CAFC Applies KSR: Affirms Obviousness

Leapfrog v. Fisher-Price (Fed. Cir. 2007).

In their first true application of the Supreme Court’s obviousness pronouncement in KSR v. Teleflex, the Court of Appeals for the Federal Circuit (CAFC) affirmed a finding of obviousness.

Leapfrog and Fisher-Price compete in the toy market. In this case, leapfrog sued Fisher-Price — alleging that Fisher-Price’s PowerTouch Learning System infringes claim 35 of Leapfrog’s patent.

The trial court found the patent not-infringed and invalid as obvious.  On appeal, the CAFC affirmed, noting that the obviousness analysis requires a common sense approach rather than any rigid formula.

An obviousness determination is not the result of a rigid formula disassociated from the consideration of the facts of a case. Indeed, the common sense of those skilled in the art demonstrates why some combinations would have been obvious where others would not. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. __ (2007) (“The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.”).

The results may have serious implications for Internet-related patents that have a close non-Internet corollary. The two pieces of prior art were Bevin (electro-mechanical, but not electronic, toy for phonetic learning) and SSR (electronic book-type toy). Together, the two references teach almost all the elements of the asserted claim, and the courts found their combination to be appropriate.

We agree with the district court that one of ordinary skill in the art of children’s learning toys would have found it obvious to combine the Bevan device with the SSR to update it using modern electronic components in order to gain the commonly understood benefits of such adaptation, such as decreased size, increased reliability, simplified operation, and reduced cost. While the SSR only permits generation of a sound corresponding to the first letter of a word, it does so using electronic means. The combination is thus the adaptation of an old idea or invention (Bevan) using newer technology that is commonly available and understood in the art (the SSR). We therefore also find no clear error in the finding of the district court that one of ordinary skill in the art could have utilized the electronics of the SSR device, with the method of operation taught by Bevan, to allow a child to press each individual letter in a word and hear the individual phonemes associated with each letter to sound out the words.

The one remaining limitation — a “reader” — was “well-known in the art at the time of the invention” and its combination. That known element could be combined because it provides “an added benefit and simplified use of the toy for the child in order to increase its marketability.”

Finally, the court gave the patentee a chance to avoid the combination.

Leapfrog presents no evidence that the inclusion of a reader in this type of device was uniquely challenging or difficult for one of ordinary skill in the art. Nor does Leapfrog present any evidence that the inclusion of a device commonly used in the field of electronics (a reader), and even in the narrower art of electronic children’s toys, represented an unobvious step over the prior art.

Secondary factors not enough to save the day:

The district court explicitly stated in its opinion that Leapfrog had provided substantial evidence of commercial success, praise, and long-felt need, but that, given the strength of the prima facie obviousness showing, the evidence on secondary considerations was inadequate to overcome a final conclusion that claim 25 would have been obvious.

Obviousness affirmed.

Notes:

  • Judgment of non-infringement was also affirmed.
  • Read the case 

109 thoughts on “CAFC Applies KSR: Affirms Obviousness

  1. If you think that the KSR decision from the Supreme Court leaves much to be desired, did anyone happen to read what the Supremes did in Panetti v. Quarterman? Geesh! Check out this report on that one: link to theonion.com

  2. Mooney, your habit of characterizing everything as good/bad right/wrong is evidence of the strong dualism that permeates and is the source of your misery in your life (along with unrestrained ego). Talk to Buddha about it. You may find an answer for all of your problems.

  3. “John’s analysis has nothing to do with KSR Mooney.”

    Your habit of tossing out words like “nothing” as if they have no meaning is a bad one, Cavey. If you think John’s analysis has “nothing” to do with KSR, then you are wrong. But you are entitled to your belief. Nobody can take that away from you. Have a great Tuesday.

  4. Thanks John. I think your analysis is reasonable and legally correct in view of KSR.

    So I guess KSR didn’t destroy our ability to evaluate the obviousness of inventions after all.

  5. Magic Cue Ball: Determine the differences between your invention and the prior art.

    1. Change in color: PHOSITA would know that it is obvious to change color of a product unless color change results in unexpected results.

    2. Duplication of windows: PHOSITA would know that it is obvious to duplicate parts for their intended results unless duplication results in unexpected results.

    3. Addition of music player: PHOSITA would know that it is obvious to add a known component for its intended use unless addition results in unexpected results. Presumably no interaction between added music player and other uses of the magic cue ball. Remember that aggregations are not patentable.

    4. When turned over: this requires a prior art reference to make obvious. Presumably now the music player operates in conjunction with the answer giving function of the magic cue ball. If I turn the magic cue ball over to prepare for the presentation of a new answer and the music player plays to announce that a new answer is about to occur, now we have a combination of elements operating together. If there is prior art that uses a music player to announce an event (e.g. when I turn over an hour glass to start a new time period and music plays to announce such event OR when I roll a die to create a random number and music plays to announce such event, then the magic cue ball with a music player when turned over would have been obvious.

  6. “Maybe yes, maybe no. To prospective client: “Tell me more.””

    What do you need to know? Nobody’s described one before. I’ve never disclosed it to anybody. I finished a fully functional prototype yesterday.

    Can I patent this? I would hate to have someone copy my invention just when it’s getting popular. But I don’t want to waste my money filing if I can’t get a patent.

    Can I patent my invention? Or is it obvious? Who can apply this KSR case? Or is it really a worthless pile of garbage like some people seem to think?

  7. “Can I get a patent on it?”

    Maybe yes, maybe no. To prospective client: “Tell me more.”

    “Do I need one to market this invention?”

    Of course not.

    The question from a client I find much more relevant is “Should I try to secure a patent, why, and where?” Similarly, “Are there other means at hand to help accomplish my objectives, what are they, and what will they do that will help me?” These questions assume, of course, that an office interview is a comprehensive exploration into what it is that the client wants to accomplish from a business perspective.

  8. Here’s the problem. Any patent system that allows something as ‘obvious’ as the KSR patent is clearly broken. The Supreme Court agrees and have tried to come up with some reasonable alternative. It requires a patent examiner to come up with good reasons as to why a combination or predictable elements is NOT obvious. If the prevailing prior art teaches away from the combination, or if the combination is unexpected, then well, it’s arguably patentable even under KSR.

    I see this as a good thing. Too many stupid patents have been granted, and this is only good for the patent trolls out there.

    In other words, here’s the indisputable problem SCOTUS was faced with: CAFC’s TSM test as it then stood in KSR is obviously too rigid and led to too many bad patents.

    Come up with a solution rather than whinge about SCOTUS. After all, SCOTUS arguably left lots of room to move.They didn’t even express an opinion as to whether the revised post KSR CAFC TSM test was invalid or not.

    Here’s what we have after KSR.

    1. Mere conclusory expert opinion evidence containing no other supporting facts can no longer create a triable question of fact (In my view, good, because more declaratory judgments and summary judgments on questions of law will speed up the patent review process).

    2. Mere combinations of known effects are now presumed obvious, unless some other factor shows that the combination was not obvious (great! Bye bye the one click patents and drug companies patenting the same drug over and over with extended release, super extended release, effects, etc)

    3. If the patent applicant fails to disclose all relevant prior art, then there is strong question as to why the presumption of patentability should be extended to that application, because well, all the evidence was NOT before the patent examiner (how can this be bad?)

    4. Patent examiners and courts must give clearly articulated reasons as to why they find a patent to be obvious or otherwise (again, how can this possible be a bad thing?)

    5. TSM or obviousness does not have to be explicitly taught or published in prior art it can be so obvious as to go without saying (good, I worked in the software industry, and there was much that is obvious that would never have been explicitly published or taught, eg, the stupid Amazon one-click, the Eolas patent, and all other nonsense).

    6. A person of ordinary skill in the art is also a person of ordinary creativity (again, patents should only be awarded for genuinely innovative leaps, and the bar is raised to reflect our next understanding of the world. TSM as applied in KSR was obviously broken because it was too biased against hindsight and did not fairly reflect this ordinary creativity)

    Again, if you have a better objective test, I would invite you to come up with it, rather than continuing to advocate TSM, because TSM as applied by the CAFC was totally broken.

  9. Hey, I want to patent a toy I call the Magic Cue Ball. It’s sort of like the Magic 8 Ball except it’s colored like a cue ball and instead of one window it has two, with two “message bearing dice” (one for each window). And it plays music when you turn it over.

    Can I get a patent on it? Do I need one to market this invention?

    Thanks for any help.

    P.S. Those who have already admitted that you can’t do an obviousness analysis after KSR, please don’t bother trying to answer my question. Thanks.

  10. stepback

    It profits us nothing if a patent system accelerates one particular innovation by a few days or months if it then slows down follow-on inventions for 20 years. Progress is not a one shot process and showing that one invention came a little earlier does not mean that “progress” as a whole was promoted.

  11. Yo Joe,
    Check it out:
    US Const. Art. I, Sec. 8, clause 8.
    It doesn’t say: “to cause the inevitable progress”.
    It says to “promote”, as in to speed things up.

  12. Dear StepBack, thank you for writing, to tell me what is the problem with “my” Problem Solution Approach. It gives me the chance to have another go. Would you agree with me that, before you can identify a problem with something, you must have some understanding how that thing works. My problem with advocating PSA is not with artisans but with patent attorneys: ones who think they know what PSA is, and then criticise it, without first making sure they understand what they are criticising. PSA is independent of any subjective problem, and works best when the application as filed makes no mention whatsoever of any pre-existing problem. As you say, and I agree, inventors do their creative stuff without seeing it as “solving a problem”. PSA is perfectly attuned to that reality. The PSA “objective problem” (which you have to derive before continuing with PSA analysis) is an artificial derived quantity, meaningful only as a tool to get quickly (and fairly) to an answer to the question “Obvious, or not”. You derive it from a comparison of the announced technical effects of the claimed subject matter, relative to the technical effects achievable with the prior art starting point (D1). Since we don’t have D1 till the PTO renders its search report, we can’t begin to identify the objective problem till that point in time. Artisans meanwhile do understand technical effects and can brief their patent attorney on them, in the course of drafting the app. This is how PSA neatly avoids all the ex post facto stuff.

  13. “I have great difficulty conceptualizing how the mere issuance of a patent deprives others of their freedom.”

    What part of it don’t you understand?

    If a patent is issued on an idea which was a natural progression of recent developments and would have been inevitably invented independently multiple times within a short period then granting one person a patent allowing him to exclude the world takes away from everyone else their freedom.

  14. All very fine and good, the conceptual stuff of the last few items. But I’m just trying to be practical: to find a working methodology to answer the question “Obvious yes or no” for every claim that comes up for examination at the USPTO, and the same methodology to test every claim that gets asserted. We have such a methodology in Europe. I just want to share it with you guys. It’s no more than selfish self-interest. It will make it easier for me to take instructions from my many US clients, when they task me with getting their claims through, in Europe.

  15. “The patent system is about creating unsecurity since the result of the patent system is millions of page of privatized laws that forbids everyone to do do this and that.”

    I have always held the belief that two basic ingridients are necessary for a strong economy: (1) a predictable monetary system, and (2) a predictable property system. Insecurity with either of these creates insecurity in the conduct of business within the private sector.

    “Since we have a patent system, the question is who should bear insecurity the most? The hundred of millions of people or the lone “inventor” who seeks to remove from hundred of millions of people their freedom?”

    I have great difficulty conceptualizing how the mere issuance of a patent deprives others of their freedom.

    “The USA supreme court has clearly said there was no “automatic” test of obviousness…”

    In my experience the CCPA and the CAFC have said the same thing as well.

  16. Michael L. Slonecker, “no useful guidance”.

    The patent system is about creating unsecurity since the result of the patent system is millions of page of privatized laws that forbids everyone to do do this and that.

    If you want no insecurity, that’s simple: just get rid of the patent system.

    Since we have a patent system, the question is who should bear insecurity the most? The hundred of millions of people or the lone “inventor” who seeks to remove from hundred of millions of people their freedom?

    The USA supreme court has clearly said there was no “automatic” test of obviousness, so no automatic workaround language that lawyers can endlessly copy/paste to patent everything and the rest.

  17. Step back:

    It is easy for IPBiz to say that the reason VCs invest is because of management, and that is partially true. We’ve all seen amazing ideas that got nowhere because the inventor waited for someone else to develop his idea.

    To actualize a good idea you need the patent, a business plan and good management: no one is going to invest only in a good idea.

    That said, patents exist to give the scientist, the engineer, the “nerd” and the little guy in the garage a chance to see some return for their invention. Without a patent, the slick guys with MBAs will appropriate the inventor’s invention without even a thank you.

    Just think, if ideas are a “dime a dozen”, why did Microsoft have to “borrow” AT+Ts invention?

  18. MAx,

    I have to add one more thing:
    Take a look at IPBiz here:
    link to ipbiz.blogspot.com

    Venture capitalist stresses management; ideas are a dime a dozen ….

    “Patents are not why we are investing”
    Are patents a key feature for venture capitalist investment?
    What do venture capitalists really think about patents?

  19. Dear Max,

    The “problem” with your much cherished PSA approach is that most of our “ordinary” artisans out there do not realize they have a “problem”.

    Psychological surveys of our species repeatedly demonstrate that 90% of us believe ourselves to be clearly in the upper crust of humanity (at least in the top 50 percentile if not much higher). We have a natural tendency to poo poo the contributions of others.

    Telegraph? Why that is nothing but mere turning on and off of electrical current. Ha. I could’ve done that. (In fact I did the last time I walked across the carpet and a spark jumped from me like a flash of genius.)

    Telephone? Why that is nothing but mere turning on higher and lower the rush of electrical current through carbon particles. Ha. I could’ve done that. (In fact I did the last time I walked across the carpet with a pencil in hand and a spark jumped from me like a flash of genius.)

    Internet? Why that is nothing but mere turning on and off of electrical current. Ha. I could’ve done that. (In fact I did the last time I walked across the carpet …)

    DNA splicing? Ha. Our species has been doing it since the dawn of time. (In fact the last time I walked across the carpet with a vat of amino acids in my hand …)

    Well maybe you get the picture.
    If you don’t, you have a “problem”. Isn’t that obvious to you?

  20. “The longer I practice the more I realize just how pitifully little I really know.”

    Michael,
    Ditto. (Except that I have far fewer years of experience than you.)

    However, I don’t think that I venture too far out of the rationality box to observe that your average Supreme Court Justice of circa 2007 is not ready to admit to the same: “The longer I practice the more I realize just how pitifully little I really know.”

    Far from it. Some of them appear all too eager to charge bullheadedly into the pottery barn and rashly dismiss as “Gobbledygook” stuff they clearly have no appreciation of. They are ready to break a work of art here and a piece of craftsmanship there with hardly a nod towards the ingenuity of the men and women who spent lifetimes creating them.

    Giles Rich must be a churnin’ in his grave.

    Like you, I do not expect to divine any form of deep wisdom or understanding from this current crop of 9 Justices. They are way too full of themselves.

    However, as an amateur scientist who considers all forms of human hieroglyphics (even those found on the Internet) as in-field observations about how the species operates, I find it enterntaining to observe the hubris and arrogance with which the current 9 royally proclaim:

    … ["]We["] build and create by bringing to the tangible and palpable reality around us new works based on instinct, simple logic, ordinary inferences, extraordinary ideas, and sometimes even genius. These advances, once part of ["]our["] shared knowledge, define a new threshold from which innovation starts once more. And as progress beginning from [ever] higher levels of achievement is expected in the normal course, the results of ordinary innovation are not the subject of exclusive rights under the patent laws. Were it otherwise patents might stifle, rather than promote, the progress of useful arts.

    As a patent prosecutor, I feel myself honored to have access to the minds of some of the smartest people on the planet who work very hard to come up with some of the ingenious creations they come up with. Most of these people (in Silicon Valley in my case –but SV has no monopoly on gray matter) have PhDs and extensive years of experience in the fields in which they practice. They don’t willy nilly file applications for the fun of it. When they say their latest contribution is a nonobvious advancement, they know what they are talking about. Regretfully, there are way too many clueless patent examiners and judges out there in the wild who weild great power with no aid from Solomon-like wisdom or restraint. They take mere nanoseconds to split every baby in half (bar none) and then pat themeselves on the back for having done the fair, balanced and wise thing at Internet speed.

  21. The English court has a reputation for finding everything obvious, but it’s undeserved. Consider in the context of KSR debate the following quotation from the Westinghouse case in 1910, still quoted by the English courts today with warm approval. It contains the germ of the EPO problem and solution approach (PSA). Fletcher-Moulton LJ said: “I confess that I view with suspicion arguments that a new combination, bringing with it new and important consequences in the shape of practical machines, is not an invention, because, when it has once been established, it is easy to show how it might be arrived at by starting from something known, and taking a series of apparently easy steps. This ex post facto analysis of invention is unfair to the inventors, and in my opinion is not countenanced by English Patent Law.”

    How about that, as a way to resist over-zealous USPTO Examiners? Of course Exr might bite back with the equally old Williams v Nye (mere collocation of elements not a patentable invention). You then find yourself at the irreducible core of the obviousness issue, Yes or No, as it was in 1910. To get further along, you need EPO PSA.

    I realise, life is harder, under the current US Statute. Europeans can take comfort from the EPC, with its built-in mandatory Doctrine of Equivalents (Protocol on the Interpretation of Art 69 : protective scope that is “fair” to the inventor), that an inventor retains powerful rights in all courts downstream of issue, even after the EPO Examining Division and Board of Appeal has insisted on taking a tough line on obviousness.

  22. “I would receive a helpful definition of what the word or phrase actually means. Of course such a device would likely be obvious.”

    It is obvious since what you are suggesting is simply an automatically generated html linking to an appropriate dictionary. Even if it is obvious, it could be a viable product.

  23. Step Back,

    Just a short bio…

    I’ve been around since the 1970′s.

    Actually, I have been around since the late ’40s. Law came much later. During the years between college and law school I managed to fit in about 8 years of flying in the Navy.

    I’ve seen it all.

    No. The longer I practice the more I realize just how pitifully little I really know. Somewhere along the way I am supposed to acquire wisdom. I am still looking for it.

    The more things change, the more they stay the same.

    So true.

    It’s all part, ha ha, of the circle of life.

    I reside near Orlando and am Disney’ed out. I do not need to emulate The Lion King. Besides, it is not all that great as Broadway shows go.

    KSR continues in the fine tradition of Graham and its progeny, i.e., lots of “wise words” that impart virtually no useful guidance.

    True, in my view. Trying to really understand it is about as fruitful as explaining file wrapper estoppel to a client.

    What is it then that would help me help clients? Perhaps Leapfrog and/or Fisher-Price can adapt their “toys” to receive copies of court opinions so that by placing my finger on a word or phrase I would receive a helpful definition of what the word or phrase actually means. Of course such a device would likely be obvious.

  24. “Now in so far as Graham. No it was not total unintelligence. Neither was it “wise”. The Justices merely looked at the actual words of 103 and said, whoa, what have we here? Oh, a PHOSITA. Aha. In that case one must resolve the level of ordinary skill. (Duh.) What else have we here inside this 103 section? Oh. “Differences between the subject matter sought to be patented and the prior art”. In that case, the scope of the prior art is to be ascertained. Against this “background”, the obviousness determination is to be made. Not exactly “wise”. But not dumb and bullheaded either.”

    My “epiphany” occurred when I placed Graham on one side of my desk and a copy of 103 on the other. I read each carefully and noted that the two were not congruent. What was pronounced in Graham was but a subset of what was contained in 103.

    That immediately piqued my interest. On reflection it occured to me that the Supreme Court provided virtually no meaninful guidance that would permit me to provide informed and accurate advice to those persons who entered my office and said “I have invented something and would like to get a patent.” For example, how could I square the word “differences” with the additional qualification of “invention as a whole”? What about “…art to which said subject matter pertains.”? What art do we use? Art as exemplified by the PTO’s classification system, or some other method? What about the last sentence in 103 dealing with “negatived”?

    Returning to the client, what nuggets of insight were contained in Graham that would enable me to give the client an accurate assessment of how his/her invention “measured up” concerning patentability? Except in the most extraordinary of circumstances, the answer I arrived at was “none” of any practical utility.

    In my view all KSR does is perpetuate confusion and inconsistency of application for what is deemed obvious and what is not. Again, this is my view and reasonable minds can of course differ.

  25. Step Back:

    You make some good points re KSR (new language) and Graham. Would make an interesting article.

  26. “Doesn’t it seem a bit odd that 103 jurisprudence is defined by a door knob, a battery, a plow shank, a road paver, a manure remover, and a pedal adjuster?”

    Why should that seem odd. Patents are about improving useful things. Obviousness is most likely to come up in the context of an improvement to something relatively mundane that already exists. It is in the ordinariness of these things that those who cry doom and gloom should seek comfort.

    Do not lose sight of the facts of KSR – the invention there should have been found to be obvious by any reasonable standard – or do you disagree?

  27. “A bit later I had the opportunity to revisit Graham and thoroughly dissect what is said. Only then did it dawn on me that the proferred “test” was nothing more tha[n] unintelli[gi]ble gibberish.”

    Michael,

    Usually I enjoy reading your comments because they are well thought out and “intelligible”.
    With this last one regretably, I must take exception. If I may rephrase it somewhat, it distills down to this:

    I’ve been around since the 1970′s.
    I’ve seen it all.
    The more things change, the more they stay the same.
    It’s all part, ha ha, of the circle of life.
    “KSR continues in the fine tradition of Graham and its progeny, i.e., lots of “wise words” that impart virtually no useful guidance.”

    With all due respect sir, there is no circle of life. It’s a spiral. And in this case it is a destructive spiral. KSR tears down 50+ years of case law developed by the CPAC and the CAFC concerning the need for TSM. KSR is the bull that entered the china shop and romped around with full assuredness that it was doing the “common sense” thing. Those of us who are left behind will have to start over again from the raw language of 103 (assuming Congress doesn’t shred that as well), pick up the pieces, and reconstruct a new shop of “obviousness”. What will emerge, no one knows for sure at this moment. It’s a new dawn and a new game.

    Now in so far as Graham. No it was not total unintelligence. Neither was it “wise”. The Justices merely looked at the actual words of 103 and said, whoa, what have we here? Oh, a PHOSITA. Aha. In that case one must resolve the level of ordinary skill. (Duh.) What else have we here inside this 103 section? Oh. “Differences between the subject matter sought to be patented and the prior art”. In that case, the scope of the prior art is to be ascertained. Against this “background”, the obviousness determination is to be made. Not exactly “wise”. But not dumb and bullheaded either.

    Did the KSR 9 do as much as those who decided Graham? No. The KSR 9 made up new language out of thin air. As you correctly point out, KSR includes phrases such as “real innovation”, “higher levels of achievement”. “ordinary innovation”, etc. (ad nauseum). None of that is found inside 103. For people who claim to be strict constructionists, they were anything but when it came to KSR.

    So if you step back and look at the bigger historical picture, the IQ of the Supreme Court has spiraled to a new low. It’s not a circle. It’s a fall from grace. When they fell, we went down with them. God help the “new and improved” American patent system.

  28. AllParadox,
    You and WW must be sharing the same crack pipe. So you agree that instead of seeking a patent on your innovative patentable product, just make and introduce it to the marketplace, and you as the inventor or your company will just thrive and have robust sales and so what if another company takes your product invention and makes it cheaper and in more volume and puts you out of business- thats just the way it should be- the patent would be a waste of time. Pass the pipe now to WW, its his turn.

  29. “Wise words”

    When I fist began practicing law in the late ’70s I was asked to prepare a memo concerning how does one go about determinig obviousnes? I was so proud to find Graham, and crafted my memo around its “wise words”. A big smile on my face, I presented my memo. It was received with a thank you and a wry smile.

    A bit later I had the opportunity to revisit Graham and thoroughly dissect what is said. Only then did it dawn on me that the proferred “test” was nothing more that unintellible gibberish.

    The same can be said after I read Adams, Anderson’s and Sakraida. Each of them contained as well “wise words” that likewise reflected what I discovered upon reconsidering what Graham actually said.

    KSR continues in the fine tradition of Graham and its progeny, i.e., lots of “wise words” that impart virtually no useful guidance. How does one give meaning to phrases such as “real innovation”, “higher levels of achievement”. “ordinary innovation”, etc. (ad nauseum).

    All in all, the primary impact I have seen from these several cases “peaking and tweaking” 103 is the introduction of even more uncertainty.

    It seems the more things change the more they stay the same. Patent practice to date, even in the post-KSR area, will continue much as it has for the past 100+ years. All that really changes in any significant sense is that the citation to “older” cases will now change to the citation of “newer” cases. Perhaps this is what is meant by “progress”, but it certainly provides no “bright light” as the Supreme Court would have people believe.

    Doesn’t it seem a bit odd that 103 jurisprudence is defined by a door knob, a battery, a plow shank, a road paver, a manure remover, and a pedal adjuster?

    In the final analysis prosecution will continue largely as before. The same can be said of litigation. The game is same; only the names of the players have changed.

  30. “When a small manufacturer introduces an innovative patentable product into the market without patent protection and other big companies just copy it and bury the small manufacturer, that is the right thing to do.”

    Yes. That is the way it works, and that is the right thing to do.

    I don’t like that, but reality does not operate according to my likes or desires.

  31. WampagingWabbits,
    You must be smoking crack to make such an assinine comment-was that really you or the crack talking? So if a small manufacturer introduces an innovative patentable product into the market without patent protection and other big companies just copy it and bury the small manufacturer, that is the right thing to do. Better take another hit, WW.

  32. Ironically, when a manufacturer attempts to prevent competition from a “copycat” manufacturer using patents, they are often doing themselves a disservice from a marketing perspective. A market that contains two or more manufacturers usually generates more publicity due to the element of conflict and competition (and arguably more innovation in product development) and frequently increases the size of the market for the product. Even though the original manufacturer must put up with a lesser share of the market, the market grows faster, and they are favourites to capture the majority of that larger market, based on their existing brand recognition as the first product into the market.

    Monopoly is not always a good business model (unless people are forced to use the product or service), and the fact patents often force the market in that direction puts them somewhat out of step with a modern marketing and business approach.

  33. AllParadox, be careful of what you say or else the righteous Peter Papp will say you’re just a clone of evil Malcolm Mooney :).

    The supreme court was very clear on the risks caused by the current “it’s not obvious unless you prove by writing an encyclopedia that it’s obvious” trend.

    Patent attorney will have to turn down by themselves lots of clients instead of wasting examiner time, that’s the obvious consequence of KSR.

    Wise words:

    “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.”

    “And as progress beginning from higher levels of achievement is expected in the normal course, the results of ordinary innovation are not the subject of exclusive rights under the patent laws. Were it otherwise patents might stifle, rather than promote, the progress of useful arts.”

  34. A number of the comments here suggest that Patent Examiners will be significantly burdened by the recent Supreme Court Opinion in KSR v. Teleflexwor.

    This new burden is not obvious to me.

    It appears to me that KSR v. Teleflex simply restores the status quo ante.

    Before the CAFC went off on it’s tangent regarding obviousness, my recollection is that Examiners regularly rejected applications for obviousness. IIRC, it was the most frequent cause for rejection.

    It is not, however, KSR that will increase the workload for Examiners. It is the APA, which is part of the basis for Lee. (Please note that within Lee, the CAFC continues to posit the old rule regarding basis. IMHO, with that wording, citation of Lee stands on infirm ground)

    Per the APA, the Examiner now must do more than simply say “obvious”. Fundamentally, that is only fair. Frankly, some of the earlier “obvious” rulings were arbitrary or capricious. Let us not forget, however, that Examiners work in the same patent area for years. For the great majority of patent applications in their area, they are “skilled in the art”. Furthermore, their current experience in researching and reviewing other, similar, patent applications, gives them insight for efficiently finding and citing references in many of the cases.

    The burden then shifts to the applicant to prove that the examiner is incorrect: that those skilled in the art actively avoid the combination, or that those skilled in the art are unaware of one or more of the combined techniques, or that the result is unexpected.

    This is no more than the traditional position of an applicant, and imposes no additional, unfair, burden that has always been required.

    To my way of thinking, it has actually been the responsibility of the patent attorney to put those details in the *initial* application, instead of forcing the Examiner to search for contrary evidence in the first instance. It is the applicant’s burden of proof, after all.

  35. Step Back,

    The language you quoted is standard and ubiquitous in applications. I believe its primary purpose is DOE. As Peanut Gallery said, it does not say that the invention is obvious in view of the prior art.

  36. Mark and others:

    Regarding the use of EEs at Sandia, I believe the court was stressing that what was *patented* was simply the concept of the invention, not the actual thing. By pointing out that the inventor had no special engineering skill, and relied on others to produce the invention, they were distinguishing what the invention actually entailed, i.e., conceptually implementing known functionality into an electronic device, from the actual making of the device. This avoids having to address the myriad problems faced in the development of the final product. Many of these problems no doubt had patentable solutions, but these solutions were not the subject of *this* patent.

  37. Step Back wrote:

    “The foregoing description is offered for illustrative purposes only. Numerous modifications and variations may be readily apparent to those skilled in the art, while still falling within the spirit and scope of the invention as claimed herein below.”

    We patent attorneys don’t often like to criticize other attorneys/agents. But what was the drafter of these two last lines thinking –if at all?

    Response:

    I don’t think these lines say what you think they say.

    They do NOT say that the invention is a result of making readily apparent modifications to the prior art.

    They DO say that making apparent modifications to the disclosed embodiment(s) should not allow a future infringer to get off the hook.

  38. “We patent attorneys don’t often like to criticize other attorneys/agents. But what was the drafter of these two last lines thinking –if at all?”

    step back, I see lines like the ones you pointed out in applications quite routinely.

  39. Having now given the underlying patent a once over read, it seems this is one of those instances where bad facts make bad case law:

    link to patft.uspto.gov

    This last 2 lines written before the claims is a doozy IMHO:

    “The foregoing description is offered for illustrative purposes only. Numerous modifications and variations may be readily apparent to those skilled in the art, while still falling within the spirit and scope of the invention as claimed herein below.”

    We patent attorneys don’t often like to criticize other attorneys/agents. But what was the drafter of these two last lines thinking –if at all?

  40. There are some troubling aspects to the way this “child’s toy” case was handled. I think many of us are still grappling with how to articulate the stuff that just “feels wrong” about its handling. Certainly the plaintiff did not receive due process of law. The game was switched on them just as they finished crossing the stream. There is no way they could have strategized for this sudden flip flop in the patent law.

    First off, neither of the two primary references contained a “reader”. (Having not yet read the underlying patent, I’m not sure what a “reader” is in this context.) Rather than pinpointing a specific 3rd reference that has a “reader” and articulating a reason for combining, the CAFC just waved its hand and said “readers” are out there and that’s good enough for throwing one in into the cauldron of soup that makes up this invention. In days of old, one had to read a reference in whole and articulate a “reason” for combining. Sweeping this step under the rug and making a nonsensical “common sense” noise just didn’t cut it.

    Second, there is the issue of who is the “ordinary” “artisan” in the children’s toy business. How about a high level company executive who waves his hand at the engineers and says, “I don’t want to know the details, just make it happen”; is that person an “artisan”? Are the engineers his menial slaves? At what point does the “artisan” label end and the label of clueless business manger (i.e. Dilbert’s manager) begin? Is your average Federal judge a clueless business manager? Does your average Federal judge have enough uncommon sense to understand how an “artisan” thinks?

    Third there is this business about the processor “determining” what the phonetic sound of the letter is based on its position in the identified sequence of letters. Which piece of the prior art did exactly the same kind of “determining”? (Once again, I have not yet read the underlying patent. It would be interesting to see if the word “determining” had some special nuance to it. Maybe not in this case. The Fed. Cir. did not appear to address that aspect in detail.)

    So that’s some of the stuff that “feels wrong” about the way this case was handled. And of course, this plaintiff has no chance of winning cert. to the US Supreme Court. They are not about to reverse themselves after having just issued the KSR opinion.

  41. It seems to me that in light of KSR, good practice in terms of drafting the original application would have been to interview the EE who built the prototype, get some input on the problems he/she had to solve to build said prototype, add said matter to the specification and then claim it. (And add the EE as a coinventor, of course, with assignment of rights, etc.)

    As a former chemical engineering R&D manager with 17 of my own patents, I can attest to the fact that there is often a lot more involved in the “simple” application of new technology to a prior problem than is readily apparent to a casual observer. I’ll bet if the applicant really got into the details what actually had to be done to get the invention to work, it might have appeared a lot less obvious.

    As David Boundy mentioned in an earlier post,

    “Do 112p1. Do it right. Then stop.”

    And if I may add “Let the facts speak for themselves.”

  42. The sky isn’t falling. It’s not raining. It’s not even partly cloudly. This case merely demonstrates that the Graham-related facts of each particular case will matter. This must be a bummer for plaintiffs — like the one in this case — that needed a rigid version of the TSM to prevail.

    As for the sky-is-falling concern that electronics-related patents might generally be suspect, I’m sure there were plenty of other narrower claims that would have been upheld — but were not asserted because of non-infringement issues. There’s nothing wrong with section 103 weeding out broader claims that encompass obvious subject matter.

    As for the clear and convincing evidence issue, the facts were proved by clear and convincing evidence. That is, the content of the prior art and the skill in the art *were* proven by clear and convincing evidence. The ultimate conclusion of obviousness was supported by that clear and convincing evidence. What’s the issue here? Do you want the ultimate conclusion of law (in addition to the evidence) to be made according to a clear and convincing standard?

    Claimed inventions without any substantial reason demonstrating their non-obviousness (other than the absence of an explicit TSM) are more likely to be shot down. Is that such a bad result?

  43. Actually, Peter, there was a Malcolm Mooney namestealer earlier in the year. Truly pathetic — almost as pathetic as obliquely attacking the commenter’s sexual orientation or suggesting that the commenter seek psychiatric help.

    “In my opinion, he/she can be identified as particularly deleterious to the overall quality of this board.”

    Thanks, Peter. That’s real kind of you.

    “First comment, worthwhile in a limited, easy, knee-jerk “obvious” type of way. Care to follow up with more considered suggestions?”

    What are you talking about Peter? What is “more considered”? You asked a question and I answered it, plainly and directly. Is there some sort of minimum line requirement for responding to questions? Let me know, ref.

    “Second comment, not worthwhile. Of course, the issue is not whether or not the facts are correct, it is whether or not there is evidence tending to prove that the facts are correct.”

    You’re ducking the question that I asked you, which was an attempt to ground your sophistry in the real world of patent examination. If the issue is “whether the sky is blue” does an Examiner need to present evidence, as a legal necessity? Or can the Examiner simply say: the sky is blue? Put another way, should examiners be required to provide evidence intended to prove EVERY fact at issue to the APPLICANTS satisfaction?

    I think the answer to both questions is “no.” People aren’t idiots, even if attorneys sometimes feel the need to pretend that they are.

  44. Mr. Papp,

    I have taken the liberty of using your name to see if your last point is valid.

  45. Thanks peanut gallery.

    It seems that on balance Mooney is more of an impediment to this board than he/she is an asset.

    What benefit Mooney has seemed to provide to this board could and maybe would easily have been provided by others. In my opinion, he/she can be identified as particularly deleterious to the overall quality of this board.

    Interestingly, it seems at first glance that only one party has been using the name “Malcolm Mooney”, as the contributions are remarkably consistent in tone and quality. Of course that is not verified, but it does suggest that even would-be pranksters find the thought of posing as Mooney, of even unknowingly being recognized by others as being Mooney, as being particularly unpalatable.

    That is, if more than one party can post using the name “Malcolm Mooney”.

  46. Mooney–

    First comment, worthwhile in a limited, easy, knee-jerk “obvious” type of way. Care to follow up with more considered suggestions?

    Second comment, not worthwhile. Of course, the issue is not whether or not the facts are correct, it is whether or not there is evidence tending to prove that the facts are correct.

    Please read the posts Mooney.

  47. Peter Papp said:

    I see from Mooney’s comments that he/she has not taken the time to read and consider the comments posted. Unfortunately I don’t see any point in continuing to contribute to this thread as long as Mooney dominates the discussion. I would love to read some considered responses, if anybody can get past Mooney.

    Response:

    Join the rest of us in applying a manual /IGNORE. Reading the threads is much easier and enjoyable with a selective /IGNORE in place.

  48. “Are mere assertions of fact by the examiner sufficient, or must there be “findings” of fact by the examiner?”

    What’s the difference, as long as the alleged facts are correct?

  49. ” What could constitute “evidence” of OSITA, as presented by an examiner?”

    Admissions by an applicant in the specification. For starters.

  50. Alun–

    Amazingly, yours is the first mention I have heard post-KSR of the Lee case.

    Lee contains references to other cases, which make requirements to “clearly disclose” and “adequately sustain” grounds of action, as well as the recognized rational connection test. The basic problem comes down to being an evidentiary one–the legal fiction of the “PHOSITA” and more specifically the “OSITA” can support a “rational connection” test only if there is some believable evidence on which the agency based its decision. Because the OSITA issue is always briefed and argued in a court case, there is always some believable evidence in the record to support whatever construction the court wants to give to the OSITA.

    However, the same is not necessarily true at the examiner level. What could constitute “evidence” of OSITA, as presented by an examiner? Are mere assertions of fact by the examiner sufficient, or must there be “findings” of fact by the examiner? If mere assertions of fact are sufficient (“any mech eng grad would know to put the sensor after/before the pivot”), does this necessarily imply that all examiners must by definition be considered PHOSITA’s?

    Thanks for the discussion.

  51. Metoo, that’s a good question. I’ve tried citing Zurko and In Re Sang Su Lee, which support the evidentiary requirements of the APA, but 9/10 of the time citing case law to an Examiner is like talking to a wall anyway. I am now concerned that although Sang Su Lee countered Examiners’ use of ‘common sense’ as ‘arbitrary and capricious’, KSR will now be argued as distinguishing over Lee by endorsing ‘common sense’, even though Lee is a very fair interpretation of the APA.

    IMHO ‘common sense’ is inherently ‘arbitrary and capricious’ because ‘common sense’ is merely whatever any individual deems it to be.

    OTOH, Sang Su Lee just calls for reasoning to be given instead of saying ‘because I said so’, so I suppose it is better to construct an argument based on lack of reasoning having been given and thus failure to meet the substantial evidence standard, and be very careful never to mention the words ‘common sense’ for fear of invoking KSR.

  52. Sorry, substitute “unsureness” for the final use of the word “proposition” in my last post–”…and which unsureness tends to suggest that the invention was not obvious.”

  53. “Almost any new electronic device is simply a combination of components that one can find in the prior art.”

    If that’s true of any new PATENTED electronic device, it is a sad and damning description of the field.

    Too bad. But I suppose all trends must play themselves out until they are replaced.

  54. Metoo–

    I appreciate that examiners probably have no idea that the APA even exists. I was talking about raising and arguing the issue in reviewing the actions of an examiner, not at the examiner level. Presumably, APA requirements are all factored into the PTO’s rules, policies, and guidelines. I have no illusions about the likelihood that APA provisions are followed strictly by any agency, let alone the PTO.

    Your other point, about the art to which the level of ordinary skill pertains, is a clearer articulation than I made of what I was thinking about in a previous post. I mention again that the court presumed that the “design of children’s learning devices” is at least in part a technical exercise, and that it would be useful to have more guidance from the court on the nature and extent of the technical competence that they believe is required.

    The wording they chose seems troublesome–for instance their choice of the word “design”, which evokes images of phrases like “mere design choices”, which seems to preclude any patentably inventive activity in that entire field.

    Then there is the issue of the “design” of children’s learning devices, that they described as the relevant art, versus the “execution” thereof, which is not spoken of. The court seems to be suggesting that some degree of actual execution is now implicitly required in the design process. This could be a useful requirement to argue when arguing for patent invalidation, under some theory like “some degree of execution, in an experimental sense, is required, if only to test a proposition that was previously unsure, and which proposition tends to suggest that the invention was not obvious.”

  55. How does one convince an examiner that they must follow APA, when it is sometimes impossible to convince them that they have to follow 35 USC, the CFR and/or the MPEP?

  56. Well, perhaps the problem with the “discussion” (if we can call it that) here is that the CAFC did comment on the “person of ordinary skill in the art.” Specifically, the court referred to “one of ordinary skill in designing children’s learning devices.” Now, that’s not really a complete statement of the level of “ordinary skill” in the “art to which the subject matter pertains” – in reality, it’s simply a statement of the relevant art (the design of children’s learning devices). Perhaps neither party raised the issue of the level of ordinary skill on appeal. Or, perhaps the panel was relying on prior CAFC opinions which held that it is not necessarily reversible error for the trial court not to set forth specific findings with respect to the level of ordinary skill. (e.g., Chore-Time Equip., 218 USPQ2d 673)

    Of course prior cases such as Chore-Time may not hold up to a challenge based on KSR, since KSR seems to require express findings on the question of ordinary skill in the relevant art (in fact, the Supremes explicitly identified the relevant art and the level of ordinary skill). In any event, what is clear from Leapfrog is that the EEs and people at Sandia are not persons of ordinary skill in the relevant art. Well, to be fair, I suppose it’s conceivable that one or more of them could have been, but there’s certainly no indication of that. The relevant art was defined as the “design of children’s learning devices,” and an average EE and (hopefully) the people at Sandia do not possess ordinary skill in this specific art. But, that’s what makes the portion I originally quoted so curious (and potentially troubling). The level of skill of the inventor is wholly irrelevant – same goes for the manner in which the invention was made (per 35 USC 103). Yet, the Leapfrog panel seems to be putting some weight in both of these things – even implying that the folks at Sandia had no difficulty in making a prototype. (OK, that’s probably reading too much into the decision) In doing so, not only does the panel appear to have strayed from precedent, they arguably lost focus of the requirement to judge the obviousness of the “subject matter as a whole.”

    Almost any new electronic device is simply a combination of components that one can find in the prior art. In addition, in almost every case, you can come up with very plausible arguments why each of those components is performing the same function it did in the prior art (i.e., each component is used for the same reason it was used in prior art devices). But, if the obviousness analysis only requires proof that each component is found in the prior art where it was used for the same reason as in the claimed invention, then that PTO backlog will disappear very quickly. Of course I do not think that’s what the CAFC was suggesting, but their analysis leaves A LOT to be desired.

  57. Interesting comment Mick, especially as you have mentioned the APA.

    It is somewhat telling that few contributors to this board mention the APA–I take it as a reflection upon their legal knowledge.

    To make the argument, as some have on this board, that an examiner rejection based upon the statement “it would have been common sense to combine…”, without evidentiary support specifically for that “common sense”, would hold up in review, when APA requirements are considered, is at best premature. In my view it is unlikely, if briefed and argued cogently.

    That is, assuming that APA issues are argued. In my experience APA issues are under-raised and under-argued in patent cases and seem to be marginalized, rather than being seen as a set of requirements that are parallel to substantive patent law.

  58. “Ah, you think it’s trivial, instead of fundamental. ”

    I said that the *task* is trivial. Of course the issue is fundamental. So what?

    It’s like showing that all the elements of a claim are in the prior art somewhere: it’s a fundamental issue that is trivial to achieve in most instances.

  59. “I would love to read some considered responses”

    Nobody is stopping you. There is a little scroll bar thing on the right which helps. The bonus is that you can burn calories at the same time, plus it won’t give you gas like raw celery.

    Of course, I do try to think carefully before I type my comments and I also keep my predictions about the wide-sweeping effects of most CAFC cases to a bare minimum … As the beloved ‘Points to Ponder’ said recently, one would hate to “confuse” the youngsters. ;)

  60. Now that a suggestion to make a particular combination is no longer required, and the combination has to have a new technical effect, mechanical inventions are going to be as rare as internet-enabled inventions. It will be very difficult to convince Examiners that a combination of known mechanical elements, each individually operating in a known manner, would not have been obvious.

  61. “No, it is incorrect to assert that KSR somehow makes this trivial task so much more difficult for Examiners that pendency will increase as a result.”

    Ah, you think it’s trivial, instead of fundamental. Yet it is the subject of much expert testimony during litigation. It is impossible to assess what one of only ordinary skill in the art would have found familiar or apparent without first developing an objective understanding of that individual’s viewpoint. Following KSR is impossible unless the ordinary skill is resolved and the finding supported by evidence. KSR referred to the finding, based on expert testimony, that the level of ordinary skill was an undergraduate degree in mechanical engineering and familiar with pedal systems. How else could they uphold the determinations of what were the relevant “design incentives” or “market forces”, what was a “predictable variation”, whether a technique would be recognized as applicable to a “similar device”,or an “actual application” is beyond the level of ordinary skill? Also review Dystar (“the parties disagree over the relevance of the cited prior art, which, fundamentally, is a disagreement over the level of ordinary skill in the art”; “substantial evidence does not support the jury’s finding that a person of ordinary skill is a dyer with no knowledge of chemistry”). A determination of the level of ordinary skill in the art is an integral part of the Graham analysis. Ruiz v. A.B. Chance Co., 234 F.3d 654, 666, 57 U.S.P.Q.2D 1161, 1168 (Fed. Cir. 2000) (citing Custom Accessories Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962, 1 U.S.P.Q.2D 1196, 1201 (Fed. Cir. 1986)). Ascertaining a level of ordinary skill in the art is necessary. M.P.E.P. § 2141.03. That examiners to date might not take the time to do this does indicates they’ve been avoiding the high cost to do so, and now KSR reaffirms they must.

    The new battleground is level of ordinary skill, and, given the APA requirement that examiner give substantial evidence for all required findings, it will be a time-consuming conflict.

  62. “Of course the level of skill of the inventor in the relevant art is wholly irrelevant. Well, at least that’s what prior CAFC cases have said.”

    Did the previous cases say “wholly irrelevant”? I’d like to see the cite.

    In this case, it doesn’t seem that the CAFC’s decision rested in a significant way on the inventor’s skill. Rather, they were underscoring their analysis by pointing that IF there was some difficult hurdle that would have caused a skilled artisan to doubt the invention would work, it was not the *sole inventor* in this case who presented a solution to that problem.

    Of course, there were no such hurdles in this case. The only genuine insight in this case was the recognition that a patent could be granted on such a trivial improvement.

    I haven’t seen the prosecution history of the patent. I wonder if there were arguments made to the Examiner that tracked the “logic” of the “strict TSM” test.

  63. I see from Mooney’s comments that he/she has not taken the time to read and consider the comments posted. Unfortunately I don’t see any point in continuing to contribute to this thread as long as Mooney dominates the discussion. I would love to read some considered responses, if anybody can get past Mooney.

  64. “It assumes what it sets out to prove–that the particular EE and the particular folks at Sandia are people of ordinary skill in the art, a proposition that finds no support, either in suggestion or in evidence, in the opinion as published.”

    So your problem is that the Opinion is too short? Read the entire transcript and all the briefs in the lower court. Questions about who is one of ordinary skill in the art are invariably asked during depositions, interrogatories, etc. If it’s not an issue that the parties asked to be resolved on appeal, the CAFC should be not be wasting paper on it.

  65. Malcolm, your statement about the EEs and folks at Sandia being “people of ordinary skill in the art of manufacturing electronic prototypes” may be correct. But that’s completely irrelevant to this case.

    As for Peter’s comments, one reasonable interpretation of the portion of the opinion I quoted is that the fact the inventor was so unskilled he couldn’t even build a prototype himself supports a conclusion that his invention is obvious – i.e., it may have been unobvious to him, but not to someone of ordinary skill in the relevant art. Of course the level of skill of the inventor in the relevant art is wholly irrelevant. Well, at least that’s what prior CAFC cases have said.

  66. Even if your answer is accepted, Mooney, and they are but people of ordinary skill in the art, the best proposition that this could support would be that they added nothing “challenging or difficult” to the process. That says nothing about whether the so-called “inventor” performed anything “challenging or difficult”, and so still would not support the conclusion that nothing “challenging or difficult” to a person of ordinary skill in the art was performed.

    I await an honest and considered answer to my previous question.

  67. “As a final note, the reliance placed by the court upon the finding of fact that the inventor did not have a technical background raises a number of questions. It seems, at the least, to create the implicit requirement that all invention be at least in part a technical activity, or to have a technical component.”

    No, it doesn’t. Why would you read so much into a simple recitation of evidence???

    The fact that the inventor did not have a technical background is just additional evidence — in light of the OTHER facts presented in this case — that the conception of the invention did not require any insight beyond “it would be nice to take this old thing and stick it on that old thing to achieve the result that everyone knows the old thing is supposed to achieve.”

    The inventor did not overcome any obstacles that thwarted others in the field. The inventor did not achieve anything with his insight that could not have been achieved by any other rube presented with the “problem”. It’s not a question of whether the alleged advance was “technical” or not.

    The guy’s contribution to the field in this case was so minimal it could scarcely be measured, and therefore: [SPLAT SOUND]

  68. Now that a suggestion to make a particular combination is no longer required, and the combination has to have a new technical effect, mechanical inventions are going to be as rare as internet-enabled inventions. It will be very difficult to convince Examiners that a combination of known mechanical elements, each individually operating in a known manner, would not have been obvious.

  69. It seems insufficient, Mooney. It assumes what it sets out to prove–that the particular EE and the particular folks at Sandia are people of ordinary skill in the art, a proposition that finds no support, either in suggestion or in evidence, in the opinion as published.

    I was looking for an answer that was predicated upon the facts as determined in the case, and not upon circular reasoning.

  70. “It is incorrect that under Graham an examiner has to resolve the level of ordinary skill in the art?”

    No, it is incorrect to assert that KSR somehow makes this trivial task so much more difficult for Examiners that pendency will increase as a result.

  71. “I would be interested if anybody could postulate a logical connection between the fact that an EE and Sandia were employed, and the conclusion that the resulting device was not uniquely challenging or difficult to one of ordinary skill in the art.”

    Electrical engineers and the folks at Sandia are people of ordinary skill in the art at manufacturing electronic prototypes.

    How’s that?

  72. Metoo–I think your comment is right to question the logical reasoning skills of the court as expressed in the opinion.

    With respect to Mooney, he/she seems to have misconstrued your comment. The fact that the inventor used an EE and Sandia to build a prototype was used by the court to support the proposition that the resulting device was “not” uniquely challenging or difficult for one of ordinary skill in the art–a proposition that does not seem to be logically supported by that particular fact.

    Mooney’s response to your comment is based on the premise that the fact that the inventor used an EE and Sandia to build a prototype was used to support the proposition that the resulting device “was” in fact challenging or difficult, which was not the reasoning pattern expressed by the court in the decision.

    I would be interested if anybody could postulate a logical connection between the fact that an EE and Sandia were employed, and the conclusion that the resulting device was not uniquely challenging or difficult to one of ordinary skill in the art.

    I also do not understand exactly how the inventor’s personal manufacturing/prototyping capability informs the determination of how challenging or difficult the invention would have been to one of ordinary skill in the art. Many inventors rely on the specific capabilities provided by people, facilities, or machinery to perform acts that contribute to the building of a prototype. Why would it be relevant that the inventor did not own the lathe used or the expertise to operate it correctly, or the knowledge of circuit design used and the ability to implement it correctly? It is at least unclear what the court meant when they said that the inventor could not have actually built the prototype himself.

    As a final note, the reliance placed by the court upon the finding of fact that the inventor did not have a technical background raises a number of questions. It seems, at the least, to create the implicit requirement that all invention be at least in part a technical activity, or to have a technical component. In a general sense this is not surprising, given the disclosure requirements; however, questions remain as to the level and extent of that technical component, and the nature/threshold of the technical competence or qualifications (“background”) required.

    Just some thoughts. I guess the whole obviousness issue in patent law has provided a convenient target for my frustration with what I have seen to be an unfortunately increasing inability of judges to either apply or express critical reasoning skills that can be logically supported. At first I was confused, then frustrated, then angry, then dismayed, and now finally I just find it uninteresting. And yes, I do understand how the legal system works, but as a practitioner, I find the level of discourse to be disappointing.

  73. “The strict TSM test, when applied, was a tool courts used to enable them to find such garbage patentable.”

    What kind of garbage statement is this? This is WRONG! WRONG! WRONG!

    I’m RIGHT – You’re WRONG!!!

    Its really that simple.

    LOL!!!!

  74. Malcolm–

    It is incorrect that under Graham an examiner has to resolve the level of ordinary skill in the art?

  75. We can all go home, Mooney has all the right answers all the time …NOT…

    Correct me if I’m wrong, which, unlike the Mooneys of the world, I’m not afraid to be, but doesn’t the CAFC have to issue a new ruling in KSR consistent with the Supreme Court opinion? That should be an interesting read.

    In my experience, unexpected results has a stronger influence on the PTO than other “secondary considerations” especially with weak 103 cases, e.g. the Examiner found A, B, and C in prior art but not D and argued that D simply “would have been obvious.”

    Under KSR, the “would have been obvious” is a variant of “obvious to try” and appears now to be acceptable. In the above described case it looks like A, B, C and D are all in the art and the applicants failed to show that there were any unexpected results notwithstanding strong evidence of other secondary considerations. The CAFC hints in this case that unexpected results may have been a way out of the box.

  76. How in the world can invalidity opinions be easier to write because of KSR? That makes no sense at all, unless you plan to simply rely on “common sense” in support of combining certain prior art. Good luck with that.

  77. Malcolm -

    My point about it being “odd or illogical” was that the inventor went to Sandia National Laboratory for help in building a prototype of a very simple invention. And I was not suggesting that the invention was unobvious because he used Sandia. As for your jet engine analogy, I don’t think it’s quite the same thing.

  78. Practical effects of KSR:
    - litigation will be more expensive/longer
    - prosecution will be more expensive/longer
    - the PTO’s backlog will get even worse
    - fewer patents will issue
    but….
    - invalidity opinions will be MUCH EASIER!

  79. Malcolm said:

    “Yes, folks, sticking a recently developed technology into an old device to achieve exactly what the recently developed technology was designed to achieve is not ‘inventing’.”

    I agree if that’s the only difference from the prior art. The combination of Bevan and SSR, as discussed in the opinion, fits your statement to a T. But the passage I quoted was addressing the question of whether or not it would have been obvious to add a “reader” to the Bevan/SSR combination, since the combination of Bevan/SSR still would lack the “reader” required by claim 25. That question has nothing to do with a “recently developed technology” being put into an “old device.”

    In fact, I would suggest that the “combination” of Bevans and SSR is really not the seminal issue in this case with respect to the application of KSR. Bevans/SSR is, as you stated, simply an example of applying updated technology to an old device in an obvious manner. It seems to me that KSR is much more applicable to the obviousness of adding a “reader” to the Bevans/SSR device.

  80. As I predicted… a defendant/examiner must simply give REASONS for obviousness (which may be as simple as pointing to the benefits achieved by the invention), and then the burden shifts to the patentee/applicant to give EVIDENCE of nonobviousness.

  81. “Of course it is also odd, perhaps even a bit illogical, to state that it would not have been challenging or difficult to add a reader to the prior art combination of Bevan and SSR, while at the same time pointing out that the inventor used the services of Sandia National Laboratory to build a prototype of his invention.”

    No, it’s not odd or illogical. Hiring a technician to build a prototype does not mean that building the prototype is “challenging” or “difficult.” It means that the inventor is (1) too busy or (2) lacks the necessary skills and tools. The facts of the case strongly suggest that the answer is (2).

    This is not ususual. Think about individual inventors who design jet engines. Do their alleged inventions become less obvious because they need to hire someone to forge the new metal parts? I don’t think so.

  82. “examiners now have to waste time gathering evidence to establish the level of ordinary skill in the art at a specific point in time, so they can back up any argument as to what was common, familiar, or apparent. This finding can take so much time in litigation, and now examiners face the same task”

    Simply put: no. This is incorrect.

  83. “Our conclusion is further reinforced by testimony from the sole inventor at trial that he did not have a technical background, could not have actually built the prototype himself, and relied on the assistance of an electrical engineer and Sandia National Laboratory to build a prototype of his invention”

    LOL!!!!!!!!

    Yes, folks, sticking a recently developed technology into an old device to achieve exactly what the recently developed technology was designed to achieve is not “inventing.”

    Never was. Cases that found such inventions patentable were (drum roll please) WRONG. The strict TSM test, when applied, was a tool courts used to enable them to find such garbage patentable.

    Good riddance.

  84. I don’t understand why the supreme court hates the examining corps. And how they can be so ignorant of the effect KSR will have on pendency at the PTO. Because they made it clear its such a fundamental question in Graham, KSR clearly imposes the requirement(as Dystar and Kahn referenced already) that examiners now have to waste time gathering evidence to establish the level of ordinary skill in the art at a specific point in time, so they can back up any argument as to what was common, familiar, or apparent. This finding can take so much time in litigation, and now examiners face the same task. It was better when they could just site a patent as suggesting something. Now they have to determine how much education the ordinary inventor had, and whether he would have understood the suggestion, and how familiar he would have been with it.

  85. I found this passage from the opinion VERY interesting:

    “Leapfrog presents no evidence that the inclusion of a reader in this type of device was uniquely challenging or difficult for one of ordinary skill in the art. See KSR, 2007 WL 1237837, at *15. Nor does Leapfrog present any evidence that the inclusion of a device commonly used in the field of electronics (a reader), and even in the narrower art of electronic children’s toys, represented an unobvious step over the prior art. Our conclusion is further reinforced by testimony from the sole inventor at trial that he did not have a technical background, could not have actually built the prototype himself, and relied on the assistance of an electrical engineer and Sandia National Laboratory to build a prototype of his invention.”

    For starters, 35 USC 103(a) clearly states that “Patentability shall not be negatived by the manner in which the invention was made.” Of course it is also odd, perhaps even a bit illogical, to state that it would not have been challenging or difficult to add a reader to the prior art combination of Bevan and SSR, while at the same time pointing out that the inventor used the services of Sandia National Laboratory to build a prototype of his invention. I also question the relevancy of the fact that the patent owner’s failed to present “evidence that the inclusion of a reader in this type of device was uniquely challenging or difficult for one of ordinary skill in the art.”

    Keep in mind that I am not suggesting that the incorrect decision was reached in this case. However, even if the correct decision is reached, the manner in which a court supports that decision can have unintended consequences in other cases.

  86. As someone else noted in an earlier comment, commercial success can be due to a lot besides novel technology. For example, marketing, licensing deals (Leap Pad licenses Dora the Explorer and lots of other popular kids characters), luck, market timing, capital investment, and other factors will contribute to sales. I guess this is why it is a “secondary” factor.

    Tying the commercial success to non-obviousness is difficult but not impossible. It involves emperical market research: figuring out why consumers are motivated to buy the product. Attorneys just need to hire experts to do this kind of analysis if they want to make these arguments.

  87. As someone else noted in an earlier comment, commercial success can be due to a lot besides novel technology. For example, marketing, licensing deals (Leap Pad licenses Dora the Explorer and lots of other popular kids characters), luck, market timing, capital investment, and other factors will contribute to sales. I guess this is why it is a “secondary” factor.

    Tying the commercial success to non-obviousness is difficult but not impossible. It involves emperical market research: figuring out why consumers are motivated to buy the product. Attorneys just need to hire experts to do this kind of analysis if they want to make these arguments.

  88. I think the CAFC may have been a little too eager to use KSR without fully considering the framework in which they were going to use it.

    It seems like they use it as an excuse not to use any reasoning in the opinion: “It’s just obvious because it’s common sense to do these things now that we have seen the product based on the patent.” It’s almost as if they eliminated hindsight and TSM via the KSR wand, whether that’s what they meant to do or not.

    I agree that the clear and convincing standard was glossed over as well via the use of common sense and KSR.

    If we get a series of cases like this from the CAFC, I would predict the US Supreme Court taking up the obviousness and hindsight analysis again soon.

  89. What happened to the “clear and convincing” standard for proving obviousness? This decision reads like a preponderance of the evidence suggested obviousness. How does KSR’s rejection of a “rigid” test dovetail with a “clear” showing? TSM was “clear”, but a common-sense or implicit standard is …..

  90. Unless ‘commercial success’ that can be linked to certain technical features mentioned in claims becomes one of the criteria for patentability and is stipulated by patent law, it may not be taken very seriously – regardless of the fact that commercial success as part of inventive step of invention, has been discussed and commented on in many of the leading cases decided by some of the most respected jurisdictions around the world.

  91. KSR really is bringing out of the cupboard the time-weary old arguments whether the subject matter of a claim was obvious on date X (long ago). We have discussed “But look how commercially successful it (a product of course, not the claim per se) has now become”. Let’s now discuss “If it is all so obvious, well then tell me why somebody didn’t already publish it earlier than date X, eh??”. Let’s agree that line is just as unpersuasive as “commercial success” Let’s agree with SCOTUS, claiming something that’s ob via (in the road) is an obstacle to technical progress, not a fosterer, and so should be swept off the road.

  92. M,
    I think your analysis is right on point. I believe we will begin to see a line of cases where the combination of old parts will be deemed common sense under KSR. This makes a low threshold for obviousness shifiting the burden to the patentee to establish non obviousness by showing unexpected results, prior art teaching away from the combination, etc., in order to overcome the assumption of obviousness.

  93. This was a relatively easy one for the CAFC — affirming a finding of obviousness even under the “old,” more rigorous standard (ie, the TSM days). The real test will be the first time CAFC tackles a case where the lower court found that the patent was NOT obvious (using pre-KSR authority).

    Will CAFC claim that KSR is just a different articulation of what the rule has been all along (citing its post-cert opinions)? Or will it say that KSR was a fundamental shift in the law? My guess is that they will punt for a while — vacating and remanding cases, saying that the district court incorrectly applied a strict-TSM analysis without fully considering the “totality of the circumstances” as espoused in KSR (and post-cert CAFC cases).

  94. Oh, goody. Now we get to add arguments concerning just what “common sense” is and means…to just what “obvious” is and means.

    “Common sense” is in fact neither common nor sensible…and “obvious” is not at all obvious.

  95. Seems to me like the correct analysis and the correct result. Prima facie obvious to combine known parts for their known uses. Prima facie obvious to upgrade parts to their modern “equivalents” (and I use that word in its non-legal DOE sense). Both prima facie “obviousnesses” can be rebutted by “ye old secondary considerations”; but the §132 showing must be factual and must relate to the combination, not to excess advertising or other reasons for commercial success or long felt need.

    In summary, nothing really new here — just a reiteration of the analysis from many moons ago that may have gotten lost along the way.

    Old guy patent lawyer.

  96. I don’t want to start up a flame war on KSR but I am genuinely interested in this issue. Bear with me if I miss something obvious.

    When KSR came down and all parties were prognosticating the fall out, I saw most people seemed to fall into two camps. The sky is falling and burden was completely shifted or there really is no change except in odd circumstances. My guess was more formulaic, that the SCOTUS wanted to separate out specific cases where known elements are combined to perform their known functions and the function of the whole is not greater than the parts. In those specific cases, you would essentially see a burden shift to the applicant. The shifting accomplished by lowering the bar to establish a prima facie case for obviousness in combining old elements.

    Let me start by hedging what follows that thanks to actual work getting into the way I have not personally delved into this opinion yet, but using DC’s fine filtering, it certainly seems like the CAFC has taken this very approach.

    “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results”

    I can’t help but think that this line effectively removes any real requirement for TSM to combine old elements to perform their stated functions. They go on to explain advantageous of the secondary source, but this seems more like the function of the second source than motivation to combine. Certainly there doesn’t appear to be anything in the record that would tie those functions to the primary reference directly at the time of the invention. However the real evidence comes with the “reader” element. Here the court seems to drop all pretense and instead relies entirely on the lowered burden of combination.

    I think this fact is supported by the subsequent notation of a lack of secondary support against obviousness. My feelings were that this would now hold increased importance in these combination cases. The applicant would effectively be required to establish unexpected results or prior art teaching away from the combination in order to overcome the assumption of obviousness.

    I actually like this rule (if it actually is one) as I mentioned in my earlier posts. But I’m curious if the CAFC will actually apply it to the limited situations of known elements performing known functions and the device being only functionally equivalent to the sum of its parts.
    -M

  97. My wife will be pleased. She preferred the Fisher-Price PowerTouch to the LeapPad. We have both, but only because the PowerTouch does not seem to be available any longer. She assumed that was because of this infringement suit.

  98. Secondary considerations are just that, secondary. Many have been lulled into false security rebutting a prima facie case of obviousness using secondary considerations. Overwhelmingly it works. However, years ago in almost identical wording the CAFC indicated secondary considerations are not overwhelming in and of themselves:
    “We see no error in the district court’s conclusion in this case that the secondary considerations cannot overcome the strong evidence of obviousness presented.” Sandt Technology v. Resco Metal and Plastic., 264 F.3d 1344, 60 USPQ2d 1091 (Fed. Cir. 2001). [ link to ll.georgetown.edu ]

    “Evidence of secondary considerations is but a part of the ‘totality of the evidence’ that is used to reach the ultimate conclusion of obviousness … In some cases this evidence is the most probative of obviousness, but its existence or non-existence does not control the obviousness determination.” citing Kansas Jack, Inc v. Kuhn (Fed. Cir. 1983), Rockwell International Corp v. United States, 147 F.3d 1358, 47 USPQ2d 1027 (Fed. Cir. 1998). [http://www.ll.georgetown.edu/federal/judicial/fed/opinions/97opinions/97-5065.html ]

    Hopefully some determinism into the relative weight of primary “common sense” vs. secondary considerations is made. Otherwise a court’s determination of “common sense” will dominate. Note in this case the secondary considerations were significant:
    “The district court explicitly stated in its opinion that Leapfrog had provided substantial evidence of commercial success, praise, and long-felt need, but that, given the strength of the prima facie obviousness showing, the evidence on secondary considerations was inadequate to overcome a final conclusion that claim 25 would have been obvious. We have no basis to disagree with the district court’s conclusion.” Leapfrog v.Fisher-Price p. 10.

  99. “Surprised to learn that even secondary considerations such as commercial success won’t work. Can somebody comment on it?”

    “Commercial success” has always struck me as a very strange way of determining whether something was “non-obvious.” As mere *evidence*, I suppose that it can’t be discounted per se but successfully untangling the extent to which an alleged invention’s “non-obviousness” contributed to its “commercial success” seems impossible in practice.

    Whenever the issue comes up, I’m reminded that someone made some money selling pet rocks …

  100. “It seems that this claim could have been judged obvious using the “old” TSM test with a little more reasoning as to why (so why use KSR at all?).”

    I’m not sure that KSR was “used” as opposed to KSR simply being cited as the leading case on obviousness. After all, the trial court reached the same conclusions without the Supreme’s guidance.

    In any event, it’s music to my ears and likely to the ears of anyone who’s ever looked at a patent which claimed nothing more than a computerized or Internet-based version of a thing or process that is older than the hills.

    If we all knew how many patents were issued between 1995 and 2005 that covered, e.g., methods of coupon redemption “wherein the interface is connected to the world wide web” we would all be kneeling down before the porcelain god.

    It appears that the game of chicken has turned against the owners of such patents in a very clear way. Good riddance.

  101. Surprised to learn that even secondary considerations such as commercial success won’t work. Can somebody comment on it?

  102. It seems that this claim could have been judged obvious using the “old” TSM test with a little more reasoning as to why (so why use KSR at all?).
    I bet that Judge Lourie had a much easier time drafting the opinion by waving the KSR wand.
    My favorite line: the Fisher-Price argument that “claim 25 is nothing more than the Bevan device, a toy that teaches reading based on the association of letters with their phonemic sounds, updated with modern electronics that were common by the time of the alleged invention.”

  103. “The results may have serious implications for Internet-related patents that have a close non-Internet corollary.”

    Absolutely. Here, the court noted a strong market trend: “Applying modern electronics to older mechanical devices has been commonplace in recent years.” There was an equally strong trend to adapt prior software functionality to the Internet.

  104. The Leapfrog v. Fisher-Price case is listed on the Cafc’s “Current week’s disposition sheet” but not posted on “Opinions & Orders.”

    Do you have a link to the case?

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