KSR Shifts Obviousness Debate to “Mere Aggregations” and Presumptions of Non-Obviousness

KSR v. Teleflex (Supreme Court 2006).

Section 103 of the Patent Act focuses on “differences between the subject matter sought to be patented and the prior art.”  In the 1976 Sakraida case, the Supreme Court held that simply aggregating old elements together does not pass the patentability test if the elements are each performing the same functions that they were already known to perform.

The “mere aggregation” test of Sakraida, however, has not been followed by the Court of Appeals for the Federal Circuit (CAFC). Instead, the CAFC’s approach has allowed mere aggregations to be patented so long as there is no evidence suggesting that the elements be combined.

The pending case of KSR v. Teleflex squarely addresses this debate. KSR recently filed reply brief closes the written arguments in this landmark case, and oral arguments are scheduled for November 28, 2006.

KSR’s attorneys, including GWU Professor John Duffy, argue strongly that 103(a) has been wrongly interpreted as merely a way to challenge patentability rather than a “condition of patentability” as the section is titled. Under the current suggestion test, claims “cannot be held invalid . . . no matter how trivial might be the differences” from the prior art unless evidence suggesting the difference is found in the art.  As noted by Hal Wegner, the Court’s reaction to this argument could shift the strong presumptions of non-obviousness.

KSR has gone beyond its attack on the Federal Circuit suggestion/teaching/motivation test and raised as a further issue the point that it should win under a preponderance of the evidence standard for challenging patent validity.

In the process, KSR takes a shot at the AIPLA’s “balanced” position.

It is by no means clear why patent bar groups would have a systematic interest in a “balanced” standard of patentability, in view of the enormous fees that litigation of invalid patent claims can generate.

Briefs and Documents:

Links:

Cite as Dennis Crouch, “KSR Shifts Obviousness Debate to ‘Mere Aggregations,’ Patently-O, available at http://www.patentlyo.com.

102 thoughts on “KSR Shifts Obviousness Debate to “Mere Aggregations” and Presumptions of Non-Obviousness

  1. Here are three new nouns for Justice Scalia: Constitutional Due Process –well actually two are adjectives– but the point is that we don’t have a legal system based on whim and capriciousness where one person gets to arbitrarily say , Hey it’s “obvious” to me. Instead we have a systematic way of gathering evidence, weighting the evidence and then determining on the basis of a fair balancing of the pro’s and con’s whether something is “obvious” or not.

  2. Was it obvious to those skilled in the art of blogging to shoot for position number 100 in the comments list? And should comment number 101 address statutory subject matter? Should comment number 103 be deemed the most well positioned one?

  3. A Supreme Court stuck in the attention deficit zone. They can’t get past the idea of three nouns (TSM) so as to see the decades of thoughtful case law that surrounds those “terms of art”. Sheesh.

    Thanks for the link to the transcript.

  4. After reading the transcript, I didn’t think either side made any statements that were particuarly insightful.

    Two words: pathetic farce.

    I pity both parties but blame the appellants.

  5. A transcript of the oral arguments can be found here:

    link to supremecourtus.gov

    I tried to attend the oral hearings myself, but I would have probably had to get there about 3 hours ahead of time (at least) to get in.

    After reading the transcript, I didn’t think either side made any statements that were particuarly insightful. I think Goldstein, however, left a good argument on the table when he didn’t take Breyer’s comments regarding Judge’s Rich room full of patents and garage door opener example and run with them. Regarding the room full of patents, he could have argued that the TSM test is a more complicated way of answering the question …. “now that you’ve got a room full of patents, **why** would you combine certain of these patents to arrive at the claimed invention?”

    The good answer to the garage door analogy would have been to describe how the use of the TSM test could have been used to invalidate a patent to a garage door opening device with a mechanism positioned up high, rather than down low. He could have also come up with way of describing how prior art need not explicitly describe the motivation needed to show obviousness.

    Breyer served Goldstein up a couple of softballs, and I was disappointed he didn’t run with them.

  6. Initial reports on oral arguments are in from Bloomberg:
    link to bloomberg.com

    Justice Scalia supposedly flicked his finger tips delicately under the chin strap that holds his rationalist’s propeller hat tightly to his head and proclaimed:
    “It is misleading to say that the whole world is embraced within these three nouns [TSM],… This is gobbledygook. It really is, it’s irrational.”

  7. stepback

    There does not seem to have been anyone at the Boston conference to defend the status quo. Do you suppose it was because the defenders were not invited (shame on the organizers) or because they were afraid to show up (shame on them) or because the organizers could not find anyone qualified and willing to defend the status quo?

    It will be interesting to see what happens at SCOTUS tomorrow…

  8. Now one can only wonder who that propaganda is aimed for.

    It’s aimed at the patent-ignornat rubes, but their minds were made up after ‘one-click’.

    That’s why if the Supreme’s hold that the TSM test is a strict requirement for written evidence supporting every assertion made by an Examiner during the course of an obviousness rejection, they will simply be throwing gasoline on the fire.

  9. Over the weekend, a local newspaper (in Silicon Valley) wrote a story about the KSR case which began with a tag line about “putting the brakes on a run-away patent system.”

    Now one can only wonder who that propaganda is aimed for. Even if the Supremes figure out that this is not a patent case but rather just (merely) a summary judgment case where there were genuine issues of material fact and thus the CAFC correctly remanded, those who wish to further “Deform” our 200+ year old patent system and “harm”-in-nize it with the inventor unfriendly laws of other corporate state/nations will have scored a point. “They” will be staged and ready to run to Congress to pedal for further Deform because an out-of-control Supreme Court has not “put the brakes on a run-away patent system”.

    That should be one “obvious” thing that falls out from the KSR case.

  10. In response to “anonymous” posting on Nov 20 a disapproval of the KSR reply brief: I have just read through it and was dismayed, but not surprised. I hope to heck that none of my writing ever comes off like the KSR brief. It reads like somthing that had no editing, and I actually found it difficult to get through, as I imagine will the Supremes.

  11. Ahh.. In other words, the fallacy of my argument is its over-reliance on logic?

    Thus, the black hole of this “Hindsight Zombie Zone” must fall within the US Supreme Court building. But is the event horizon centered around Stevens, or Breyer?

  12. P.A.

    You don’t seem to understand.
    We no longer live in a world of sights, sounds and rationality, a world in which improvidently granted summary judgments are routinely remanded. We have entered that strange and forbidden zone beyond the outer limits of that which we took for granted. We have fallen most welcomingly into the Hindsight Zombie Zone.

  13. Sorry for coming to the party a few days late, but:

    Dennis said:
    “Instead, the CAFC’s approach has allowed mere aggregations to be patented so long as there is no evidence suggesting that the elements be combined.”

    What “mere aggregations” has the CAFC allowed to be patented? Is this a reference to the Teleflex patent? A more careful reading of the patent reveals that the claim scope includes: “said electronic control (28) being responsive to said pivot (24)”. Although it would be normal for an EC to be responsive to A pivot, the claim refers to a specific pivot by use of the modifier “said”.
    Therefore, the invention narrowly covers not a “mere aggregation” of an EC w/ an adjustable pedal, but a specific structural assembly requiring the EC to be attached in a specific way.

    I thought the briefs laid this point out pretty clearly, actually. In particular, the Petitioner’s, U.S., and Respondent’s briefs illustrate this point beautifully. The Petitioner’s argument would have placed the EC on the prior art assembly at a different location from the U.S.’s argument. The Petitioner’s placement would have been inoperable, and the US’s placement would not infringe (and hence cannot anticpate) the claim.

    Based on this, my response to Brad’s question: “Who thinks the writ should be dismissed as improvidently granted inasmuch as all that that the Court of Appeals has done is to remand for further findings?” is a resounding YES.

  14. Dear pds,

    One piece of sagely advice before you file all those appeal briefs with your arguments re “teaching away”: get a Rule 132 on record with an expert testifying how and why the reference teaches away. Opinion of counsel is not “evidence”. The BoPAI can easily rule that in their opinion, the reference may explicate some drawbacks of the path chosen by your inventor but they do not teach away, they merely define it as a less attractive road to take, but nonetheless it is an “obvious” road to take.

  15. MM:

    After reading your posts, particularly the ones dealing with pharmaceutical patents, I am beginning to understand your position.

    Based upon several of your prior comments, it appears that you practice in the chemical/bio-tech arts, and I think your practice area has colored your perception of the issue.

    Although I don’t practice in either art, I know those who do, and it is my understanding that practicing in the chemical/bio-tech arts is very different than practicing in the mechanical/electrical arts. Not only is the technology very different, but how obviousness determinations are made are very different, and the people making the obviousness determinations are different. I’m not going to get into why I believe this (for sake of brevity), but I think obviousness determinations are harder in the chemical/bio-tech arts, but the level of skill of the examiners’ making this determinations is, on average, higher than the level of skill of examiners in other arts.

    You write: “does hindsight cause such great problems that we should require Examiners to pretend they are morons and make them search for citations to support every fact referred to in their Office Actions.”

    For the mechanical and electrical arts, the simple answer to the question of “does hindsight cause such great problems” is: Yes. Unlike biotech and the chemical arts, in which you may claim an absolutely novel compound or product, the electrical/computer and mechanical arts are full of combinations of known elements. In fact, you would have to try really, really, really hard to find a claim that has a completely novel singular element.

    If an examiner is not constrained by hindsight, applicant’s disclosure provides the examiner the perfect roadmap to develop a “logical argument” with which to reject the claims. Also, the function of and benefits associated with a particular is very well known. As such, it is very easy to put together a rejection in the electrical/computer and mechanical arts.

    I would be much more comfortable giving an examiner this additional “tool” to rejects claims if my experience was that the examiners used the tools they currently have properly. However, in my experience, this has not been the case. I don’t blame them … they are put into a situation where production is valued over quality and the training appears to be minimal, at best.

    I know that different art groups attract different caliber of examiner’s, and you may be practicing before an art group with very experienced and/or very talented examiners. For this reason, you may have more confidence in an examiner’s ability to properly apply a more obviousness standard that is more generous in terms of requiring less factual support. However, when I get an office action, the changes are better than 50-50 that I get an examiner with less than 2 years of experience, and in my shoes, having my client’s application judged by someone with that type of experience is a scary situation.

    If I could practice straight with the BPAI and skip the examiners completely, I would have no problem with the approach that you are advocating. In such a situation, there is actually a chance one of my legal arguments would be considered or even understood. I assume under your approach in which the burden is placed on inventors “to prove that an examiner’s allegedly unreasonably illogical wrong in fact unreasonable and illogical,” that applicants should be able to argue, for example, teaching away or indicia of non-obviousness (actually, teaching away is an indicia on non-obviousness). However, I haven’t had an indicia of non-obviousness argument be successful in several years. Even my simple-to-understand “teaching away” arguments are repeatedly ignored by examiners.

    The fact of the matter is today the vast majority of the arguments I make are unrelated to the TSM test, but instead, assert that the examiner’s analysis is unreasonable, illogical, and poorly explained. Given the huge stack of files sitting on my desk waiting for appeal briefs to be drafted, I know that these types of arguments go in one ear and out the other ear of the vast majority of examiners that I work with.

    Anyway, the main point on my post is what I alluded to at the very beginning, which is step out of your own shoes when evaluating other people’s opinions and try to understand their point of view and experiences before bombarding them with snide comments.

  16. Hey, Smack,

    I hope you are not practicing patent law – I would be very sorry for your clients, unless, of course, they are the members of the Coalition for Patent Piracy…

    Being proud of your undergraduature project in ASIC ?
    Here is another buzzword for you: FPGA
    Go study little boy.

    “It may not if you’re trying to patent a NOVEL algorithm that actually accomplishes something. But the thing has to run on some kind of hardware, right? I may try to invalidate your patent by pointing out that you did not disclose the particular hardware
    with associated configuration required for best mode. Again, I’ll let you spend more of your money due to your ignorance.”

    Ha-Ha-Ha-Ha-Ha

    What an comment !
    Good luck with trying to invalidate my patent. Why do you think I cited all the non-patent references from different fields ?

    Best mode ???
    vacuum tubes … transistors… DSP, ASIC, FPGA… optical computer, quantum computer …. ?
    Boy, you really give some bad advice to “software” inventors

  17. “By the way, has anyone noted that Mark Lemley, who was on the petition for cert in KSR has now changed sides?”

    Someone noticed that a few weeks ago. I forget who.

    “It seems questions concerning bias have been raised in his mind based on studies along the lines of line of the simple study done by Dennis with his law students.”

    Sigh. Nobody ever doubted that “hindsight bias” exists. The aphorism “hindsight is 20/20″ acknowledges this basic undisputed fact of human nature.

    The issue (once again) is: does hindsight cause such great problems that we should require Examiners to pretend they are morons and make them search for citations to support every fact referred to in their Office Actions?

    Or should inventors who seek a 20 year exclusive right to their inventions be forced to prove that an Examiner’s allegedly unreasonable illogical wrong is in fact unreasonable and illogical?

    Because I do not believe that putting the burden on inventors will cause innovation in the United States to grind to a screeching halt or cause blue collar inventors to kill themselves, I favor the latter approach.

  18. By the way, has anyone noted that Mark Lemley, who was on the petition for cert in KSR has now changed sides?

    Someone noticed that a few weeks ago. I forget who.

    It seems questions concerning bias have been raised in his mind based on studies along the lines of line of the simple study done by Dennis with his law students.

    Sigh. Nobody ever doubted that “hindsight bias” exists. The aphorism “hindsight is 20/20″ acknowledges this basic undisputed fact of human nature.

    The issue (once again) is: does hindsight cause such great problems that we should require Examiners to pretend they are morons and make them search for citations to support every fact referred to in their Office Actions?

    Or should inventors who seek a 20 year exclusive right to their inventions be forced to prove that an Examiner’s allegedly unreasonable illogical wrong is in fact unreasonable and illogical?

    Because I do not believe that putting the burden on inventors will cause innovation in the United States to grind to a screeching halt or cause blue collar inventors to kill themselves, I favor the latter approach.

  19. S:

    Of course you are correct that there are “arts” cutting across many technical fields of endeavor. My abiding concern is because there are many that do not.

    By the way, has anyone noted that Mark Lemley, who was on the petition for cert in KSR has now changed sides? It seems questions concerning bias have been raised in his mind based on studies along the lines of line of the simple study done by Dennis with his law students.

  20. Slonecker:

    “It seems to me that people are so focused on PHOSITA that they appear to overlook the additional requirement that such a POHOSITA is a mythical person having such skill in the subject matter to which an invention relates.”

    Good point. But I submit that the modern PHOSITA, at least in my art, cannot jusifiably be confined to a particular classification. My first assignment with satellite transponders required me to deal with electrical [ICs, firmware, etc.] and chemical [extraterrestrial exposure] areas. Even the PHOSITA equation on the inventor side is hard to define when you have joint team efforts from different art areas submitting a whole invention. How would you define a fair PHOSITA in that instance in order to give a fair assessment?

  21. vocoder:

    “… I may be somewhat ignorant in patent law…”

    Understatement of the week. SMASH award goes to Cliff in response.

    “… (although I wrote my own method and apparatus claims for my already issued “software” patents)…”

    Oh boy, I hope you get what you deserve. What’s so special about your “software” patent? I’ve already indicated that SW/HW are interchangeable — remember ASIC?

    “… but I am certainly NOT ignorant
    in technology issues like software and hardware design…”

    Kind of hate to tell you this, but you’re not special in that regards — many more articulate inventors/engineers can probably run circles around you. Truth is, you need an experienced attorney to help you write good claims that are not only broad in coverage but easier to ENFORCE. A even better attorney would work with your marketing/strategic department to pinpoint the features of your “invention to patent. Did you ever wonder why you wrote two sets of claims — method and apparatus? I’ll let you spend some of your money to figure that out.

    “… I can tell you this: hardware DOES NOT matter…”

    It may not if you’re trying to patent a NOVEL algorithm that actually accomplishes something. But the thing has to run on some kind of hardware, right? I may try to invalidate your patent by pointing out that you did not disclose the particular hardware
    with associated configuration required for best mode. Again, I’ll let you spend more of your money due to your ignorance.

    “Obviosness rejection is the last resort of every patent examiner, when he can’t come up with something else.”

    Hahaha… actually I enjoy your “refreshing” viewpoints.

    “In my case, the “software” invention was in the well-estasblished field (DSP), but was heavily borrowing from some esoteric sciences like chaos theory…”

    So? Signal processing is about modeling the real world. Looking to chaos theory, which is not “esoteric”, as models of a “chaotic” real world makes you special? Don’t try to impress me with jargons.

    “… Half of the references (12 non-patent refs) I cited in IDS were in DSP and other half in chaos thery, and hence mostly unreadable not just to an average DSP pro, but even to the majority of university professors in DSP field…”

    Pleeeease… get a hold of yourself.

    “A short personal interview with my attorney by my side quickly fixed the misunderstanding: all claims were allowed immediately and I added another 12 claims even broader than the original ones.”

    Hate to tell you this again, but your case is sadly typical. A lot of the debate here is about bad patents being issued by overworked examiners. Are you also ignorant of the reexamination process and recent rulings concerning injunctions? Again, I’ll let you spend more of your money to find out.

    “I will be a person much hated by all DSP software developers when I start enforcing my patent 5-10 years from now…”

    From the contents of your post, I believe all DSP software developers can sleep soundly.

  22. Joe wrote:
    “I’m no patent lawyer but I think you should maybe read up on the doctrine of laches…”

    Screw the doctrine of laches …

    I am in no position right now to find out who uses the algorithm without proper license.
    It’s awfully hard and expensive to get inside of those DSP chips in consumer products.
    But sooner or later the truth comes out…
    It always does
    For now I am actually trying to build something based on the patented algorithm.
    It doesn’t mean I will tolerate willful infringement of my patent when I become aware of it…

  23. “I will be a person much hated by all DSP software developers when I start enforcing my patent 5-10 years from now…”

    I’m no patent lawyer but I think you should maybe read up on the doctrine of laches…

  24. Cliff wrote:
    “Sorry, but I’m going to have to give you a 103 rejection on this statement. It would be entirely obvious to a PHOSITA upon reading the prior art posts in this thread.”

    I take it as a joke.

    In fact, in certain areas of high-tech (including the area where I work) getting “103 rejection” in the First Office action is a great honor: in 95 % of all cases examiner routinely rejects ALL (!) claims based on anticipation, not obviouness.
    Obviosness rejection is the last resort of every patent examiner, when he can’t come up with something else.
    In my case, the “software” invention was in the well-estasblished field (DSP), but was heavily borrowing from some esoteric sciences like chaos theory…
    Half of the references (12 non-patent refs) I cited in IDS were in DSP and other half in chaos thery, and hence mostly unreadable not just to an average DSP pro, but even to the majority of university professors in DSP field.
    Guess what examiner did in order to give me 103 rejection of main claims: he found 2 common steps in one of those unreadable references I cited (I give him credit for that – it was very very hard: the reference talked about analyzing chaotic chemical reaction and it wasn’t relevant in any way to the field of my invention – DSP) and the rest of the steps in some commonly known DSP patents. Based on that, he gave me 103 rejection of the broadest independent claims, while allowing 80 percent of claims.
    A short personal interview with my attorney by my side quickly fixed the misunderstanding: all claims were allowed immediately and I added another 12 claims even broader than the original ones.
    The whole saga took almost 5 years: more than 4 years to get First Office action and 6 month for the patent prosecution itself.
    The patent term adjustment is 970 days
    Can any of you do better than this ?

    I will be a person much hated by all DSP software developers when I start enforcing my patent 5-10 years from now…

  25. Mr. Slonecker

    I don’t see any elistist bias in the debate.

    One of my acquaintances invented, patented and successfully marketed a simple tool and I have no problem with his entitlement to his patent even though he has grease under his fingernails.

    Software developers who come in for a lot of the criticism are generally well educated, white collar, types.

  26. Not quite sure how to say this, but not every client I have represented has a college education or a postgraduate degree. Some are ordinary people who perform work in areas other than esoteric arts. Some get grease under their fingernails. Some wear overalls to work, not to mention steel-tipped workboots, etc.

    All the pontification I have read from those academics who keep harkening back to the basic premise that only inventions that promote the useful arts are deserving of protection under the patent laws seems to be directed to an elitist view of what is an art that should be promoted and an art that should not. Whether or not these academics care to admit it or not, our patent laws do not draw a distinction between “good” arts and “bad” arts. One who creates what many might consider to be a trivial invention is no less deserving of protection under the law than one who happens to create a breakthrough that will change the life of mankind forever.

    In so many of the briefs supporting the Petitioner in KSR I see what suggests a bias in favor of “white collar” inventors over those who happen to wear “blue collars”. I have represented clients across the entire economic and “technology” spectrum and can see no reason in law that justifies this bias. ASICS, nanotechnology, pharmaceuticals, etc. all play an important role in our daily lives. Then again so do devices as mundane as hand and yard tools, shoe holders, kitchenware, etc.

    To those who raise a hue and cry for “raising the bar”, it might help to reflect for a moment on just what that means across the entire spectrum of inventors and arts.

  27. vcoder wrote:

    “I may be somewhat ignorant”

    Sorry, but I’m going to have to give you a 103 rejection on this statement. It would be entirely obvious to a PHOSITA upon reading the prior art posts in this thread.

  28. Michael Slonecker wants to reduce the obviousness requirement even further and expand the range of what can be patented.

    The literal statutory obviousness language is already too lax since it is tied to the median practioner (say the third quintile) with the result that an invention which was obvious to a practioner in the top 40% of practioners but not obvious to the middle 20% would be patentable. Now Mr. Slonecker wants the knowledge of that practioner limited to within narrow pre-existing technical categories even though we know that a great deal of invention arises from borrowings and synergies between different areas.

  29. S:

    “Thus, you advocation of confining searches to a classified/related area requires the presumption that a perfect classification system exists. If you can think of a better classification system, patent it.”

    Actually, I am not advocating limiting searches in the manner you mention. Mine is a much more general observation that the classification system employed by the PTO seems to have been entirely overlooked in the quest to define a standard consistent with all of the specific language set forth in 103. It seems to me that people are so focused on PHOSITA that they appear to overlook the additional requirement that such a POHOSITA is a mythical person having such skill in the subject matter to which an invention relates.

    Looking at Sakraida as but one example, can it be gainsaid that a person who creates a new article (a barn) would reasonably be expected to search arts dealing with hydrodynamics? Yes, many persons would readily expect that the release of a “tsunami” on the floor of a dairy barn would clean the barn floor quite nicely in place of a hand help hose, but is not the question actually one of what would a person having ordinary skill in the “art” of building and cleaning dairy barns have turned to for trying to create a solution to a perceived need? In my view Sakraida is a fairly good example of how persons remote from the problem faced by the inventor and well versed in other arts were inclined to use hindsight once the problem and its solution was explained. Frankly, I have always believed that the SCOTUS overstepped the boundaries it established in Graham by engaging in the very hindsight bias it has stated is not proper. After all, an invention is to to be viewed as a whole, and not as a piecemeal aggregation of indivicual elements that may or may not have been readily apparent to one trying to solve the problem in the first instance.

  30. Smack wrote:
    “Regarding the patentability of vocoder, if the algorithm and tangible hardware are both prior arts, then it is NOT patentable. However, if you take the original algorithm [derived from original analog circuitry or patented method claim] and implement it on novel hardware technology, then it could be patentable in at least the following ways: first, it would obviously be patentable due to the hardware technology where the algorithm is just contents that needlessly further limits the invention; second, implement the algorithm in the form of the new hardware technology [e.g., perhaps new material property allows circuitry to differ from original].”

    This is just ignorant BS.

    I may be somewhat ignorant in patent law (although I wrote my own method and apparatus claims for my already issued “software” patents) but I am certainly NOT ignorant
    in technology issues like software and hardware design.
    I can tell you this: hardware DOES NOT matter.
    It only matters from practical point of view when you are done with inventing and designing your groundbreaking “thing” purely in software (e.g. speaker-independent speech recognition system, face recognition system, biometric identification etc.) and then want to put the thing in production. Then, of course, you need to think about computational resources required, power consumptuion, size, weight, cost etc.
    From the patent law perspective it’s all the same: you just put a method claim on your algoritm and an apparatus claim on any computing appliance executing the steps of your algorithm.
    No need whatsoever to devise or mention any specific harware involved : this would only make your patent less general and less valuable.

    Vocoder was just an example to make my point: if some new invention (like vocoder) comes out today it will be described as a software algorithm (just like the modern version of vocoder is described in those official ITU-T standards for things like GSM) and not as a hardware circutry.
    Hardware design is completely separate issue, don’t you get it now ?

  31. “first, it would obviously be patentable due to the hardware technology where the algorithm is just contents that needlessly further limits the invention”

    Clarification: software contents that don’t produce “a concrete and tangible result” is not patentable. Thus, the contents can’t be mere multimedia — e.g., you can’t patent a cd with music on it.

  32. Slonecker:

    “… Perhaps someone can articulate a cogent reason why the system on the patent side of the aisle should be excluded from helping to identify the prior art…”

    Let me take a shot at this: simply because the classification system is not perfect and cannot accomodate increasing overlapping technology. An example: an application of a computer system may contain subject matter of network, memory, processor, power/clock/encryption [which could involve totally different classified areas because problems associated with it has been dealt with for a long time], i/o controls, etc. Where would you classify such a beast? As far as I know, examiners classify issuing patents according to the final claims. So if one app claims memory and the other claims encryption, they would be classified under different areas. Obviously, another app that claims elements found in both aforementioned would require searches in both. Thus, you advocation of confining searches to a classified/related area requires the presumption that a perfect classification system exists. If you can think of a better classification system, patent it.

  33. stepback:

    “…BTW smack, if you are under 40 years of age, I was programming computers and building them before you were born. Does the number 4040 ring a bell? How about the IBM 6050?…”

    What’s your point, grandpa? Are you going to tell me next about the good old days when you had to walk ten miles to your office and solder circuits with a match?

    Let’s just hope the PTO is allowed to use some common sense and get it right this time.

  34. vocoder:

    “… What is the difference between a “black box” using some kind of analog circutry and another “black box” using a general purpose computer running software program, as long as the inputs and outputs are the same ?”

    Of course, any PHOSITA would know that any software can be transformed into a circuit — ever heard of ASIC?

    YOU are obviously quite ignorant in patent law. Here’s a basic question for you: is there difference between a method and an apparatus claim?

    Regarding the patentability of vocoder, if the algorithm and tangible hardware are both prior arts, then it is NOT patentable. However, if you take the original algorithm [derived from original analog circuitry or patented method claim] and implement it on novel hardware technology, then it could be patentable in at least the following ways: first, it would obviously be patentable due to the hardware technology where the algorithm is just contents that needlessly further limits the invention; second, implement the algorithm in the form of the new hardware technology [e.g., perhaps new material property allows circuitry to differ from original].

  35. A while ago I made a short post including, inter alia, a reference to the PTO’s classification system (for which there is a detailed 61 page manual). When I inquired if the classification system should have a bearing on 103 as an indicia of relevant prior art I received as a comment:

    “…Why would we want to place yet another artificial restraint on the Examiner’s ability to articulate a rejection?”

    As one who has prosecuted many matters on the other side of the PTO aisle, it is clear that classifications play an extremely important role when it comes to the allowability of a trademark/service mark. Perhaps someone can articulate a cogent reason why the system on the patent side of the aisle should be excluded from helping to identify the prior art “…to which said subject matter pertains.” I find it difficult to understand how it is that a part of the statutory mandate just quoted would create yet another artificial restraint given the PTO’s perceived need to implement a classification system to distinguish one “technology” from another.

    I cannot help but wonder what the general tenor of 103 discussions would be like if the portion I have quoted from 103 was actually taken into consideration as the statute requires? Perhaps some who decry the issue of “bad” patents might see the patent process in a somewhat different light.

    Time and time again the federal courts, including the SCOTUS, have articulated the need to extend deference to the expertise of federal agencies tasked with the implementation of federal law. Given over a century of the PTO using a classification system as a perceived necessity for the execution of its duties, why is this not a factor to be considered when questions under 103 are presented?

  36. Others have mentioned the Amazon One-click patent. Amazon got a preliminary injunction against Barnes & Noble for infringement of the one-click patent. B&N then appealed to the CAFC. The CAFC vacated the preliminary injunction judgement and remanded. See 239 F.3d 1343 (Fed. Cir. 2001).

    In the CAFC opinion, the court held that Barnes & Noble raised substantial questions relating to the validity of the one-click patent. The court identified several references in the record that could render the one-click patent anticipated and/or obvious, but the court also noted that the burden of proof for the injunction issue is less than that for deciding invalidity. Because the question of validity was not before the court, the patent’s validity was not decided. Still, the CAFC opinion was not favorable to Amazon.

    I believe Amazon settled with Barnes & Noble to avoid a judgement of invalidity of the patent. Amazon gets to keep their patent, although, based on the CAFC opinion, there appears to be grounds to invalidate it if someone cared to spend the money and/or Amazon were to pursue enforcement. Even though the one-click patent is most likely not valid, the patent is still valuable because it has not been held invalid by a court or the PTO, yet.

    As Stepback noted, a re-examination request was filed earlier this year. The PTO has not yet examined the claims. It should be interesting to see if the PTO gets it right this time around.

  37. vocoder

    If, as I set out in my hypothetical, the DSP simply has a digital implementation of the method used on the original vocoder why should anyone get a patent for that?

    I understand you to be saying that a simple transfer of any technique from the analogue to the digital world is patentable. I think that such a patent system is unreasonable.

    I agree that “software” patents should not be separated from other types of patents in setting the applicable test. It is just that software patents seem to be such a fruitful area of unworthy patents. As I said in previous post the Teleflex patent is an example of an unreasonable patent which is not a software patent.

  38. Hey, Joe,

    You are obviously quite ignorant in both patent law and signal processing…
    The question to ask is this:
    What is the difference between a “black box” using some kind of analog circutry and another “black box” using a general purpose computer running software program, as long as the inputs and outputs are the same ?
    There might be some difference as far as size, weight or manufacturing cost are concerned, but NO DIFFERENCE AT ALL as far as patentability is concerned (provided that design is unique and contributes to the progress in the field…)
    This world is becoming increasingly digital – sofware is everywhere, in each and every more-or-less complex device, from your car brakes to your toaster.
    Trying to isolate “software” patents from the rest of the patents is an exersize in futility…

  39. “Joe … Just one example to shut you up:

    A vocoder … was invented …in early 30s.

    At the time it took a whole room filled with some analog electrical curcuits …

    Vocoder is … now digital and takes a tiny area on a DSP chip

    Now, do you say that vocoder is unpatentable if it is implemented as an algorithm for a DSP chip and not as an analog electrical curcuit ?”

    vocoder:

    If the algorithm on that DSP chip is:
    1. a digital implementation of the method used on the original vocoder; OR
    2. a digital implementation of a Fourier transform or any of the other methods of signal compression known to Claude Shannon

    Then no reasonable person (to use your phrase) could believe it is patentable.

    So the question is what is the algorithm implemented on that DSP chip?

  40. Should not the classification system employed by the USPTO have at least some bearing on what is and what is not obvious?

    Geez, I hope not. Why would we want to place yet another artificial restraint on the Examiner’s ability to articulate a rejection?

  41. Why is it that in any discussion of 103 all I have ever seen is interminable discourse on PHOSITA, with no reference to that which follows,i.e., “…to which said subject matter pertains.”?

    In the vast majority (if not all) of the applications I have prosecuted, a 103 rejection typically involves a primary reference in a generally relevant class, followed by one or secondary references in separate and distinct classes (some of those classes being so unrelated that I had to wince). Should not the classification system employed by the USPTO have at least some bearing on what is and what is not obvious?

  42. vocoder

    “All I want to say is that there is no such thing as “software” patent.
    Trying to create some artificial distinction will only get you in trouble.”

    Yes, I see what you are driving at. I do wonder, though, if there are any relatively recent patents out there that recite old compositions with the only novel feature being a recitation of “software” for performing [insert function] (literally – “software” — without any limitations wrt to any specific code/algorithm) or, similarly, a “computer” for performing [insert function]. According to the MPEP’s guidelines, such claims should NOT issue.

    But I wouldn’t be surprised if dozens of such patents have issued in the last, say, 7 years. I don’t know of any patents like that offhand and I would like to believe that no such patents have issued …

  43. Malcolm,

    All I want to say is that there is no such thing as “software” patent.
    Trying to create some artificial distinction will only get you in trouble.

    As far as vocoder is concerned, think of it as a black box between 2 ends: speech signal gets compressed on one end and then decompressed on the other end.
    The black box can have a bunch of electric curcuts inside, or it can have a DSP chip running some code, or even a Pentium PC who cares ?)
    Does the fact that some software is used inside the black box affect the patentability of a device?
    Certainly not.
    Same with other “software” patents.
    RSA patent: message gets encrypted on one end and decrypted on the other end.
    the thing is digital, but can in principle be implemented as a mechanical device (ever heard of mechanical computers )
    People who call it unpatentable “because it’s just math” are clueless or dishonest, to say it politely…

  44. Malcolm,

    I was referring to patents that have a relatively small aha factor and are thus arguably patentable. I was not referring to “crap” patents that pretty much everyone thinks were issued incorrectly.

    (4) was indeed an attempt to inject a little humor into this discussion.

    As for (1), I don’t think that you can exclude the entity from “the public,” in terms of benefits for issuing a patent. If this is the case, why issue any patent as it serves the needs of the individual over the public (socialist!).

    Evidence of a non-increase in costs or time is difficult to establish, but the example I gave previously may serve somewhat. In addition, the Amazon “one-click” patent saves an aggregate large amount of time. I will try to come up with a cross-breeding example later (or someone could add something to this discourse).

    It is pretty easy to show bad patents. It is much harder to prove that a patent with a small aha factor was worth protecting.

    Happy Turkey Day.

    P.S. I forgot 5) founding a well-found sense of relief that something in the federal government is working.

  45. “BTW smack, if you are under 40 years of age, I was programming computers and building them before you were born.”

    Wow, you are so cool.

  46. do you say that vocoder is unpatentable if it is implemented as an algorithm for a DSP chip and not as an analog electrical curcuit ?

    Categorically? No.

    One question is: why was the desired effect achieved by the alleged inventor’s combination of chip and algorithm unexpected by one of skill in the art?

    Let’s face it: a whole boatload of “nanotechnology” patent applications is being filed at the PTO right now. The gist of the argument to the the PTO to justify the patentability of these applications will boil down to this unremarkable assertion: “But my invention is smaller.”

    You’ll pardon me for not being terribly excited. You see, I’m already advising my clients that the nanotechnology field is too crowded. Picotechnology is where it’s at now.

  47. Someone asked what the details are In re Amazon One-click. It took a little digging to unearth a web page that isn’t full of emotional venom and zero facts. So just to remind people, Barnes & Noble, a power house bookseller challenged the One-Click patent in a real court and ended up “settling” the case in private. So we won’t know from that what the deal was because usually both parties agree to hide the truth from the public (as a public service you know)

    However, someone else apparently instituted a re-exam in May 2006. Re-exams are open to the public & instructions on how to read the Public PAIR files are provided at the following web site:
    link to igdmlgd.blogspot.com

    I have not myself dug deeper than that & invite others to do so because I got to get back to billing some poor client on his “obvious” invention –everything is obvious. Even discovering the above web site. So why didn’t any of you brilliant CS majors do it before me? Was it too obvious? BTW smack, if you are under 40 years of age, I was programming computers and building them before you were born. Does the number 4040 ring a bell? How about the IBM 6050? (not sure on that last number, but it was a mini. i was doing mini’s before micro’s came out. so yes, i guess i’m ancient. but guess what? I also have a feel for how the state of the art developed and what people of ordinary skill were thinking in the 1960′s about the role that computers would play in society. we’ve come along way baby and none of it was “obvious” back then –not even spread sheets or word processors or web browsers or blogs.)

  48. Tony,

    Numbers (1) and (4) are not fairly considered benefits to the public in this case. Maybe you were joking and I didn’t get it.

    As for (2) and (3), let’s look at them more closely:

    “2) to the public — reducing the time or cost to a particular product or service.”

    Bad patents contribute significantly to the reduction of time and costs for … what exactly? Maybe an example would help.

    “3) to the public — cross-breeding of ideas in different industries.”

    Oh, come on now. This is a “big benefit” of allowing bad patents to issue? You think “cross-breeding of ideas in different industries” depends on bad patents in a remotely substantial way? Data please.

    Let’s cut to the chase: there are zilcho zip nada “big benefits” to the public that flow from the issuance of crap obvious patents. It’s silly to pretend otherwise.

  49. Ok, Joe and other anti-swpatent activists

    Just one example to shut you up:

    A vocoder (voice compression apparatus) was invented by Homer Dudley of Bell Labs in early 30s.
    A wonderful and extremely useful invention patentable by all standards (including yours :)

    At the time it took a whole room filled with some analog electrical curcuits to implement a functional vocoder.

    Fast forward 70 years…

    Vocoder is now an essential part of every cell phone in the world.
    Only now it is digital and takes a tiny area on a DSP chip along with other wonderful inventions which
    made this thing (cell phone) possible.

    Now, do you say that vocoder is unpatentable if it is implemented as an algorithm for a DSP chip
    and not as an analog electrical curcuit ?

    Doesn’t make any sense to any reasonable person…

  50. Malcolm,

    To answer your question regarding benefits to the public and society, I can see a number of potential benefits:

    1) to the particular entity that invented/ is assigned/is licensed to use the technology — making money off of their innovation.

    2) to the public — reducing the time or cost to a particular product or service.

    3) to the public — cross-breeding of ideas in different industries.

    4) to the attorneys not the least of which — making loads of money thinking about these issues when writing the applications and licensing the patents, and, most importantly, tons of $$$ litigating the really important ones. For this case, see the trickle down theory of economics for the full effect to the public.

    By now, the readers of the various posts here are fully aware of the problems involved in TSM. Still, no one has yet convinced me that given the PTO has the proper resources, TSM is a failure and should be replaced with a substantially different test (or what that test would be). A corollary, is: what is the aha factor in an invention to prove that the invention deserves a patent?

  51. Tony

    “I also recognize the big benefits to the public by allowing these arguably obvious patents to issue. ”

    Please name one of these “big benefits.”

  52. You seem to be arguing for a strict test which would clamp down on patents towards the goal of reducing “bad” patents down to zero, even if it means “good” patents go unpatented.

    Mighty Frederik continues to strike out. I’ve never advocated for a “strict test.” That’s the “other side”‘s game. I’m advocating that Examiners be free to use logic and reason when deciding when a claim is obvious and unpatentable.

    “That’s your trade-off but it’s not everyone’s.”

    And it will never be “everyone’s.” But guess what? In spite of the best efforts of some groups to wage a disinformation campaign based on fear-mongering (“innovation will cease if we fail to adopt a strict TSM test!!”), at the end of the day most Americans will agree that the “trade-off” I favor is preferable to the current game.

    As I’ve noted before, people understand that you can’t always get what you want. If IBM or Merck or Ford or Richard Small file a patent application and it isn’t granted, nobody except IBM or Merck or Ford or Richard Small gives a rats ass why it wasn’t granted (unless some fundamentalist at the PTO had a religious objection to the subject matter).

    But if IBM or Merck or Amazon or Richard Small gets a patent that they should NOT have gotten and starts jerking people around or threatening to jerk them around, it’s a real problem and people are properly annoyed by it.

  53. “The car, the airplane, and the jet engine are but a few examples of new technology that was independently developed around the same time. Surely not all inventions relating to these developments are obvious.”

    Quite so, but the use of an internal combustion engine to drive a car or an airplane were obvious and were inevitable once the gasoline engine as we know it was invented. The method devised by the Wrights for control of an airplane was not obvious but moving from their system of flexing the wings to hinged ailerons was then obvious.

    Many inventions occur not because of some insight or even much hard work but because they have been made possible by an enabling technology and once that technology is in place then the inventions will follow naturally without the need for incentives from patents.

  54. “When trivial innovations which would have been arrived at within days, weeks or months independently with minimal effort and in the ordinary development of a rapidly evolving field can be patented and locked up by someone for twenty years there is something seriously wrong.”

    I don’t think there’s a relationship between the timing and simultaneousness of new developments and obviousness. The car, the airplane, and the jet engine are but a few examples of new technology that was independently developed around the same time. Surely not all inventions relating to these developments are obvious.

    It might be that obvious developments come out of the blue more often than not, since others in the field may have long ago wrote them off as too obvious to patent or just silly little ideas.

    Also, what does minimal effort mean? Wouldn’t an effort requirement preclude a patent on the cliched “eureka” type invention? Say I combine a spoon with a fork and everyone converts from separate spoons and forks and even chopsticks to use the spork. That’s a one-paragraph disclosure, one claim, and one figure. Effort was minimal, but the technology was arguably not obvious.

    I think we need to better define trivial innovations.

  55. smack,

    Actually, the position I am supporting is that anyone can find a problem with any patentability bar.

    I am not sure where the proper bar is. Although I recognize the potential for “big harm” to the public, I also recognize the big benefits to the public by allowing these arguably obvious patents to issue. I am thus not sure where the balance between potential harm to the public (business) and benefit to the public needs to be struck.

    I agree entirely with you that:
    1) The PTO needs much more resources to deal with applications (more time and internal oversight). This is Congress’ fault.

    2) Secondary considerations should play a large role in determining whether or not these patents issue.

  56. Regarding the low-hanging fruit analogy:

    “See, that’s the thing, if you invent something first, and file your application, you get the patent. It doesn’t matter if someone else would have discovered it at a later date. Has there ever been an invention which would never have been invented at some future point in time?”

    This might be the way that some people want the system to work, but it overlooks the ‘obviousness’ question that this thread is about. Even if the ‘inventor’ and his attorney thinks he invented something, Congress clearly intended that no patent issue if any of his peers could have routinely developed the same solution in the course of normal engineering practice.

    That’s why the low-hanging fruit situation is so troubling to people who make their living from software innovation. Some piece of technology arrives (a gate is opened), and people use it to suddenly explore a new application area (orchard). That’s fine; the land-rush metaphor has been part of American commerce for a long time. First to exploit is first to benefit. What’s not fine is the first person getting to each tree being able to permanently claim it and all descendants of it for a very, very long time in software terms. Being able to exclude others not just from the fruits of a specific development effort (the actual code, system, etc), but also from other _methods_ of achieving the same _result_, is perceived as unfair, counter-productive, and unconstitutional.

    Bob

  57. Tony:

    “Can anyone point to one agency in any branch of the federal (or state) government that gets things right all of the time?
    I think not.”

    You just supported the position that we should err on the side of caution by not issuing obvious patents that do big harm to the public. Currently, the “imperfect” system is more likely to issue “bad” patents than a system that has a higher threshold of nonobviouness. Once an obvious patent gets out there, you know we would need “clear and convincing” evidence to overcome it. Seems like we need to give the PTOs more tools to protect the public.

    As for a better test, secondary considerations should get a better look.

  58. Regarding sheer numbers/percentages argument, just remember the quote popularized by Mark Twain:

    There are three types of lies – lies, damn lies, and statistics

    Can anyone point to one agency in any branch of the federal (or state) government that gets things right all of the time?

    I think not.

    I tend to concur with Fredric that a balance needs to be struck between what is an innovation and what is not. Different reasonable people can have different reasonable ideas on where this line should be drawn. The CAFC (in large part and as a whole) has made what they believe is a reasonable interpretation of the patent laws.

    One problem alluded to in the posts in this and other threads is that innovation tends to occur in small steps rather than huge leaps. Does that mean that these small steps are less worthy for protection than the big leaps? I think not, even if they are arguably “obvious” from what has been done before.

    Further, eventually a number of small steps will get to be a big leap from the original starting point. How far does one have to come to reach a point at which the changes become enough of an innovation to be patentable? Once again, reasonable people can disagree on this point.

    As an example, there are many industries where finding a shortcut or “new” way of doing something saves what would seem to be a miniscule amount of money but winds up being important (e.g. saving <$1 producing a part in the automotive industry). Where should the line be drawn in such an industry?

    If someone has a good, brightline test, please post their idea. Then let the dissection occur!

  59. Mr. Goldstein

    “See, that’s the thing, if you invent something first, and file your application, you get the patent. It doesn’t matter if someone else would have discovered it at a later date.”

    See – I think such a system is unconstitutional and a terrible drag on both the economy and innovation. When trivial innovations which would have been arrived at within days, weeks or months independently with minimal effort and in the ordinary development of a rapidly evolving field can be patented and locked up by someone for twenty years there is something seriously wrong. The easiest place to address that wrong is by dealing with the “obvious” standard by interpreting it to mean that the invention was likely to be arrived at independently within a short period of time.

    An argument that such a standard would be hard to administer does not justify a system which is too expansive in granting patents.

  60. I think most people here would agree that having a court devoted to patent issues [i.e., CAFC] is a good idea. But I have to say that the CAFC has failed because it never took the corrective steps necessary when the TSM was starting to break at the seams. This TSM experiment sounded good at first before common sense was totally abandoned. There were chances when the CAFC could’ve refined the test better — perhaps better defining the boundaries of implicit motivation — looking through my casebook, I see that the CAFC actually reversed PTO’s rejection in the infamous pumpkin bag case. Did CAFC had any common sense to step back and take a look at what they were saying is patentable, and perhaps refine the test? Reminds me of undergrad school when a prof would always remind us to do sanity checks on our model equations because you just can’t ignore common sense as the ultimate determinant.

  61. Good to see Duffy et al. bringing forth the subject of “entitlement” under 103. Perhaps the Court could take a look at the wording of 102 vs. 103 and make a determination of burden.

  62. Joe, “playing the role of the child” is using silly analogies. First we had Mooney with his burning babies, now we have starving ones. I would instead have used Santa’s more innocuous list of “bad” child but if you asked Santa to name them, he could of course. He’s Santa.

    You wrote:
    “With patents the first one to the tree picks the fruit and claims it for his own even though it would inevitably have been discovered by someone else within a short period of time with or without the motivation of patent protection.”

    This displays a rather uncertain understanding of the patent system. See, that’s the thing, if you invent something first, and file your application, you get the patent. It doesn’t matter if someone else would have discovered it at a later date. Has there ever been an invention which would never have been invented at some future point in time? To use your analogy, you want free pickings off the orchard tree even if you weren’t the one to plant it (but you were going to). The patent system does NOT give the public an instantaneous trade off. There is a time lag of 20 years, then they can innovate all they want. Furthermore, if it is licensed, innovation may occur immediately, albeit still by a select few. In a fast evolving field such as software, where commercial considerations change daily, some software developers apparently don’t want to wait. I respect greatly the open source advocates in this field but it can’t be a free for all in any field. There’s no difference from the early mechanical inventions which prevented some others from using that innovation prior to the expiration of the patent term. All fields experience the same “innovation builds on earlier innovation” as you asserted for software, including mechanical inventions. How is your field different (this is an honest question, not a challenge)?

    It’s frustrating at times, sure, but what legal standard exactly do you propose? One has got to differentiate one’s argument between the current obviousness test issue and the general proposition that software patents should not be granted at all or at least under different criteria. Michael’s question to you still remains unanswered.

  63. stepback:

    “… Members of the anti-patent League for Programming Freedom should have warned you to hush up about that one because it backfired on them. It turned out to be a story of an innovation that was far from trivial to implement…”

    Could you give us the specifics? Have you looked at the claims in question? Better yet, have you taken a CS course? or done any shopping with a store account? The problem with software patents, as is the case with this one that is closely associated with business methods, is that they cover materials that is so obvious to even the average joes that they are often not documented. Please read claim 1 and tell me that it is not like a store account automated via a server/client database system. If you want to argue about software patents with people who actually writes them, I suggest you don’t forget the PHOSITA part of the equation.

    Do you know Paul Davis? He is a PHOSITA who actually knows about software — he is one of Amazon’s founding programmers. Even he calls Amazon’s 1-Click patent “a cynical and ungrateful use of an extremely obvious technology.”

    Bottom line is that if you ask a panel of PHOSITAs in software about the 1-click patent, I think everyone will tell you that it is OBVIOUS. Not everything would be obvious to PHOSITAs because of hindsight — I would agree with Joe that the RSA patent would not be obvious and worthy of patenting. Hindsights may occur, but there is always the secondary considerations to bring worthy patents that “promote the progress of science and arts” to the public. However, issuing obvious patents hinders innovation as Joe has demonstrated.

    It may be difficult for a non-practitioner to grasp, so go get a CS degree and try to develop some software and when you start running into the patent thicket, then maybe you’ll start understanding why software patents may be a different beast.

  64. … “I find it hard to understand how anyone could justify patents on … or “One click” as inventions worthy of the grant of a state monopoly.”

    Dear Joe Smith,

    You are “obviously” (pun intended) a neophyte in the area of patent law. This site is mostly visited by Patent Examiners and Patent Attorneys. Amateurs are of course welcome also. This is a great place to learn about leading edge issues in Patent Law.

    The give away to your lack of sophistication in this area (no put down intended) is your persistent reference to the Amazon One-Click case. Members of the anti-patent League for Programming Freedom should have warned you to hush up about that one because it backfired on them. It turned out to be a story of an innovation that was far from trivial to implement. Some things “sound” easy. However their realization can be quite difficult. When the Amazon One-click case finally got to a real court rather than the naive court of public opinion, evidence came out that was quite embarassing to the critics of One-Click. They quickly receded into the cesspool from whence they came with their complaints about One-Click.

    Yes, many patents are granted for things that in “hindsight” seem like they should be obvious. But that is your mind playing tricks on you. Once something becomes ubiquitous and “familiar”, you feel like it’s been there forever. Consider a very young or new member of your family. Doesn’t it “feel” like they’ve been around, well, since time immemorial? Logic tells you it’s not true. But the human mind is easily fooled by the familiar.

  65. Malcolm, I wrote you implied I was “ducking the issue”, you disagreed, saying I was “running away” from the issue. Gee, let’s check the thesaurus.
    Your knee jerk reaction to simply argue with me doesn’t lend you any weight in your remarks, some of which are worth discussing.
    The fact remains that percentage is important. Like car accidents and plane crashes, you cannot avoid a few patents being granted which arguably are obvious (please let’s drop that “bad” adjective, and writing “bad, obvious patent” is rather redundant). But statistically, air travel is still the safest. The sheer volume of anything will correlate to the sheer volume of its margin of error but that doesn’t mean the system is flawed. One can’t escape the fact that obviousness will always be a judgment call, regardless of whether it’s a matter of law, since one needs to ascertain who the PHOSITA is, what he would know at a particular time, and what he would find obvious (i.e. easy to solve). Remove the TSM test and you think this effort will lose the subjectivity? It will in fact increase.
    You seem to be arguing for a strict test which would clamp down on patents towards the goal of reducing “bad” patents down to zero, even if it means “good” patents go unpatented. That’s your trade-off but it’s not everyone’s.

    As to the attention of the public, it’s the litigation in, for example, the Blackberry case which has drawn the scrutiny these days. Calling the TSM test the bogeyman doesn’t make it the culprit. I repeat, the TSM test is nearly 25 years old yet the way it’s told here, it’s new and thus the reason behind the ballooning of obvious patents. For every Halloween pumpkin bag today there’s an Easter egg bag from 50 years ago.
    One also cannot avoid the issue of new fields, such as biotech and software, which created new problems for examiners.

  66. Mr. Stonecker

    The problems with software patents are well canvassed on the Web.

    One key problem with software is that it is a large and ever growing orchard of low hanging fruit. With patents the first one to the tree picks the fruit and claims it for his own even though it would inevitably have been discovered by someone else within a short period of time with or without the motivation of patent protection.

    A second problem is that software innovation builds on earlier innovation. Non-trivial software involves hundreds of elements – every one of which is potentially patented.

    A third problem is that software is best when it conforms to standards. The assertion of patent rights (e.g. on the GIF format) has held back the development of standards.

    Things have gotten so bad in software that it has been said that it is impossible to tie your shoes without infringing someone’s patent. The result is that patents slow down rather than accelerate software innovation.

    It may not be every software patent that is bad but I find it hard to understand how anyone could justify patents on “Buy it now” or “One click” as inventions worthy of the grant of a state monopoly. I find it hard to understand how anyone could defend a system which granted the patent to Teleflex which is the subject of the KSR case.

  67. JS:

    Ignoring the pejorative term “bad”, just what is it about “software” (whatever that means) patents that creates such animus? Is it that some feel copyright is all you need, and that patents and software should thus not be used in the same sentence? The reason(s) for all this fuss escapes me.

  68. Mr. Goldstein asks how many bad patents there are, thereby playing the role of the child who when told there are people starving in Africa asks his parents to name three.

    Software is a fruitful area to look for bad patents. Let me start with the “Buy it now” patent – that is a clearly bad patent by any reasonable standard. The Forgent patent on data compression is another example. The Eolas patent is bad. “One click” is egregiously bad.

    The two software patents I respect as intellectual achievements are the RSA patent and the patent on Karnarkar’s algorithm but these are mathematical theorems and it is an act of intellectual dishonesty to pretend that they are patentable because they will implemented on a machine.

    Overall, in the software area it makes more sense to try to identify the good patents than the bad ones since there are so many bad ones. The fact that the waste baskets at USPTO may be overflowing with even worse applications which were refused is little comfort.

  69. “You clearly were implying I was conceding there are in fact a great number of obvious patents ”

    If you say so, Fred. If I wanted to imply what you claim I “clearly” implied, I would have simply said: “Thank you.” Rather, I implied that you were running away from an unpleasant fact: the number of bad obvious patents issuing nowadays is high enough to attract attention from both the general public and the Supreme Court. The numbers are historically high. Why is it silly to challenge my claim? Because we know that patent filings are higher than ever and we know that the PTO is in triage mode and has been for some time. The product coming out of the tail end reflects these unfortunate circumstances. Does anyone really dispute this in 2006?

    “percentage, which is certainly more telling and more relevant to this issue”

    Is that so, Fred? Please share your reasoning. Perhaps you can tell us: (1) what is the acceptable percentage of bogus patents coming out of the PTO and (2) why should that acceptable percentage remain independent of the absolute number of patents filed and/or issued?

  70. Tom, you just want to “practice [the patent] in peace”. Did you talk this intent over with your attorney? Do you know you could’ve just posted your ideas in a public forum without spending the money, time, etc. for a patent? That’s a lot to spend for a wallpaper.

  71. Huh huh? You clearly were implying I was conceding there are in fact a great number of obvious patents so was ducking the issue by instead discussing percentage. But you, clever lad, were on to me, hence the Christmas reference.
    Equally clearly, it would be waste of time trying to do a “is not, is too” debate with you, as many others have tried. So I queried as to percentage, which is certainly more telling and more relevant to this issue. You respond however with your typical eloquence. Huh? More like “duh”.

  72. Malcolm, that’s a great debate to get into with you, surely, so sorry if I pass. If this is the kind of Christmas presents you give, take me off your list.

    Okay, Mal, but it’s Thanksgiving so give us your turkey- how many obvious patents, exactly, are there in your esteemed opinion? Pick a number and let’s play it in Paul’s state lottery.

  73. Mr. McDonald,

    Thanks for weighing in but you may have missed my point on the question of obviousness…or maybe that was a roundabout way of telling me that it is. I cited as prior many racks and disposables for the oven-that’s all there is-or types of solid cookware- my patent is not about turkey roasting pans. The embodiments speak otherwise. Also, I’m not out to sue anybody. I went after this patent so as to be able to practice it in peace…if anybody wants to step on my toes,well that’s a horse of a different color.Anyone else?

  74. Malcolm, you replied to my questioning as to the number of dogs today versus pre-CAFC:
    “In terms of sheer numbers? Of course. Nobody seriously disputes this.”

    “sheer numbers” aside, do you think that, as a proportion of patents granted the past 25 years, there is a higher percentage of “obvious” patents? Over a third of all patents ever issued in US history were granted during that period, nearly three million. So there must be thousands of bogies out there. Let’s see, there’s that swing patent, that annoying Halloween pumpkin patent, and oh, the new kid on the block, the model railroad patent. Does anyone think these inventions were the worst ones to come across an examiner’s desk?
    Where are these then if not rejected and in the waste bin?

  75. Paul, it doesn’t bother me but it was obvious I was going to be late for my dental appointment today (always late). Does that mean I shouldn’t be filing that application? THAT bothers me (also bothered my dentist).

    Games of chance, random occurences, statistical probabilities, and the like have nothing to do with 103 obviousness. “Obvious” is simply a convenient adjective used to describe a timeframe for a PHOSITA to solve the same problem at issue in the patented invention. In a nutshell, if he gets it quickly, it’s obvious. If he doesn’t (takes too long or not at all), it’s not obvious.

  76. Looks to me like the position of the Respondents is:

    “CAFC has painted the law into a corner with TSM and only Congress, not SCOTUS, can walk out on the paint.”

  77. Does it bother anyone that the set of numbers that is the winning line in this week’s state lottery is not obvious, but neither is finding it inventive?

  78. Frederik

    “Mal, considering Stepback’s tone, you now probably miss pds and me.”

    Heh. I know it’s not anatomically correct to say so, but underneath that tinfoil hat beats the heart of a poet:

    “We are sliding back into the Dark Ages. Enlightenment is over. The Age of the Neuro-linguistically Manipulated Society has begun.”

    Only John “Straight Talk” McCain can save us now! ;)

  79. Frederik

    As I remarked in an earlier post, are there really more dogs now than pre-CAFC?

    In terms of sheer numbers? Of course. Nobody seriously disputes this.

  80. Stepback, if you are going to pick on Mooney, remember these bits of advice gleaned from his prior KSR postings, that is, don’t mention:
    1. Tears
    2. Career choice
    3. Psychiatric help (especially Dr. Phil)
    4. Babies

    But you have, so sit back and wait for the wet toilet paper to hit the fan.

    Mal, considering Stepback’s tone, you now probably miss pds and me. If I were advising you, I’d say let it go and get on with doing some more of the intelligent postings as you had been doing of late before your last regression. Cold turkey.

  81. Mr. Barniak:

    I litigated a very similar invention in the early 1990′s Durible, Inc. v. Reynolds Metals Company et al.

    Since it’s almost Thanksgiving, here goes:

    Durible got a patent on an aluminum foil roasting pan with “handles fastened to the rim”. The handles were an advantage in large turkey roasting pans. Its product had handles that were rivited to the pan. They sued Reynolds (and the rest of the aluminum foil pan industry). The Reynolds system used a removable foil pan that you threw away after use and a handle mechanism as part of a frame that was kept after initial purchase. Reynolds had only a design patent on its pan. Handi-foil, another party to the suit, had its own disposable handled roasting pan patent.

    Found: Patent valid, not infringed.

    Hope the Durible, Reynolds, and Handi-foil patents were all cited in your patent.

  82. “I feel sorry for anybody who finds this sort of weepy rhetoric persuasuve.”

    Dear Manipulative Loonie (Mooney),
    Yes, we all “feel” limbicly saddened that we are not part of your circle of friends and fiends. Tears are rolling down are bleeding inventive hearts. You have so moved us. Keep up the good work. How much do you get paid by your corporate sponsor and when did you stop killing the first born babies of solo inventors? We know we can trust you to have a “fair and balanced” answer to everything.

  83. A question for the intellectuals out there.My patent breaches this subject. Quick description-rigid stainless steel wire or grid frames holding a thin-walled aluminum foil liner or pan of a corresponding size loosely affixed. In a nutshell-disposable stovetop cookware assembly. Rigid frames and aluminum pans for cooking in an oven have been around for eons-funny thing is,no one ever thought to combine the two for a new combination for a new use-nothing like it in the marketplace either-correction-maybe someone has thought of this but didn’t have the vision nor the fortitude to seek a patent-I did. Here’s the question-Is my patent obvious-should I even have been granted it? C’mon,weigh in, be brutal if you must-you can’t hurt my feelings,I already have the patent(I love the term ‘monopoly’). Thanks a lot.

  84. “I feel sorry for the public which will deprived of many of these innovations which may not be provided (or may not be disclosed) because many independent inventors are NOT stupid (they may be broke but they are NOT stupid).”

    I feel sorry for anybody who finds this sort of weepy rhetoric persuasuve.

  85. I love the use of qualifiers in arguments which then ignore that qualifier further on. Mr. McDonald says the CAFC “effectively” eliminated the agglomeration rejection and then opines that “reviving” it (e.g. it’s dead), would ostensibly remove all “horrible patents”. The PTO still rejects pencil and eraser type applications on a daily basis and rightfully so. The rumors of the demise of such rejections have been greatly exaggerated, to coin a phrase.

    If indeed his premise is however correct, instead of the same old examples of obvious patents being floated around (thanks, Moshe, you’re right), we’d have millions. After all, if the PTO is “having to grant [horrible] patents” under the existing 25 year old test all these years, then few patent applications would be rejected and we’d be at patent number 50 million something, most of which would be swing patents that hold Halloween pumpkin bags which were transported by model railroads.

    An “old weapon” for the PTO to use as a gauntlet against bad patents? As I remarked in an earlier post, are there really more dogs now than pre-CAFC?
    And can all prosecution attorneys out there retort with some horror examples of great non-obvious inventions which were NOT patented due to some erroneous 103 rejection (or patented only after appeal)? It that then supposed to mean the test is too strict?

  86. I am glad to see that my questions got a debate going, but am sad that many people have missed the point as I see it.

    The Supreme Court is a NON-SPECIALIST court. Although the court comprises individuals of outstanding ability, they have not dealt with patents on a day-to-day basis as have some of the judges of the CAFC.

    If we want them to hand down a decision better than the CAFC, and which is more workable, then we have to give them the necessary tools. Apart from the briefs of the parties, these are amici briefs that provide a clear menu of alternaties from which Supreme Court judges can select. That happened in Festo, where there was a choice between an absolute bar, a flexible bar and a foreseeable bar and the Supreme Court decided on a foreseeable bar. That may not be what everyone would have chosen, but it is a position which has some logic behind it and with which many of us can live. It tells me, as a drastsman of patents, that I have to figure out the alternaties to the inventor’s disclosed embodiments, include them in the written description, and make sure that the claims cover them. If I have failed to cover something that I should have covered and it was foreseeable, then my client is going to be in difficulty in enforcing the resulting patent. However, I now have notice of that fact and am in no doubt as to what I need to do.

    It may be that the Supreme Court will decide that changing the law on obviousness is all too difficult and that the status quo should be maintained. However, there is a significant possibility that the Court will be more interventionist than that and will wish to reinstate a collocation/ combination/synergy standard at least to some extent. I do not think that the court has been given the tools to do that job without making a mess.

    If you look at the old cases where the collocation/combination approach was considered, you see instances of inexperience and trouble. In the A & P Supermarket case, for example, there WAS a new function because the improved cashier’s station processed transactions faster than before, and the Court acknowledged that. However, they did not think that this advantage really made the claimed integers a combination, despite the acknowledged improvement. In other words they were not merely testing for the existence of an advantage that flowed from the combination, but were weighing it to see whether it was sufficiently significant, which is arguably a step too far and gives scope for arbitrary decision making. Likewise in Sakraida, there was a reference to lack of new function or result, but a also a self-contradictory reference to the water producing effects that were more striking than before. So in an attempt, perhaps, to spare the feelings of the patentee or the inventor, the judges introduced faint praise that added noting to their decision but sowed confusion and doubt in its wake. The standard may have been reasonable, but the way that was applied did not inspire confidence.

    IF the Supreme Court is going to reinstate collocation/combination as the petitioners would like, has it been presented with clear proposals as to what the standard should now be and how that test and the Graham v John Deere test should be fitted together to make something better and more workable than we have now? I do not think that the briefs in the present case meet that test.

    I therefore fear that the Supreme Court will hand down a poor decision and yes, I DO feel sorry for the judges.

  87. “KSR’s attorneys, including GWU Professor John Duffy, argue strongly that 103(a) has been wrongly interpreted as merely a way to challenge patentability rather than a “condition of patentability”…”

    It’s all about the burden — most people who work hard in this country would agree that one is not ENTITLED to potential millions without proving their worth. Absolutely loved the way they turned on AIPLA’s assertion to show how ridiculous the entitlement presumption has been.

  88. Who thinks the writ should be dismissed as improvidently granted inasmuch as all that that the Court of Appeals has done is to remand for further findings? In the circumstances, shouldn’t the Roberts Court (of allegedly non-activistic judges) wait for those further findings to be made and reviewed by the Court of Appeals and only then, if necessary, grant certiorari?

  89. IMHO, Judge Rich Giles (author of 103 and much of 1952 Patent Act) was a genius. The people who are stepping in to come up with a new and improved definition of “obviousness” do not measure up, and the fact that they don’t is not “obvious” to them. A sad day for America. This is the middle of the end of the American patent experiment. We are sliding back into the Dark Ages. Enlightenment is over. The Age of the Neuro-linguistically Manipulated Society has begun.

  90. To me, KSR FINALLY got to the heart of the matter in its reply brief – aggregation vs. combination.

    Were we not all taught that the “combination” of a pencil and an eraser attached on the end thereof was not a patentable invention, since each were previously used for the same purposes as in the “invention” and neither was performing a function other than it was performing outside of the “combination”. This is the classic definition of an unpatentable aggregation. How is the patent in KSR any different?

    The CAFC test effectively eliminated the agglomeration rejection, leading the PTO to having to grant patents like the patent in KSR or the model railroad patent mentioned above.

    If the Supremes only revive agglomeration, it could avoid the bigger obviousness issues that scare the AIPLA and other pro-patent for anything forces and give the PTO back an old weapon against horrible patents.

  91. Is this claim, filed in 2002, obvious?


    1. A method of operating a digitally controlled model railroad comprising the steps of:

    (a) transmitting a first command from a first program to an interface;

    (b) transmitting a second command from a second program to said interface; and

    (c) sending third and fourth commands from said interface representative of said first and second commands, respectively, to a digital command station.

    (US 6,530,329)

    To me, it’s just a straight-forward application of long-known computer networking ideas to a specific domain (model railroads). Computerization of railroads, model and full-size, had been happening for decades.

    But apparently the examiner didn’t think this was “obvious”.

    This example _has_ had impact on a significant number of people, has received some attention ( link to jmri.sf.net ), and is being actively litigated at an unreasonable cost.

    If the examiner made the right decision, then “obviousness” is just plain broken.

    A couple people have previously responded that the problem isn’t obviousness, it’s that “bad patents are being issued & the PTO needs to do a better job”. The examiner here “just made a mistake”. However, this is one is a series of continuation patents, which have been examined by at least three examiners, all of which have made similar judgements. The “not a problem with obviousness, but rather an examination problem” argument is the true straw-man. If we want the PTO to do a better job with applications like this, what standard are we to hold them to? Why was the correct decision on this application not, well, obvious? Could it be that the reason we’re seeing so may bad decisions is that the obviousness standard in law is far from what’s considered proper in the real world of design and engineering?

    Bob

  92. I agree with Prof. Ghosh and don’t feel particularly sorry for anyone. Congress dropped the issue in the lap of the courts with the language “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 at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” It’s the Supreme Court’s job to settle difficult questions like this one, and if inventors or interest groups don’t like what the Supreme Court comes up with, KSR won’t be a constitutional decision, and they can always ask Congress to amend the patent statute.

  93. ON THE SUBJECT OF FEElING SORRY:

    I feel sorry for all of the creative independent inventors who, even if their inventions are patentable under a new SCOTUS-described obviousness test, will:

    a) have to bear additional costs for securing and maintaining patent protection;
    b) live under a larger cloud of uncertainty in terms of the validity of their patents. This greater uncertainty of patent validity will most likely further embolden many of the big corporations of the world to wantonly infringe their patents- the big corporations will be much better equipped to handle the additional costs of patent litigation.

    SCOTUS MAY THROW AWAY THE BABY WITH THE BATH WATER.

    I feel sorry for the public which will deprived of many of these innovations which may not be provided (or may not be disclosed) because many independent inventors are NOT stupid (they may be broke but they are NOT stupid).

    To those who may respond to this post: please do NOT give the stupid straw man example of swinging a swing (which caused no economic damage) or some other straw man example,

  94. The Supreme Court has addressed the issue before. Should we somehow retrospectively feel sorry for the Court back in 1965 when it had to first deal with nonobviousness under the 1952 Act? Graham was a good decision. Let’s hope the Roberts Court can do as well in reaffirming and clarifying Graham.

  95. I don’t feel sorry for the Supremes. Unlike the courts of appeals, they didn’t have to take this case, and they can always punt this case away as they did in eBay. I do, however, feel sorry for the Supremes having to read KSR’s briefs.

    The reply brief is a good example of why some people hate lawyers. Perhaps the Supremes are receptive to this, but it’s really annoying to read this sort of a brief where the lawyers’ primary focus appears to be on spitting venom for 20 pages rather than making arguments. The brief is full of scare quotes and scores lots of high school debate points by criticizing nitpicks in the respondents’ brief.

    To the authors’ credit, they do in fact make arguments, but they’re buried in the rest of this junk. It’s as if they’re insulted by the fact that they have to contend with the other party in this case. I suppose it’s consistent with James “It’s hard for me to imagine there is someone who could be more effective than me” Dabney’s style.

    Perhaps my initial reaction will prove to be overwrought, but my first read of the reply brief gives me the impression that it’s one more typical appellate brief based on little more than testosterone and a westlaw password.

  96. “Does no one feel sorry for the Supremes having to decide this mess?”

    None whatsoever.

    “Obviousness” is an important issue for the whole country with much bigger economic impact than most of the cases they hear. If any of them resent hearing the case (and I’m not saying that any of them do) then they are in the wrong occupation.

    Any judge who loves the law has to love this case: whichever side he is disposed to favor.

  97. Does no one feel sorry for the Supremes having to decide this mess?

    Which brief (if any) is the most interesting and entertaining to read?

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