

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  110. “I invite you to sit in my chair for a while.”

    I invite you to show me a concrete example of what you’re talking about. Perhaps you can direct me to one of these improper rejections in the publically available file history of a patent that has issued.

    That still wouldn’t prove that there is a plague of “improper” rejections founded on a reasonable Examiner’s understanding of how humans solve certain elementary problems. But it would be a start.

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  111. It seems to me that the more objective nature of TSM should ultimately lead to a better patent system. Alternatives involving reasonable examiners or any other fictitious legal creations will make the system too unpredictable.

    Granted, this “better” system will allow patents to issue for arguably useless inventions, but I don’t believe that undermines the system. The issue of whether something is profitable/useful/marketable/etc. is completely different from whether it’s obvious.

    Many inventions were designed to address a particular problem, so they present no obviousness problem. But many others are essentially creations looking for a problem to solve. Nobody recognized having a grayish colored shirt as a problem until someone made something that allowed that shirt to be as white as it could be. Bingo! “Problem” solved!

    The same applies to the combination lint remover. It’s a perfectly silly example that illustrates the point. Where’s the harm in issuing a patent on it? If it turns out to be useful, people will use it and no one can argue it’s obvious or frivolous or a waste of time.

    Of course the PTO will continue to be burdened with applications for inventions of questionable value, but certainly that same problem existed (admittedly to a lesser extent) before TSM. Indeed, the entire legal system is intentionally frivolous to the extent that an attorney zealousy represents a client to the point of arguing anything that won’t get him/her laughed out of court.

    Stick with an objective test. The legal system should strive to be as objective as possible.

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  112. Anonymous: Nice to stand above the fray. No one is attacking anyone’s humanity here, as there are quite a few other websites with lawyers jokes which do that just fine. These are not court filings but rather bloggs which should have some degree of spice to them, dry but not shaken. Nothing wrong with some animated discourse. If the taunting of attorneys on a legal website with the continual use of “attorney henchman”, coupled with the taunting of patent holders as “trolls”, together with the seeming assertion that anyone who files a patent infringement case is (1) a troll who(2)is doing it with an obvious patent- if this is not enough to call it like it is and cut to the chase, then maybe one should stick to infra-firm e-mails. One posts his comment to make a point and to solicit feedback. The feedback has been by and large parallel to the quality of the comments at issue. Dennis’ site hardly needs a school ma’am to guard its place as the best patent blogg out there.
    By the way, I generally enjoy your comments and would be interested in hearing you weigh in on this, as you put it, the most important patent case in 50 years.

    I think what has been missed in everything I have read however is the difference between patent prosecution now and, say, 50 years ago. There are millions more prior art patents today to use to combine particular elements in order to render a patent “obvious”. So with millions more material at hand, you need firm guidelines for its use. The law has to evolve and the CAFC has understood that since its conception nearly 25 years ago.

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  113. Mr. Moody asks:

    “But the big question is: how often are examiners “improperly” rejecting claims as obvious? Are these “improper” rejections really a problem? It sure doesn’t seem so from where I’m sitting.”

    I invite you to sit in my chair for a while. The vast majority of rejections I receive are for obviousness. Most of the rejections do not even cite art that identifies all of the elements of the claim, and for those rejections that do cite art containing all the elements, more than likely the art does not include the specific limitations of those elements. And, lately, almost every rejection ends with a TSM assertion that the combination is obvious because it solves problem “y.” Of course, problem y has nothing to do with the invention or the problem identified in the spec, and it is usually very generic, such as, the combination is obvious because it reduces manufacturing costs or increases efficiency. Duh!

    These rejections cost my clients unnecessary money and time. I consider that a problem (for them).

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  114. pds

    “The simple point is that every time an examiner improperly rejects a claim for obviousness based upon insufficient factual support, both the inventor’s and patent attorney’s expectations of what is not obvious is reduced.”

    Their expectations are reduced whether the rejection is “proper” or not.

    But the big question is: how often are examiners “improperly” rejecting claims as obvious? Are these “improper” rejections really a problem? It sure doesn’t seem so from where I’m sitting.

    On the contrary, if I’ve loaded my specification up with enough trivia and boilerplate I should be able to find an undisclosed unsuggested embodiment, I can typically find *something* that an Examiner will allow even though personally — just between you and me — that “invention” was more of a product of artificial selection by the PTO than it was my client’s brilliant conception.

    And then sometimes we get lucky, don’t we?

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  115. God, it’s time to go home. My spelling was horrid in that last post.

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  116. First, I think that most companies and most patent attornies ordinarily do not seek out bad patents. Both generally believe that the substance of thier patent is both worthwhile and inventive. That said, there are surely those who have no such belief and are willing to game the prosecution system to obtain the presumption of validity accorded them in an issued patent covering something already known in the art.

    And, just to clarify, contrary to pds’ assertions above, a PHOSITA is presumed (perhaps unreasonably) to have knowledge of all /pertinent/ prior art (In re Winslow and Custom Accessories v. Jeffrey-Allan).

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  117. I’m having to go back 10 comments or so to figure out what the substance of the debate is. This name-calling is unproductive. As far as I can tell, the substantive arguments of the commenters look something like this:

    * Scot thinks that the problem with the patent system is that the obviousness bar has been set too low by the CAFC, thus allowing people who haven’t contributed anything inventive to freeride off of the commercial success of others. He finds the briefs to the contrary weak and unconvincing.

    * Mr. Mooney agrees that there are bad patents out there, thinks that the TSM test is a good filter for weeding out obvious patents, and thinks that the problem is with the PTO, and the answer is to give the PTO the resources they need to use it properly. He also thinks that the word “troll” is a loaded term that doesn’t advance the discussion.

    * Mr. Goldstein (forgive me if I’m butchering this — I’m going off of the 10/15 2:04PM post) thinks that a lot of the arguments being thrown around have more to do with whose ox is being gored than what’s best for the patent system or intellectually coherent. Sakraida isn’t any better or worse than TSM, and going back to it won’t fix the problem.

    * Mr. Barniak agrees with Mr. Mooney that the term “patent troll” is unhelpful to productive discourse on the patent system, and thinks that discarding the TSM test will increase the danger of hindsight obviousness analysis and cause some genuinely good inventions to be scuttled unjustly by the PTO.

    * PDS notes that there is a lot of focus on bad patents being allowed, and not much discussion of the cost to the system of bad REJECTIONS.

    These are all decent, arguable points. I’ve left out the part about what each of the commenters thinks of the others as human beings and professionals. If you want to continue debating this topic, might I suggest that you go back to your substantive points. Dennis has set up a nice comprehensive post on what may be the most important patent case in 50 years (or at least 5), and it seems to me a shame to clutter it with discussions of henchment flinging toilet paper.

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  118. Hey Scot,
    What’s your definition of a patent troll anyways- Is it someone who owns a patent that is obvious to other patents that are obvious to other patents but still managed to be granted because something was deemed to be novel about it after all was said and done by the Examiner—and granted — and if that same person spent his or her own money to make their product and tried to get it into the public domain and after all of that a big company that already manufactures a line of products that are similiar but not quite the same-after all, that person has a patent to manufacture their patented product- that company decided to make this person’s patented product without his or her permission, would that person with the patent be a patent troll by your definition and would the attorney that this person hires to sue for infringement be one of those ‘attorney henchmen’ you speak of?
    Whew! Enlighten me, Scot.

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  119. Tom Barniak, Jr.

    Hey Mooney, hope none of your current or future clients see what you really think about inventors and the system-your business will go to Zero.

    That would stink if my business went to zero.

    I’m very honest with my prosecution clients about the “system” and what I think about it. I try to help them see for themselves what sort of applications get filed versus what sort of claims issue, how long it takes, etc. The smart clients take the uncertainties and risks into consideration when they develop their portfolios.

    But some clients simply can’t be educated or are very very slow to “get it.” They throw good money after bad. Where do they get the money? From silly rich people, of course.

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  120. Frederic

    “Himself using “wet toilet paper up against a bathroom wall” describing his particular brand of patent prosecution?”

    Nice try, Frederik.

    “It’s simply distain for the entire patent system in these sorts of postings”

    No, not really. It’s disdain for the current state of affairs at the USPTO. I am not sure why you appear to believe that this is an invalid viewpoint, Frederik.

    “If you want to segregate a very complex issue into two divergent camps as if it were black and white, with no gray area, better go into politics.”

    PTO policies are political. The American public has opinions about patents.

    “Everyone wants a better patent system”

    If “everyone” included major corporations like Microsoft, IBM, etc., we’d have a better patent system because their lobbyists would ensure that the PTO and its employees are well-funded. See, e.g., the defense industry.

    “there’s just a difference of opinion as to how to achieve that.”

    There is a perception that has been noted in our media that too many patents are issuing on obvious inventions. One way to reduce the number of those patents is to provide Examiners with legal tools which make it easier to reject such patents.

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  121. Scot, you might think about patenting that chip on your shoulder- “attorney henchman”? That’s the third time in this series of postings alone that you’ve used that little ditty. Apparently, my comment earlier about that doesn’t dissuade you.

    What I fail to understand is how you keep coming back to “trolls” when the issue at hand is obviousness. Ironically, Mooney, who you chose to defend, stated in one of his earlier posting “Anybody who uses the “t” word in a discussion about the law of obviousness should see a shrink.”

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  122. Hej John, you can’t be serious. Do you really put those sorts of remarks down as someone who “genuinely cares about the state of the patent system and is concerned about the deteriorating quality of patents issued due to TSM”. Plu-lezz. Himself using “wet toilet paper up against a bathroom wall” describing his particular brand of patent prosecution? It’s simply distain for the entire patent system in these sorts of postings, entertaining as they may be.
    If you want to segregate a very complex issue into two divergent camps as if it were black and white, with no gray area, better go into politics. Everyone wants a better patent system, there’s just a difference of opinion as to how to achieve that. Obviously, though, your side is the concerned reasonable one, while you label those who might not agree with your point of view (thousands of patent attorneys, the CAFC en banc, etc) as clueless to any problems and, in fact, ridiculous (yeah, the old toothbrush/flashlight/belly button lint remover cheap shot). Question: if one adds a wet toilet paper remover to the aforementioned invention, would THAT combination be obvious?

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  123. My apologies for the previous post where my indicia of quotation were deleted. Here’s a repost (the previous one should be deleted).

    “Who gets to decide what examiners are reasonable? Who gets to decide what arguments are reasonable? Also, on what basis should the reasonableness of the examiner and the examiner’s arguments be reviewed? How do we know if the examiner’s “reasonable” argument wasn’t based upon prejudice against the inventor/attorney? How do we know that the stated motivation to combine wasn’t a result of the examiner reading applicant’s disclosure, in which applicant described the problem to be solved and how applicant went about in solving the problem, and the examiner determined that the examiner himself/herself would have done exactly the same?”

    You raise these questions as if they pose problems that are unique to a particular framework for deciding obviousness. They are not unique.

    In the law as elsewhere, decisions are made by “deciders” (if I may quote a genuine idiot). Every one of those decisions is subject to second-guessing and every one of those decisions is second-guessed when the patent is litigated.

    “I have a problem tightening up the requirements for having a patent granted just to prevent valueless patents from issuing.”

    Why?

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  124. Who gets to decide what examiners are reasonable? Who gets to decide what arguments are reasonable? Also, on what basis should the reasonableness of the examiner and the examiner’s arguments be reviewed? How do we know if the examiner’s “reasonable” argument wasn’t based upon prejudice against the inventor/attorney? How do we know that the stated motivation to combine wasn’t a result of the examiner reading applicant’s disclosure, in which applicant described the problem to be solved and how applicant went about in solving the problem, and the examiner determined that the examiner himself/herself would have done exactly the same?

    You raise these questions as if they pose problems that are unique to a particular framework for deciding obviousness. They are not unique.

    In the law as elsewhere, decisions are made by “deciders” (if I may quote a genuine idiot). Every one of those decisions is subject to second-guessing and every one of those decisions is second-guessed when the patent is litigated.

    I have a problem tightening up the requirements for having a patent granted just to prevent valueless patents from issuing.

    Why?

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  125. On Mooney et. al, I don’t think that it is at all clear that the TSM test increases job security for patent attorneys in any way.

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  126. “… Hey Mooney, hope none of your current or future clients see what you really think about inventors and the system-your business will go to Zero.”

    Or Mooney will get all the business he can handle from the big corporations filing against the trolls… while the trolls will wither away and their attorney henchmen’s business will “go to Zero”.

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  127. Amen to the posting from pds to refutiate Mooney’s lambasting of the patent system as it now stands and to some extent, his own line of work. Pds made an excellent absolutely true comment on the inventor recognizing a problem that was yet to be fixed and then coming up with a combination of old elements in a new way to address and solve the problem and possibly ‘saving the world’ as a result. Hey Mooney, hope none of your current or future clients see what you really think about inventors and the system-your business will go to Zero.

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  128. “Honestly, I can’t see Mooney’s career choice with so many caustic remarks in nearly all his postings about patents, the client, and the system. With that sort of attitude, no one expects you to “shed tears for [your] poor clients” under any circumstance.”

    I don’t see how Mooney’s remarks would reflect negatively on his career choice. Actually, I believe there are two camps of attorneys: one that genuinely cares about the state of the patent system and is concerned about the deteriorating quality of patents issued due to TSM; another one that refuses to acknowledge any problems and tries to defend the patentability of “a combination flashlight/toothbrush/belly button lint remover”. Which is more credible and is an asset to his professional field?

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  129. “Let’s put it this way: should a combination flashlight/toothbrush/belly button lint remover be patentable simply because nobody in the past had enough money or time to waste trying to patent it?
    Good question, but my answer is probably what you don’t expect. If nobody has suggested that particular combination, then I don’t have a problem having a patent issue for that combination. If the combination is valueless, then why does anybody care? I see absolutely no harm (to anybody), except to the inventor’s check book, for having that type of patent issue.”

    You’re missing the point, which is whether combinations that can be put together by anyone [i.e., obvious] should be patentable. Aforementioned ridiculous patent in the realm of the infamous pumpkin bag are patentable under the TSM test. They may be valueless, but they are not entirely harmless if we let people just patent anything they wish. Ever heard of the “tragedy of the anticommons”? I highly recommend it as it gives a very convincing dissertation on the detrimental effect the tragedy may have on the IT/computer industry. To put it simply for you, imagine living in a society where everything can be patented just because TSM has removed any semblance of obviousness. Would you be able to eat your meals with the combination of forks, knives, and perhaps chopsticks?

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  130. Bravo to pds who managed to be so diplomatic when taking to task Malcolm Mooney’s rantings on shedding tears, saving the world, etc which I assume was an attempted referencing of an earlier comment of mine. Malcolm, a hint- don’t put in quotation marks something which cannot be attributed to anyone, e.g. “arbitrary”.

    Honestly, I can’t see Mooney’s career choice with so many caustic remarks in nearly all his postings about patents, the client, and the system. With that sort of attitude, no one expects you to “shed tears for [your] poor clients” under any circumstance.

    The issue I was referring to was that more worthy inventions are never patented than unworthy (read, obvious) ones are and that can damage the system as well. It’s not about “saving the world and making everyone rich in the process”, a rather unnecessary and silly remark.

    Mooney also writes:
    “Prosecuting patent applications is a game of throwing wet toilet paper up against the restroom wall to see how much of it you can get to stick. For every “invention” (i.e., an invention meeting the statutory requirements) dreamed of in a typical application, there are a hundred fumbling-in-the-dark dead-on-arrival worthless “teachings” that will be resuscitated and thrown at the Examiner should the inventors “desired” claim get tanked.”

    It’s this sort of prosecution that fouls up the patent system and might make examiners as cynical as Mooney. “Throwing wet toilet paper up against the bathroom wall”? Sure, Malcolm, but please, not here and not after it’s been used…

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  131. “Let’s put it this way: should a combination flashlight/toothbrush/belly button lint remover be patentable simply because nobody in the past had enough money or time to waste trying to patent it?
    Good question, but my answer is probably what you don’t expect. If nobody has suggested that particular combination, then I don’t have a problem having a patent issue for that combination. If the combination is valueless, then why does anybody care? I see absolutely no harm (to anybody), except to the inventor’s check book, for having that type of patent issue.”

    It is WAY too long ago, but I remember from my law school days that the PTO rejected the eraser on the end of a pencil application as “an agglomeration”. Each of the elements were preforming exactly the same function that they performed without being combined, so there was no invention in combining them. No need for a motivation to combine in those days.

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  132. “The solution to fixing the shortcomings of a strict TSM test is simply to allow reasonable Examiners to present reasonable arguments to support their conclusion that a combination of elements is obvious without having to show that ‘Jones suggested this exact combination in blah blah blah.'”

    Who gets to decide what examiners are reasonable? Who gets to decide what arguments are reasonable? Also, on what basis should the reasonableness of the examiner and the examiner’s arguments be reviewed?

    How do we know if the examiner’s “reasonable” argument wasn’t based upon prejudice against the inventor/attorney? How do we know that the stated motivation to combine wasn’t a result of the examiner reading applicant’s disclosure, in which applicant described the problem to be solved and how applicant went about in solving the problem, and the examiner determined that the examiner himself/herself would have done exactly the same?

    “Let’s put it this way: should a combination flashlight/toothbrush/belly button lint remover be patentable simply because nobody in the past had enough money or time to waste trying to patent it?”
    Good question, but my answer is probably what you don’t expect. If nobody has suggested that particular combination, then I don’t have a problem having a patent issue for that combination. If the combination is valueless, then why does anybody care? I see absolutely no harm (to anybody), except to the inventor’s check book, for having that type of patent issue.

    However, if this combination does have economic value and the combination was not suggested, then a patent should also be issued on the combination. I have a problem tightening up the requirements for having a patent granted just to prevent valueless patents from issuing. One of the “indicia of nonobviousness” is commercial success, which in my mind means that the invention has some value.

    “Or should a reasonable Examiner be able to say, “Nothing has been achieved here that wouldn’t be obvious to someone trying to combine those three devices”?”
    In some instances the invention is not the result of discovering the solution, but instead, it is a result of discovering the problem. As noted by many commentators, sometimes an invention isn’t a result of an inventor coming up with a new combination that produces some unexpected results. Instead, the invention comes from having the insight to recognize a problem that no one ever recognized before, and the resultant device/method/etc. that solves the problem could easily be derived by one having ordinary skill in the art had they also recognized the problem As such, a device may produce nothing unexpected and work exactly as anticipated, but still be deemed inventive.

    “It is simply a laugh to come here and read comments from ostensibly “pro-patent” types who expect me to shed tears for the poor client who, but for some “arbitrary” decision at the PTO, would be saving the world and making everybody rich in the process. Really, now. How naive does one have to be to fall for this stuff?”
    I don’t think that anybody who has posted has stated that the PTO is preventing people from “saving the world and making everybody rich in the process.” The simple point is that every time an examiner improperly rejects a claim for obviousness based upon insufficient factual support, both the inventor’s and patent attorney’s expectations of what is not obvious is reduced. Eventually, the weight of bad rejections will force both inventors and patent attorneys not to file patent applications on otherwise patentable subject matter.

    It is easy for a patent attorney/inventor to give in and just take what is offered, and it is much harder and more expensive to fight. Clients without deep pockets cannot afford to fight and, on average, will obtain patents with reduced scoped (or no patent at all).

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  133. Dennis asks

    “In this scenario (exploding archives of written information), why would we need to allow the evidentiary nightmare of giving weight to previously unstated suggestions to find an invention obvious?”

    The “evidentiary nightmare” is a bogeyman. The solution to fixing the shortcomings of a strict TSM test is simply to allow reasonable Examiners to present reasonable arguments to support their conclusion that a combination of elements is obvious without having to show that “Jones suggested this exact combination in blah blah blah.”

    I’ve prosecuted and I’ve litigated patents long enough to know that the range in quality varies widely. It is simply a laugh to come here and read comments from ostensibly “pro-patent” types who expect me to shed tears for the poor client who, but for some “arbitrary” decision at the PTO, would be saving the world and making everybody rich in the process. Really, now. How naive does one have to be to fall for this stuff?

    Prosecuting patent applications is a game of throwing wet toilet paper up against the restroom wall to see how much of it you can get to stick. For every “invention” (i.e., an invention meeting the statutory requirements) dreamed of in a typical application, there are a hundred fumbling-in-the-dark dead-on-arrival worthless “teachings” that will be resuscitated and thrown at the Examiner should the inventors “desired” claim get tanked.

    Which ones are more likely to survive? Suprise: under the strict TSM test, the ones that aren’t explicitly disclosed in the prior art because, as a matter of strict definition, they aren’t “obvious” (or can’t be proved as such by the Examiner).

    Let’s put it this way: should a combination flashlight/toothbrush/belly button lint remover be patentable simply because nobody in the past had enough money or time to waste trying to patent it?

    Or should a reasonable Examiner be able to say, “Nothing has been achieved here that wouldn’t be obvious to someone trying to combine those three devices”?

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  134. Anybody who uses the “t” word in a discussion about the law of obviousness should see a shrink.

    Issued patents exist. People who own them will try to enforce them. Get over it.

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  135. There is a difference between synergy and simply requiring a new or different function or operation than that performed or produced by the elements separately.

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  136. Disappointed,

    I agree with you whole-heartedly about the AIPLA. They have not even sought an investigation about the ex parte communications between RTP and the PTO when I know full well they are aware of them.

    I thought about resigning since they do not really seem to do anything useful.

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  137. AIPLA’s brief is a fun read, but could not be taken seriously. Can anyone seriously say a computer claim can be rejected by an abacus reference? Only if it’s too broad, in which case it should be rejected. The brief is a bad representation of the patent system and reflects badly on AIPLA’s professionalism.

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  138. Perhaps someone attending the Partnering in Patents coming up can question the PTO about the criteria being used by the second pair of eyes in determining allowance. Supposedly, these second pair of eyes comprise a group of senior examiners who understands patentability. The revelation of the criteria they use would help attorneys greatly in drafting/amending claims. I surely hope they are not using the “pornographic test” — they will know it when they see it.

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  139. AB writes above about the IBM suggestion, and about basing the obviousness analysis on “the particular problem with which the inventor was concerned”. So, that would be the subjective problem, would it? The problem which the inventor is proud to have solved, but for which (unknown to inventor) the claimed solution was already rendered obvious by the published art. Am I right that it would NOT be the “objective problem” that distinguishes the inventor’s residual, objectively inventive, contribution (that is identified and enabled in his/her patent application) from the totality of the art? By that I mean the objective problem that is the foundation of the “Problem and Solution” approach to obviousness that the EPO has been running, these past 25+ years. The point about the approach is that it is just as handy a tool for the Opponent’s advocate as for the Inventor’s advocate. An advantage to one of these, or the other, it does not give. Shame the rest of the world doesn’t take the trouble to understand it.

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  140. Joe Smith writes that “it does not appear” that people look at A publications. Well, ROW industry sure looks at them. It uses them not only as a source of technical information, but also as an instant guide to how much innovative “design around” will be needed, right now, to ease clear of the competition’s emerging patent rights.

    Uniquely, however, US law on willful infringement (correct me here if I am wrong)makes it DANGEROUS to look systematically at emerging A publications. Is this not an impediment to innovation, that is suffered disproportionately by US companies.

    Could a new common law Statute be crafted, that dissolves this impediment? It could.

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  141. In its Amicus brief, IBM proposes a modified test for obviousness that is clear and workable and strikes a balance between the various approaches suggested: [paraphrasing] retain the basic TSM test, but apply a rebuttable *presumption* that a skilled artisan would combine elements found in analogous prior art references. By encouraging the patent applicant to define the scope of the invention more precisely in the application process to narrow the body of art, the scope of the patent will be better defined.

    Under existing practice, a reference must be analogous prior art. However, analogous prior art includes not only art in the field of the applicant’s endeavor, but also art reasonably pertinent to the particular problem with which the inventor was concerned. While this is the best solution I have come across, I wonder if the latter category of analogous prior art remains unaddressed by the proposed test? In other words, even if applicant carefully (and narrowly) defines the field of the invention, wouldn’t an examiner’s determination of art outside the field but relevant to the applicant’s particular problem remain a wild card in obviousness determinations that would not be addressed by the proposed test?

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  142. “If the point of the patent system is the quid pro quo of disclosure for a patent monopoly ..”

    That certainly seems to be one of the arguments but if that tradeoff were working then we would have people scouring the patent files for solutions to problems and inspirations for products. It does not appear that either is happening. If it is not happening, then the disclosure argument is not a valid ground for having a patent system.

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  143. Scot, get a grip. You wrote:
    “Like you said, trolls misuse patent rights by enforcing OBVIOUS patents that should never have been issued. Therefore, I am not the one kidding himself who thinks that getting rid of obvious patents would have no effect on these trolls and their attorney henchmen.”

    Like I said? I never any such thing. The “issue” of trolls and obviousness are not identical, as you seem to think.
    And I never said the utter absence of obvious patents, as if there never ever was one during the reign of Sakraida, would result in no reduction of litigation. Litigation often occurs when two parties have a difference of opinion as to infringement and validity. Move to a more subjective test, as the KSR side wants, and you get more litigation, not less, even if (and I say if while not agreeing) there are less obvious patents.
    Patent litigation is not restricted to only obviousness issues, even if infringers reach this as an affirmative defense nearly 100% of the time. Patent infringement will simply occur regardless and that will result in litigation.

    I cannot understand the viewpoint that if only only we go back to the Sakraida standard, which to many is simply dicta out of control, the problem of obvious patents would be solved. Anyone who has had to face some 80 year old patent prior art rejection knows the feeling of “how the heck did THIS patent ever get issued?” There are as many dogs pre-CAFC back then as now.

    I also cannot however understand this viewpoint that whenever the PTO errs, it is always to issue obvious patents, never of course to deny worthy patents. Most inventors can barely, if at all, afford a patent with one office action, much less multiple office actions (often with the same untenable rejection) and/or an appeal. Therefore, inventions which should be granted patents sometimes never get one. Where is the finger pointing there?

    If the point of the patent system is the quid pro quo of disclosure for a patent monopoly, and that quid pro quid is scuttled in the attempted patenting of some inventions by some more subjective standard, then society suffers more than big business because the system itself suffers and that is more important than the economics of big corporations who often seem to get caught flat footed in the ideas department, then moan when they don’t have a free hand in making, using or selling what they came up with a bit later than someone else.

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  144. “I agree “handout” is not the best term. However, the government should issue only DESERVING “inventions”, regardless of how much time and money they spent or whether they think they deserve it or not.”

    If you can explain to me the different between a “DESERVING” invention and a non-deserving invention, I would be greatly appreciative. I would also be appreciative if you could direct me to the statutory authority for making that determination. From where I stand, once an applicant has met the requirements of 35 U.S.C. §§ 101, 112, the applicant deserves a patent application. It is only IF the patent office sets for a proper rejection under 35 U.S.C. § 102 or 35 U.S.C. § 103 should the application be denied.

    “True, but the recent CAFC cases appear to say that examiners are entitled to do this right now under implicitness.”
    Examiners already do this and have been doing this for a very, very long time. What I think most examiner’s (and many attorneys) don’t get (based upon my reviews of prosecution histories) is that there is a difference between putting together a reasonable TSM argument and establishing the factual support for the argument.

    I cannot count how many times I have said to myself, after reading a TSM argument, “sure, your argument sounds reasonable, however, your argument assumes so many facts that you haven’t established … your argument assumes that X, Y, and Z were known at the time of the invention, but your statement of the rejection not only fails to include factual support for these assumptions, your argument also fails to recognize that these assumptions were a necessary part of your argument.” One of my favorite cases is In re Lee, which is discussed (in one sentence) in MPEP 2143.01(I). It is a great read for any patent attorney.

    “Secondly, I am not sure what your point is in regards to the correlation between the new hires and determination of obviousness.”
    A proper obviousness determination is much harder to make (and to argue against) for someone with not a lot of experience. There are so many nuances to the law surrounding obviousness that I expect even a talented, yet new patent attorney would take several years to have a good grasp of the law, and that assumes he or she has been given proper guidance. To expect a patent examiner with just 6-12 months experience to consistently come up with good obviousness rejections is asking a lot.

    “Surely, you’re not suggesting the PTO should have some dinosaurs who went to school during the punch card era trying to search for prior art involving fibre channel arbitrated loop interface? Is that your definition of one with ordinary skill in the art?”
    Again, another poster proves my point is that most examiners do not suspend their belief as to whether or not the claimed invention is obvious in their eyes. Instead, the common practice is to determine whether or not the claimed invention is obvious based upon the examiner’s experience and then find art that supports that obviousness determination.

    To answer your question, the patent office should use the examiner with experience in the field to determine the teachings of the prior art, and then bring in experienced examiners, who really understand the nuances of an obviousness rejection, to help the initial examiner put together a 103 rejection if the prior art justifies that type of rejection.

    I’ve written this before, and I’ll write it again. I am all for preventing Congress for diverting funds from the USPTO so that (i) additional hiring can be made; (ii) examiners can be paid more; (iii) examiners be given more time to examine applications; and (iv) examiners be given more extensive training.

    I have never had a problem with an examiner giving my client a good examination while citing good art. It is a treat the few times I come across those examiners. It takes me very little time to understand the basis for the examiner’s rejection, and after reading the rejection, not only do I know how to amend to claims to overcome the cited prior art, I also know that once I do overcome the cited art, the application will probably be allowed because the examiner cited the best art out there. With these examiners, prosecution is usually are wrapped up after the first or second office action.

    What I really don’t like is bad rejections based upon bad art, which were written with as little effort as possible. With these, it takes me several times longer to even figure out the examiner’s rejection, and even then, I’m guessing on a lot of it.

    One last thing, the following paragraph is the second paragraph in MPEP 2142. I could have saved myself a lot of time writing these posts if I had just reproduced it at the outset.

    To reach a proper determination under 35 U.S.C. 103, the examiner must step backward in time and into the shoes worn by the hypothetical “person of ordinary skill in the art” when the invention was unknown and just before it was made. In view of all factual information, the examiner must then make a determination whether the claimed invention “as a whole” would have been obvious at that time to that person. Knowledge of applicant’s disclosure must be put aside in reaching this determination, yet kept in mind in order to determine the “differences,” conduct the search and evaluate the “subject matter as a whole” of the invention. The tendency to resort to “hindsight” based upon applicant”s disclosure is often difficult to avoid due to the very nature of the examination process. However, impermissible hindsight must be avoided and the legal conclusion must be reached on the basis of the facts gleaned from the prior art.

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  145. “This is a real sad accusation without any merits. Many attorneys who got their starts at the PTO would tell you that the count system examiners work under is set up to encourage the ALLOWANCE of patents.”

    I know a former patent examiner (who was also a SPE and at the PTO for a long time) that will only write applications but refuses to prosecute applications because he gets very frustrated with the attitude of current patent examining corp.

    Notwithstanding that the likely truth that the count system encourages allowances, what I have seen out of the patent office doesn’t reflect that fact. I could be wrong, but what I see are many examiner being afraid to allow an application for fear that they’ll have it reviewed by quality control and have it kicked back. I’ve been told that an examiner would rather reject an application and have it overturn by the board than to get have the application get kicked back as a result of the post-allowance review. The belief is that if the board overturns the rejection, the examiner will be less likely to get dinged by quality control

    As a result, I’ve received actions that are so outlandish that I laugh sometimes when I read them. My most recent favorite is an application that got kicked back to the examiner after a successful (for the client) request for a pre-appeal brief conference. The examiner applied a new secondary reference and the entire asserted motivation to combine was word-for-word quote of the abstract in the secondary reference, which was did not discuss the asserted modification in the slightest.

    This is conjecture on my part (based upon a some evidence, but certainly not solid), but what I think is happening in many instances is that an examiner is instructed by a primary or SPE to reject a particular application (after quickly reviewing the claims) based upon a particular reference or combination of references. The examiner, for whatever reason, doesn’t understand the instructions or after reviewing the prior art realizes that the prior art is good but he/she just makes something up because that is what he/she was told to do.

    “But a lot of attorneys choose not to focus on the essence of the invention and instead concentrate on trivial matters that just prolongs prosecution (and perhaps bulk up their billable hours).”

    Perhaps you should read MPEP 2141.02, which cites W.L. Gore & Associates, Inc. v. Garlock, Inc., as stating that “[d]istilling an invention down to the ‘gist’ or ‘thrust’ of an invention disregards the requirement of analyzing the subject matter ‘as a whole.'” I’m not sure what you mean by “trivial matters,” but if the patent attorney drafting the claims was any good, then every single word on the claim should be important, since if the word(s) isn’t important, it shouldn’t be in the claim. As a result, for example, if you think that a patent attorney quibbling over the meaning of a single word in the claim is wasting time on a trivial matter, you should realize that there is probably a good reason why this is being done.

    Most patent attorneys I know don’t need to “bulk up their billable hours.” From what I have been told by those that have been in this business a lot longer than I is that there is always a need for more attorneys/agents capable of doing patent prosecution. As a result, we are rarely short for work. Besides, getting allowances makes the clients happy, which leads to more work. However, getting rejections on the same (bad) art, three consecutive times, when even the inventors recognize that the art is bad, makes for very frustrated clients, and frustrated clients stop (or reduce) filing patent applications and sometimes don’t pay their bills.

    “Without this test, if the PTO quality group found a prior art with a missing element that the examiner missed, the examiner could easily be cited for an error; whereas currently, the examiner can refute that finding by hiding under the TSM cover.”
    The problem is that almost all inventions are combinations of old elements. As a result, the PTO quality group should almost always be able to find some combination of the prior art that includes all of the claimed limitations.

    “Remember, examiners look through thousands of patents in one art area while attorneys usually have to deal with patents from many different areas. Who do you think is the better judge of patentable subject matter for a particular art?”
    You’ve just proved my point as to how the USPTO operates. An examiner with all that experience is the VERY WORSE person to make an obviousness determination based upon his/her opinion. A patent examiner, particular one with lots of experience, is nowhere near “one having ordinary skill in the art” because of all the experience the examiner has. The more experience the examiner has in a art makes it more likely that they examiner is NOT indicative of one having ordinary skill in the art.

    Moreover, your comment also fails to recognize that application of an obviousness determination requires a considerable understanding of the underlying LAW. I have no doubt that an examiner is more than likely to have a must better understanding of the technology. However, understanding the technology will only get an examiner so far.

    The MPEP includes discussions of probably several hundred cases that involve patent prosecution. However, these little snippets in the MPEP are usually not more than a paragraph (and sometimes only a sentence long), and most times these snippets provide little guidance as to why a particular decision was made by the courts. Any good patent attorney, upon seeing a case cited by an examiner, should pull the case and read it because it has been my experience that in 90% of the times the underlying facts of the cited case are so different from the present situation so as to render the cited case law irrelevant or the examiner has cited a case the stands for the exact opposite of what the examiner believes the case to stand for. I wish I could share all the funny anecdotes I have on the last one.

    Although I’m sure there are examiners that read case law, and probably some of the examiner who post (read) on this board because the very fact that they are looking to outside sources for information about patent law shows that they are dedicated to learning about their current profession. However, I would wager less than 10% of the examiners have actually read the case that they cited in a rejection, and that number may be way to high. What is even sadder is that I have heard (from examiners) that many examiners don’t even read the MPEP. Instead, he/she just rejects claims based upon what the primary or supervisor tells them.

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  146. pds wrote:

    “By the way, patents are not “a government handout.” A quid pro quo exists … inventors disclose their inventions, and as a result, they have receive a limited right to their inventions. Also, Applicants have probably spent a lot of their own time and money to have a patent application prepared to explain to the government why “they deserve it.” This is the burden placed on applicants by 35 U.S.C. §§ 101, 112.”

    I agree “handout” is not the best term. However, the government should issue only DESERVING “inventions”, regardless of how much time and money they spent or whether they think they deserve it or not.

    “The biggest fear of patent prosecutors is to have examiners being given the power to make up facts and rationales for combining references.”

    True, but the recent CAFC cases appear to say that examiners are entitled to do this right now under implicitness.

    “During last year’s AIPLA meeting, I heard a statistic that something like 40-50% of the examiner’s in the 2100 group have less than 1 year of experience. I cringe to think that an examiner with just 6 months of experience could make an obviousness decision that could prevent my client from receiving a patent. However, if you are filing an application that goes to the 2100 group, for example, that is a likely result.”

    Firstly, 2100 experienced a jump in hiring because of vast increases in the filing during the dot com era and the subsequent defensive filings due to the troll menace that has created a huge backlog. Congress has finally recognized the problem recently and allowed the PTO to keep their money so they can hire these people. Secondly, I am not sure what your point is in regards to the correlation between the new hires and determination of obviousness. Examiners are relied upon mainly to search for prior art. 2100 has many of the new technologies. Hiring new grads with knowledge of these new technologies would help in search of these prior arts. Surely, you’re not suggesting the PTO should have some dinosaurs who went to school during the punch card era trying to search for prior art involving fibre channel arbitrated loop interface? Is that your definition of one with ordinary skill in the art?

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  147. Congress has the power “To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries” and that is all.

    “Obviousness” should be interpreted in a manner consistent with the limited Constitutional mandate for the patent sytsem. If a definition of obviousness is used which systematically permits patenting of inventions which needed no encouragement because they would have happened inevitably within a short time then the statute is, IMHO, outside of its authorized scope. A patent statute which systematically errs in favor of patent validity is unconstitutional.

    To Gary who commented on the spam links – that is probably put there precisely because this is a good site and a link back from here will increase that site’s search engine ranking.

    Reply
  148. Thanks Gary, Those comments have been deleted. It is a problem of spam. The only sure-fire way to ensure block the spam is to block all comments.

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  149. pds wrote:

    “Like many patent examiners, you are both hostile to patents, patent attorneys, and inventors, while at the same time failing to realize that all three not only keep provide you a job, but also contribute to pay your salary.”

    This is a real sad accusation without any merits. Many attorneys who got their starts at the PTO would tell you that the count system examiners work under is set up to encourage the ALLOWANCE of patents. You can explore the validity of that claim on your own or at the Partnering in Patents coming up soon. Therefore, examiners would be more inclined to keep the status quo so that their ALLOWANCES can continue to be validated under the stringent TSM test. Without this test, if the PTO quality group found a prior art with a missing element that the examiner missed, the examiner could easily be cited for an error; whereas currently, the examiner can refute that finding by hiding under the TSM cover. Truthfully, I think a lot of examiners would love nothing more than to issue a valid patent and get their counts. But a lot of attorneys choose not to focus on the essence of the invention and instead concentrate on trivial matters that just prolongs prosecution (and perhaps bulk up their billable hours). Remember, examiners look through thousands of patents in one art area while attorneys usually have to deal with patents from many different areas. Who do you think is the better judge of patentable subject matter for a particular art?

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  150. Dennis:

    You have created a great site that people can discuss issues most of them are important and interesting.

    But, I hate the idea that people use your site to do advertisements such as the one by a Hong Kong firm posted on 10/13 and the one posted by Online Casino on 10/14.

    Reply
  151. Frederic wrote:

    “By the way, you’re kidding yourself if you think patent ligitation is going to dry up if some obviousness modification is put into law, because a “troll” is not defined (in this blog site anyway) as one having an obvious patent but one who somehow misuses his patent rights by, uh, actually enforcing them. ”

    Like you said, trolls misuse patent rights by enforcing OBVIOUS patents that should never have been issued. Therefore, I am not the one kidding himself who thinks that getting rid of obvious patents would have no effect on these trolls and their attorney henchmen.

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  152. As a general comment with regard to obviousness determinations, I think the point the throws off most examiners, almost all commentators, and even a great many patent attorneys/agents, is how an obviousness determination should be made. It is to be made through the eyes of one having ordinary skill in the art at the time of the invention.

    If I have a client that comes in and tells me that he/she has a great idea and wants me to prepare a patent application, I will instinctively ask myself if I think that invention is obvious based upon my knowledge of the art. While I instinctively ask myself this question, I am also cognizant that my opinion DOES NOT MEAN ANYTHING. I am not one having ordinary skill in the art. As such, any preconceived notion that I have as to the obviousness of a particular invention is FLAWED.

    The common error I see most examiners and almost all commentators make is that they see an invention and think to themselves, “this must be obvious.” The examiner then goes out and tries find prior art that supports the examiner’s belief that the invention is obvious. I would guess that 90-95% of obviousness rejections start out like this.

    The examiner, however, is NOT one having ordinary skill in the art. One having ordinary skill in the art hasn’t looked at hundreds (if not thousands) of issued patents and seen all the different ways old elements could be combined to form new inventions and the reasons one the invention is useful. One having ordinary skill in the art may not even have the skill level that the examiner has. Moreover, one having ordinary skill in the art hasn’t just read an application that describes how to make and use the claimed invention. The examiner also has the opportunity to see teachings in the real world that may postdate applicant’s invention. For all these reasons, an examiner makes a very poor representative of one having ordinary skill in the art at the time of the invention.

    The role of an examiner should be to suspend his or her preconceived notions of whether or not the invention is obvious and to focus on trying to find prior art, either alone or in combination, that teaches, suggests, or motivates the claimed invention. Once an examiner writes “for these reasons, examiner believes the claimed invention is obvious ,” I know that examiner has used the wrong approach. Instead, the examiner’s approach should be, “one having ordinary skill in the art,” based upon these teachings, would find the claimed invention obvious.

    I understand it is much harder for an examiner to prove what the fictional one having ordinary skill in the art at the time of the invention would find obvious. I recognize that it would be much easier for an examiner to make that determination if the examiner could rely on what he/she believes would have been obvious. That issue, however, should be taken up with Congress, not the Supreme Court.

    Congress inserted the words “at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains” after the phrase ” A patent may not be obtained … if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious.” If the USPTO wants to have their examiners be able to make an obviousness decision based upon their own subjective beliefs, then they should lobby Congress to have the words “at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains” replaced with these words “to an examiner at the patent office at the time of examination within the patent office.”

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  153. “The difference between the Supreme Court and the Federal Circuit is that the Supreme Court probably doesn’t think that patents are the exception in American law where anybody who wants a government handout can demand it and make the government show that they don’t deserve it.”

    Anon, after dozens of posts, your true colors finally show through. Like many patent examiners, you are both hostile to patents, patent attorneys, and inventors, while at the same time failing to realize that all three not only keep provide you a job, but also contribute to pay your salary.

    By the way, patents are not “a government handout.” A quid pro quo exists … inventors disclose their inventions, and as a result, they have receive a limited right to their inventions. Also, Applicants have probably spent a lot of their own time and money to have a patent application prepared to explain to the government why “they deserve it.” This is the burden placed on applicants by 35 U.S.C. §§ 101, 112.

    “It seems to me that the biggest fear of all the patent prosecutors here is that they will no longer be able to challenge the examiner on a fact determination.”
    The biggest fear of patent prosecutors is to have examiners being given the power to make up facts and rationales for combining references.

    I probably wouldn’t mind if the patent office had a professional core of examiners. For most patent attorneys or judges that decide patent cases, their current profession is very likely to be the profession from which they retire. As a result, although I’m sure there are some bad ones out there, most take their jobs very seriously. On the contrary, the USPTO is a revolving door of examiner’s coming in, getting a couple of years experience, and then moving on.

    During last year’s AIPLA meeting, I heard a statistic that something like 40-50% of the examiner’s in the 2100 group have less than 1 year of experience. I cringe to think that an examiner with just 6 months of experience could make an obviousness decision that could prevent my client from receiving a patent. However, if you are filing an application that goes to the 2100 group, for example, that is a likely result.

    “Guess what, guys, pretty much every other government handout has these characteristics: (1) the applicant bears the burden of proof; and (2) if you lose in the first instance, it is all but impossible to get a reversal on appeal.”
    If that is what you believe with regard to appeals, then you really don’t understand the way of the government. There is a concept called “due process” that comes into play when someone is dealing with the government. You should investigate it a little further.

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  154. anon:

    I can’t put my thumb on it, but something tells me you are not gung-ho when it comes to patents.

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  155. “Unless it’s a preemptive strike against another Group One somewhere out there who will have a similar beef.”

    I guess I figured wrong that they would not throw good money after bad. They are a day late and now many $$$ short.

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  156. The posts here confirm what I have suspected for a long time: patent prosecutors have been spoilt by the Federal Circuit.

    It seems to me that the biggest fear of all the patent prosecutors here is that they will no longer be able to challenge the examiner on a fact determination. (Yes I know it is a question of law, but it is based on so many factual determinations.) Guess what, guys, pretty much every other government handout has these characteristics: (1) the applicant bears the burden of proof; and (2) if you lose in the first instance, it is all but impossible to get a reversal on appeal.

    The difference between the Supreme Court and the Federal Circuit is that the Supreme Court probably doesn’t think that patents are the exception in American law where anybody who wants a government handout can demand it and make the government show that they don’t deserve it.

    Reply
  157. The first comment in this series, posted by Michael Slonecker:

    “By the way, what is Hallmark doing in this case? Have they suddenly discovered “trolls” for greeting cards?”

    Michael, check out the two Fed Cir decisions in June 2001 and May 2005 in Group One Ltd v Hallmark Cards, Inc. This nine year litigation which found Hallmark on the losing end in these decisions is reason enough for them to try to explain it away in their amicus briefs. Good luck to them but it’s a bit late in that game. Unless it’s a preemptive strike against another Group One somewhere out there who will have a similar beef.

    Scot, you have no clue what a “henchman attorney” is until you see a table full trying to argue away their clients cupability with the “dog ate my homework” excuses, no, make that my alien dog….
    By the way, you’re kidding yourself if you think patent ligitation is going to dry up if some obviousness modification is put into law, because a “troll” is not defined (in this blog site anyway) as one having an obvious patent but one who somehow misuses his patent rights by, uh, actually enforcing them.

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  158. For the avoidance of doubt, when my contribution was posted, the last contribution was in Chinese. However Scot posted his contribution before mine was received.

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  159. If these are the strongest briefs that can be offered by those in support of respondents, SCOTUS should have an easy time ruling in favor of petitioners.

    Good riddance to the trolls and their henchmen attorneys.

    Reply
  160. Ok, I swear that the IPO brief reads like a yoga manual.

    And they repeatedly say that the TSM test is consistent with the SCOTUS’ test. Is that really a good argument? I mean, if I were on the SCOTUS–ha–I would read that as an admission that one of these tests is redundant, and I’m going to wager that ours should win.

    Now, if I were on the SCOTUS, I probably would not have posted twice in this thread either.

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  161. In commenting about the members of the Supreme Court who decided the Sakraida case (in which the claimed dairy barn was held obvious), Michael Sloneckier guessed that “none of them ever worked in a dairy farm.”

    Probably true, but they surely had seen a lot of bull**** in their lives.

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  162. Interesting that Milton’s recollection of past patents that would have been deemed obvious without TSM, should be issued under the secondary considerations test of “unexpected result” according to him.

    CAFC’s backpedaling to ease up the TSM test will not resolve the problem. I am not convinced implicit motivation will provide more predictability to the patent system. Implicit motivation does not get rid of hindsight – it only makes the examiners work a bit harder in crafting up some debatable rationale. The trolls will attack this weak hole and then we will be back where we are.

    SCOTUS should resolve this issue once and for all by getting rid of TSM and iterate that secondary considerations should be the ultimate determinant of nonobviousness.

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  163. “As for the objection that having a less objective standard will create more “consistent results” and prevent chaos seems less than *obvious*. It seems unlikely that if we moved away from a less rigid objective standard the the USPTO would give the examiners free reign with no instructions. Indeed, it’s probably more plausible that the results from the USPTO would actually be more rationale as it would provide an opportunity to formulate proper obviousness tests for the various arts rather than a one size fits all TSM. As has been mentioned in comments before on this site, certain arts lend themselves better to finding prior art than others.”

    Any test that relies upon a subjective standard would allow any patent application to EASILY be rejected (or allow any allowed patent to be subject to reexamination/litigation to EASILY to be invalidated). It doesn’t take one having ordinary skill in the art to reverse engineer an invention once a patent application has been filed. I have no doubt that the average patent attorney or the average patent examiner would have no trouble formulating a convincing rationale as to how and why particular references could be combined so as to arrive at the claimed invention.

    The problem with a subject test is that it eliminates impermissible hindsight reconstruction as a responsive argument by applicant/patentee to an obviousness rejection. Under an objective standard (i.e., TSM), if the obviousness rationale is the same as applicants, proof is needed of the rationale. However, under a subjective standard, a patent examiner could assert that the rationale for the obviousness rejection is the same as that described by applicant, but the rationale is the subject belief of the examiner, which does not require proof.

    As I have written before, a subjective standard is the loophole that essentially eliminates impermissible hindsight reconstruction as a viable argument.

    “Of course, what the world would look like without the TSM test is really nothing more than guessing.”
    I couldn’t agree any more on that one.

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  164. “Perhaps the Supreme Court should articulate what is important and what is not so that prosecution, and the application of obviousness, is confined to only the really important stuff.”

    When I first read these comments, I didn’t know whether or not you were being sarcastic. After reading the remainder of your post, I realize that you were. If anybody can reliably tell me how I can determine that an invention is “important” was prior to drafting of the patent application, prior to patent prosecution, or even immediately after the patent has issued, please let me know your secret.

    “I cannot help but wonder if any of them who submitted briefs supporting the Petitioner have actually read obviousness decisions rendered over the years by the CAFC and the CCPA. Until I read their briefs on the merits I never realized that the only “test” for obviousness was TSM as they so narrowly describe it. Looks as if I need some more CLE, and especially CLE taught by those who have never practiced before the PTO and the CAFC.”

    Not only could I have not not put it better, I could not have put it funnier. I would wager that many of the writers who submitted briefs in support of the Petitioner never reviewed any of common obviousness (103) rejections currently coming out of the Patent Office. If they had, they would realize that a serious disconnect exists between how they are characterizing the TSM standard in their briefs and how the Patent Office is applying the TSM standard.

    “Academicians and amici having a vested interest in reversing KSR, in effect crafting a standard that has as an underlying and unstated premise that only “good” stuff qualifies for protection under Title 35 in the interest of promoting the useful arts, should not, in my view, assume the role that they know what is and what is not good as a matter of public policy.”

    I have written this before, so excuse me for repeating myself, but IMHO, many of the writers of the briefs supporting the Petitioner are not writing these briefs because they believe that the Federal Circuit has interpreted Supreme Court precedence incorrectly. Instead, it is my opinion that these writers are hostile to patents and intellectual property in general, and just see KSR as a vehicle for vehicle the intellectual property system of this country.

    To more specifically address your point, as noted in the Lee Thomason brief in support of Respondent, many of the proposals suggested by the briefs in support of Petitioner should be directed to Congress, not the Supreme Court. It is not up to the Supreme Court to determine what patents are “important” or not.

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  165. As much as I’d like to say, “we need only an objective test,” I think that that is not particularly practical and really swings the obviousness discussion to far from center–in the same way that the “extraordinary level of innovation” pushes the test too far in the other direction.

    As for the objection that having a less objective standard will create more “consistent results” and prevent chaos seems less than *obvious*. It seems unlikely that if we moved away from a less rigid objective standard the the USPTO would give the examiners free reign with no instructions. Indeed, it’s probably more plausible that the results from the USPTO would actually be more rationale as it would provide an opportunity to formulate proper obviousness tests for the various arts rather than a one size fits all TSM. As has been mentioned in comments before on this site, certain arts lend themselves better to finding prior art than others.

    Of course, what the world would look like without the TSM test is really nothing more than guessing.

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  166. Gee, the attorney who was paid to write the patent application files a brief supporting upholding it and we are supposed to be surprised?

    What did we think he would do? File a brief saying, look, this guy came to me, I took his money and I knew he didn’t have anything of value, but I also knew that if I fought hard enough against the examiner I could get a claim through the PTO whether it was any good or not?

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  167. Sakraida Patent No. 3,223,070

    Claim 1. A dairy barn for cows and the like including a smooth, evenly contoured paved surface forming a floor providing a walking surface for cows in the barn, drain means for draining wash water from such floor opening to the top of the floor, said smooth, evenly contoured surface which forms such floor sloping toward said drain means whereby wash water discharged on the floor may be collected and disposed of through said drain means, said barn further including multiple rest areas with individual stalls for each cow and with each of said stalls having a bottom which is also of smooth pavement, but which is disposed at an elevation above the paved surface forming the floor, said stalls being dimensioned so that a cow can comfortably stand or lie in the stall, but offal from the cow falls outside the stall bottom and onto the floor providing the walking surface in the barn, said barn further including defined feeding areas having feeding troughs with means for discharging feed to the troughs, a cow-holding area, a milking area and a transfer area all bottomed with the walking surface forming said floor in the barn; and floor-washing means for washing the floor providing the walking surface in the barn where said floor bottoms said feeding, holding, milking and transfer areas operable to send wash water flowing over the floor with such water washing any cow offal thereon into said drain means, said floor-washing means including means located over a region of said floor which is uphill from said drain means constructed to collect water as a pool above said floor and operable after such collection of water as a pool to disperse the water as a sheet of water over said floor.

    I have always found it useful to look at a case starting with the district court, proceedings, then through the appellate court (in this case the 5th Circuit, one of the panel members who unaminously upheld nonobviousness being Judge Wisdom), and then moving on to the Supreme Court where Justice Brennan issued a short and sweet unanimous opinion largely based on what the Supreme Court, after looking at the claim, decided was merely the combination of old elements neededing something special to be nonobvious…an unexpected, synergistic result. My guess it that none of them ever worked in a dairy farm.

    Sakraida, the most recent (1976) obviousness opinion has always troubled me, especially because the Supreme Court reviewed the claim at issue presented above, and then decided on its own that the claimed invention was unworthy of protection under the patent laws. Once it decreed that nonobviousness was a question of law, and ignoring the finding of facts developed at trial, it then proceeded to assume what I can only charaterize as the role of the USPTO.

    This is a case cited repeatedly by Petitioner and its supporters, and yet not one mention is made in their collective briefs about the role assumed by the Supreme Court’s clearly second guessing the USPTO. It bears mentioning that the district court judge very clearly did not like an invention dealing with BS, and repeatedly held against the patentee.

    What worries me about Sakraida as precedent is that clearly it is not what many of KSR’s supporters would consider an important invention, one of the “buzzwords” that have recently started to emmanate from the mouths of those intent on undermining Title 35 piecemeal.

    My fervent hope is that the basic rules articulated in Graham are not modified to try and rationalize their opinions in Anderson’s Black Rock and Sakraida as a “green light” to engage in what was clearly fact finding on its part. The “quality” of an invention should have no bearing on whether or not it meets the three tests specified in Title 35.

    Academicians and amici having a vested interest in reversing KSR, in effect crafting a standard that has as an underlying and unstated premise that only “good” stuff qualifies for protection under Title 35 in the interest of promoting the useful arts, should not, in my view, assume the role that they know what is and what is not good as a matter of public policy.

    The CAFC, and particularly in recent decisions since cert was granted in KSR, has presented cogent arguments that TSM, as narrowly defined by those supporting the Petitioner, is not the sole “test”, but merely one means by which to avoid the use of hindsight. I hope that the CAFC’s recent pronouncements are taken into account by the Supreme Court in the event the Justices are inclined to declare TSM an unacceptable practice.

    Just as an aside, can anyone conceive of a person/company so dumb that it could not craft a work around to Claim 1 above? The only one’s I can think of are those who when their IQ is squared the number becomes smaller.

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  168. By a 13 to 3 margin it looks as if those forces aligned against the respondent believe that the sheer weight of their papers constitute “overwhelming” authority in favor of overturning what they unanimously call an inflexible TSM test. Most called the test too “rigid”, while one called the test too “lax”. Are these words synonyms? One brief even promoted the concept that public policy demands that patents issue on only important inventions. Perhaps the Supreme Court should articulate what is important and what is not so that prosecution, and the application of obviousness, is confined to only the really important stuff.

    I cannot help but wonder if any of them who submitted briefs supporting the Petitioner have actually read obviousness decisions rendered over the years by the CAFC and the CCPA. Until I read their briefs on the merits I never realized that the only “test” for obviousness was TSM as they so narrowly describe it. Looks as if I need some more CLE, and especially CLE taught by those who have never practiced before the PTO and the CAFC.

    By the way, what is Hallmark doing in this case? Have they suddenly discovered “trolls” for greeting cards?

    One question off the subject. If the Supreme Court is the final arbiter of what the law IS, then why are district and appellate court decisions denominated “decisions”, while decisions of the Supreme Court are denominated “Opinions”? Shouldn’t the words be reversed?

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