Patently-O Bits and Bytes No. 50

  • Query: Does anyone use the XML links found within private PAIR?
  • Obviousness: Secondary factors are generally used to prove that an invention is nonobvious. Symmetry may cause us to think that factors may also exist that are useful in showing that an invention is obvious. A recent article by Brent Yamashita explores one of these: Simultaneous Invention. “[T]he fact that another person simultaneously and independently created the same invention claimed in the patent-in-suit can serve as an indication that the invention was obvious.”
  • EVENTS:  Upcoming events from American Conference Institute:
  • Patent Lie: I read A Patent Lie over the weekend — lots of fun for a patent attorney to read.
  • Tragedy of the Anticommons: Professor Heller’s new book is apparently an easy read. His work serves as a base for many who see IP rights as excessive and problematic. [LINK][Tim Wu Review]

87 thoughts on “Patently-O Bits and Bytes No. 50

  1. We leave the dog poop references to you Mooney along with the references about satin underwear and crack pipes. I think pds gives you way too much credit as possibly being a practitioner. As far as I can see (which, as you may guess from my name, is a long way) you do scant more than serve shrimp and park cars and blog incessantly.

    You don’t know squat about secondary considerations because you’ve never had a real job, and are very bitter towards people who are successful. You probably had a union job as a teenager.

  2. “I’ve had several office actions where the combination of references doesn’t disclose ANY of the features of the claim. I don’t think that’s a problem with the law of obviousness, however.”

    That’s just the problem of lazy US examiners.

  3. “In the US, it’s not at all uncommon to find situations where the combination of references doesn’t disclose all features of the claim, especially in 1st office actions.”

    I’ve had several office actions where the combination of references doesn’t disclose ANY of the features of the claim. I don’t think that’s a problem with the law of obviousness, however.

  4. MaxDrei,

    You’re used to EPO examination. In the US, it’s not at all uncommon to find situations where the combination of references doesn’t disclose all features of the claim, especially in 1st office actions.

  5. “Lowly, what luxury, when a feature of the claim is not there, in either of the two prior art references applied together against the claim. More challenging for the prosecutor (and hugely more likely at the EPO) is when all the features are indeed in one reference or the other, but you still think the claim isn’t obvious. What to do then? Another thing: Your ideal patent system doesn’t sound like too much fun, when you are representing an Opponent at the EPO, and you want that spurious patent to be revoked. You think your scheme strikes the optimal balance between patent holders and their competitors, do you?”

    If all the features are in one reference, wouldn’t the rejection at the EPO or novelty, not inventive step?

    In the US, if all features are in one reference, you amend.

  6. Lowly, what luxury, when a feature of the claim is not there, in either of the two prior art references applied together against the claim. More challenging for the prosecutor (and hugely more likely at the EPO) is when all the features are indeed in one reference or the other, but you still think the claim isn’t obvious. What to do then? Another thing: Your ideal patent system doesn’t sound like too much fun, when you are representing an Opponent at the EPO, and you want that spurious patent to be revoked. You think your scheme strikes the optimal balance between patent holders and their competitors, do you?

  7. I find MaxDrei’s commentary and insights about EPO practice to be interesting. He tends to show that he thinks the EPO’s standards are better, but I’m alright with him feeling that way. He adds some substantive intellectual input to this blog.

    I happened to have a 20 minute phone conversation with an EPO practitioner the other day and we shared some wisdom about our respective systems. He gave me some insight about PSA that I didn’t have. I gave him some strategies I have found that work in overcoming 103 rejections. (I prosecute EPO applications through straw-men, likewise he prosecutes US applications through straw-men). He was almost incredulous at my advice that the best way to beat a 103 is simply to show that the combination of references fails to show one or more of the claim limitations.

    Sharing of experiences is good, whether you think your home system is the best or not. My ideal patent system would be EPO or JPO quality searches coupled with TSM, and no 101 rejections.

  8. pds, to your two questions, the answers are No and No. If I draw a distinction between US patent law and European law, and say why I think European law has something worthwhile to offer, why do you get so upset? Why don’t you just find it provocative, stimulating and educational, like any student would? In other fields, like tax law, every country is only too grateful, when another country comes up with a bright idea for optimising the law. And I’m glad you weren’t able to find any of my writings that contend that US patent law has to be scraped from the shoe. Civil law Europe has much to learn from English common law, and is learning it fast, just at the moment, with the EU Enforcement Directive that borrows so much from English law. Are you (along with John McCain) perhaps suggesting that the USA can learn nothing useful from the ROW. Mooney’s right about obviousness and commercial success, BTW. You would think that after 100 years, US patent law has already figured out its definitive position on that one.

  9. “if you cannot stand the heat”

    LOL, pds. The heat does not bother. I just thought I’d hold the mirror up to your apoplectic face but I realized I need a bigger one to capture the giant head.

    “Unlike you, I try to keep my comments relevant most of the time.”

    There you go again: sitting on your high horse, finding one of your two favorite targets, and emptying your piss bucket.

    “I don’t have any qualms about treating you like you treat everybody else”

    Except I don’t treat everybody like they are only entitled to opine on subjects that I deem them qualified to opine. That’s your schtick. I take people’s comments at face value and respond to them. I don’t care who’s making them.

    “Personally, I think my ideas have been better received than yours.”

    Can I subscribe to your newsletter or do I need to submit my MENSA score first? Seriously, the arrogance is not attractive.

    “I tend to stay away from phrases such as “toilet paper” and “a pile of doo-doo”

    Your religious beliefs are not interesting to me.

  10. “What is it I wrote that put that thought into your head.”

    Oh please …. all you ever do is exalt glorious european patent law while at the same time continually asking why US patent law doesn’t change to something closer to than being done in Europe.

    Your posts are the easiest ones to identify the authorship of (prior to reading the name at the end). I’ll give you my simple checklist:

    1) Does the author assert that the US ways of handling a particular problem/issue needs to be improved?
    2) Does the author assert that a better way of handling the same problem/issue can be found in Europe?

    If the answer to both of those questions is “Yes,” then it is very likely a MadMax post.

    I’m just telling it like it is ….

  11. “It’s a blog and a good one but for years you (along with CaveMan who appears to be on vacation or has assumed another name) have been smearing commenters here by attacking them personally. You want to be snarky and poke fun at a *comment* or correct a mistake in the law with some humor and derision, go right ahead. But why attack the person? Or if you have to do it, why not just post “Looney is a poophead” like AllSeeingEye and get on with your day?”

    As 6K would put it, stop QQing and suck it up. This is a blog so if you cannot stand the heat find someplace else to take your whining.

    Unlike you, I try to keep my comments relevant most of the time. I’ll be the first to admit that I’ll go after a very select few of posters (mostly yourself and 6K). However, most of the people on the board write reasonable things that are at least based upon some serious thought and analysis. Although I may disagree with some them, and I’ll explain why I think that they are wrong, I reserve my harshest attacks to classic trolls like yourself and 6K

    I’m not going to pretend to try to debate you. You aren’t interested in engaging in a reasonable discussion. I learned that a couple years ago now. All you want to do is make your snarky points and move one. As such, I don’t have any qualms about treating you like you treat everybody else.

    Also, unlike you (of knocking down the strawman fame), I do cite case law and try to put together cogent arguments on many issues. Also, I tend to stay away from phrases such as “toilet paper” and “a pile of doo-doo” (BTW: what are YOU obsessed with?).

    Unlike some others, I don’t want to just tell you that you are wrong, I want to show you that you are wrong. Remember the expression during Constitutional Law class about the “marketplace of ideas”? This happens to be one of those marketplaces, and I’m marketing my ideas. Personally, I think my ideas have been better received than yours. Actually, I don’t even think it is close. Whereas I try to share my ideas, you seem to be more concerned with sharing your bad attitude.

  12. Interesting that pds ascribes to me the view that US patent law has to scraped from the sole of one’s shoe. Help me now would you, pds. What is it I wrote that put that thought into your head. The expression “If the shoe fits, put it on” came to mind, when I read your announcement of what you think you can read in my mind.

  13. “Save 35000$ by age 25. Put it in funds that avg 10% returns per year ”

    “$813,000. Wow, I’m amazed. Note that 3% annual inflation means you end up with buying power of about $306,000″

    Don’t forget the leakage with the taxes that you are going to have to pay along the way on part of the gains unless that money is in an IRA.

  14. “Save 35000$ by age 25. Put it in funds that avg 10% returns per year (hope our market doesn’t go to sht). Calculate $ achieved on ONLY that initial 35000$ by age 58. Be amazed.”

    $813,000. Wow, I’m amazed. Note that 3% annual inflation means you end up with buying power of about $306,000 (hope inflation doesn’t go to sht). Amazing.

    I suggest you might want to supplement that retirement a bit between now and age 58.

    I knew a guy in high school who used to talk about all the money he was going to save from his minimum-wage job while the rest of us clowns went off to college. Haven’t seen him in a while…

  15. pds (still not getting it) “I hope your arguments in court and/or before the USPTO are better-phrased.”

    I hope your filings don’t include crude psychoanalysis and personal attacks on the Examiners and judges.

    See how easy it is to play your game, pds? Get off your high horse. It’s a blog and a good one but for years you (along with CaveMan who appears to be on vacation or has assumed another name) have been smearing commenters here by attacking them personally. You want to be snarky and poke fun at a *comment* or correct a mistake in the law with some humor and derision, go right ahead. But why attack the person? Or if you have to do it, why not just post “Looney is a poophead” like AllSeeingEye and get on with your day?

  16. “Lowly, seriously man, did you even read the conversation before you commented?”

    I thought you’d understand my second paragraph as a joke. The first was serious, however.

    You’re probably not a bad guy. You’re just young enough to be in that “I know everything” phase (I was there once, too) and have been raised in the violently anti-patent environment of the USPTO.

    If you went to law school, you’d probably change your views on things.

  17. “Spoiled little rich btch thinking you’re the man. We’ll see in a few years.”

    Guess you missed the overt sarcasm and hyperbole that followed.

    You are dum. Easily the dummest on this site.

    Hint: you can look up hyperbole on your beloved dictionary.com

    In a few years, you may be a GS-13, but you’ll be just as dum.

    You could’t possibly get any dummer.

  18. “Bingo.”

    Spoiled little rich btch thinking you’re the man. We’ll see in a few years.

    Lowly, seriously man, did you even read the conversation before you commented?

    Alright alright, let’s calm down the flaming already anyway. I probably started it, but it’s time to be putting it out.

  19. “Nobody’s perfect but you treat some commenters here like they are intentionally misrepresenting the law.”

    I’ve never treated MaxDrei as if he has intentionally misrepresented the law. He loves the EPO and thinks US patent law is something that should be wiped off the bottom of one’s foot.

    As for 6K, he would have to know the law first before he could intentionally misrepresent the law. Given that he is not a lawyer and probably only has a couple years of experience dealing with the law, I don’t attribute much to his contributions beyond ignorance and being raised in an environment where the customer is considerded to be the enemy and lurking behind every corner looking to get unreasonably broad claims (his beloved phrase of “overclaims”).

    Now as for you, you really don’t opine on the law too much. You would rather work with your silly strawmen. You make up your Beatty Crocker examples and explain that this is an example of the patent world gone mad. I’ll give you credit MM, you are a much better troll than 6K.

    Unlike 6K who, when given any opportunity, will grab as much rope as possible so as to fashion a noose for himself. You, on the other hand, don’t respond to direct questions, and rarely pin yourself down on specifics. You’ve learned the lesson (one which 6K hasn’t) is that the more you say, the more that can be held against you.

    For example, you continually rail upon software patents, but don’t provide much better arguments than:

    “Welcome to another edition of worthless claims that achieve nothing for anybody except the patent owner with the time and money to troll or seek out mentally challenged licensees.”
    “Computer ‘engineers’ are per se illiterate and should not be allowed to write patents.”
    “nobody else does except for trolls and companies who reflexively file patents on every half-baked recycled semi-concept that dribbles out of their software developers’ keyboards”
    “State Street was a worthless decision.”
    “Beaureugard claims are legal toilet paper created to appease a lobby interested in patenting software.”
    “persuade us that Beauregard claims were relevant to understanding why claim 32 wasn’t a pile of doo-doo”
    “Hence, the inherent bogusness of “Beauregard claims.”

    A lot of intellectual heavy lifting going on here. Let’s look at your descriptive words: worthless, troll, mentally challenged, half-basked, recycled semi-concept, worthless (again), legal toilet paper, pile of doo-doo, inherent bogusness. I hope your arguments in court and/or before the USPTO are better-phrased.

    Really, you are funny … in a very sad way.

  20. “Meanwhile, you seem to ignore those commenters who tirelessly misrepresent the facts about patents, the people who procure them, and the methods by which they are procured.”

    Go ahead, Malcolm – name names…

  21. pds, still obsessed with explaining his obsession: “Based upon my experience, I take everything you have with a grain of salt because I know you have a very narrow experience as to the type of technologies you work with.”

    That’s nice. Guess what? I take everything you say with a a grain of salt, too, because I know you have some personal issues to work out and you choose to work them out here. That’s been the case since day one.

    “Your comments, at times, SCREAM I’m shooting from the hip and I really don’t know what I’m talking about”

    Your comments, at times, SCREAM I’m a lonely, angry control freak who can’t engage in a discussion without launching into personal attacks and psychoanlysis and I really don’t know what I’m talking about.

    So I guess we’re even pds. Happy? Of course not. Your bile runs deep.

    “the type of technologies I deal with far exceeds what the average biotech attorney deals with”

    Oh, great, let’s have a pissing match over who engages in more “types” of technologies.

    “I’m savvy enough to know what I don’t know, and I know that I know a lot less than you about biotech. As such, you’ll find me treading very carefully when it comes to subject matter and issues in that realm.”

    That’s fine. This isn’t a technology blog. It’s a patent law blog. And I’m not going to stop commenting on claims because they recite ultrafancy terms like “database” or “signal” particularly since I’ve successfully tanked such claims in the real world.

    As I’ve said before, I recommend taking some time off to work on your knee-jerking. Nobody’s perfect but you treat some commenters here like they are intentionally misrepresenting the law. Meanwhile, you seem to ignore those commenters who tirelessly misrepresent the facts about patents, the people who procure them, and the methods by which they are procured.

  22. “Maybe I didn’t make myself clear. Save 35000$ by age 25. Put it in funds that avg 10% returns per year (hope our market doesn’t go to sht). Calculate $ achieved on ONLY that initial 35000$ by age 58. Be amazed. Compare that to money made by spending first four years in law school and then getting a job as a newly hired patent attorney at ~27 (while probably having started a family as soon as this happens). Be amazed again. It’s funny how the economics work out isn’t it?”

    Are you counting in the drastic salary difference between patent attorney and patent examiner for the next 30 years of your career? It more than balances out the advantage of having $35k in the bank at an earlier age.

    But, by all means, please don’t go to law school. The patent bar doesn’t want you.

  23. “You probably simply mooched off the folks for your room/board/beer/tuition.”

    Bingo. On top of that, my folks paid me $35k by the time I was 25. I have it in funds earning 1,000,000,000,000%. Hope the market doesn’t go south.

  24. “I take that all back, you’re most likely 100x as smart as me”

    Nice sentence. Is English your first language? I certainly hope not.

    “Save 35000$ by age 25.”

    Wow. I’m impressed.

    LOL

    “Let’s also assume I can get someone to pay for my law school”

    Whoa, let’s not get ahead of ourselves. First you have to get in.

    Hint: Given your writing ability, get a ghost writer for that law school application.

  25. Mooney, you may want to read J. Camp’s recent decision in the Kleen-Tex case. You might actually learn something about secondary considerations. Then again, given the usual superficiality of your “analysis” (as demonstrated above for example), maybe you won’t.

  26. cite checker,

    Thanks for the correction. I ‘cut and paste’ lifted the quote from a case some time ago. I don’t recall the name or even if it was a district court or CAFC case. What you say makes sense. Maybe the clerk misread the “7″ as a “9″.

  27. C’mon, pds, it’s good to have a few dissenting voices. Especially when they are not persuasive or impressive in the least. Nobody listens to the village i_diot simply because he is shouting the loudest.

  28. Actually, I take that all back, you’re most likely 100x as smart as me. You probably simply mooched off the folks for your room/board/beer/tuition. Gotta hand it to you, it’s a winning combination.

  29. “Uhm, that would be you.”

    Maybe I didn’t make myself clear. Save 35000$ by age 25. Put it in funds that avg 10% returns per year (hope our market doesn’t go to sht). Calculate $ achieved on ONLY that initial 35000$ by age 58. Be amazed. Compare that to money made by spending first four years in law school and then getting a job as a newly hired patent attorney at ~27 (while probably having started a family as soon as this happens). Be amazed again. It’s funny how the economics work out isn’t it?

    Let’s also assume I can get someone to pay for my law school and maybe even work while I’m there, something I wouldn’t have done as an L1 straight out of college.

    I’m going to ask you one more time. Who’s dumer? Go run some numbers, get back to me.

    Hint: You, unless you did similar to me or put off a family for a long time and saved a sht ton in your first few years.

  30. “bull in the china shop who thinks he is a ballerina”

    Now now, I hardly think I’m a ballerina. I just think that your careful treading tip toe “ballerina” type style is hardly called for in cases of things being blatantly one way or the other.

    He he he, look at me, I’m pds, and I like to take into account things that don’t even have the smallest bearing on the situation at hand just so that things appear biased towards the applicant in all cases (and in many cases not being wrong, but being right for completely the wrong reason). I also like to tip toe around things that are blatantly present just because I don’t understand why I haven’t been getting busted for doing them wrong all these years, he he he. Don’t worry, much like with the situation KSR addressed, your wake up call will come before you retire I wager. It will never cease to amaze me how someone who obviously has many years, possibly decades, in this field can gloss right over things staring him in the face for all that time. I’m new, sure, I have an excuse for not seeing things right away, but you on the other hand…

  31. MM … I’m just trying to understand the context of your opinions. You have a jaded view of the practice that isn’t shared by any practitioner I’ve ever spoken to.

    Clearly, you are a biotech attorney. Based upon my experience with biotech attorneys, I would NEVER have one draft even a simple mechanical patent application (which I hope that all attorneys SHOULD be able to do regardless of their respective technical backgrounds). The simple reason is that they write horrendous claims of the types you rail about (they also right horrendously narrow specs). There may be good ones out there, but I haven’t seen their work.

    I also know that I have had experience (and my situation would not be considered anything out of the normal) to work with 10x the number of other attorneys, on average, than the biotech attorneys (I have known) have had the opportunity to work with. Moreover, the breadth of the type of technologies I deal with far exceeds what the average biotech attorney deals with (and my experience, again, is not unusual). When one has the opportunity to look at (and claim) many varying types of subject matter in sometimes very different ways, it is natural that one’s claim drafting skills become greater.

    You may disagree with all of his, but this has been my experience. Based upon my experience, I take everything you have with a grain of salt because I know you have a very narrow experience as to the type of technologies you work with. Your comments, at times, SCREAM I’m shooting from the hip and I really don’t know what I’m talking about. Deny it all you want, but it is the truth in my eyes. On the other hand, although my experience with biotech is limited, I’m savvy enough to know what I don’t know, and I know that I know a lot less than you about biotech. As such, you’ll find me treading very carefully when it comes to subject matter and issues in that realm.

    You on the other hand, are like the proverbial bull in the china shop who thinks he is a ballerina (kinda like 6K). While you think you are deftly maneuvering through the aisles, you are, in fact, leaving a wake of destruction in your path as you blissfully bumble along.

  32. Speaking of biotech, I noticed over at PatentDocs that Kevin Noonan reported the tanking of a ridiculous EP Patent drawn to RNA silencing. Here was claim 1:

    An RNA comprising a double stranded structure having a nucleotide sequence which is at least 80% identical to at least part of a target gene in a mammalian cell **or** is capable of hybridizing with a portion of the target gene transcript under the following conditions [omitted for sanity sake], and which is derived from an endogenous template, or an expression vector encoding such an RNA, for use as a medicament.

    The method claims are just as absurd.

    Seriously: “at least 80% identical to ***at least part*** of a target gene “?!?!?!? For anyone who understands even the most fundamental facts about gene sequences, this claim is a joke and a rather disturbing attempt to claim an entire field of therapeutics which was surely NOT invented by David Glover, although we can rest assured he thinks he is really really cool.

    Where do people get off exactly? Oh I forgot: billions of dollars at stake here. How much time and money was wasted tanking this toilet paper? Most likely there are just as many bad patents in the US that purport to cover RNA interference generally. Let’s hope they all go up in flames and citizens get the affordable treatments they need.

  33. “MM also has the same problem. Working with biotech, he just doesn’t encounter the type of issues that most of us other attorneys experience.”

    Nice try. Your obession with me is clouding your judgment again, pds. Maybe you need to take a break for a while.

  34. pds “Any patent attorney that likes to continue to earn the salary they earn makes sure that the client/inventors/everybody else is aware of their duty to disclose material prior art.”

    Yes, that’s usually part of the form letter sent to inform the client that the patent has been filed and assigned an application number.

    And then there’s AllSeeingEye whose clients can never be sure what prior art their righteous prosecutor is going to decide to submit to the PTO as part of his neverending quest to avoid being captured by the Material Disclosure Ethics Police.

  35. “However, he’s the kind of guy that I hope AQS’s help to force background information be provided up front from so we start much nearer the contribution than the overclaim his attorney recommended.”

    What do you really expect to get out of him? Any patent attorney that likes to continue to earn the salary they earn makes sure that the client/inventors/everybody else is aware of their duty to disclose material prior art.

    Anything additional you get out of an AQS is going to be from some searcher that doesn’t know the art nearly as good as you and won’t have the experience of search for art they way you do (by looking at claim language and figuring out what alternative expressions are used for certain terms, etc.) because current patent searchers typically just search on the broad concept and not the specific language of the claims (because the the claims aren’t even drafted when the search request gets sent to the searcher).

    You PHD person likely isn’t going to remember all of the dozens/hundreds of articles that he/she read prior to coming upon with the invention. You might have some that do, but they are already under a duty to disclose that information. You (and the PTO) are pinning your hopes for “better examination” with these AQS, when these AQS will likely produce no better art than you could obtain from an examiner barely out of examiner’s school.

    “He’s also the kind of guy that makes me question just how ignorant the inventors are despite you guys asserting their complete ignorance.”
    You are letting your opinions be swayed by the particular art unit you are in. Material processing is an art that requires (i) a substantial amount of expertise; (ii) a substantial amount of experimentation; and (iii) access to sophisticated equipment. Also, material processing is one art where people tend to build upon the work of others. However, this is more the exception than the rule.

    The problem with your analysis is that it is biased by your narrow view of the subject matter. MM also has the same problem. Working with biotech, he just doesn’t encounter the type of issues that most of us other attorneys experience. My guess is that the level of skill for biotech attorneys is probably lower than average for the simple fact that most firms don’t have but 1 or 2 biotech attorneys at any one time which reduces the possibilities of meaningful training/mentorship. MM rails about claims that most experienced attorneys would never write (or even attempt to claim). My guess is that he sees these claims as examples of shitty lawyering. He is probably correct in that respect. However, he is wrong in thinking that most of the claims in the other art units are, on average, as bad as the ones he sees.

    What I think both you and MM lack is perspective. I’m sure both of you will disagree. When I say this, it is not because I’m busting on you, but because I really think that you both need to gain a broader perspective.

  36. “IMO closer to 1-3%”

    Are you saying that as many as 1 in 33 filed applications actually address a “long felt” need that wasn’t previously addressed??

    Or 1 in 33 granted patents?

    Either way, I think you’re overestimating by at least an order of magnitude.

  37. “Or a “transition” to “patent examining.”"

    And a subsequent transition to “Patent prosecuting”.

    Who’s dumer now?

  38. “This test could be appropriately applied to maybe 0.001% of all inventions.”

    IMO closer to 1-3%. It works out ok, but I’m more of a fan of unexpected results, as in technical unexpected results as an indicia of non-obviousness myself. Failing those I’ve had very very few applications escape my 103′s.

    “patentability cannot be likened to a cloud”

    Actually it can, and routinely is. By everyone involved in the entire system. And was before KSR and still is after KSR.

  39. “Define “simultaneous.” 5 days? 3 months?”

    Three months would be reasonable. After all, if it’s so non-obvious, people will have been BEGGING for this invention for decades!!!

  40. Among other problems with this idea:

    Define “simultaneous.” 5 days? 3 months? 1 year? Says who? Me? You? The PTO?

    Define “same invention.” Taken as “a whole?” (Is so; what would that mean/entail?) Claim-by-claim? (i.e. “Well, my boy…since 3 of your 25 claims in your invention are the ‘same’ [don't forget to define "same"] as 3 of the other fellow’s 32 claims…your entire invention [or only these 3 'same' claims?] must, sadly for you, be found obvious…meaning all your claims are trashed. Sorry.”

  41. potripo “the overall concept is that the facts currently labeled “secondary considerations” are likely better metrics of obviousness than the current judicially-crafted standards”

    Whoa whoa whoa. Whoa. I do agree that the consideration of simultaneous invention is a better factor than the Graham factors. Is that what you meant?

    The Graham factors (set out 40 years ago, before the ridiculous patent bubble) have been set forth as follows: (1) the invention’s commercial success, (2) long felt but unresolved needs, (3) the failure of others, (4) skepticism by experts, (5) praise by others, (6) teaching away by others, (7) recognition of a problem, (8) copying of the invention by competitors, and (9) other relevant factors.

    Let’s take a closer look:

    (1) the invention’s commercial success

    This has absolutely nothing to do with obviousness or inventiveness. It is germane to enablement, perhaps, but is otherwise worthless for evaluating the non-obviousness of a invention because (drum roll) people don’t buy things simply “because they are non-obvious”. A pitiful and silly start for the Graham court.

    (2) long felt but unresolved needs

    Whatever. If the invention is actually novel, then it’s trivial to state that there was a “long felt” need because (drum roll) nobody in history had ever reduced the process or thing to practice before. Hence the inane and self-serving boiler plate that begins so many patent applications. This test could be appropriately applied to maybe 0.001% of all inventions.

    (3) the failure of others

    This is actually an argument for a motivation to make the invention, is it not? Seems to cut both ways. How does it differ from the facts considered for the “reasonable expectation of success” prong? Answer: it doesn’t. Another worthless secondary factor.

    (4) skepticism by experts

    See the discussion of (3). This is again worthless and redundant with the consideration of “reasonable expecation of success.”

    (5) praise by others

    Huh? What could be less relevant to determining the obviousness of an invention than the fact that a million rabbis “enjoy using the product”? Worthless.

    (6) teaching away by others

    See the discussion of (3) and (4) above.

    (7) recognition of a problem

    That’s evidence of a motivation to combine and cuts both ways, to the extent it’s not redundant (again) with (3), (4) and (6). Think of all the wasted paper spent listing these factors in Office Actions. Our forests weep.

    (8) copying of the invention by competitors

    Again, what could be less relevant for establishing non-obviousness than this? It’s highly relevant for enablement. But obviousness? Please. Yet this garbage has surived for over 40 years.

    (9) other relevant factors

    Ah, finally we’re getting to the meat. ;) Simultaneous invention would be one of the other allegedly “relevant” factors. In fact, it’s probably more relevant than any of the explicitly listed secondary factors.

  42. “PHOSITA can’t take 2, or 3, or any number of prior art references and “fit them together like pieces of a jigsaw puzzle” to arrive at the claimed invention unless PHOSITA has seen the claimed invention and knows what the “jigsaw puzzle” is supposed to “look like.”

    LOL. It appears that the nasty pro-patent crack is moving on the block again. I haven’t seen Cavey lately so it must be pds or that SmallPeeingGuy who is pushing it on the kids this week.

  43. Dear MaxDreid,

    There you go again: “Come on. Concentrate please.”

    Just who the hell do you think you are?

    Teaching, Suggestion & Motivation worked because TMS is based on identifiable evidence – patentability cannot be likened to a cloud, or left to subjective whims who all, including Examiners and judges, are prone to. Here, read this and learn:

    link to patentlyo.com

    Max, come on, please concentrate this time.
    Other than TSM, no other system has been devised that takes subjectiveness out of the loop.

  44. Mr. Rat:

    Client only used a piece of the patent (a subassembly), and did not infringe any of the claims since there were no subassembly claims.

  45. “One of my clients couldn’t figure out how to make his new product work so he did a search of related patents which provided him with the solution.”

    I trust you made sure that your client sought out and paid the holder of that patent.

  46. “Ignorance in my field is met with a quick professional death or assignment to fix machines etc.”

    Or a “transition” to “patent examining.”

    Ur dumber.

    LOL

  47. An effective obviousness filter on apps is imperative because, without one, industry is unable to incorporate in its existing product line obvious variants of its existing technology. Is industry to be prevented from marching in an orderly fashion along the wide road of technological development, by the patents of others, ob Via. Come on. Concentrate please. The patents system has to promote the progress, not block it.

  48. pds’s hypo points out the idiocy of the supremes’ “jigsaw puzzle” analogy in KSR. PHOSITA can’t take 2, or 3, or any number of prior art references and “fit them together like pieces of a jigsaw puzzle” to arrive at the claimed invention unless PHOSITA has seen the claimed invention and knows what the “jigsaw puzzle” is supposed to “look like.” of course, PHOSITA doesn’t see the claimed invention until after it is invented and disclosed, thus making his “puzzle solving” nothing more than an exercise in hindsight reconstruction. which is pretty much what all examination is these days.

    sigh.

    A bicycle frame comprising: curved plastic

    Well, reference 1 shows a bicycle frame made out of curved metal, and reference 2 shows a plastic material disclosed to be used in making bicycle frames.

    Hindsight? Ur dumb. This is the type of bs I see every day.

  49. I would like to add, the reason they should get rid of the POSHITA part of 103 is because then anyone working in the field above the ordinary skill is just banging out what are considered to be “great inventions” when really it’s just that the person who is banging out the ideas is a very smart/knowledgeable person. I talked to a guy after a presentation the other day, and I believe he said he was a manager now, but the guy obviously knew exactly what was happening on the technical side of things in his division. PhD in Material Science and he could talk about his field of expertise telling you this, that and the other way of obvious research progression off the top of his head. Every patent he submits on behalf of his group is probably submitted without a background and little to no IDS when he knows nearly the entire history of the field off the top of his head. Don’t get me wrong, I like the guy, and frankly I’m sure he has contributed to the art in many many greatly beneficial ways, and is very “deserving” of patents. However, he’s the kind of guy that I hope AQS’s help to force background information be provided up front from so we start much nearer the contribution than the overclaim his attorney recommended.

    He’s also the kind of guy that makes me question just how ignorant the inventors are despite you guys asserting their complete ignorance. He strikes me as the same type of people I worked with at my last job, and it seems to me like anyone in my entire field would have to be able to hang with him in order to compete in the field at all because he would roll right over them with his intellect if they couldn’t. Ignorance in my field is met with a quick professional death or assignment to fix machines etc.

  50. pds’s hypo points out the idiocy of the supremes’ “jigsaw puzzle” analogy in KSR. PHOSITA can’t take 2, or 3, or any number of prior art references and “fit them together like pieces of a jigsaw puzzle” to arrive at the claimed invention unless PHOSITA has seen the claimed invention and knows what the “jigsaw puzzle” is supposed to “look like.” of course, PHOSITA doesn’t see the claimed invention until after it is invented and disclosed, thus making his “puzzle solving” nothing more than an exercise in hindsight reconstruction. which is pretty much what all examination is these days.

    sigh.

  51. “Milton, John, “Paradise Lost,” Part VI, L. 478-501 (1667).”

    Actually this appears on lines 498-501. This makes sense, since the fragment is only 4 lines long, not 23.

    Just thought you should know.

  52. “My guess is that the number of times the SPE (or anybody else in the particular art unit) will come up with the claimed invention is less than 10%.”

    Probably because you’re asking the question wrong. If you say, “here is problem x, what obvious solutions spring forth from these three patents?” there is much that the SPE doesn’t have access to even so. Machines to run ordinary tests are probably the most notable of the things he doesn’t have access to. This might apply more to my art than yours.

  53. My solution to determining obviousness at the PTO is the following.

    I take the art cited by the examiner. I take the passages cited by the examiner. I give them to the Examiner’s SPE, but without the claims. However, I’ll provide a general statement of the problem to be solved (if the problem was known, to the public, at the time of the invention).

    After which, I ask the SPE (who should have far more experience in the art than even a PHOSITA) to come up with the obvious inventions arising from these teachings.

    My guess is that the number of times the SPE (or anybody else in the particular art unit) will come up with the claimed invention is less than 10%.

  54. “The invention all admired; and each how he
    To be the inventor missed; so easy it seemed,
    Once found, which yet unfound most would have thought,
    Impossible!”

    Milton, John, “Paradise Lost,” Part VI, L. 478-501 (1667)

  55. Yes, considerable benefit to society, the public and technology in general is provided by the publication of patents (and applications) and their organization, prior art cited, classification, easily searchable and the quality of their enabling and best mode disclosures. While many innovations in the sciences may be published in scientific journals and thereby accessible to the public, most engineering inventions will never be published and accessible.

    One of my clients couldn’t figure out how to make his new product work so he did a search of related patents which provided him with the solution.

    Agree?

  56. “that patents should not be granted on innovation which would have occured in the absence of patent protection”

    I don’t think we should be keying obviousness into this standard. Lots of things would *eventually* be invented in the absence of patent protection. The statement should thus at least read “patents should not be granted on innovation which would have occured *just as quickly* in the absence of patent protection.”

    I’d further argue that we should allow patent protection just for the benefit of technological disclosure, organization, and classification provided by patents, regardless if the underlying subject matter is “obvious” (but yes, novelty probably still needed). Such disclosure, organization, and classification benefits the useful arts and sciences, at least as much as a perpetual copyright term.

  57. I think Duffy is being read too narrowly here. I don’t see where he claims (or even begins to claim, really) that “simultaneous” automatically = “obvious”. Rather, the overall concept is that the facts currently labeled “secondary considerations” are likely better metrics of obviousness than the current judicially-crafted standards (and further, that patents should not be granted on innovation which would have occured in the absence of patent protection).

    More to the point: does anyone have problems with his analysis of the examples presented in the paper? I find his thinking reasonable. Whether or not the analysis can be universally implemented as a workable standard is, of course, a different matter entirely.

  58. “The law really needs to get rid of the PHOSITA test which sets the formal bar too low.”

    TRUTH

    Also, I read a patent lie this weekend as well. It was the attorney’s response in application 11/xxxxxx.

    “Perhaps they should go to a medium (but not a computer readable medium) to perform a séance so as to conjure a person having ordinary skill in the art at the time of the invention.”

    You know pds, that might be a good way to shine light on how fake seance’s are. Simply get them to conjure up someone’s grandfather that worked on the atomic bomb and ask him a few technical questions. If he doesn’t remember, then you know it’s fake. I know many technical facts better than I can remember my own birthday, surely they were no different back in the day.

  59. In light of the old joke “what do you call 10,000 lawyers at the bottom of the ocean?” (- a start), GP’s last comment conjures an image that I will struggle to erase from my mind….

  60. Obviousness – the lifeblood of a patent practitioner’s practice.

    What is obviousness.

    Well, it’s this . . .

    Obvious is whatever the Examiner says it is, unless you appeal. Then it’s whatever the Board says it is. Unless you appeal. Then it’s whatever the FC says it is. Unless you appeal. Thin it’s whatever the FC says it is, still.

    Sure, there are some nailed down cases of obviousness that offer some weak precedent . . .

    Optimizing parameters – obvious.
    Making bigger/smaller – obvious.
    and so on.

    But for the most part, the argument always resolves to:

    it’s obvious because [I/we] say it’s obvious.

    The rest of the argument is just lawyers masturbating.

  61. “This occurred even more recently in the invention of the memristor which has been characterized as a fourth fundamental circuit element and for which both Samsung and Hewlett Packard have competing patent applications (US 2007/0200158 and US 2008/0090337). So if you agree with simultaneous invention being evidence of obviousness this would seem to substantially raise the bar on “ordinary skill”.”

    Looks like Samsung won, yes?

  62. pds, I’m overcome with gratitude. I had no idea, till you wrote, that in the USA “non-obvious” and “inventive” are in no way comparable. That might be because (sigh) we in Europe dance to the tune of Art 56 EPC wherein “inventive” is defined as …wait for it… “not obvious”. BTW, with your NOBODY, you’re also wrong.

  63. “simultaneity” is about time & and is *inherently* relative (it is about time!) – an additional *perspective* fixing said time. “rendering” a PHOSITA (a somewhat objective standard?), as correctly noted, gets punted every time 1203 comes under analysis … then again, by the time something is explained enough to be objective the hind-sighters cry with glee – “that’s obvious”

    but, two inventors may invent simultaneously, so what? public notice function undervalued again by some academic who spent too much time in price-planning // how to play nice with the politburo class. is diversity simply ignored or can we be mores specific in a copyright/trademark sense (“confusingly similar” standard) and start attacking patents that look very much alike … what is a defensive patent, again? who pays for this type of research?

  64. “Obviousness is about feelings.”

    Instead of parties going to mediators to resolve issues prior to litigation, should they be going to a meditator first?

    Perhaps they should go to a medium (but not a computer readable medium) to perform a séance so as to conjure a person having ordinary skill in the art at the time of the invention.

    You raise you raise some very important issues MM, thanks for sharing your feelings.

  65. Mad Max:

    When 35 USC 103 is written as “a patent shall be granted for any inventions which are susceptible of industrial application, which are new and which involve an inventive step,” then expect a conference on obviousness to look at inventive step.

    Until then, stop wasting your time complaining because NOBODY cares.

  66. …..except, Greg, that 1) “ob-via” means “lying in the road” (of technological development, that is), which is as precise a meaning as anybody could wish for, so is not vague at all, and is a Yes/No binary question, and 2) that Conference you mention chose to pretend that the EPO-PSA approach to the analysis of obviousness hasn’t been invented yet, studiously ignoring it. EPO-PSA has survived 30 years of ignorant (albeit highly intelligent) assault, beating off all comers. Why did the Obviousness Conference choose to avert its eyes? For me it’s obvious (as reactions to this comment will now confirm).

  67. pds “One important factor should be the number of “those skilled in the art” who would be aware of both the problem to be solved and the “obvious” solution. If that number is very, very large, and only two people discovered the solution in close proximity (there will probably be very, very few instances of true simultaneous discovery) then such a finding should be given less weight as to obviousness than if there were 4 people searching for the solution to the problem and 2 of them came up with the solution in close proximity.”

    I don’t know how “important” the number of simultaneous inventors should be in the calculus, but the value of the number needs also to be weighed against the number of people working on the problem. If two people simultaneously and independently come up with an identical and allegedly “new” way of shampooing a hamster, then there is probably no point in analyzing the prior art.

    But all this is really the sort of information that a defendant’s phosita brings into the courtroom when she testifies about how obvious the invention is. The secondary factors aren’t the only factors that may be considered. Obviousness is about feelings.

  68. Obviously it is not a flash of genius if two people invent simultaneously, and thus the invention is obvious. Oh wait, this is 2008, not 1951? Sorry, ignore the sarcasm, I mean,
    learned analysis.

    The only thing that is obvious is that it is obvious that the use of “obvious” in 35 USC 103 is unconstitutionally vague. No court, or academic, has ever been able to reasonably defined what Congress didn’t define. Indeed, the recent law school conference on KSR, with way too many academic papers on the problems of “obvious” in 103, and potential solutions to defining it, is near-perfect proof of the constitutional vagueness of 35 USC 103 (a topic conveniently left out of the conference).

  69. The reviewer of Heller’s book is of course quite correct that anti-conmmons is just a new marketing label for the transaction costs we learned about when we took economics of law ( at least those of us who took economics of law ).

  70. The reviewer of Heller’s book is of course quite correct that anti-conmmons is just a new marketing label for the transaction costs we learned about when we took economics of law ( at least those of us who took economics of law ).

  71. Professor Heller is correct. There are too many property rights — like those pesky copyright rights. I have made 1,000 copies of his book and am selling them for $2 each. This is just until I get my website up and going where the book can be downloaded, for free to all. It is important to get his message out to the masses.

  72. “Simultaneous = obvious.

    Interesting speculation.”

    You can add calculus, radar and transistors to your list of simultaneous inventions.

    Since an invention can be “obvious” to every practitioner with superior skill and still be patentable, the simultaneous invention test won’t get us very far. The law really needs to get rid of the PHOSITA test which sets the formal bar too low.

  73. Regarding simultaneous invention being equivalent to obviousness isn’t this the same as eliminating the “ordinary skill” requirement for judging obviousness? For example, there may be two superexperts in the world in a particular technology who discover a groundbreaking new concept for the technology and the patent reward goes to the first of the superexperts to reduce to practice (either constructively or actually) the invention. This in fact occurred in 1959 when Robert Noyce (later founder of Intel) and Jack Kilby of Texas Instruments simultaneously conceived of integrated circuitry which set the stage for modern electronics. This occurred even more recently in the invention of the memristor which has been characterized as a fourth fundamental circuit element and for which both Samsung and Hewlett Packard have competing patent applications (US 2007/0200158 and US 2008/0090337). So if you agree with simultaneous invention being evidence of obviousness this would seem to substantially raise the bar on “ordinary skill”.

  74. I think the concept of simultaneous invention should, like most things, be considered in the entire context in which the invention was reduced to practice.

    One important factor should be the number of “those skilled in the art” who would be aware of both the problem to be solved and the “obvious” solution. If that number is very, very large, and only two people discovered the solution in close proximity (there will probably be very, very few instances of true simultaneous discovery) then such a finding should be given less weight as to obviousness than if there were 4 people searching for the solution to the problem and 2 of them came up with the solution in close proximity.

    Another factor to consider is time from problem to solution. I would weigh evidence that both parties took a couple of years to solve the problem (and arrive at the inventive solution) differently than evdence that two parties both came up with the solution within a week after being exposed to the problem.

    Of course, does the converse hold true? If nobody else had applied for a patent (since applications are issued after 18 months, one could look for evidence that an invention was claimed in the 18 months preceding the publication of the “first” application. If nobody else claimed the invention within those 18 months (when the application wasn’t published and thus not preventing someone else from filing on the application), should this type of evidence be considered as well?

  75. Dennis, forgive my ignorance, but who is Brent Yamashito? Also, do you have a copy of the paper? I’ve done some work in this area myself, so I’d be interested to see it.

  76. Re: Query: Does anyone use the XML links found within private PAIR?

    Yes. The XML with aggregate application information by customer number is helpful and includes the latest status/last transaction (and date), though doesn’t include title, details of the parent/child continuity information, and detailed inventor information. However, the XML provided with each application fills in these details and more.

    One way to approach the two types of XML is to download the aggregate information by customer number more regularly (once a week or so — there are generally fewer of these files to download) and then to download the more numerous per-application XML files on an as-needed basis (on filing, office actions, etc.).

    A fairly simple relational database can then be used to generate reports from these two types of XML.

  77. I’ve used the XML to cross-reference our internal data with the USPTO’s data, which was helpful in finding some applications that were not, but should have been, associated with our customer number.

  78. We made extensive use of the XML links when preparing for the new rules last fall. The XML files for individual applications have inventors, filing dates, priority dates, related cases, etc. We downloaded the XML file for each application. A script parsed and analyzed the data then reported applications having potential 5/25 issues or that might be subject to reporting of related cases.

    The link on the private PAIR search page is useful for checking which cases have had status changes in the last 3 days, week, month, etc. There is a CSS file that lets you view the file in a nice table.

    The first time we downloaded the XML file of recent status changes, we discovered a case in which a Final Office Action had been mailed, but never received. The MPEP only addresses cases in which an application is abandoned because an OA was never received, and in which there is a lengthy delay in the mail. However, it doesn’t address what to do if you discover through private PAIR that you never received an OA that was mailed three months ago.

  79. Simultaneous = obvious.

    Interesting speculation. I guess that would make both the theory of natural selection (Darwin / Wallace) and the invention of the carbon filament light bulb (Edison / Swan) both obvious.

  80. Yes but is timing theory any help, in addressing the need to examine obviousness, economically and expeditiously, in the context of getting one million pending applications, of adequate quality, quickly through to issue? And, if not, what tool does one use, to perform this pre-issue task? And, if you use different tools to examine obviousness, pre-issue and post-issue, what about the presumption of validity?

  81. But, isn’t simultaneous invention the underlying reason for interference proceedings?
    It may be assumed that, with many people trying to solve a problem of current interest that instances of substantially simultaneous invention are common, but not obvious.

    After all, he who publishes first gets the Nobel Prize, even though the problem being addressed may be the subject of intense worldwide research.

  82. With respect to simultaneous invention, John Duffy makes the same point in his recent article, “A Timing Approach to Patentability.”

    For example, he argues that:

    “In particular, objective evidence of nearly simultaneous independent invention should be given much greater weight, and where other independent creators reached similar innovations at nearly the same time without even bothering to seek a patent on the innovation, such evidence should almost always be considered conclusive of obviousnesss.”

    It’s an excellent article that is not too long (i.e., good for the practitioner). He emphasizes the timing of invention as a unifying theme that helps to explain patent and competition law.

    It is available here:

    link to lclark.edu

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