CAFC: Suggestion-Test Has Been Flexibly Applied For Decades

DenimDyStar v. Patrick Co. (Fed. Cir. 2006).

DyStar’s patent discloses a process for dyeing textiles with catalytically hydrogenated leuco indigo. After a trial, the jury found that Patrick infringed claims 1–4, that the patent was not invalid, and that $90,000 of damages should be awarded.

Patrick appealed the lower court’s denial of a new trial on obviousness grounds.  A new trial should not awarded when “a jury, viewing the evidence in the light most favorable to [DyStar], could have properly reached [its validity] conclusion.” The CAFC reviewed the denial for abuse of discretion. (Level of review based on Fourth Circuit law).

As is often the case, all the elements of DyStar’s invention were already known in the art — the question was whether there was some obvious motivation to combine the prior art together. 

Suggestion to Combine: In recent weeks, we have seen a common thread in CAFC jurisprudence indicating that “the suggestion test is not a rigid categorical rule.” Rather, the suggestion to combine references can be found from “any number of sources, including common knowledge, the prior art as a whole, or the nature of the problem itself.”

It is difficult to see how our suggestion test could be seen as rigid and categorical given the myriad cases over several decades in which panels of this court have applied the suggestion test flexibly. Obviousness is a complicated subject requiring sophisticated analysis, and no single case lays out all facets of the legal test. DyStar’s argument and the above-cited commentary highlight the danger inherent in focusing on isolated dicta rather than gleaning the law of a particular area from careful reading of the full text of a group of related precedents for all they say that is dispositive and for what they hold. When parties like Dystar do not engage in such careful, candid, and complete legal analysis, much confusion about the law arises and, through time, can be compounded.

Holding: Claims are obvious

In a footnote, the Court defends its KSR decision — a decision currently being briefed at the Supreme Court.  

In KSR, we vacated a district court’s grant of summary judgment of invalidity for obviousness. The district court found a motivation to combine not in the references but “largely on the nature of the problem to be solved”, which we did not deem erroneous. Teleflex, Inc. v. KSR Int’l Co., 119 Fed. App’x 282, 287 (Fed. Cir. 2005) (unpublished). Rather, we vacated because the court did not explain sufficiently its rationale, and failed to make “findings as to the specific understanding or principle within the knowledge of a skilled artisan that would have motivated one with no knowledge of [the] invention to make the combination in the manner claimed.” Id. at 288 (citation omitted).

In an impressive history (that is begging for a full analysis), the CAFC sets out the full scope of the flexibility of the suggestion test and notes how the test is well grounded in Supreme Court jurisprudence and has always been flexible. This is one for the casebooks.

30 thoughts on “CAFC: Suggestion-Test Has Been Flexibly Applied For Decades

  1. It is the day before Halloween and I’d like to say that the pumpkin trash bags were not obvious to me. In my neighborhood in the last few weekends there are at least a dozen people who were both raking leaves and putting up Halloween decorations on the same day. this has been going on for 50 years or more, and yet none of these people thought of a pumpkin design on a leaf bag. Now we have the option to buy some for a buck or two. What in the world does that hurt? Giving that guy a patent and promoting this new choice does not harm the makers of plain trash bags. It may even help other inventors go ahead with their inventions instead of just going back to raking leaves.

    Also – good idea above from mmmbeer about the burden switching. I would add one more to the list of objective indicators of non-obvious that would include the pumpkin bags: the elements were right in front of lots of people and they did not get the combo. That is kinda like the intermittent windshield wipers that people also said “I could have invented that” about. How many people have manually turned their wipers on and off in light rain? (And now how many of us think of intermittent wipers when we do…?) I’d rather pay a buck for (or at least get to watch) new inventions than just keep doing things the same old way.

  2. Obviousness is even more than a “judgement call’-it borders on being a relative term. To get rid of the “human factor”, all future patent applications will have to be ‘run through” a computerized software system-software engineers,get busy-sounds patentable to me. All kidding aside,I say the patent system now works equally for everyone. If you,Mr. Infringer didn’t think to combine those elements to create that new product before someone else did,and that person was granted a patent on exactly that( even after navigating through an obviousness rejection)-then shame on you,that’s life in the big city. That’s my situation at present and when I bring my product to market there will be hand wringing at the “big company” and cries of “why didn’t we think of this,we specialize in these”. Shortly thereafter, I’ll be looking for a contingent-based patent attorney- hopefully we’ll both make a lot of money.

  3. >>> This statement completely misses the point made by the case. There must be an explanation of the specific reason for making the combination. Common sense is not good enough. The Court stated: “…assumptions about common sense cannot substitute for evidence thereof.”

    The above statement completely misses the point made by the poster. Ask yourself, how much of the client’s money are you going to spend when there is not an explanation of the specific reason for making the combination in the Office Action? I can count on my hands the number of office actions that I have seen that truly make out thier case in full. Removing 103 from timely printed document evidence and putting 103 completely in the hands of the pressured examiners will eliminate 103 nonobvious as a way to get a patent.

  4. ***Conclusory statements are not evidence.***

    I couldn’t agree more … however, given my many years of experience with the USPTO, the vast majority of the “analysis” I read are conclusory statements.

    The problem I face as a patent attorney, is that the case law puts a lot of legal requirements on the examiners. However, although the examiners (for the most part) understand the technology, they do not understand the law. The MPEP, particular the sections that deal with obviousness, don’t explain the case law very well.

    As such, I write a lot of responses that I know the average examiner won’t get because he/she just doesn’t understand the legal concepts involved. Although I try to educate the examiner on the law, I realize this is an uphill battle with most. I continue to write the arguments because I am setting up the application for appeal, because recently, that appears to be the only way to get an application allowed these days.

  5. In KSR, the Federal Circuit found that specific factual findings were made, by the dist ct., to back up the finding of a suggestion based on the nature of the problem itself, however, they disagreed with the conclusion that was reached. Specifically, the dist. ct. cited the Asano patent as providing the suggestion. The Fed. Cir., referring to the Ruiz case, found Asano as failing to provide the requisite suggestion because it related to a different problem from that addressed in the Teleflex patent.

  6. >>The examiner need only state in the Office Action “The cited patents contain all the elements of the claim. I, being skilled in the art, here by filter all the cited patents through my knowledge and, bada bing, bada boom, the cited patents suggest to me to combine together to form the claim. The claim is obvious and rejected. Please give me my points now.”

    This statement completely misses the point made by the case. There must be an explanation of the specific reason for making the combination. Common sense is not good enough. The Court stated: “…assumptions about common sense cannot substitute for evidence thereof.”

    Conclusory statements are not evidence.

  7. I want to preface this by saying that any changes to the burdens will dramatically effect (probably for the negative) most good, valid patents.

    In any event, at some level the determination of obviousness ought to be subjective. If the courts took the concept of PHOSITA seriously, it is essentially the “reasonable person” standard/fiction lawyers and judges attempt to apply in other areas all the time.

    On the issue of the patentee having to defend its patents twice, I think that that would be the case under the current system if a new test were to be applied. However, think about it this way. A patent, once issued, is presumed valid and the burden to overcome that presumption is “clear and convincing.” However, one wonders if that burden is truly justifiable since the examination process is often slated in favor of the patentee since, for among other things, the burden is on the examiner to make the rejections. That is, the burden required to overcome rejections during examination is merely a preponderance of the evidence. Furthermore, an accused infringer usually has no role in the prosecution of a patent, and once the patent is issued, has an incredibly heavy burden to carry as a result. If taken literally, the post-grant presumption of validity works as a pseudo-collateral estoppel against a third-party who never had a “full and fair opportunity to litigate” the issue in the first place.

    If we are to keep the post-grant presumptions and burdens, I tend to believe that the initial burdens should be much heavier during prosecution. Maybe that’s just because it would give me, as a lawyer, more work.

  8. David French writes:

    Utility models around the world serve as “Junior” patents which are generally not held to the standard of inventive step, or at least to the same standard of inventive step as utility patents. Their term is generally less than that half that of a full patent.

  9. Lets face it obvious combinations or variations are usually not discussed in a single references and if they were a novelty rejection would suffice. As hard as we try to set up standards for judging obviousness it will still usually end up being a subjective decision. Since we are essentially giving out a monopoly right, would it not be best to err on the side of caution and require the patentee to overcome a significant burden to prove nonobviousness.

    Two solutions that come to mind (without very much prior thought) could be that after a final obviousness rejection, the patentee could choose a “registration” that carries no presumtion of validty. Another could be that obvious inventions are given a very short term.

  10. David French writes:

    In the above posting, mmmbeer’s test for inventive step: “that ‘given the problem’ a person having ordinary skill in the art would have been able to make the same invention … without undue experimentation” is reminiscent of the Japanese standard for inventive step.

    Article 29(2) of the Japanese patent law, as translated by WIPO link to wipo.int
    provides that: “Where an invention could easily have been made, prior to the filing of a patent application, by a person with ordinary skill in the art to which the invention pertains, on the basis of (the prior art), a patent shall not be granted for such an invention…”

    The test for obviousness is a derivative test to address the standard requirement that a patent shall only be granted for “an invention”. The test of obviousness became statutory in the United States in 1952. Meanwhile, the Japanese test has continued to exist as an alternative test since at least the passage of the Japanese Patent Act in 1959.

    Obviousness is just a test for assessing whether invention is present. No doubt other tests to determine the presence of invention could be considered suitable, as well. However, US patent law must now operate under the test as stipulated by the patent law revisions of 1952.

  11. “Perhaps the justifiable solution lies in the assignment of burden. If a monopoly is to be granted, the burden should be on the inventors to prove nonobviousness.”

    Would not this solution place the holder of a patent to the task of having to prosecute his/her invention twice, once before the USPTO and the second before the courts?

    As a minor aside, the use of the word “monopoly” in reference to a patent has always troubled me. A patent is no more a monopoly than my ownership of my car is a monopoly. The grant of a patent the confers no more, and no less, than a species of personal property. Monopoly is properly used in the context of the anti-trust laws, rarely the case with a single patent.

  12. I just have to say that the concept that the motivation to combine MUST come from one of the references is extremely frustrating when it comes to examining, thus why so many eaxminers rely on their own motivations. Believe me, most examiners would love to find a reference that said “we use A, but combining A with B has these benefits.” But then why even make the 103, you have a 102. Quite freqently the reference doesn’t teach a reason to combine but yet a blind man could still see a motivation and yet when I tell an attorney that it would be obvious to combine a nut with bolt (even though my references don’t teach it) they scream that there is no taught motivation. My opinion, examiners need to make sure that if they are creating their own reasons to combine that it is actually a valid reason. On the other side, attorneys need to realized not all combinations are going to be taught, yet they can still be blatently, even painfully, obvious.

  13. I’ve thought about obviousness a lot recently and I’ve tried to construct a “better” test. It invokes some elements of the Graham factors, and it is a form of burden switching. To make this work, post-grant, I’ve ignored the presumption of validity, however:

    1) A patent (or an invention disclosed in an application) may be presumed to be nonobvious if the patentee shows an objective evidence of nonobvious, such as, “long-felt, but unmet need” or the “failure of others.” (commercial success may also be relevant, but it’s hard at the application stage to show that)
    a) This presumption can then only be overcome with the proof of “suggestion, teaching, motivation” to combine test.

    2) However, if a patentee cannot show a “long-felt, but unmet need” or the “failure of others,” then obviousness can be found by showing that “given the problem” a person having ordinary skill in the art would have been able to make the same invention problem without undue experimentation.

    So it works like this: 1) Burden on patentee/applicant to show the objective evidence of nonobviousnessl 2) If shown, the other party (examiner/accused infringer/etc) must meet the tough threshhold of the current test; 3) If patentee/applicant cannot show the objective evidence, the opposing party must merely show that “given the problem” and “given the art”, a PHOSITA would have reached the same solution without “undue experimentation.”

    This draws language from lots of areas of patent law jurisprudence, so it would not be starting from scratch.

    This is just an infant stage thought.

  14. Perhaps the justifiable solution lies in the assignment of burden. If a monopoly is to be granted, the burden should be on the inventors to prove nonobviousness. This would reward the truly talented and deserving intellectual property legal minds.

  15. It easy to blame the examiner’s for shoddy, quickly prepared Office Actions. But with Congress taking the PTOs money, the examiner’s are put under pressure that results in some shoddy, quickly prepared Office Actions. Many posters miss the point that yes, you can win at appeal, but most client’s do not have the money to appeal nor do they have the business time to sit and wait for their patent issues to be reslolved. Most client’s have only enough money for two replies and no more.

    In particular to the DyStar case, the invention involved a method to color fabric blue. The defense argued that the prior art taught five steps to color fabric blue. The claimed invention only used three of the five steps. The court said that if a defense witness testified in hindsight that the prior art suggested the five steps, then the court can conclude that the invention of the ’992 patent would have been obvious:

    ” The ’992 patent thus improved upon the prior art by eliminating steps two and three of the traditional process: stabilizing the leuco indigo solution into a paste or powder form, and then reconstituting the solution in a preparation tank. Instead, it allowed a dyer to pour prereduced indigo solution directly into a dyebath and commence dyeing immediately.”

    “For one to conclude that the invention of the ’992 patent would have been obvious, then, the prior art, common knowledge, or the nature of the problem, viewed through the eyes of an ordinary artisan, must have suggested the following steps: (1) creating leuco indigo solution through catalytic hydrogenation; (2) stabilizing the leuco indigo in solution form; (3) adding the leuco indigo solution directly into a dyebath; (4) dipping; and (5) skying. Because the jury did not make explicit factual findings in the form of answers to written interrogatories or special verdicts, we must discern the jury’s implied factual findings by interpreting the evidence consistently with the verdict and drawing all reasonable inferences in DyStar’s favor. Konkel v. Bob Evans Farms Inc., 165 F.3d 275, 279 (4th Cir. 1999).”

  16. ***I wonder why the same shouldn’t be true of patent law. If the accused infringer puts on enough of a case (in other words, offers strong evidence explaining in detail how a skilled artisan would go through the thought process of combining the references), and convinces the jury (or if the examiner sufficiently convinces the BPAI), then maybe the appellate courts should just leave it alone.***

    The problem with that logic is that it doesn’t take into account how easily hindsight reconstruction could be used to establish “the thought process of combining the references.” In many instances, a patent applicant will discuss the prior art, discuss problems associated with the prior art, and then describe how the inventor addressed those problems in the patent application. That is a perfect roadmap for an examiner (or opposing counsel or an expert hired by opposing counsel) to establish the thought process of combining certain references.

    Once you’ve deemed an examiner (or expert), as one having ordinary skill in art, and allowed him/her to formulate an obviousness rejection based upon his/her interpretation of the prior art, you’ve created a loophole in the restrictions against hindsight reconstruction that you can steer a supertanker through. If I were an examiner, and I was allowed the ability to establish myself as one having ordinary skill in the art, I have no doubt that I could easily reject 90-95% of applications that came before me, and as for the remainder, I’m pretty sure I could come up with some very convincing arguments that would have a very good chance of being upheld at the BPAI. Moreover, I could use the same arguments that applicant put in their own application against them because I, as an examiner, could argue that I independently came up with the rationale for combining the references based upon my understanding of the prior art. How could anyone refute that argument?

    As an attorney, I can disagree with an examiner as to exactly what a piece of prior art teaches or suggests because both the examiner and I are working with the same collection of words (i.e., the written reference itself). We may disagree as to what the words mean, but the words are unchanging and knowable. This, however, won’t occur if you allow an examiner (expert) to develop their own rationale for combining a reference. The only person that can truly know the thought process involved in establishing the obviousness rejection is the person doing the thinking (i.e., the examiner/expert).

    As I’ve noted in a different thread, one way to combat this is to have the attorney submit a declaration of an “expert” that disagrees with the examiner’s rationale. This then leads to a battle of experts (either in the PTO or in court), which, in my eyes, will do little more than bog down the whole process.

    Someone earlier mentioned a bright line, and I’m all for a bright line in this instance. In fact, I’m disappointed that the Federal Circuit is getting wishy-washy now that KSR is headed to the Supremes. I would have rather had the Federal Circuit stick to their guns instead of adding more ambiguity to this case law.

    I also agree wholeheartedly with the comments regarding “the reasonable person.” The “reasonable person” in torts is a far more easier concept to understand than “one having ordinary skill in the pertinent art at the time of the invention.” Any Joe Schmoe can identify with “the reasonable person.” However, to get one skilled in the art, you have to resolve what is the pertinent art, you have to resolve what the ordinary skill of a person in the art would have, and you have to determine what both of those were at a certain period time in the past. This is not easy to do.

  17. I guess the difference from tort law is that the “reasonable person” standard deals with a reasonable interpretation of, say, a contract. It deals with the understanding of one in the general population, not some hypothetical person with pinpointed skill, education and experience,thus it’s far easier to grasp as a general proposition of law. It means you and me. A man of ordinary skill in the art in the particular field of that patent probably means NOT you and I and probably NOT anyone in the entire courtroom or on either side of the prosecution of a patent. “Reasonable” is, I think,less nebulous that “obvious”which is not just what the conclusion is but rather also the speed in which it is reached, e.g. too much thought, effort, and experimentation means not obvious even if eventually figured out. Inventing is problem solving, hence deductive, not inductive, reasoning. Also, the tort standard does not require the reasonable person to have all the similar contracts ever written at his disposal… you get the point.
    Patent law then does need to address this issue in a different way. I have few complaints with how it is now, although some CAFC decisions involving this issue seem always to be rote without much elaboration/clarification. That has changed though since the KSR cert. I’m sure the USSC is listening.

  18. Mr. Goldstein,

    You’re right, of course about the difficulty in establishing with much certainty what a hypothetical skilled artisan would do. My point is that this is not too far removed from the “reasonable person” in tort law and that the tort law has functioned without much of a bright line in that category. Where the scope of a duty of care is ambiguous, it’s a “judgment call” that we just send to the jury rather than a situation that calls for a bright line. If the party bearing the burden of proof puts on a sufficient case and convinces the jury, then the trial judge and the appellate courts stay out of it.

    I wonder why the same shouldn’t be true of patent law. If the accused infringer puts on enough of a case (in other words, offers strong evidence explaining in detail how a skilled artisan would go through the thought process of combining the references), and convinces the jury (or if the examiner sufficiently convinces the BPAI), then maybe the appellate courts should just leave it alone. And, of course, jury verdicts can be overturned under the same principles that govern other areas of law–if no reasonable jury could have been convinced of the burden-bearing party’s case, etc.

    The “cloudiness” of this determination, as you well explain, leads me to believe that no clear lines can be drawn in this field, and that the patent law can (and must) manage without them.

  19. Anonymous:
    I’m discussing the issue at hand. See the Dystar decision:
    “Rather, we vacated because the court did not explain sufficiently its rationale, and failed to make “findings as to the specific understanding or principle within the knowledge of a skilled artisan that would have motivated one with no knowledge of [the] invention to make the combination in the manner claimed.” Id. at 288 (citation omitted).”

    It is the skilled artisan who has to find a motive to combine in order to solve the problem at hand, who needs to see the suggestion to combine in the prior art. If not that skilled artisan, then someone looking through his eyes. I’m saying that rendering judgments of law on a hypothetical person will always be fraught with danger. If, according to the KSR briefing, we move to rely further upon this mythical creature’s inventive skills which might make an invention obvious or not, we are moving into cloudy law. Where is the bright line the CAFC and the Supreme Court seems to love?

    The question you raise, even if not one which I thought of, is interesting. Should the CAFC review more aspects of obviousness de novo? For example,if all the parties, including the lower court, agree upon who the man of ordinary skill in the art is, which is a matter of law, not fact, then should the CAFC reverse that assessment if they believe it wrong, even if sua sponte? If the expert throught his trial testimony erroneously renders his opinion according to what HE thinks is obvious, rather than that of the person of ordinary skill, should the CAFC dispose of that testimony?
    I think deference has little place in matters of law, although so called de novo reviews often are not that, so no, I don’t believe in more deference to the lower courts, not if we want a uniform patent system. Fact finding is the province of the jury but a jury is always second guessed. At some point the human factor will play its central role and I guess those dealing in some way with the patent system need to accept that, while at the same time try to establish some bright line.

  20. An examiner wrote, “Furthermore, we (examiners) are are aware that the BPAI is much more likely to overturn a poorly-supported obviousness rejection as compared to one that clearly points to a rationale to combine the teachings of the prior art references.”

    Examiners are also aware that the vast majority of applicants do not appeal to the BPAI (in view of the cost, risk of estoppel, etc.). Consequently, the threat of being overturned on appeal provides no meaningful deterrent.

  21. Jude,

    (1) in KSR there was no reasoning expressed for the motivation to combine, so the CAFC remanded. At least, this is how I understand the second block quote in the post.

    (2) I suppose if the accused infringer had gotten an expert (where one finds a trash bag expert, I don’t know exactly) or produced some other evidence explaining why the motivation to combine would be implicit, that would be the end of it. On the other hand, how much harm does society really suffer from the existence of a “bad” pumpkin trash bag patent? It’s not really comparable to the harm done by a bad pharmaceutical or semiconductor patent. People just have to wait a little longer for their generic pumpkin trash bags, or find a noninfringing substitute.

    Mr. Goldstein,

    I’m interested, but not entirely sure where you’re going with your discussion of who the person of ordinary skill in the art is. Obviousness is indeed a “judgment call” of sorts. Are you saying that the CAFC should be more deferential to lower tribunals on this issue, or are you saying something else?

  22. What is that reasoning in KSR for combining that could be found?

    What is the reasoning needed to prevent the CAFC from allowing ridiculous patents such as the pumpkin trash bags to be issued?

  23. If I was a patent attorney faced with an Examiner claiming to be “one having ordinary skill in the art,” my response would be to:

    (i) ascertain that the examiner has resolved the level of ordinary skill in the pertinent art, as part of the Graham factual inquiries (see MPEP 2141.03); and
    (ii) request that the examiner produce a signed affidavit that establishes that the particular examiner has these qualifications.

    If the examiner did not do either of these, I would argue that the examiner has failed to establish that he/she is one having ordinary skill in the pertinent art.

    Also, if the examiner is underqualified, I would make that argument, and I would also make a similar argument if the examiner is overqualified.

    Also, as noted in the case note above, there is also a requirement that the determination of obviousness must be based upon “findings as to the specific understanding or principle within the knowledge of a skilled artisan that would have motivated one with no knowledge of [the] invention to make the combination in the manner claimed.” Most obviousness analysis I encounter is usually 1 or 2 sentences long, which in my eyes, is certainly not detailed enough to meet these requirements.

  24. 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.

  25. While it may be possible to formulate a 103 (obviousness) rejection based on the “cuz-i-said-so” mentality above, examiners are trained that there must be some motivation to combine the teachings. See MPEP 2143.01. Furthermore, we (examiners) are are aware that the BPAI is much more likely to overturn a poorly-supported obviousness rejection as compared to one that clearly points to a rationale to combine the teachings of the prior art references. Finally, there is explicit guidance in the MPEP that just because references can be combined does not mean that the claimed invention is obvious (MPEP 2143.01(III)).

  26. Anonymous — that is a good point, and is similar to what happened in KSR. There, the CAFC vacated the obviousness decision because the judge did not give its reasoning for combining references.

  27. Interesting point, Mr. Wessel. If the examiner is any good, however, he’ll spell out this implicit motivation. The mind of an expert is not a black box, and it is not (should not be?) enough to say “I’m an expert and my conclusion is X.”

    If the examiner fails in this regard, the BPAI or CAFC should send it back. If he succeeds, at least the BPAI or CAFC can review the examiner’s rationale on its own terms.

  28. Uh-Oh. DyStar quotes 1997 case stating, “there is no requirement that the prior art contain an express suggestion to combine known elements to achieve the claimed invention. Rather, the suggestion to combine may come from the prior art, as filtered through the knowledge of one skilled in the art.”

    Lets look at the logic.

    1. All elements are known in that at least one patent in the 6,000,000+ US patents will contain every element in a patent claim.

    2. Patent examiners are skilled in the art (and patent practitioners are not).

    3. The examiner can easily find two, five, ten patents that contain all the elements of a patent claim.

    4. The examiner need only state in the Office Action “The cited patents contain all the elements of the claim. I, being skilled in the art, here by filter all the cited patents through my knowledge and, bada bing, bada boom, the cited patents suggest to me to combine together to form the claim. The claim is obvious and rejected. Please give me my points now.”

    5. The patent practitioner will respond with a declaration from the Inventor passing the same information through the Inventor’s knowledge, saying “I ain’t see no suggestion to combine there.”

    6. The examiner will say, “So what? What we have here is a battle of the experts and, because I’m also ‘da judge at this level, you lose. Here is your final rejection. Spend the money and time you don’t have to appeal the matter. I’m off to the next obvious rejection to collect my bada bing, bada boom points.”

Comments are closed.