KSR Int'l v. Teleflex, Inc., 550 U.S. ___ (2007).
In a unanimous decision, the Supreme Court rejected any notion that the concept of obviousness in patent law can be rigidly or narrowly defined -- holding that "the obviousness analysis cannot be confined by a formalistic conception." However, the opinion does not radically change the notion of obviousness or immediately invalidate a wide swath of already issued patents.
The question of nonobviousness comes-up in Section 103 of the Patent Act. That section declares that a patent shall not issue 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."
But what is "obvious"? Certainly, this amorphous term has continuously stumped engineers and scientists for the past 50+ years. One particular issue involves combination inventions that take various existing elements and combine them in a new way. When is such a combination obvious? In an attempt to provide improved notice and regularity, the Court of Appeals for the Federal Circuit (CAFC) introduced a test that holds a combination invention is nonobvious absent some teaching, suggestion, or motivation (TSM) to combine the various parts together.
In KSR, the Supreme Court began by rejecting the CAFC's test for obviousness:
"We begin by rejecting the rigid approach of the Court of Appeals. Throughout this Court's engagement with the question of obviousness, our cases have set forth an expansive and flexible approach inconsistent with the way the Court of Appeals applied its TSM test here."
At this point, I would have expected the Court to obliterate the past twenty-five years of obviousness jurisprudence and begin again with a clean slate. It did not do that — rather, the opinion appears to simply refine the particulars of how prior-art can be combined and when a "combined patent" will be seen as obvious. Without explicitly saying so, the Court's opinion appears to affirm the CAFC's more recent pronouncements of a flexible test of obviousness. Dystar, Alza.
Patent Value: In the short-term, this case reduces the average value of patent holdings. Courts should find it easier to invalidate patents based on expert testimony and the jury's concept of obviousness. The story also becomes more important -- and attorneys who can tell an "invention story" will be in demand. During prosecution, inventors and experts should get their pens ready to sign declarations of patentability.
Preliminary Gems:
- PHOSITA is Creative: A person of ordinary skill is also a person of ordinary creativity, not an automaton.
- Obvious to Try: When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.
- Hindsight Bias: Rigid preventative rules that deny factfinders recourse to common sense, however, are neither necessary under our case law nor consistent with it.
- No Presumption of Validity: We need not reach the question whether the failure to disclose Asano during the prosecution of Engelgau voids the presumption of validity given to issued patents, for claim 4 is obvious despite the presumption.
- Patents Halt Innovation: Granting patent protection to advances that would occur in the ordinary course without real innovation retards progress and may, in the case of patents combining previously known elements, deprive prior inventions of their value or utility.
- Common Sense: Mentioned glowingly five separate times.
Notes:
- Download KSRvTeleflexOpinion.pdf
- Joe Miller
- David French
- Aaron Barkoff
- Michael Madison
- Patent Hawk
- Michael Barclay
- Solveig Singleton
- Larry Ebert
- Quizlaw
- Discussion of Response Briefs;
- Discussion of Petitioner and Supporting Amici’s Briefs on the Merits;
- Discussion of Government's Brief in Support of Certiorari;
- Discussion of Microsoft’s Amicus Brief;
- Discussion of the CAFC decision;
- Discussion of Law Professors Brief;
- Discussion of In re Kahn;
- Discussion of Petition for Certiorari;
- Prediction Certiorari;
- Professor Wagner and Strandburg debate obviousness in Penn’s new online law reivew:PENNumbra;
- Prof Miller: KSR Lift-off!
- Prof Miller: Discussion of Gov’t Brief;
- Patent Hawk: Becoming Less Obvious;
- Patent Hawk: Hindsight Problem;
- Buchanan: "[O]nce again, patent reform has left the Capitol and walked across First Street to the Supreme Court." [Link];
- Petherbridge & Wagner Empirical Article [link]
- Cotropia Article: [link].
- Shane Popp Article on Section 103 background [link]
- Mark Smith, a student at Santa Clara Law has these three posts in SCU’s great new Tech Law Forum:
- The Patent at issue: [link]
“The most creative inventors I’ve met know what’s going on in other fields and draw from it. They may not have multiple PhDs, but they’re not afraid of borrowing from other arts. I have no problem with a system that rewards these people more at the expense of those who have a narrower mindset.”
But we’re not talking about a “reward more, reward less” change to the system, but rather a “reward, don’t reward” change.
Based on experience, it’s my belief that the person having *ordinary* skill in the art does not have much knowledge of arts not immediately adjacent his own.
“In my experience, inventors tend to be reasonably to exceptionally familiar with their own technology. But they generally are unlikely to “prairie dog” and view technologies outside their areas of expertise.”
This is near the designer end of the spectrum. The most creative inventors I’ve met know what’s going on in other fields and draw from it. They may not have multiple PhDs, but they’re not afraid of borrowing from other arts. I have no problem with a system that rewards these people more at the expense of those who have a narrower mindset.
In my law-firm life, I worked with a large number of inventors at companies of large, medium, small, and start-up sizes. Now in-house, I work more closely with inventors and gain greater insight into how they work.
In my experience, inventors tend to be reasonably to exceptionally familiar with their own technology. But they generally are unlikely to “prairie dog” and view technologies outside their areas of expertise. The only times I have ever seen an intersection of electromechanical and chemical/biological knowledge in one inventor were for medical device and diagnostics inventions. Notably, it was also where the invention itself also overlapped both technologies.
The court listed the text of the asserted claim. Then stated:
“We agree with the District Court that the claim discloses “a position-adjustable pedal assembly with an electronic pedal position sensor attached to the support member of the pedal assembly. Attaching the sensor to the support member allows the sensor to remain in a fixed position while the driver adjusts the pedal.”
This statement may implicitly re-confirm the current law of claim construction including de novo review.
“Mooney knows all about don’t ask don’t tell don’t you Mooney?”
Ah yes, that’s our CaveMan! You never fail to disappoint. It’s what you get when you cross Bill O’Reilly and Rush Limbaugh, minus the cleverness.
You have also succeeded once again in kicking up a bunch of dust which ignores the issue addressed by the court in KSR.
“The CAFC addressed this by requiring a TSM to support a combination of reference.”
And the Supreme’s decision also requires the Examiner to explain what “teaching, suggestion or motivation” existed in the art to support the combination of elements found in disparate references. You realize that, don’t you?
All that the Supreme’s have eliminated is the CAFC’s sporadically applied and ridiculously rigid “test” that an express teaching directed to the specific combined elements be located in the prior art by the Examiner. The CAFC’s “test” was no less vague than the Supreme’s decision and it accomplished nothing except to allow more crap patents through the gate.
The CAFC’s obviousness jurisprudence did not make the validity of a patent more “predictable”. It just made the validity of a patent more likely than the present test does.
Now, we should note who is complaining the most about this case. It’s people who believe that it’s not going to be as easy to get a patent as it was before. That’s understandable.
But the idea that KSR has turned obviousness determinations from some beautifully elucidated test into an arbirary dice toss (or worse) is just bogus. It’s not supportable.
Correction:
“…piecemeal application of the art against the [applicant’s claims] which is generally a bad thing.”
Mr. Slonecker adds a great dimension regarding the classification system, which, as he also noted, is what the Examiners used to use to kick off a search. In the classification driven search, the search was (at least theoretcially) conducted in a completely “top down” manner, which a conniseur of subtleties will appreciate, reduced the amount of hindsight to close to zero.
Now as that same conniseur of subtlety should appreciate, the new method of search, e.g. where claim terms are plugged into a computer search engine, is de-facto hindsight reconstruction of the art based on the applicants disclosure. Using this method you would find references that you would most likely never have found looking through shoes.
The result is a piecemeal application of the art against the reference, which is a generally bad thing. Consider an honest invention having, say, 10 diverse, obscure, and novel elements (remember this is a hypothetical normally I would not claim more than 2 or 3 elements). A piecemeal application of the art faciliated by a computer search would produce a 103 rejection having 10 references. Although the MPEP currently states that there is nothing fundamentally wrong with this, we all know that such a large number of references tortures the imagination as to whether the prior art really teaches this invention.
That’s good and bad. Computer searching is great – don’t get me wrong. But it must be properly applied to avoid the hindsight problem and the piecemeal application problem.
The CAFC addressed this by requiring a TSM to support a combination of reference. This way, you can find as many references as you want, any way you want, provided you can support why they should be combined. Its kind of a don’t ask, don’t tell policy for Examiners in how they conduct their searches.
Mooney knows all about don’t ask don’t tell don’t you Mooney?
“There are completely unrelated activities, believe it or not”
And there are obvious inventions, believe it or not.
Frankly, I think the term “obvious” is more definite than the term “completely unrelated.” Perhaps if I mention Kevin Bacon you will begin to understand the problem.
With respect to “voice transmission” and “obscure chemistry,” I expect the topics to intersect in certain circumstances. Possibly the intersection could be highly relevant, depending on what is claimed. The relevance, of course, would need to be reasonable and convincingly explained by the Examiner or defendant — per the Supreme’s instructions in KSR.
Oh, just shut up, Mooney
When you are asked to solve some e.g. voice transmission problem, for example, would you start looking into some obscure chemical references (non-patent references, BTW, cited by patent applicant in good faith, well, so much for being honest…) ?
I hope not, if you want to keep your job as an engineer..
There are completely unrelated activities, believe it or not, e.g. like trolling patent-related internet blogs and cooking your dinner, unless, of course you hope to find how to make the best dinner for yourself in one of those blogs.. Good luck with that
I’m asked to cite cases in Europe. Well, there’s Blackberry, litigated in UK and Germany, and quickly disposed of. I’m not a litigator or in the pharmaceuticals field, so struggle to bring to mind relevant cases, but LIPITOR comes to mind, and Erythropoietin (is that how you spell it?). But such a topic is a bit boring. Fact is, there are 31 member States in the European patent system and all have their own system of patent enforcement and revocation, so none of them, individually, approaches the US in terms of market value. So what? What is interesting is the competition between specifically DE, GB, NL and EPO, to lay down the best line of legal logic, on matters such as novelty, obviousness and claim interpretation. Specifically, academic debate between common law England and civil law the rest (except Ireland) can be challenging because it calls into question legal fundamentals that one thinks are indispensible. If they really are (eg non-obviousness, novelty, sufficiency, over the full width of the claim), they are easily defended. If they are not (best mode) they don’t survive.
“Even before KSR examiners were combining references from completely unrelated arts to make an obviousness rejection.”
This is what I find so amusing about many of the comments here. On one hand, they flip out over allegedly “vague” language used by the Supremes and then they throw out gobblygook like “completely unrelated arts.”
Here’s a simple uncontestable fact: people with a minimum amount of creativity are capable of looking outside of their narrowly defined “field” for inspiration. Not only are people capable of behaving this way, they do so every day. Do they all deserve patents?
Does looking outside of one’s “field” of expertise immediately entitle one to a patent? If not, then what the heck is your point? Why should Examiner’s be forced to limit their searching to references which were identified as belonging to some “field”? Such a rule would seem to benefit a certain group of wannabe “innovators” who make a living off filing patent applications, but I fail to see how this rule benefits a community which is sick of seeing crap patents being issued.
Right you are, Mr. Slonecker. Such a classification based search would result in analogous art addressing similar problems with higher probability than simple claim term searching (outside of chemical related searching). The new PTO breed doesn’t get this fundamental truth, and almost all the true experts are now gone.
Caveman is right as usual
Even before KSR examiners were combining references from completely unrelated arts to make an obviousness rejection.
In my case examiner combined 2 references: one from speech signal processing and another one dealing with recording and analysing … a certain chemical reaction (???)
Mind you, that was before KSR !
A personal examiner interview with my attorney present instilled some common sense into that examiner (a senior examiner BTW, with a proper education, background and a lot of experience examining various patents in the field)
And now what ? This whole patent examination thing becomes a mockery or what ?
I myself don’t care anymore: they won’t see any more patent applications coming from me. Go find another sucker to pay for worthless papers
But what happens to the already issued patents ? Will the courts start doing the same: combining references which are not to be combined ?
I guess at the end of the day the guy with a bigger bank account always wins…
God bless America !
“And sorry Zeke, my story is straight, you’re the one splitting insignificant hairs and in doing so highlighing the weakness of whatever your argument might be.”
Splitting hairs, maybe. I suppose years of writing claims has dulled by appreciation of fast and loose use of language. My mistake! Whatever you intended those words to mean is obviously correct.
Anyway, please drive on and continue your rant against socialism, obviousness, baseband or whatever concepts these mere words represent to you. Count this as but a brief pit stop on your journey to prove that you’re smarter than everyone, in both Europe and the US.
“And it would not be unusual to find in such a hypothetical reference B a teaching away, e.g. “while the instant configuration is applicable to voice frequency sampling, it could not easily be applied to high frequency baseband sections since sufficiently fast conversion modules are not available in the art to support high speed sampling. Now, virtually anything can be cobbed together… without a reason.”
Well, the last sentence is plainly false, CaveMan, in light of KSR. That begs the question: what are you trying to accomplish here?
“…as many people know, searching was conducted manually by Examiners in dusty shoes in even dustier back corners of the PTO in Crystal City…”
As tedious as that practice was, it did have one benefit; namely, examiners actually used the PTO’s classification system as a way to try and find relevant “art”.
At the risk of sounding repetitive, you can intellectualize about TSM all day and try to weigh its relative merits, but if you understand the original/practical motivation for TSM, you begin to understand the consequences of NOT having it in a more rigid form.
1) Around the time of the formation of the CAFC, the PTO was spending a TON of money computerizing the office since, as many people know, searching was conducted manually by Examiners in dusty shoes in even dustier back corners of the PTO in Crystal City;
2) when all was said and done the Examiner now had the ability to search the art by computer;
3) the standard technique of the average-minded Examiner was to plug key terms from the claims into the keyword boxes of the search screen;
4) the ensuing search results theoretically should contain references that at least contain some or all of the claim terms. Containing the terms and “teaching” the invention are entirely different, however some examiner stopped at that point and called it a day.
Anyone with half a brain understands the kind of results you often get from a computerized search. You get simlar terms that are used in completely different contexts from those associated with the invention, and even when all the terms are found in one reference they are often scattered around the reference and certainly do not anticipate “in the manner claimed.”
To address the problem of Examiner cobbing together bizzare unrelated references from such computer searches in an attempt to establish a prima facie case of obviousness, the CAFC required that there must be some teaching or suggestion *contained in the references themselves” or in the common knowledge to motivate the combination. This requirement forced Examiners to actually read the references that were produced by the search to determine if the combination was plausible and the references actually contained a relevant “teaching”.
The proviso that the motivation could come from the “knowledge generally available in the art” should have satisfied the Supreme Court in providing some flexibility to account for common sense. The common knowledge proviso of the TSM test was to allow those references to be combined that, while not expressly containing an explicity teaching to combine, e.g. “present methods do not accomodate a restrictive opening in the throttle body” still clearly teach the claimed features. Thus a reference to a throttle body and another reference with a restrictive opening in an air flow system could easily be combined without the explicit teaching such as that noted above to explicity suggest their combination.
However, in claims having more complex features, which may have possibly had some disembodied mentions throughout the arts could not as easily be combined without such an explicit teaching. For example, a digital processing system with a GHz baseband section and a ultrafast sampling system, under a TSM requirement, could not be obviated simply by combining reference A teaching a digital baseband for GHZ processing and reference B teaching a samping system for, say, voice frequencies (e.g. found by entering “baseband” “GHZ” and “sampling” into a computer search), without an explicit suggestion. For exampe, reference B could say “while the instant configuration is applicable to voice frequency sampling, it could conceivably be combined with high frequency baseband sections, such as in the GHz range, provided that sufficiently fast conversion modules are available to support the sampling feature.” Under TSM only a reference B from voice frequency arts that contained the noted suggestion could be used to teach the claimed sampler. Anything short would rightfully NOT pass muster under TSM. And it would not be unusual to find in such a hypothetical reference B a teaching away, e.g. “while the instant configuration is applicable to voice frequency sampling, it could not easily be applied to high frequency baseband sections since sufficiently fast conversion modules are not available in the art to support high speed sampling.”
Now, virtually anything can be cobbed together… without a reason.
And sorry Zeke, my story is straight, you’re the one splitting insignificant hairs and in doing so highlighing the weakness of whatever your argument might be. The fact is, we have never seen a Blackberry infringement case in Europe – and there is a good reason for that – the capital markets in Europe are controlled by big government not private interests. The biggest technology oriented court case that we’ve seen out of Europe in my recollection is the Microsoft antitrust case.
The Examiner in the US is not automatically a PHOSITA, and not legally assumed to be one. Taking Official Notice can be based on anything they happen to know without any such presumption, but they have to provide evidence or swear an affidavit on request. They may often know more about the art than the applicant’s counsel does (unless temporarily assigned!), but that doesn’t make them a PHOSITA.
“Mooney hates everyone here”
LOL, Cavey! My emotion-manipulating tactics have been thoroughly exposed and debunked. I guess I need to report to Commander Soros and devise even more diabolical ways to fool people here into believing that I’m actually thinking …
Shemeclarations — is there a regulation that requires an examiner to be competent in the field he/she is examining? This is a critical point. I once had an examiner in a case involving educational s/w who told me she was on temporary assignment in the examining group, knew nothing about educational theory, and nothing about programming. From whence comes the presumption that these examiners are skilled in the relevant art? Seems to me there should be a mandatory disclosure of the examiner’s education/training for the record, particularly if they pull an “official notice” out of their hat.
“Zeke: Bizzare? … Sorry if you don’t think that the absence of a vigorous arena for disputes over valuable rights is evidence of a lack of value to those rights. What is suggests to me is that absent such an arena manufacuring rights are simply allocated by a big socialist goverment – sheesh, I guess that’s what you find in Europe.”
You weren’t asking about an arena or lack thereof, you were asking about an “industry shaping patent court case or judgement.” In my world a court and a court case are two different things. Perhaps in bizarro world they’re the same.
Get your story straight.
I think what Max is trying to say is that many believe in the wake of KSR, declarations will be necessary to establish what is the level of creativity for example in the art. Or, that the combination of elements yielded unexpexted results. However, in Europe, the Examiners are considered to be persons of ordinary skill.
Max, I think the U.S. is essentially the same. The Examiners are considerd to be skilled in the art they are examining. If an Examiner wanted to, they could file a delcaration/affadavit to support reliance on something they consider to be commonly known – however I’ve never seen one. Usually, if challenged on something like Official Notice most Examiners will relent before filing an affadavit as they must according to the rules.
MaxDrei – You wrote that declarations are not needed in the EPO, where the civil law system deems the Examining Division (3 people) a PHOSITA. Why would declarations be needed in the US, where every examiner is a PHOSITA for the matter before them?
Malcolm, why don’t you just kiss my ass … with my new and exciting Velcro lip protector! Unlike a lip protector such as lipstick and that you may have seen on the Get Smart TV show link to en.wikipedia.org , my lip protector has a permanent backing that allows for replacing a protective seal after each use. It is designed to provide maximum protection when the lips are puckered, rather than when stretched out. It shape is not one you would expect. I won’t go into too much detail because of my pending US patent application. However, this is going to revolutionize the industry!
matt: Not sure what your point is, and I guess if you really understood what KSR means and responded to 103 rejections on a daily basis, you might be disenchanted.
Lionel: You are absolutely right, in electrical and mechanical arts, its often not difficult to find a disembodied version of your claimed invention scattered throughout the vast sea of arts – this does not mean that its obvious.
Patent Guy: You must not understand the nuance of what I’m saying. If Examiners can mechanically conduct their search by plugging your claim terms into their handy search engine and come up with a list of patents that contain some of the claim terms and, in combination, all of the claim terms, then the Examiner can assume that his 103 rejection is complete. You may be suprised to hear that even if a single reference contains all the claim terms it still may not represent a good 102 rejection – and I think Lionel appreciates what I’m talking about. Once you think a little about what I’m saying you might see the problem. Of course as the old saying goes, when you make people think they’re thinking they love you, when you make them REALLY think, they hate you. Also Lionel, I think you give Mooney too much credit. He only SOUNDS like he might have a point (in other words he makes you think he’s thinking).
I’ll assume that this is the reason Mooney hates everyone here, because this is a forum where he has to REALLY think.
MaxDrei: Love ya Max, but you spent a paragraph and still failed to demonstrate or cite a case of a high stakes high profile European patent suit.
Zeke: Bizzare? I find your logic a bit bizzare. Your logic is like celbrating a first action allowance – “gee if the patent office never came up with any art, doesnt that mean that all invnetions are great??.” Sorry if you don’t think that the absence of a vigorous arena for disputes over valuable rights is evidence of a lack of value to those rights. What is suggests to me is that absent such an arena manufacuring rights are simply allocated by a big socialist goverment – sheesh, I guess that’s what you find in Europe.
CaveMan said: “Please cite for me an example of an industry shaping patent court case or judgement originating in the European courts.”
I say: Haha, your logic is bizarre. Wouldn’t a sparsity of cases like this be good evidence that the EP system works well? Think about it. If the Supreme Court never had to hear a patent case, the country would be running smoothly, no? The PTO and the lower courts would be doing their jobs well, no? There would be a good measure of legal certainty, no?
Caveman, please cite me some high-profile auto accident cases to prove that you have an efficient road system. And hop to it, I don’t have all day.
Malcolm Mooney, are you a law professor? Most law professors know the law but know very little regarding how that law plays out in practice.
PSA is not the answer. Working with PSA on a daily basis shows its strengths but also its weaknesses. It is very seldom that I see the PSA used correctly by attorneys. I think a good solution is a combination of the PSA and the TSM. PSA is a good way of finding a good TSM argument, but the PSA is not an argument by itself, something that I think most EPAs don’t understand… Most EPAs forget the last step of the PSA, would/could approach. All the other steps of the PSA are built up on hindsight…
I think as mentioned by others above, obviousness will never have a clear cut definition. Each case will have to be looked at on its own merits. It is not possible to define an objective test.
/Marc
Three cheers for Malcolm Mooney, always good for a penetrating insight, and the envy of many a lesser contributor to this blog. I would certainly drink a beer with him. CaveMan surmises that in 450 million rersident Europe, patents are of little value, which is why obviousness takes up so little time at the EPO. Well, the EPO revokes ’em, for all Europe, including US-owned blockbusters such as the one on the VIxxxx drug I can’t type here. That one was worth a few shillings, I dare say. Contributors here are predicting much filing at the USPTO of declarations from the PHOSITA. Not needed in the EPO, where the civil law system deems the Examining Division (3 people) a PHOSITA. Maybe CaveMan that’s one explanation how the EPO can dispose of obviousness so quickly. Sure saves time, when one files only “Facts and Arguments” and where the system dispenses with witness evidence created after the fact of filing the patent application. No witness evidence means no depositions and no X-exam. The European system puts the onus on good salesmanship, to a PHOSITA EPO Examiner customer: of the invention, and of the reasons why the claim is obvious.
“On the other hand, for people who work in the electromechanical and software arts, Examiners often believe it is acceptable to simply do exactly as CaveMan recited.”
Well, it seems to me that the Examiners are probably right, particularly where the combination is simply what any one in the “electromechanical arts” (or not) would do if she wanted to make, e.g., a computer-assisted doormat that rings your phone when it’s stepped on and tells you the weight of your guests. Oops, I just gave away another of my inventions!! Now I’m down to only 4,999,993! I’ll have to come up with a few more in the shower tomorrow morning.
Seriously, though, I think that my invention may be patentable but it’s pretty darn stupid, ain’t it? Novel and non-obvious, maybe … but undoubtedly stupid.
That’s not the sort of invention that anyone really cares about. And it’s not the sort of invention that people who want to make bunches of money file applications on. I think it is reasonable to expect that most applications which are filed to generate or protect substantial sums of $$$ and which are prosecuted tooth and nail represent very slim advances over the art. Think for a moment about why that is. This is why KSR is an important (and correct) decision.
> An examiner can plug the claim terms from your application into his/her search engine and come up with a host of patents from any one of a host of random arts that quite literally disclose your claim features. Without TSM, the Examiner can simply take the top two or three references from the search, *without even reading them* and paste them into a 103 rejection and go take a 4 hour lunch. KSR now makes it easier to draw from non-analagous arts.
CaveMan, if a patent discloses all of your claim features, that is a 102 rejection. No obviousness analysis required.
“I think that this ruling is more important in shaping future opinion more generally”
I agree, Robert. And to be clear, the Supremes are hardly sticking their necks out. The seed for this decision was planted when Amazon sued Barnes and Noble back in … what? 1999? Between now and then the CAFC did little more than waffle back and forth and then there was the huge waste of time and angst that was Festo.
In a nutshell, the Supremes simply told the CAFC: “What are you nuts?! Don’t make it *more* difficult to invalidate these crap patents. Sheesh.”
A ruling on what is obvious will never be cleanly resolved by a court ruling imo: software that uses millions of lines of inter-related code developed across multiple borders or hardware that uses thousands of patents shifts the nature of the beast: the simplicity of the value of patents is, like it or not, relative. And that makes it much less possible to clearly define what is obvious and what is true invention. If it is difficult for a handful of patent attorneys to agree, it is much less so for the courts imo.
I think that this ruling is more important in shaping future opinion more generally, such as in cases dealing with patents used in standards developments. The nature of the issues in this case will never be resolved to a formula. That may make this indecisive and open to interpretation and field of use context… irksome for attorneys who prepare patents and examiners who revue them. The KSR ruling undoubtedly will have an influence on 4G wireless IPR.
CaveMan:
I know the TSM test is not made to benefit an imaginary person. I was actually referring more to the original PHOSITA doctrine, and what this “skill” in the art really is. I was trying to convey the fact that examiners are effectively able to do a 103 rejection using the skill of a person in the art who is able to read publish documents effectively, not someone who is knowledgeable of the art.
And I don’t care how disenchanted you are, the doomsday situation you keep complaining about is going to require more than just the recent SCOTUS decision to come to existence. Abuses of the rules will occur just as often as without the decision, they will just be different now. Nobody is going to feel bad for you if you don’t adapt.
How is this ruling likely to effect the Verizon vs. Vonage case where multiple claims of prior art keep appearing? It seems as if the name translation for a telephone number would be obvious for using VoIP which was already invented.
There is no reason to fear corporate nazi-fascism. Remember what Somalia and Iraq has taught the corporate brass: half crazed, starving illiterates, using rusy 40 year-old weapons, can bring down the most hardened and well trained shock troops in the world (Somalia).
Ordinary citizens of an ancient culture can stop even the most sophisticated armor in the words with home made devices and a cellular telephone (IED). (Iraq). Now just imagine what well educated, well fed citizens can do.
Also, Malcolm, in view of some comments by others, you do often come across as a troll on the board. I am not trying to insult you, just pointing it out. You often post with nothing more than a sarcastic comment or glib condescension. I find it terribly ironic that you accuse others of ad hominem attacks when many times they are simply responding to you. Having traded a few words with you on another board, I have no desire to continue to do so, especially seeing as how I probably agree with you more often than not (although your views on Flarsheim still baffles me). Just wanted to point this out in case you really could not see it.
Malcolm,
You operate in the chemical or biotech arts, I believe. These are known as unpredictable arts. Examiners in your field cannot as easily find three references and say their combination would be obvious because in many cases until you combine the elements, the usefulness is unpredictable.
On the other hand, for people who work in the electromechanical and software arts, Examiners often believe it is acceptable to simply do exactly as CaveMan recited. I have received numerous bogus 103 rejections where realistically nobody would have combined those references other than to create my clients’ inventions. Not to say that any of the inventions were particularly profound (although some were pretty cool), just that the combinations were particularly bad.
There are significant differences between biochem practice and non-biochem practice.
“Despite Mooney’s idiotic predictions to the contrary, this is how the Examining Corps now search a case.”
CaveMan, you have a bad habit of making statements that do not reflect what many of us know as “reality.” Such statements remind me, sadly, of the sort of thing that gets spewed out of cable news networks trying to appeal to latter day members of the Confederacy.
I’ve have recent Office Actions on my desk and they don’t fit your description. The references cited by the Examiners in these cases were certainly “looked at” and the Examiner’s arguments were thoughtful.
So you’re wrong, CaveMan. Sorry to break the bad news. Managing the anger would probably lead to more accuracy.
matt: The TSM test is not for the benefit of the PHOSITA, the TSM test is designed to establish an objective basis for the Examiner or a trier of fact to combine the teachings from several references to obviate a patent claim.
In case you haven’t been reading my posts above, absent a TSM type test, the Examiner or trier of fact can (and will) simply do a computer search using the claim terms to “find” art that obviates the claim by containing references, however obscure or irrelevant, to the exact claim terms. Despite Mooney’s idiotic predictions to the contrary, this is how the Examining Corps now search a case. They plug in the claim terms and search the art. Absent a TSM type requirement, they can just cob together the search results in a 103 rejection without even looking at the references or thinking about them – kind of like when Mooney posts here.
By the way Fooney, my statement is not a prediction, its a description of the way the PTO really works. I understand that you wouldn’t know anything about that subject.
“If you look at the Ocean Tomo Patent Index …”
Please.
Go on, base any argument you want on data provided by the future Enron of the IP world …
I’ll laugh.
Muck Fooney
I predict that people will continue to ignore you Mooney.
“property rights are meaningless in most of socialist Europe”
Glenn Beck is right! And if Al Gore succeeds with his Hitler-esque tactics, the United Nations is going to rule the world!!! KSR is just another step towards liberal fascist globalization. Who could guess that the Supremes would be so clever as to use patent law to wedge their Soviet-style agenda into the discourse of world business??
It’s diabolical, I tell you. Now, at last, I understand why I so many patent attorneys weeping in the streets of Palo Alto this morning.
At the very least, I think it is reasonable to assume that a PHOSITA would be able to read the prior art, recognize a problem, and apply known solutions to that problem. After all, if this PHOSITA requires a specific teaching, suggestion, or motivation to combine two references, what skill does he really have? His skill is reading published documents and regurgitating exactly what they say? At the very least, this person is aware of the world outside of a single primary reference, and can seek solutions and improvements without being beaten over the head and told to do so. This is one of the major issues I’ve had with the current state of the TSM Test. I feel that it is improved reasonably, and in a way that still requires actual disclosure of the invention to formulate a rejection.
“Now, the Examiner will just do a computer search using the claim terms as keywords; take the top two or three references regardless of the arts from which they are classified; write a 103 rejection and call it a day.”
A testable prediction from CaveMan!
If I forget, please remind me to report on the accuracy of this prediction vis a vis the biotech art group in 6 months. My prediction is that CaveMan is wrong.
Buck Foss, is that like Duck Fuke? (little something for all you Duke fans out there)
And Max, as you know, I have absolutely nothing against you personally. I’m absolutely sure I’d enjoy having a beer with you.
CaveMan makes a good point. I also wonder about Examiners from now on taking KSR as carte blanche to reject every claim. That’s the charm of EPO PSA. An EPO Exr has to find IN THE PUBLISHED ART the necessary HINT OR SUGGESTION before he can blow away your claim on a combination of D1 and D2. Without that check on the USPTO Exr, he can run amok through all your claims, if he feels so inclined. Balance and reason is needed here, like in so many things. Shame that SCOTUS, ignorant of PSA and day to day patent prosecution, never told us how AS A PRACTICAL MATTER to deal expeditiously, consistently and fairly with obviousness, in the 990,000 applications pending. In the EPO, they had to invent PSA to get consistent examination of obviousness from Exrs drawn from the national Patent Offices of the 15 member States. It’s not so different today, in the USPTO with its mega pendencies, vastly greater than anything the EPO has to deal with.
With all due respect Max Drei: when a European cheers the U.S. Supreme Court for moving closer toward harmonization, its a bleak day for property rights and capitalism.
Also, I can hardly believe that anything conflict involving anything worth while can be adjudicated in a day as you claim is the practice in the EPO. My guess is that since property rights are meaningless in most of socialist Europe, and since “lawyers” in Europe are, with all due respect, largely bureaucratic clerks and not zealous advocates of private rights, a patent case can be handled in a day since nothing much is at stake anyway.
Please cite for me an example of an industry shaping patent court case or judgement originating in the European courts.
I won’t hold my breath.
What many of you folks are missing is the reason why the TSM test needs to be a bit “rigid.” Here’s why.
An examiner can plug the claim terms from your application into his/her search engine and come up with a host of patents from any one of a host of random arts that quite literally disclose your claim features. Without TSM, the Examiner can simply take the top two or three references from the search, *without even reading them* and paste them into a 103 rejection and go take a 4 hour lunch. KSR now makes it easier to draw from non-analagous arts.
With TSM, and in particular, with a rigid TSM, the Examiner has to at least read the references in order to make sure that he/she could come up with at least a plausible (straight face) reason to combine them.
Now, the Examiner will just do a computer search using the claim terms as keywords; take the top two or three references regardless of the arts from which they are classified; write a 103 rejection and call it a day. Since the KSR opinion states that the combination can be for any reason and not for reasons related to arriving at your invention, the Examiner can, in order to justify the combination, come up with any lame excuse for the combination – as they often do – like the combination of Smith and Jones would improve efficiency.
Basically KSR legitimizes the lame 103 examination practices that everyone here knows occur with unfortunate frequency…
Hi Buck Foss. Clarification please. You write about the Applicant (A) who “states the problem”. What of the Applicant (B)who carefully does not mention in his/her application the deficiency in the state of the art status quo. Suppose that at the relevant date the evidence shows that the PHOSITA is already well aware of that deficiency. On your interpretation, will B (the Flash of Genius writer) get a US patent, but A(the narrator of the problem and its solution) not? Bit subjective, no? Bit unsatisfactory, no? Objective EPO PSA deals elegantly with the invention characterized by perception of a problem (the solution to which is banal, once the problem has been named). PSA would also shoot down a claim which solves a known problem using a means to do so that has already been identified within the published art as the bringer of the needed technical effect. Seems to me that SCOTUS has been reading the 100 year old English case Williams v. Nye, the “sausage machine” case. When you collocate two elements from the same technical area and as a result get nothing more than what you would expect, you haven’t yet got a patentable invention. What goes around comes around. I shall continue to enjoy myself, writing to PTO Examiners a nice story, how my client’s invention represents a nice little contribution to the field,with reference to the realistic prior art starting point, and hope to seduce the Examiner into rewarding my client with a nice little enforceable monopoly that has a scope of protection commensurate with the contribution.
“Under the correct analysis, any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.”
This is the most idiotic sentence about patentability I ever read…
Let’s see…
You want to compress photographic image files – a well-known problem for years
Let’s try something that nobody tried before – a well-known wavelet transform ..
Wow ! It works, let’s patent it !!!
Not so fast, because your novel and original solution *may be* obvious in light of KSR:
“An obvious to try method from a finite set of available techniques”
Here we go, JPEG image compression…
Want me to continue ?
I am about to invalidate all MP3 patents, then I can proceed to other standards…
“Simply put, if you state a problem and then solve it with known elements, your solution **may be** obvious (unless teaching away or unexpected results).”
Same as it ever was, tho’ I fixed the unecessarily rigid tone of your description.
There may be combinations of disparate known elements that are inventive without any express “teaching away” or “unexpected results.” It’s hard to say.
Contrary to “inventor” and “MaxDrei”, and with all respect, I believe this is the death of the Problem Solution approach for US Patents, not a reaffirmation of it. On page 16 of the opinion the Court states:
“Under the correct analysis, any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.”
Simply put, if you state a problem and then solve it with known elements, your solution is obvious (unless teaching away or unexpected results).
Any patent drafter that offers a problem solution approach is an easy target to be taken down by this quote.
I’d appreciate someone telling me that I’m wrong, because I’ve come to love the problem solution approach over the years, and now I think I have to go back to the “flash of genius” story.
“As I read the KSR opinion again, I don’t see any rejection of the TSM test, merely the rejection of the rigid application of that test.”
Yes. Exactly as many of us predicted.
As I read the KSR opinion again, I don’t see any rejection of the TSM test, merely the rejection of the rigid application of that test.
The Court said, “The obviousness analysis cannot be confined by a formalistic conception of the words teaching, suggestion, and motivation, or by overemphasis on the importance of published articles and the explicit content of issued patents.”
The Court added, “Rigid preventative rules that deny factfinders recourse to common sense, however, are neither necessary under our case law nor consistent with it.”
Finally, the Court left it up to the Federal Circuit to determine whether its more recent TSM cases “describe an analysis more consistent with our earlier precedents and our decision here.”
I expect the Federal Circuit to continue to use their less rigid TSM test, which has been recently articulated in Dystar, Alza, etc.
Sorry ’bout repetitive posts, my ‘pooter hiccupped.
“If I remember correctly, wavelets were invented for sound analysis by (employees of the) holders of the core patents, who if I remember correctly are universities and big corporations.”
Sorry, my friend.. your memory is deficient..
Wavelets were not invented for sound analysis
link to en.wikipedia.org
And the primary application of wavelets is actually image compression, not sound compression
But, hell, what’s the difference ? Image compression, sound compression…
Obvious to try
I see this as a real step forward for “real” inventors (those of extraodinary insight AND creativity)as opposed to “variation on a known theme” inventors (those who simply improve product design based on previously identified technology) – in essence, people who are simply intelligent and knowledgable, but not creative and insightful, have just been handed their walking papers by the Supreme Court in the arena of patents.
I’ve read through the SC’s decision on this 4 times now, and the more I read, the happier I become with this one. As an inventor, this decision pretty much says that when I invent something that represents a “new paradigm”, the run of the mill engineers in my industry can no longer claim my work by throwing prior art phrases at the end of each of MY independent claims and encapsulate my work with OBVIOUS IMPROVEMENTS!!!!
The cool thing about KSR is that there was a motivation to combine the specific limitations claimed, at the time their application was submitted, STATED IN THE PRIOR ART in reference to “analogous means”. I don’t see this killing the “Hindsight” arguement at all, but rather that the supreme court thinks that 103 should actually mean something, and that one of ordinary skill in the art is NOT presumed to be completely brain dead.
Regarding the effects of this on existing patent applications and recently issued patents, I can tell you that this really impacts a ton of apps pouring out of the biggest companies in my industry. In my industry at least, engineers working for large companies do not invent (projects that require invention are avoided at all costs as the risk of failure, and therefore the risk of termination for cause, is incredibly high), and while they are generally quite intelligent, they are not creative in the sense of being able to concieve of something that is unanticipated by the prior work of inventors.
At the end of the day, I see this as a real step forward for creative folk re patents – those who are merely intelligent and knowledgable, yet lacking in extreme creativity, have just been given their walking papers by the supreme court.
KSR and Liebel Flarsheim are two long-overdue steps toward sanity. The fundamental principal of the patent system must be that the rights (if any) that you obtain are commensurate with the what you have done (if anything) to advance the state of scientific / techical knowledge. Both move us closer to something like that.
Of course the hard part is creating an examination and court system that screens out the junk and only lets the legitimate inventions stand. How are we doing? Applicants clog the PTO with applications drawn to anything and everything they come up with. Attorneys / agents, who often do not have the expertise or real-world experience to tell what is new from what is conventional, write the applications to be as generic and non-commital as possible. The applications are examined by examiners who often have no real-world context to draw upon, who refer primarily to prior US patents that, besides being out of date, represent only a fraction of what is known in any given field (not to mention often being poorly written and even intentionally vague), and who too often demonstrate zero grasp of the legal principals that they are charged with applying (or the ability to express a cogent thought in writing, or reasonable English language skills… ). And then once the patent is granted, its value derives from how much a jury of bumpkins can be persuaded to award in damages for its infringement.
There is very little justification for a presumption of validity, given the current ham-fisted system (speaking from the EE perspective anyway).
If I remember correctly, wavelets were invented for sound analysis by (employees of the) holders of the core patents, who if I remember correctly are universities and big corporations.
Currently litigation drags on for years in software cases and most defendants settle *even if* the patents involved are mind-numbingly obvious, thanks to uncertainty as to whether these obvious patents will be upheld. From the POV of software, this case increases certainty (that they won’t be).
I think the actual source of the problem was the Federal Circuit’s orders forcing the Patent Office to issue patents it didn’t want to issue, based on the overly strict definitions of “obviousness” repudiated by the Supreme Court in this case. This has led the Patent Office to over-issue. If the Patent Office stops overissuing, it should make it possible for the presumption of validity to return to its proper place.
I suspect what’s really wanted for “certainty” is a better definition of the POSITA. It’s clear that the threshhold for patentability should be very different in different fields, because they have different POSITAs. Perhaps the best thing to do would be to have the patent office create a formal classification of all known fields with their POSITAs (perhaps based on the industry or job classifications already existing?), and update it regularly. Only a tiny minority of patent applications will be in a brand new field, and those will be almost certain to be nonobvious. There’s a new proposal for you. 🙂
Keep ’em coming folks. I mean the cries of “We are all doomed, doomed, doomed”. Pure entertainment for anybody practising in the European area, where concepts of novelty, obviousness, sufficiency, clarity, priority date entitlement, new matter, after 27 years of EPO jurisprudence, are all pretty well done and dusted, and the USPTO and the CAFC are rowing towards EPO legal certainty as hard as they can. I admit that national pride in Europe still blocks a European standard for claim interpretation, a solution to the translation scandal and the creation of a pan-European CAFC, but readers will surely agree that national pride as a factor to be reckoned with is by no means exclusive to Europe. I await now wholesale adoption within the USPTO of EPO-style PSA. It might take some time to emerge though. Training all those Exrs will be a formidable and very lengthy task.
“The only ones whose disclosures are useful are almost certain to survive under the Supreme Court standards ”
Oh, yeah, they (patents) will eventually survive, but you (small inventor or undercapitalized startup) certainly will not… when patent litigation drags on for years, with legions of paid “experts” hired by big tech infringers testifying about the obviousness of e.g. apllying wavelets to sound compression (“obvious to try” I guess)
“One question always comes to mind when I hear this – if a present applicant’s invention is so obvious, how come the rubes in the art didn’t think of it first?”
In the computer software field, they usually *did*, but thought it was so obvious that they didn’t bother to file a patent, write a paper, or indeed leave any documentation of their actions outside the (copyrighted) software itself.
The independent appearance of the same “invention” repeatedly by dozens or hundreds of people who’d never seen the patent — and in software, almost *nobody* reads patents — is a pretty good sign that it was obvious.
“Particularly in the software arts, the majority of inventions would likely remain below this new obviousness threshold.”
This is largely desirable — software patents which are obvious have been issuing at a phenomenal rate — and it is clearly the intent of the Supreme Court to restore the prior, higher, obviousness standard. If you’re filing software patents, they’d better be at least as original as wavelet compression techniques for sound files, not xor for cursor display.
It’s funny watching the patent lawyers complain. Nobody else will. The entire problem with CAFC is that it has been run for the benefit of patent lawyers, always erring towards overissuing patents. Erring on the side of overissuing is more dangerous to the public interest than the reverse, and the Supreme Court just said as much. The Patent Office may finally be able to catch up on its backlog, if the masses of obvious business method and software patents stop appearing to clog up the queue.
Since software patents usually make no useful disclosures, their loss is only a net benefit (except to patent lawyers). The only ones whose disclosures are useful are almost certain to survive under the Supreme Court standards — perhaps the patents on sound compression techniques which are based on observed properties of human hearing, for instance.
I think Derrick’s summed up the practical effects pretty well. If you’re in a slow-moving field where research is expensive and difficult, a field where people scour patents for new disclosures, your combination patents are probably mostly going to go through no problem. If you’re patenting “business methods” or software, you will have to show something really original, not the usual crap.
“What’s happening is that we have a Supreme Court that feels that protecting the wealth of big companies is more important than incentivizing disclosure”
yeah..
This SCOTUS was repeatedly praised for being “pro-business”, not just in patent-related cases: look at the Kelo (real estate) decision and the outrage that followed it.
Pro-business indeed…
From now on, Trade Secrets rule ! To hell with patents and disclosure…
MaxDrei:
Nicely said. The problem-solution approach is a rock in a sea of hand waving. It’s too bad that few people really understand this methodical and elegant solution to the obviousness problem.
Many of the comments miss the point of patents: DISCLOSURE.
The patent system is a system for incentivizing inventors to disclose.
What’s happening is that we have a Supreme Court that feels that protecting the wealth of big companies is more important than incentivizing disclosure.
In the long run, we will simply have less disclosure and more of a might-equals-right marketplace, where the big companies appropriate the technologies of small companies with impunity.
For consistency, I am the “anonymous” poster at 4/30 6:31. I’ve just got to clarify my comments that the Supreme Court “emasculated the TSM test.” It seems like everyone here keeps reminding me, as Crouch suggests, that the Supreme Court didn’t GET RID of the TSM test. I narrowly agree: they didn’t GET RID of it, but they have certainly forced the Fed. Cir. to make it an afterthought as opposed to a primary concern. If the opinion on this board is that the CAFC did not previously apply the TSM test in a narrow, wooden fashion, and therefore, this opinion changes little, then I stand opposed in the minority.
As for the resurrection of the “obvious to try” standard, I’ll clarify again: “obvious to try” from “non-analogous” prior art. Perhaps “obvious to try” from analogous prior art has been kicking around (although, very, very weakly in my opinion)…but it’s been dead as a doornail with respect to nonanalogous prior art.
Again, it seems I am in the extreme minority thinking that (1) this does, at least formalistically, have a big effect (even though, the CAFC probably thinks, “Who the hell does Scotus think it is in reversing us?”) and (2) the tone and the growing resentment towards the inconsistency of the Fed. Cir. (although, I understand Scotus is much to blame for patent inconsistency after Markman) gives this opinion more weight as a “political gunshot” than your average Scotus patent case.
On an entirely separate note, would anyone like to comment on the idea that the decision, by “expanding” obviousness, reaffirms the “Winslow’s tableau” idea: anything you can “stick on the wall” gets in?
While I am not fond of this decision, does anyone think that the Federal Circuit’s Liebel Flarshiem case is really more devastating. I mean that case seems to really restrict the interpretation of claims due to the enablement of the full scope language. I am coming from the mechanical side where disclosing one embodiment was typically all that was required.
Here, I can sum up the case in two sentences.
If you have an e-commerce patent or e-commerce technology your IP rights in the patent area are useless-at least if you have an e-commerce patent you have a great wall decoration.
If you have a patent, or technology, wherein the ordinary skill in the art is a Phd in Chemistry, a Masters in Electrical Engineering or a Phd in biotechnology plus two years post doctoral experience, you are pretty much good to go and can use the old analysis.
Mark,
The KSR announcement itself is a non-event because everyone knew it was going to happen.
Thus the bad effects were already priced into the stocks before it was announced.
This does not negate the overall anti-patent trend that’s been going on for at least 5 years (Festo, ebay, Medimune, Dystar, In Re Kahn, the dreaded ‘new rules’, the BSA-sponsored legislation that keeps being re-proposed, etc etc etc).
KSR just confirmed this.
I agree that KSR by itself seems like a non-event since the CAFC has already taken this approach in more recent cases.
KSR is a non event at least from a patent value standpoing.
Why do I say that? If you look at the Ocean Tomo Patent Index you will see that patent rich companies actually outperformed the S&P 500 when KSR was announced.
link to finance.yahoo.com
Could an EPO PSA approach come back to bite a U.S. applicant based on section II.C? (“Under the correct analysis, any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.”).
How can anyone be surprised at this decision? It seems to me that the patent bar had become too inward looking and too self satisfied and as a result had become disconnected from the broader law and the underlying purpose of a patent system. Now the Supreme Court has taken a modest step to get the CAFC and the patent bar reconnected with reality.
The statement in the decision likely to have the biggest impact in the long term is:
“Granting patent protection to advances that would occur in the ordinary course without real innovation retards progress …”
Small inventor (patent troll) has it right. KSR v. Teleflex is a full employment act for the “experts”. They will be providing us with psychological profiles of PHOSITA –What was going through PHOSITA’s mind? Who exactly is PHOSITA at that precious moment in time? What paradigm is stuck in his mind due to the industry fad of the moment and why is the invention a bold new “paradigm shift”?
Small inventor won’t be able to afford the big ticket experts. That puts small inventor at a huge disadvantage. But since when did the big whigs on the bench care about the small guy? What’s in your wallet?
This ruling casts obviousness jurisprudence back to the stone age (hey, I should know) – or at least 40 years or so.
Let me translate this ruling into simple English.
In the begining, the world was formless and void. Everyone is grousing about “patent quality” and “bad patents.” Reasearch in Motion got sued and the Blackberry driods shivered in their knickers. Programmers were afraid to write a line of code and spent all their time blogging. Nothing was getting done. Patents were taking 3 and 4 years to get examined.
And the PTO says, “hey we’re doing the best we can, but its hard to meet our production numbers AND deliver quality when we have to spend time actually analyzing the references we find by plugging all the claim terms into our multi-billion dollar computer search system.”
Good patent attorneys can fairly easily pick apart our 103 rejections by actually reading the applied references and finding inconsistencies between them that would support NOT combining them”
It would be nice if we could just finish our latte, do our computer search, cob a couple of references together, make up silly reasons to combine the art, as we usually do anyway, e.g. ‘Smith fails to teach B, but Jones teaches B, therefore it would have been obvious to combine Smith and Jones to make the world a better place’ and then be home in time for Judge Judy…”
and the Supreme Court said “OK great, just look at page 16 of the KSR opinion, toward the end of the second paragraph. Consider it done.”
Under this ruling virtually ANYTHING can be found obvious.
Consider now that the “creativity” of a person of ordinary skill can be considered along with the “predictability” of the creative step. Well, my friend, if creativity is the spark of invention, and now it can become a factor in determining obviousness, well, you can figure out the rest.
Since even the most profound inventions are often lurking just a small creative step away from the prior art, this ruling is (as probably intended) going to have a huge chilling effect on patents.
Given the reasoning in this opinion, for example, it is a predictable creative step that levels of integration of circuit chips will increase, therefore I guess there will be no more patents for VLSI inventions that increase integration scale.
I predict a free-for-all period in manufacturing, which, given the sinking dollar, is probably not a bad thing for industry. Unless of course you have some great technology, in which case you are probably NOT going to patent it.
So much for promoting progress.
Of course when those PTO fees stop rolling in, Congress may have something to say about the whole thing.
sufficient, necessary… blah blah blah
This SCOTUS creates more and more legal uncertainty with each patent ruling.
And legal uncertainty is a BAD thing if you are a small party asserting your rights in court.
Now what? If I want to assert my patent against some tech behemot what happens at the patent trial ? There is no TSM found anywhere. But they can certainly find each and every element in some non-patent references scattered across several different fields of study.
Will they bring legions of paid “experts” to testify that this “thing” would be obvious for them to try? I guess they will…
It is already a good tradition for those big tech infringers to have some “independent” experts faking tech demos for them (remember Eolas case and Pei Wei testimony)
With this new uncertainty the whole patent trial thing automatically becomes a hugely expensive and never-ending mess..
But I guess this is precisely what they want …
So, sufficent but NOT necessary…more coffee.