BPAI Precedential Opinion: The Nexus for Obviousness and Nonobviousness

Ex parte Jellá (BPAI Precedential Opinion) fd081619-1.pdfpic-30.jpg

Most modern metal garage doors have four or five panel sections. The older wooden doors often had only one panel. Jella’s invention is simple — have three panels each “substantially twenty-eight inches” in hight. The prior art taught “any number” of panels including one, four, five, or six. Following the examiner’s lead, the Board of Patent Appeals and Interferences (BPAI) found the invention obvious.

The BPAI issued a precedential opinion focusing on obviousness. The prima facie case of obviousness is easy under KSR even without any evidence that anyone had previously considered a twenty-eight inch door.

The Court in KSR noted that “[wlhen a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one. If a person of ordinary skill can implement a predictable variation, Section 103 likely bars its patentability." Changing a conventional seven foot high overhead garage door from a four panel section door to a three panel section door is nothing more than a predictable variation sparked by design incentives in the hope that a new look to the door would result in increased sales.

What it looks like here is that the driver for the innovation really was a need for a new ornamental design - motivating PHOSITA to create the obvious variation.

In our minds, this is an example of market demand driving a design trend, and the Supreme Court in KSR warned against granting patent protection to advances such as this that would occur in the ordinary course without real innovation . . . .

We further find that market pressure existed in the garage door industry to create a new design trend by updating the look of garage doors to spur additional sales in the industry.

In addition to allowing ornamental design needs to serve as the motivator to try a new design, the Board did not require any tight nexus between the design motivation and the new design (other than the need for a new design).

I highlight the lax approach on obviousness to contrast the Board's strict approach when considering objective or secondary factors of nonobviousness.

Nexus: The bulk of the Jellá opinion is spent repeatedly shooting down the applicant's arguments on secondary considerations of non-obviousness and the accompanying declarations. The most often repeated point was that any objective evidence must have a clear nexus with the invention as claimed.

"To be given substantial weight in the determination of obviousness or non-obviousness, evidence of secondary considerations must be relevant to the subject matter as claimed, and therefore the examiner must determine whether there is a nexus between the merits of the claimed invention and the evidence of secondary considerations."

The nexus requirement include being "commensurate in scope with the claims."

Ornamental Features in Utility Patents: Additionally, the ornamentality or striking good looks of a design cannot be used as evidence of nonobviousness. Here, the BPAI rejected a declaration discussing the "unique" look of the garage door based on a desire to avoid overlap with design patent law: "Were we to allow secondary considerations of non-obviousness to be based on the industry's reaction to the ornamental appearance of the claimed invention, we would be blurring the distinction between design and utility patent protection. Objective evidence of secondary considerations of non-obviousness should be tied to the functional aspects of the claimed invention for a utility patent application." Oddly enough, the BPAI did allow the PTO to use the ornamental features to prove a "market pressure" -- finding that "market pressure existed in the garage door industry to create a new design trend by updating the look [and appearance] of garage doors to spur additional sales in the industry. …  In our minds, this is an example of market demand driving a design trend, and the Supreme Court in KSR warned against granting patent protection to advances such as this that would occur in the ordinary course without real innovation.”

Rejection Affirmed.

99 thoughts on “BPAI Precedential Opinion: The Nexus for Obviousness and Nonobviousness

  1. “As an “Actual Inventor” I would like to know how many of the above secondary considerations are supported by actual case law. For example, teaching away has been upheld in KSR, but what about the other 14?”

    I think I’ve seen all of them mentioned at one point or another, including “licensing” and “commercial success” which, depending on the context, may be among the most worthless of the bunch for evaluating obviousness.

  2. imaginary commenter :” Good luck getting anybody at the PTO to seriously consider your secondary considerations though, shy of the BPAI.”

    Unfortunately, it appears, at least from watching the Comisky, Bilski, Furgeson line of cases that if the PTO does not want you to get a patent, you won’t get a patent, at least not without the SCOTUS backing you.

    Thats why it important for “Actual Inventors” to stay on the PTO’s good side though out the entire process. Attorneys tend to antagonize the situation to a certain degree.

  3. The MPEP does not carry the force of law. However, seeing as it’s the PTO’s procedural manual, and they state that those four secondary considerations carry weight, that’s all the basis you need to go up against the PTO on at least those four grounds. Good luck getting anybody at the PTO to seriously consider your secondary considerations though, shy of the BPAI.

  4. “Why ask any of us? You’re the one who doesn’t think that a lawyer is needed. Go find your own answers.”

    Oh my… It’s called the socratic method. Anyone that went to a decent university, and most surely anyone that went to law school should be familiar with this method as well as rhetorical questions and capable of responding accordingly.

  5. “Actual Inventor”–

    Why ask any of us? You’re the one who doesn’t think that a lawyer is needed.

    Go find your own answers.

    Problem is, you don’t have the training and knowledge required to find them, or to evaluate what they mean, or when and how they may be applied.

    I bet you just can’t wait until prom…junior prom.

  6. Actual Googler wrote:MPEP 2141:
    “Objective evidence relevant to the issue of obviousness must be evaluated by Office personnel. Id. at 17-18, 148 USPQ at 467. Such evidence, sometimes referred to as “secondary considerations,” may include evidence of commercial success, long-felt but unsolved needs, failure of others, and unexpected results.”

    Thats good for the MPEP Actual Googler. But does the MPEP carry the force of law? Thats why I asked for case law. Like I said ” # 7 teaching away, is backed by KSR, and the cases on which its based such as John Deer ( sp?). But what about # 4. rapid adoption by others; ??

    They all sound great but without case law to back it up what basis does an applicant have to go up against the PTO?

  7. MPEP 2141:
    “Objective evidence relevant to the issue of obviousness must be evaluated by Office personnel. Id. at 17-18, 148 USPQ at 467. Such evidence, sometimes referred to as “secondary considerations,” may include evidence of commercial success, long-felt but unsolved needs, failure of others, and unexpected results.”

    See also MPEP 716.

  8. Mr. Poppa Bear wrote: ” Finally, recognize the many types of secondary considerations of non-obviousness, including:
    1. recognition of a problem not recognized by others;
    2. long-felt but unresolved need;
    3. prolonged period of research preceding solution of problem;
    4. failed attempts by others;
    5. skepticism of experts;
    6. praise by infringers or others;
    7. teaching away by others;
    8. discovery of unexpected results or benefits;
    9. synergistic results;
    10. near-simultaneous invention by others;
    11. failed attempts to design around by others;
    12. copying by others;
    13. licensing;
    14. rapid adoption by others; and/or
    15. commercial success of products covered by the patent claims or made by a process covered by the patent claims.”

    As an “Actual Inventor” I would like to know how many of the above secondary considerations are supported by actual case law. For example, teaching away has been upheld in KSR, but what about the other 14?

  9. “Actual Inventor”–

    yeah, right.

    I think your mom’s calling from upstairs again.

  10. Mr. Malcolm Mooney wrote: “from a business perspective, simply manufacturing and selling these doors should be plenty profitable if they are so “deceivingly difficult to make” (but the applicant has solved that problem) and if there is such an incredible demand for them. Why waste the time and money on the patent?”

    Well, I have not read the case you are commenting on but as an “Actual Inventor” that runs a business built around patents I can answer your question.

    We apply for patents for products, and processes that are in “incredible demand” to have a reasonable chance of competing with big corporate conglomerates.

    Without a Patent, or at least a Pat Pending, a small or start up company that hits the market and creates a craze in their region or even on the web world wide will have that invention copied and stolen by a big multi nation corporation in days. And no one will even know or care that it was some guy/gal working for years in their den or garage that came up with the idea first but now has no profits to show for it.

    Patents give the little guys/gals a chance to compete with the big boys and gals, well lets face it, they’re all boys but ya know what I mean.

    And it gives the country new business and innovation and forces everyone to compete, and thats good for us consumers.

  11. Let’s be clear that I was talking about the insect screen case (Andersen v. Pella) that Mooney linked to.

    In that case, the price of the prior art mesh was relevant to the factual inquiry of the scope and content of the prior art. There is no requirement of a nexus between the expert evidence provided to rebut the accused infringer’s case of invalidity due to obviousness and the word for word limitations in the claim.

    Mooney stated that the claim must recite the price in order for that evidence to be relevant as a matter of law. He was wrong.

    That case dealt with the issuance of summary judgment of invalidity. If you ever do study evidence and civil procedure, you will learn about the burden of production, and the burden of persuasion, and the reasonable trier of fact standard, and genuine issues of material fact.

    The Fed. Cir. got that Andersen v. Pella case exactly right. Your and Mooney’s whining notwithstanding.

    I accept that I don’t have a 100% grasp on the law. That’s why I practice it every day. I would suggest that it is you who doesn’t have a grasp on the law. You clearly think that there’s nothing to it except going to altlaw.org, typing in a few words in the search box, cutting and pasting a quote you believe supports the position you want the answer to be, and declaring victory. Trust me, it requires a little more than that.

    I’m sure you’ve dispatched legions of practitioners with your ever so insightful questions. Then again, you’ve never examined a case from me.

    As for my alleged inability to explain it clearly to you, well, all I can say is that it’s hard to condense 3 years of law school training in a blog post. I simply can’t give you a semester or two’s worth of evidence and/or civil procedure as background every time you post one of your silly rants. Keep in mind also how difficult it is when the person you’re addressing (i.e. you in this case) thinks that they already know the answer without a shred of doubt in their mind, despite the fact that they have no knowledge of the issues.

    For you to claim the Fed. Cir. got that Anderson v. Pella (insect screen case) wrong when you know nothing about the standards for granting summary judgment, nothing about the difference between the burdens of production and persuasion, nothing about relevance, is pretty silly. That was a garden variety case of summary judgment and the standards for granting it. It had nothing to do with any “nexus” requirement. The Fed. Cir. got it 100% correct.

    As for your colleagues over there, I frequently try to explain concepts like question of fact, quesiton of law, substantial evidence, preponderance, burden of proof, etc. to them in all of my responses and/or interviews with them. Most of them dismiss such instruction as “legal mumbo jumbo.” They’re much more interested in learning from their primary and/or SPE how to pump out garbage OA’s and catching the RCE gravy train. From your presence here, it seems you are far more advanced than the vast majority of the thousands of newbies hired in the past 5 years or so.

    As I noted before, you clearly hold the record for contracting the “I’m not a lawyer but I play one at the PTO” virus in the shortest amount of time. But please, do yourself, and all of us in the patent bar, a favor and go get the cure.

  12. “1. No. You’re thinking of the requirement that there be a nexus between commercial success and the claimed invention.”

    Perhaps I am. But let’s take a quick gander at what the board has said.

    “To be given substantial weight in the determination of obviousness or
    non-obviousness, evidence of secondary considerations must be relevant to
    the subject matter as claimed, and therefore the examiner must determine
    whether there is a nexus between the merits of the claimed invention and the
    evidence of secondary considerations. Ashland Oil, Znc. v. Delta Resins &
    Refractories, Znc., 776 F.2d 281, 305 n.42 (Fed. Cir. 1985), cert. denied, 475
    U.S. 10 17 (1 986).”

    Now you’re telling me that they made an overbroad statement and that the only time that there is a nexus requirement is for evidence of commercial success?

    The court goes on to say “for example:”:

    “In particular, an applicant asserting secondary
    considerations to support its contention of non-obviousness bears the burden of proof of establishing a nexus between the claimed invention and evidence of secondary considerations. For example, in the case of evidence of commercial success, the Federal Circuit has acknowledged that the applicant
    bears the burden of establishing a nexus, stating:”

    “For evidence of secondary considerations to be considered, it must be relevant.”

    I can accept your definition of relevant and the rest of your position if you can provide any justification for making this statement (citations would be nice if you have them nearby) especially in so far as it conflicts directly with the (perhaps overbroad) statements made throughout this decision and throughout the caselaw at large.

    Especially where the board exclaims that they cannot find the nexus between the applicant’s discovery of unexpectedly awesome results when the sections travel through standard radius tracks. That doesn’t seem to be commercial success, that seems to be unexpected results.

    “We find this evidence equally unpersuasive of unexpected results because the evidence lacks the
    necessary nexus to the claimed invention. The claims do not recite three twenty-eight inch panel door sections in combination with standard radius tracks.”

    Perhaps that nexus requirement for unexpected results is an artifact from the rule on commercial success requiring nexus? Perhaps that artifact does not extend to all types of secondary considerations? Including, notably, evidence “leading away”? Is that your position?

    “2. Yes. ”

    We agree there.

    “You’re out of your league here. You don’t know anything about evidence. Simply ranting and raving about an allegedly required “nexus” when there is no such requirement demonstrates your ignorance.

    You should stop.”

    You’re right, I know little about evidence. But I can read what I have reproduced from the decision above, and you can offer no reason as to why it is inapplicable to the secondary consideration in question.

    “evidence of secondary considerations must be relevant to the subject matter as claimed, and therefore the examiner must determine
    whether there is a nexus between the merits of the claimed invention and the evidence of secondary considerations.”

    Seems to make a requirement out of nexus. Evidence must be relevant it says. It then goes on to tell us how to determine if it is relevant by telling us that the examiner must determine whether there is a nexus between the claimed invention and the evidence (perhaps this is in addition to your definition of how to determine if evidence is relevant). What else can this passage be taken to mean if not that?

    That being the primary issue I believe between the two of us. What else can that passage mean if not that a nexus is required for all secondary considerations? Is it simply an overbroad statement?

    “If the patentee presented evidence that the price of the prior art screen was such that it would have led one of ordinary skill away from the claimed invention”

    Here’s some ranting you can skip if you like: Right, I notice you stuck “claimed invention” in there at the end. The bottom line is that it wouldn’t have led away from the “claimed invention”, it would have led away from only the embodiments encompassed by the claimed invention which were high in price. There are embodiments encompassed by the claims which are low in price correct? That being since the claim does not have limitations limiting it to either the high priced, or low priced embodiments. The issue here is that the prior art reference shows many things. It shows a mesh. That’s an embodiment. It shows a mesh with fine wires. That’s an embodiment. It shows a mesh with fine wires that costs 75$/ft. which is also an embodiment. The substitution of the second embodiment with the other prior art of record creates an obvious combination and the considerations from the third embodiment are not required to be substituted. How then are they relevant? How then does the fact that one embodiment of the fine wired mesh is 75$/ft tend to make the existence of a material fact more or less likely?

    You keep bringing up that the reference must be considered in its entirety. I completely agree. One should be 100% aware of all that is disclosed. If, for instance the claim called for a mesh that cost 15$/ft then there would be no embodiment that covered it. If, for instance, the claim called for a mesh that cost 75$/ft then an embodiment covers it. If, for instance, the claim is how it is, and makes no specification on the cost, there is an embodiment that covers it. Also, in that last case, one should be 100% aware that a secondary consideration might exist as to the cost of the screen. The question then becomes, why would this be a proper secondary consideration since it doesn’t lead away from the “claimed invention” in so far as the 2nd embodiment from above would still make a 100% obvious combination and would not take into account the price. Whereas a combination with the third embodiment certainly would, if it were required to be brought forth into the 103 analysis by the claims limitations. And, I should add, that one should be aware that during the “common sense” consideration, one might want to take a look at the price. Then again, one might determine not to look at the price since the claim doesn’t really go so far as to require it.

    As an aside: I’m nearly 100% sure that you could find a reference describing this mesh without the dollar/ft right in that particular reference, and I’m nearly 100% sure that is what was found. The reason the other people had to present the evidence of the $/ft was because they had to contact the company to find out how much it cost to make. Therefor, we’re not dealing with one single reference that must be considered as a whole in order to have that $/ft right in with an embodiment with no $/ft right beside it on the same page, or in the same publication. They’re having to incorporate information from several seperate references to create a full picture of the mesh presented sans price in one single reference. Besides, does this claim not cover a mesh that is 1/4 inch by 1/4 inch? That should be entirely reasonable in cost. (75$/12 inch per feet)/.25, what’s that? Something on the order of a dollar to purchase? Certainly my 1/4 inch by 1/4 inch mesh can be used as an insect screen. But that’s just an aside to demonstrate why the evidence needs to have a nexus with the limitations of the claims.

    “Understand, and accept, that you don’t know much, and aren’t learning much by working for the idiots over there. ”

    Oh I accept it. The problem is that you don’t accept the possibility that you don’t have a 100% firm grasp on the law as a whole. Just like in KSR. Just like in Bilski (I admit that one took me a bit by surprise too). Just like in Dudas. In either event that’s irrelevant since unfortunately I’m not learning much from you, since you fail to explain things clearly very often, or your associates on the bar either. This is probably mostly because none of you have a very good grasp on the law, but are merely the cataract ridden one eyed men in the valley of the blind. Also, your failure to address the actual issue is problematic. Here for instance it is 100% clear that the issue is that you don’t feel like there is a nexus requirement (because if you’re right on that my position crumbles) for this type of secondary consideration even though the plainly worded command from the caselaw says there is. You offer no explanation as to how this caselaw could be interpreted to mean that there is a requirement only for some secondary considerations and not all, when plainly that would make more sense than applying secondary considerations to claims where the considerations have no nexus with the claims.

    When I discuss such issues on the phone attorneys just roll over and die, they have no basis for what they say at hand and I win the day with easily asked questions nearly every time. Then I put on the record that they agreed that I won the day and never hear about the issue again. What more can you expect if nobody can present their position adequately? Perhaps they’re right, perhaps the law is on their side. Perhaps the law is too complicated for them to spend enough time to enunciate clearly enough to present it properly to one of such meager understanding as I. Then again, perhaps they’re wrong.

    Noise, iirc my post got baleted by the posting errors here on PO and I didn’t have it copy/pasted in that particular thread and I didn’t feel like re-typing it. Just for you, I’ll revist it later this evening.

  13. JohnDarling,

    Way, way too late for 6. He has found his “glory” in embarrrassing himself as he thinks he actually “wins” these conversations. He is a legend in his own mind and addicted to that endorphine rush.

    Pointing out the law won’t provide help to one who thinks that law and lawlol are up to himself to decide and apply. 6, you never returned for the dessert of my fixing your soundbyting out of context back at Tuesdays with Aaron link to patentlyo.com

    Or is that dose of reality more than you can stomach?

  14. 1. No. You’re thinking of the requirement that there be a nexus between commercial success and the claimed invention.

    For evidence of secondary considerations to be considered, it must be relevant. You’ll learn what that means when you take a class in evidence. Or should I say if you take a class.

    As a quick primer, evidence is relevant if it tends to make the existence of a material fact more or less likely.

    2. Yes. The Fed. Cir. said so. Go back and read their decision. Your disagreement with the court’s interpretation of the law doesn’t mean the price of the prior art mesh is not relevant to the detemination of obviousness. It means you disagree with the court’s decision. However, as you don’t know the law, your disagreement is really nothing more than your unconsidered opinion. Not worth much.

    Here’s a tid bit from the MPEP 2143.02 for you:

    A prior art reference must be considered in its entirety, i.e., as a whole, including portions that would lead away from the claimed invention. W.L. Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 220 USPQ 303 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984).

    Notice that “as a whole” part.

    If the patentee presented evidence that the price of the prior art screen was such that it would have led one of ordinary skill away from the claimed invention, the evidence was relevant and must be considered.

    3. See the paragraph immediately above.

    You’re out of your league here. You don’t know anything about evidence. Simply ranting and raving about an allegedly required “nexus” when there is no such requirement demonstrates your ignorance.

    You should stop.

    Get yourself an education and then come back and maybe somebody will take you seriously.

    Until then you’re just embarrassing yourself.

    You clearly have an inquisitive mind. Unfortunately you are employing it in a manner that suggests you are merely seeking confirmation of what you think you already know.

    Understand, and accept, that you don’t know much, and aren’t learning much by working for the idiots over there.

    Save yourself. Before it’s too late.

  15. As usual I’ve made the issue more complicated than you can handle. Let me put on my lawyer handling gloves and boil this down to three easy questions to help you find your own illogic.

    1. Is there a requirement for evidence of secondary considerations to have a nexus with the claimed invention in order for it to be considered? A simple yes or no.

    2. Is the evidence of the fact that the mesh was expensive a secondary consideration? A simple yes or a no.

    3. If the above answers are both yes, then what is the nexus between the aforementioned evidence and the instant claims in that case?

    Bonus: If there is no nexus which you can provide for 3, and the answer to 1 and 2 is yes, then why should the evidence be considered in the obviousness determination?

    You win the interwebz bonus: If the evidence should not be considered under 4 then why do you insist that it should? What law supercedes good Mr. In re Huang and his fellows like him?

  16. Sustained – or new grounds of rejection? Doesn’t the logic applied by the BPAI and specific evidence differ somewhat from that of the Examiner? What’s fair?

  17. “In either event, I think you understand what my beef is…”

    No. I don’t. Your rambling and ranting because you don’t understand the law. That I do understand.

  18. “The court specifically stated that the testimony of patentee’s (Andersen) expert as to the “price infeasibility” of using the prior art screen taught away from the claimed invention created a genuine issue of material fact.”

    That’s what the CAFC said, not what the DC said. And that’s why we’re saying the decision was wrong. It was not a material fact. End of discussion. It was the DC judge’s call as to whether or not it was material, and he decided it was not. The CAFC reviews him De novo (iirc) and just straight up says nah, it’s material, even though there is no nexus between the fact and the subject matter under consideration, and merely a nexus between the fact and the prior art, which is technically irrelevant for the 103 analysis here. It’s them substituting their biased judgment for the perfectly reasonable judgment of the DC. Which is technically fine, as they are allowed to do so, but their judgment as to it being material, and thus presumptively possessing a nexus with the instant claimed subject matter is flawed. There is no nexus there.

    “6: Check it out:”

    Hey look, hindsight and PDS both are showing off their incomprehension of the issue at hand.

    “If your evidence and arguments are that the claimed invention addresses a long felt need, the claim does not need to recite that long felt need in order for your evidence to be relevant to the determination of obviousness/non-obviousness. ”

    That’s 100% right. But if you’re making a bicycle that has pedals with reflectors on them, and handlebars with bells on them, then a long felt for bells on handlebars need is not relevant to the following claim:

    A bicycle comprising:
    pedals having reflectors thereon.

    Capiche? Do you notice how the claim includes, but doesn’t even mention the bells? Those are the bells which the long felt need was for. There is no nexus between the long felt need for bells and the reflectors on the pedals. In just the same way, the mesh claim includes the expensive mesh, and other meshes, but the specific features that are in the claim, the thinness of the wires of the mesh, transparency, etc (aka the reflectors on the pedal) have no nexus with the price of the mesh. Put another way, the price of the mesh has no nexus with the limitations in the claims. Therefore, how the f is the information relevant/material to the obviousness inquiry before us?

    If there is a long felt need for something, let us say, bells on a handlebar, then the fin bells on a handlebar must be recited as limitations, not the long felt need for the bells.

    You’re 100% right, this is elementary stuff, how the f can you be missing what is plainly right before your face?

    Don’t get me wrong, the price of the mesh, as I’d stated in the other thread, might get some small consideration as there is, what you might call a roundabout nexus in so far as it deals with the same general subject matter as the claim and is in a way a “teaching away”. But it isn’t a solid teaching away, and it sure as f doesn’t have a solid nexus with the recited subject matter. Therefore, at the most it gets considered perhaps as a teaching away, if the judge feels like it is material to the question at hand which it technically is not, but where he might give it consideration because he feels bad for the patentee. A very weak consideration if any. And that is if, IF the judge deems it relevant enough to be material. He did not. The CAFC feels free to override his judgment as to the matter when clearly the applicant is not “entitled” to consideration of that factor at all since it has no clear nexus with the claim.

    The only nexus it has is with the prior art, which is irrelevant to the question of if it has a nexus with the subject matter under consideration. The same “subject matter as a whole” which is in consideration under 103. Which excludes the “subject matter of the prior art”.

    In either event, I think you understand what my beef is, thus I don’t need to do the whole compare and contrast for you. And even if you do not agree that there needs to be some sort of nexus between the claimed subject matter and the evidence of non-obviousness we’ll be here to straighten you out when you send some in.

    I’m over it, see you in prosecution.

  19. MaxDrei,

    You confuse “hits” with “readers”. The good proportion of hits are from the likes of 6 (and dare I say Malcolm?).

    Readership is an entirely different item. Note the informal poll of 0 of 5 knowing “6″ at the Office…

    There MAY be a good proportion of readers at the USPTO, but that has not been substantiated.

  20. But Hindsight, however cross-eyed I am, at least I’m not the one who’s mindlessly ejaculating puerile inanities onto this otherwise useful thread. Don’t like what I write? Then tell me what’s wrong with it. Then we’ll all learn something. Remember, a good proportion of our readers are at the USPTO.

  21. 6: Check it out:

    A prior art reference must be considered in its entirety, i.e., as a whole, including portions that would lead away from the claimed invention. W.L. Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 220 USPQ 303 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984) (“On the entire record and in view of all the references, each in its entirety…”).

    MPEP 2141.02, section VI.

  22. So, if I see it right, while European law concerns itself with technical features in the claim, and what solutions are or are not technologically obvious, American judges decide obviousness on the basis of exactly how much sense the claimed solution makes commercially, and American patent attorneys argue about what commercial features to put in the claim (or not). I wonder, would American patents judges be assisted, on obviousness, by witness evidence from an expert accountant? This is entertaining. More please, more.

  23. Here’s Mooney’s post from November 19, 2008 at 1:14 PM in that thread (i.e. an exact quote):

    “There is only question that needs to be asked with respect to this ‘price infeasibility’ baloney and we all know the answer. The question is: do the claims recite a limitation that the window screen can be manufactured below a recited cost? If they do not, then the fact that the prior art mesh is ‘expensive’ is irrelevant as a matter of law.”

    Wrong. Dead wrong. So dead wrong it’s mummified.

    The court specifically stated that the testimony of patentee’s (Andersen) expert as to the “price infeasibility” of using the prior art screen taught away from the claimed invention created a genuine issue of material fact. In other words, the price of the screen was relevant, AS A MATTER OF LAW, even though there was no price of the screen recited in the claim.

    If your evidence and arguments are that the claimed invention addresses a long felt need, the claim does not need to recite that long felt need in order for your evidence to be relevant to the determination of obviousness/non-obviousness. If your evidence is that the claimed invention has been copied, you don’t need to recite in your claims that your invention has been copied in order for your evidence to be relevant.

    This is pretty elementary stuff. If you can’t figure it out by now, I’m probably not going to be able to help you.

    If your opinion is that “secondary considerations” are nonsense, well that’s fine, but it’s not the law, no matter how many pointless rants you post on this site.

    Get over it.

  24. Echoes here, of the EPO distinction between “technical features” (a claim must be composed of those) and “technical effects” (what Applicant can rely upon to substantiate non-obviousness). The features in the claim have to be sufficient to deliver the effects. If they aren’t, the effects can’t be relied upon to demonstrate non-obviousness. I’m wondering if JD does too much EPO prosecution for his own good (on this thread). Ha Ha.

  25. “My understanding of “the subject matter as a whole” is far better than either you or Mooney. ”

    That is an assertion that you nor I can prove or disprove, as you may have an outstanding understanding of it, though you have trouble applying that understanding. It is my position that your understanding of the phrase “the subject matter as a whole” is substandard, at best, so I shall present the case for having taken such a position. Since we cannot know exactly what your understanding is, let us judge your understanding of the subject matter as a whole, as well as my own, with how your statements on the insect case and my own might be reconciled with this instant decision. Is that fair?

    We begin with what started the entire controversy:

    “MM: “The question is: do the claims recite a limitation that the window screen can be manufactured below a recited cost? If they do not, then the fact that the prior art mesh is ‘expensive’ is irrelevant as a matter of law.”

    JD: What part of the requirement to consider the subject matter as a whole do you not get?”

    Where you have, I believe, asserted that we must consider the factor of a certain peice of prior art mesh being expensive to be relevant to the question of the obviousness of a claim which covers the combination of that prior art mesh with some other features.

    Specifically this claim:

    “An insect screening material in a frame removably attached to a fenestration unit that permits ventilation therethrough and having reduced visibility, comprising a plurality of screen elements having a diameter of 0.007 inch or less, the screen elements having a tensile strength greater than 5500 psi, wherein the screening has a transmittance of light of at least 0.75 and a reflectance of light of .04 or less.”

    Specifically it was this combination at issue:

    “In their briefs and at oral argument before the district court, Gore and Pella asserted that the invention claimed in the ’612 patent was rendered obvious by an electromagnetic-shielding mesh manufactured by TWP, Inc. (“TWP”) in combination with Japanese Patent No. 195646, disclosing a method of coating a screen with light absorbable black color to reduce reflection.”

    The court itself held that the appellants had raised a GIoMF and thus summary judgement was inappropriate. None here dispute this judgement. The court went on to note that anderson had presented additional evidence of non-obviousness in the form of teachings that allegedly teach away:

    “Andersen also submitted into the record prior art references that taught away from using the TWP mesh as an insect screen. Several prior art references in the record teach that the TWP mesh possessed many characteristics that an ordinary skilled insect screen designer would have viewed as undesirable for an insect screen. Specifically, the record at least raises the question of whether the TWP mesh lacked the durability, transparency, and price feasibility preferred by an insect screen manufacturer designing a reduced visibility insect screen.”

    Specifically the court feels as if the price feasibility of using the screen was relevant to the instant claim being obvious or non-obvious because the combination of references might not have been obvious to have made in light of that information. Thus, the court goes on to determine that these facts are indeed material facts and present with them a GIoMF in and of themselves.

    So, we are left with a situation where the court determined these factors to all be relevant material facts, including the cost of the screen, where MM takes an issue with this being a material fact since the claims do not recite any cost of production limitations. That is to say, the evidence presented lacks a nexus with the instant claims since the claims encompass all screens in so far as costliness is concerned. JD on the other hand feels that “the subject matter as a whole” must be considered.

    At which point I take issue with what JD is saying and state:

    “The requirement to consider the subject matter as a whole is referring to the subject matter in the claim. Not the ‘subject matter’ of the references.”

    To which JD respondes:

    “Wrong. 35 USC 103(a) clearly distinguishes between the subject matter sought to be patented and the subject matter as a whole. The subject matter as a whole includes the subject matter sought to be patented and the prior art.

    You’re regressing.

    Grade: F”

    To which I respond (although it was directed to another user, I indirectly was responding to JD):

    “”JD is a lawyer and he knows what he’s talking about here. You don’t.”

    Often so, today apparently he decided to ignore which subject matter is under consideration. He does this from time to time,”

    To which JD responds:

    “Subject matter as a whole includes 1) the claim(s), 2) the prior art, 3) the differences between the claim(s) and the prior art, and 4) any secondary considerations.”

    Stating then that the “subject matter as a whole”, is different from “the subject matter sought to be patented” in the statute 103, because it is inclusive of the subject matter of the claims and the subject matter of the prior art. And implying that all of the information in the case, as enumerated by JD above, is what is what must have been obvious to a person of ordinary skill in order for the instant claim to be invalid under 103.

    To which I respond:

    “”(a) A patent may not be obtained though the invention is not identically disclosed or
    described as set forth in section 102 of this title, if the differences between the subject
    matter sought to be patented and the prior art are such that the subject matter as a
    whole would have been obvious at the time the invention was made to a person having
    ordinary skill in the art to which said subject matter pertains. Patentability shall not be
    negatived by the manner in which the invention was made.”

    Note here JD, “subject matter sought to be patented” is seperate from “and the prior art”. The prior art does not contain “subject matter”, the prior art is what it is, you do not designate small portions of it as “subject matter” as you need to with the information contained within a claim. The only reason the term “subject matter” is ever used in the statutes 112 and 103 is to denote what the applicant regards as his invention. ”

    Stating my disbelief that the prior art is part of the “subject matter as a whole” (term used loosely here) which must have been obvious for the instant claim to be invalid under 103. And then making a showing as to why the prior art is not part of such subject matter which must be obvious for the claims to be invalid under 103.

    To which JD responds:

    “From MPEP 2141.02 – Ascertaining the differences between the prior art and the claims at issue requires interpreting the claim language, and considering both the invention and the prior art references as a whole.

    Note that 103(a) says “are such that the subject matter as a whole would have been obvious at the time the invention was made” and does NOT say “are such that the subject matter sought to be patented would have been obvious at the time the invention was made”.

    Get it?”

    Pointing to the MPEP’s requirements for ascertaining the DIFFERENCES between the prior art and the claims at issue (i.e. the subject matter as a whole) by taking into consideration both the invention (the claims) and the prior art as a whole to support his belief that the prior art is part of the subject matter which must be obvious to invalidate a claim. This reliance of course being folly, since the prior art as a whole is only being used to determine the differences between the claims and the prior art in this MPEP section.

    And additionally pointing to the lack of the statute being specific enough to state “are such that the subject matter sought to be patented would have been obvious at the time the invention was made” to even allow for his interpretation. Which I do not dispute, since the statute is unclear on this point, it could very well be. But a plain reading of the statute says otherwise, and is held to be otherwise in the law time and time again since time immemorial.

    And so, I go on to explain my position in the next response (omitted for brevity).

    PDS then responds with another excerpt from the MPEP stating that a prior art reference must be considered as a whole, which I do not dispute, and thus shows his (her) incomprehension of the issue at hand. (As always)

    MM then goes on to state more directly why this particular peice of information (the price) about the prior art mesh was inapplicable to the obviousness of the instant claims.

    “The element of “cheapness” MUST be recited in the claims or, at the very least, be listed as a primary objective of the invention in the disclosure. A reference will teach away when it suggests that the developments flowing from its disclosures are unlikely to produce the objective of the applicant’s invention. In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). ”

    Where he cited a case stating as much. Though, the case does not seem to have used the word nexus, it is apparent that the content of the decision is relating to that very issue.

    Then, finally JD returns with his wacky interpretation of what subject matter is being considered under 103.

    “The price of the mesh does not have to be recited in the claim. The consideration of the subject matter as a whole, however, requires it to be considered as probative of non-obviousness if the applicant (or patentee) introduces it into the record and argues that it weighs in favor of non-obviousness.”

    Wherein he specifically states that there is no need for there to be a limitation dealing with the production cost in the claim itself, because the price of the prior art mesh required to be an element which is considered. In other words, the price of the prior art mesh automatically has a nexus with the instant claims for purposes of the 103 analysis by virtue of it being part of the prior art as a whole and thus, since it has a nexus, it must be considered in the 103 analysis. Or perhaps, JD is trying to say that nexus is not required for the price of the prior art mesh to be relevant since it is required to be considered in the 103 analysis as being part of the “subject matter as a whole”. Either way, JD feels that either nexus is automatically present, or there is no requirement for nexus. Probably the former.

    I then go on to further explain:

    “JD: “The consideration of the subject matter as a whole, however, requires it to be considered as probative of non-obviousness if [one side brings it up and argues it weighs one way or another]”

    6: Hardly. The only thing that must be considered if a fact is brought up and argued to be material, and is also argued to weigh in one direction or another, is first whether or not the fact is indeed material. And the judge must decide if the fact is material or not. And in this case iirc it seems he already did, and it was not. And he was right. Your arguing that the fact that the sky is blue is relevant to our case about bicycles doesn’t make your fact material just because you brought it up and argued that it weighed in one direction or another JD. Welcome to the wonderful world of reading comprehension. Hope you enjoy your stay. ”

    Where I state indirectly that the facts must have a nexus with the instant claims, or, stated as I put it, they must be material to the subject matter of the instant claims.

    The previous thread then devolves into official notice, which my practice of still hasn’t landed me in any trouble. And apparently neither has yours. Maybe in another 10 years.

    In part 2, if this is not enough to have shown your “gaff” in considering the prior art as part of the “subject matter as a whole” in 103, then I will compare your position, which requires no nexus, or has nexus presumed, to the position taken by the judges in the instant case of this thread.

  26. PoppaBear “the alleged “market pressure” was a sufficiently-evidenced reason for PHOSITA to combine the cited references to solve the same problem as, and arrive at, “the claimed invention”, yet was insufficiently-evidenced to overcome that reason. In other words, darned if you do, darned if you don’t.”

    In other words, you just make it up as you go and who cares if it makes any sense.

  27. “It’s ok JD, you don’t have to own up to it, the evidence will tell us the real story.”

    Please do provide the evidence. And try to be a little more specific than Mooney. I made several posts in that thread. Please cut and past any exact quote(s) you think constitute a “gaffe” on my part. I will gladly explain why you’re wrong.

    My understanding of “the subject matter as a whole” is far better than either you or Mooney.

  28. “While the need for a new look to garage doors may have been a market pressure that existed at the time of the invention, the declarants fail to state how long the need existed in the industry and whether any attempts to meet the need were made by others in the industry.”

    So, according to the BPAI, the alleged “market pressure” was a sufficiently-evidenced reason for PHOSITA to combine the cited references to solve the same problem as, and arrive at, “the claimed invention”, yet was insufficiently-evidenced to overcome that reason. In other words, darned if you do, darned if you don’t. A classic whipsaw.

  29. “It is not apparent from the evidence presented what reason should be
    attributed to FUDT’s market share for steel carriage house garage doors
    having three twenty-eight inch panel sections when compared to other
    companies selling the same door.”

    But whatever the reason, or even if there was none, the BPAI says it was sufficient to cause PHOSITA to combine the cited references to solve the same problem as, and arrive at, “the claimed invention”.

  30. “Could FUDT’s relatively high market share for the same door as offered by others in the market be due to other factors unrelated to the claimed invention, such as a better distribution network or a better sales force or industry reputation?”

    If so, according to the BPAI, then any such market pressure was unrelated to “the claimed invention”, and should not serve as “evidence” of a reason for PHOSITA to combine the cited references to solve the same problem as, and arrive at, “the claimed invention”.

  31. “Regardless of whether we consider 1.24% or 0.175% to be the
    relevant market share figure, either market share is sufficiently SMALL
    compared to the entire garage door market that they fail to reasonably
    demonstrate commercial success of the claimed invention.” (emphasis added)

    Nevertheless, according to the BPAI, that market share evidences a market pressure sufficiently LARGE to serve as a reason for PHOSITA to combine the cited references to solve the same problem as, and arrive at, “the claimed invention”.

  32. “2) the BPAI reasoned that market pressure existed to create the 28-inch door, but found that the market share of such doors was so small as to fail to demonstrate commercial success. To me, low market share says that there was no market pressure to create such a door, so that KSR reasoning should fail.”

    You obviously don’t understand the political bent of the BPAI (ahem, “Board of Patentee Abuse and Injustice”), who has proclaimed “the evidence is not commensurate with the claimed invention.” Right….

  33. evidence telling

    meet

    6′s reading comprehension

    Yes, I know, you have never met each other.

  34. “I reviewed that thread, but I don’t see any post that I made where “…John Darling was arguing that the relevance determined based on the context of the “sujbect matter as a whole”.”

    It’s ok JD, you don’t have to own up to it, the evidence will tell us the real story.

  35. A simple google image search for “garage door” turns up several multi-panel garage door images. It seems to me that the BPAI took a case that clearly could have been decided on existing law to expand obviousness into a less tangible test. How do you argue against an examiner who says “looks like a predictable variation to me?”

    103 tests now merely use several euphemisms to mean obvious. For example, instad of “its 103 obvious because it looks like an obvious variation”, the examiner need only substitute in the word “predictable” as in “its 103 obvious because it looks like a predictable variation” to present a BPAI supported argument.

  36. So:

    Let’s see if I’ve got this straight. A

    4 x 21″ panel = 84″ high door

    was old, and

    3 x 28″ panel = 84″ high door

    was new. The 15 heads of secondary considerations didn’t quite carry it over the 103 hurdle.

    I’m thinking: was there any room for the Examiner to cite:

    1. all the flags of the countries of the world that have three horizontal bands of colour, and the complete absence of any with 4 such bands

    2. all those photography composition manuals that urge for optimal “classic” composition a notional division into three horizontal bands.

    But then I’m thinking: all that time goes by and, still, nobody till Jella said “Hey, let’s have a three band garage door.” Proves he made an “invention”, no?

    And I agree with the poster above, that a claim to a 28″ panel with a 15″ track was the way to go. Nobody need infringe but Mr Jella gets satisfaction, in the form of a patent number to put on all his 28″ panels.

  37. [sorry for the multiple posts - apparently the site no longer allows more than a relatively small number of characters per post]

  38. With this background in mind:
    A. When ascertaining whether the required nexus has been established, are “the merits of the claimed invention” the same thing as “the claimed invention”?

    B. Is it reasonable to require such a nexus for all secondary considerations (i.e., each of those listed above)?

    C. That is, is the Board’s logic a sleight of hand, or a reasonable extension of the law?

    D. As somewhat of an aside, is it reasonable to assume that the “examiner has no available means for adducing evidence”?

  39. Finally, recognize the many types of secondary considerations of non-obviousness, including:
    1. recognition of a problem not recognized by others;
    2. long-felt but unresolved need;
    3. prolonged period of research preceding solution of problem;
    4. failed attempts by others;
    5. skepticism of experts;
    6. praise by infringers or others;
    7. teaching away by others;
    8. discovery of unexpected results or benefits;
    9. synergistic results;
    10. near-simultaneous invention by others;
    11. failed attempts to design around by others;
    12. copying by others;
    13. licensing;
    14. rapid adoption by others; and/or
    15. commercial success of products covered by the patent claims or made by a process covered by the patent claims.

  40. See also MPEP 716.03.

    Then, they extend that logic to all secondary considerations:
    “We must first examine whether the Appellant met its burden of establishing a nexus between the claimed invention and the evidence of secondary considerations. In re Huang, 100 F.3d at 139-40.”

  41. But Jella appears to take it further.

    In Jella, the Board cites In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996), initially for the proposition that:
    “In the ex parte process of examining a patent application, however, the PTO lacks the means or resources to gather evidence which supports or refutes the applicant’s assertion that the sale constitutes commercial success. C.f. Ex parte Remark, 15 USPQ2d 1498,1503 (Bd. Pat. App. & Int. 1990)(evidentiary routine of shifting burdens in civil proceedings inappropriate in ex parte prosecution proceedings because examiner has no available means for adducing evidence). Consequently, the PTO must rely upon the applicant to provide hard evidence of commercial success.”

  42. Consider also: Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387 (Fed. Cir. 1988):
    “A prima facie case of nexus is generally made out when the patentee shows both that there is commercial success, and that the thing (product or method) that is commercially successful is the invention disclosed and claimed in the patent. When the thing that is commercially successful is not coextensive with the patented invention–for example, if the patented invention is only a component of a commercially successful machine or process–the patentee must show prima facie a legally sufficient relationship between that which is patented and that which is sold.”

  43. To understand my questions about this Jella opinion, first consider the established precedent in this arena, e.g., Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281 (Fed. Cir. 1985):
    “The objective evidence of secondary considerations may in any given case be entitled to more or less weight, depending upon its nature and its relationship to the merits of the invention” (citing Stratoflex, 713 F.2d at 1539, 218 USPQ at 879); and
    “the district court erred by failing to determine if there was the requisite nexus between the proferred evidence of secondary considerations and the merits of the claimed inventions of the ’392 and ’579 patents.”

    See also MPEP 716.01(b).

  44. After reading the opinion, some things stick out to me:

    1) the BPAI basically tells Jella how to get over the rejection: claim the entire door with 15 inch tracks.

    2) the BPAI reasoned that market pressure existed to create the 28-inch door, but found that the market share of such doors was so small as to fail to demonstrate commercial success. To me, low market share says that there was no market pressure to create such a door, so that KSR reasoning should fail.

    3) KSR talks about identifiable solutions to a problem. But the BPAI apparently did not provide a specific problem to be solved.

    4) Unexpected results for a utility patent application cannot be based on aesthetic appearance – this seems reasonable for once.

  45. Malcolm,

    Nice try. I reviewed that thread, but I don’t see any post that I made where “…John Darling was arguing that the relevance determined based on the context of the “sujbect matter as a whole”.

    Never argued that.

    If I made a gaffe, I’d own up to it.

    So you owned up to your gaffes? That’s funny.

    Your desperate hope (need?) to be considered one of the “serious” commenters on this site continues to amuse me. And others.

    Keep it up. We need the laughs.

  46. This decision is not so good for several reasons. In my mind the question is is this a new marketable product that will sell if so its an improvement on the existing.Nothing whorse for inovation than seeing large profit making companies using your invention for free. Very discouraging for human advancement. If it was obvious it would already be available to the public.I see another argument that was left out less panels and hardware means less production cost therefor reduced cost to consumers.

  47. JD “I never said that. If you want to (mis)quote me, at least provide me with the same courtesy that I provide you: an exact quote with a date and time attached. Or a link. Whatever.”

    Per your request:

    link to patentlyo.com

    The thing is, JD, I owned up to those previous “gaffes” but I doubt you’ll own up to yours which was debunked in real time by commenters other than yours truly.

    And I stand by my understanding of the case law and its evolution. In re Fergusen was based on a misunderstanding of the law. The PTO got it right here and the Federal Circuit won’t be following In re Fergusen’s logic because the panel in In re Fergusen pretended that the claims at issue comprised limitations that were not, in fact, recited.

  48. “Was it the thread re the insect screen case where John Darling was arguing that the relevance determined based on the context of the ‘sujbect matter as a whole’ (what the hill that was supposed to mean)?”

    I never said that. If you want to (mis)quote me, at least provide me with the same courtesy that I provide you: an exact quote with a date and time attached. Or a link. Whatever.

    Kind of like when I provided that quote from you shortly (two days?) after the final continuation rules were published, in which you claimed that the rules were going to be put into effect as is. But after J. Cacheris enjoined them, you claimed that you knew all along that the rules were DOA.

    Or like that quote of yours where you claimed that, based on your awesome prediction skills, you’d earned the right to be taken seriously as a commentator on this site.

    Your complete lack of understanding of 103(a) is well documented. By your own rambling, incoherent posts on the subject.

    Let me know if you like an exact quote or two. Or a few hundred. :-)

    I was wrong then? Seems to me that the insect screen was found to be non-obvious when the secondary considerations were evaluated. Are you rewriting history now?

    That insect screen case is still galling you, isn’t it? Get over it already.

    Sheesh.

  49. “why aren’t there precedential opinions where the rejection was reversed?”

    See Ex parte Whalen, appeal 2007-4423. Good stuff.

  50. I can see it now, an email sent to DC …

    “Uhhh, D, can you please delete that one post of mine?”

    And jeez, 6, you’re wriggling and squirming so much that I might say your comments are lubricous (lubricious?)

  51. Right off hand, also could not locate a published app for the Board’s recent Catlin precedential decision. weird. 18 USC 1905 is also a real statute.

  52. “I’ll tell you what. Why don’t you run Dennis’ post and the first two comments by your supervisor and see what he thinks. ”

    He says it is in compliance with the rules o the road and he doesn’t see any information about the case being disclosed. And was quite perplexed as to what my interest was in it. I managed to work it into the conversation inconspicuously enough to have allayed any suspicions I think.

    “Make sure you explain that the 2nd comment is by a PTO employee. ”

    What on earth would make you say that? Because 6 is an examiner then the 6 that posted above is an examiner also? Hmmm, I’m not following your reasoning. Please explain.

    “Keep wriggling, 6. But you’re not in traffic court anymore.”

    Wait, so now I don’t have to go to traffic court on next Tues? I think you’re mistaken. Can someone direct me to the traffic court?

    I do know something about traffic court though, the less wriggling the easier it is to get a dismissal. Trust me.

    Hmmm, so fish bones, how do you reckon it was that the opinion came to be public? Perhaps that nefarious 6 above leaked it?

  53. if the application and file wrapper are not publicly available then this opinion should not have been made precedential IMHO

  54. “Well if that’s what it suggested then how’s that a disclosure of some confidential information?”

    Keep wriggling, 6. But you’re not in traffic court anymore.

    I’ll tell you what. Why don’t you run Dennis’ post and the first two comments by your supervisor and see what he thinks. Make sure you explain that the 2nd comment is by a PTO employee. However, feel free to make it a “hypothetical” situation.

    I’m looking forward to hearing his response. In the meantime, don’t hurt yourself looking over your shoulder for those suits from Internal Affairs.

  55. sdsem: “No relation to the insect screen.”

    Uh …. hey, if you say so …? Up is down, black is white, whatever goes. It’s all about you and your fragile beliefs about how non-obvious and awesome these claims are.

    “The evidence showed that no one bought Jella’s garage door even with 28-inch high panels”

    That’s evidence for long-felt need? Give me a break.

    “JD was right”

    Nope. He was wrong then and this case puts twenty more nails in the already airtight coffin.

  56. “Anyway, this case was correctly decided and demonstrates exactly why the the insect screen case was a giant pile of doo-doo.”

    Malcolm Monkey prefers the intellectual prowness of the BPAI over that of the Federal Circuit.

    Perhaps Monkey-boy is a BPAI judge?

  57. “Supported by substantial evidence. Read the opinion. Do a ‘find’ with the term ‘market.’ It is loaded with argument regarding market data which was provided, in part, by inventor declarations.”

    The BPAI dismissed those declarations … “[t]he declarations submitted by the Appellant do not show that the need for a different looking door was a persistent one or that others tried to meet the need and failed … As such, we find that the Appellant has failed to set forth sufficient evidence to establish a long-felt need in the industry.”

  58. No relation to the insect screen. Malcolm, give it a rest, JD was right and you were wrong.

    The argument for long-felt need was reasonable. The evidence showed that no one bought Jella’s garage door even with 28-inch high panels. Next time, read the opinion before commenting.

  59. When I read the “and you never will” post, my first thought was: “Is 6 an Examiner?”

    My second thought was: “Did he/she just post a comment regarding the content of some non-published, dependant claims of a patent app?”

  60. “to suggest that you had actually looked at the dependent claims.”

    Well if that’s what it suggested then how’s that a disclosure of some confidential information?

  61. Of course, the truly horrifying consequence of this decision is that America will lose its stature as the leading innovator in garage door paneling.

    “On page 25, the BPAI notes that the Applicant said that 28″ panels are “deceivingly difficult to make”.”

    Do Applicants teach the best mode of making the doors? Did they claim that method? Regardless, from a business perspective, simply manufacturing and selling these doors should be plenty profitable if they are so “deceivingly difficult to make” (but the applicant has solved that problem) and if there is such an incredible demand for them. Why waste the time and money on the patent?

    Bad habits are hard to break, I guess.

  62. The Board “To be given substantial weight in the determination of obviousness or non-obviousness, evidence of secondary considerations must be relevant to the subject matter as claimed”

    Was it the thread re the insect screen case where John Darling was arguing that the relevance determined based on the context of the “sujbect matter as a whole” (what the hill that was supposed to mean)? Anyway, this case was correctly decided and demonstrates exactly why the the insect screen case was a giant pile of doo-doo.

    Simon: “It seems that long-felt need unmet in the marketplace”

    Here we go again with the circular hoo-haw: ‘garage doors have been in existence forever and yet nobody had filed an application attempting to patent a 3 panel door so if that isn’t a long-felt need, then nothing is!!!!!!!’

    It’s a vapid argument.

  63. “Let’s have an honest debate”: under both KSR and PSA, the claims are probably obvious.

    7′ garage doors are known to be made of an integral number of panels. The moment one picks three panels, these are necessarily 28″ high. In accordance with KSR, the BPAI explicitly points out the motivation for using three panels and not four: cheaper and better sealing.

    All that the Applicant had to do is prove some unexpected effect or hurdle to overcome the rejection.

    The smoothness of riding existing tracks as suggested by anon would be an excellent unexpected effect, but is not expressed in the claims.

    On page 25, the BPAI notes that the Applicant said that 28″ panels are “deceivingly difficult to make”. All the Applicant had to do was provide evidence for why it is difficult to make 28″ panels when 21″ panels are well-known.

  64. “Apparent? To whom? You? Nobody else infers as much as you do Big guy! That’s why you’re the Big guy!”

    Yes, to me. I doubt that I was the only person to understand your statement “As to your question, nothing that I can see in the deps,” to suggest that you had actually looked at the dependent claims.

    “The law states that I shalln’t [sic] disclose to you the public anything of the information which is being held confidential.”

    Actually, that’s not what the law says. Congress made it quite simple, so that you don’t have to make finely nuanced decisions about what is confidential and what is not. But perhaps you should simply follow the instructions provided to you in the MPEP, which says (quite clearly, as if the statute is not clear enough): “Normally NO INFORMATION concerning pending or abandoned patent applications (except applications which have been published, reissue applications and reexamination proceedings) may be given to the public without the authorization of the applicant, the assignee of record, or the attorney or agent of record.” (Emphasis added.)

    Regarding your “hypothetical case,” the examiner doth protest too much, methinks.

  65. “from your apparent”

    Apparent? To whom? You? Nobody else infers as much as you do Big guy! That’s why you’re the Big guy!

    “Your “technical” analysis distorts the law beyond recognition.”

    It does? I was just trying to follow the law to its conclusion, where was I going wrong? In so far as you assert the law is clear, I agree with you. The law states that I shalln’t disclose to you the public anything of the information which is being held confidential. I wouldn’t dream of disclosing to you the public anything of the information which is being held confidential.

    Then again, hypothetically speaking, if there were a hypothetical case, and that case had a disclosure and claims in it which reflected knowledge in the public sector by the same applicant, what information is being held confidential in that case? None that I can see. Furthermore, if I were to imply that this hypothetical case were to be no longer pending before the office, or that I could not see something in some claims, what hypothetical confidential information would be disclosed? Certainly it would not be the information that this hypothetical application is no longer pending before the office, and certainly it would not be that something was not in the claims. How could it be?

    Lowly, yes.

  66. This looks like a better candidate for a design patent. Something along the lines of D582566.

    This is like trying to get a patent on purse. Usually purses have how many pockets, and they’re how big? Alright, let’s make a purse with this many pockets and a different size… and charge $10000 dollars for it.

    Now that I think about it, that sex aid device could probably have benefited from a design patent as well…

    Then again, I don’t know much about design patents, so I could be wrong…

  67. Let’s have an honest debate,

    “The BPAI writes “this is an example of market demand driving a design trend.” Who, besides the BPAI, made any finding that market demand was driving a 3 panel door? Also, was this finding, by the BPAI, supported by substantial evidence or was it conjured out of thin air?”

    Supported by substantial evidence. Read the opinion. Do a “find” with the term “market.” It is loaded with argument regarding market data which was provided, in part, by inventor declarations.

  68. 6, I have a question for you which you never answered, but it’s slightly off topic.

    Have you ever allowed a claim for any reason other than “feature X cannot be found in the prior art?”

    I don’t know about the patentability of this garage door nonsense, but I do know that KSR has effective turned 103 into 102 but with as many references as the examiner wants.

  69. Let’s forget, for sake of argument, that a 3 panel door (i.e., each panel being substantially 28″ tall) is likely obvious.

    What galls me is the BPAI’s “let’s make up factual findings as we go along” attitude towards decision-making.

    The BPAI writes “this is an example of market demand driving a design trend.” Who, besides the BPAI, made any finding that market demand was driving a 3 panel door? Also, was this finding, by the BPAI, supported by substantial evidence or was it conjured out of thin air?

    The BPAI also butchers the case law. Under KSR, it is obvious to select from a finite number of identified, predictable potential solutions to a recognized need or problem. Although the BPAI asserts that “Dykes outlines a finite number of predictable solutions,” the claimed solution (i.e., the 3 panel door) is not part of those identified solutions.

    My best guess is that the Examiner never mentioned ‘design trends’ or ‘a finite number of predictable solutions.” Instead, the BPAI made it up as it went along and “affirmed” the rejection despite very likely not relying upon any of the Examiner’s analysis.

    The law gets butchered when result-based decisions trumps analysis-based decisions. In this instance, in order to achieve the likely correct result, the BPAI flailed about with the case law like a drunk trying to kill a fly with a hammer.

  70. “Perhaps I am banned from even discussing released opinions, even if I have only read the opinion itself.”

    I think most of us could live with that.

    “However, assuming your position to be the correct one, how then can I discuss KSR? How then can I discuss Graham? Diehr?”

    My “position” is simply the law as stated, which is clear enough. Your “technical” analysis distorts the law beyond recognition. Again, however, nice attempt to divert attention from your apparent disclosure of confidential facts relating to an unpublished application.

  71. MaxDrei wrote:
    “Is the BPAI not also subject to page 1 of the MPEP? Or was publication of its Decision with the authority of the Inventor, or necessary in order for the Act to be carried out? Or has the Director determined circumstances so special that we can know all about the invention from the Decision but not from the app as filed, which is the basis of the Decision?”

    I’ve wondered about this question, too. All I can say is that I’ve seen many published BPAI decisions on unpublished applications. But you also see them at the CAFC, right? In re Comiskey, for example. While there is obviously quite a difference between publishing a representative claim in an opinion and making public the entire file history, it still seems to go against the spirit of 122. Curious.

    -aaron

  72. “For what it is worth, the statute (it’s not just a “rule”, Examiner X) says that “no information” shall be given. I don’t see the part that provides an exception for what an examiner decides that the public can “devine” from the public domain.”

    True, there are technically no exceptions. Perhaps I am banned from even discussing released opinions, even if I have only read the opinion itself. Technically, I would be giving information about a case kept in confidence. Then again, more technically I would be giving information about a document in the public domain. Quite a conundrum, but I do believe the more technical feature of the argument trumps all else.

    However, assuming your position to be the correct one, how then can I discuss KSR? How then can I discuss Graham? Diehr?

    In any event, how is information about what I can see information about the application itself? Hmmm, there’s another conundrum.

    “If you’re in the PTO, I daresay it ain’t pleasant, these days, eh 6? ”

    Idk max, what with the depression on and all stuff is going abandoned quite often. And, my OA’s are overall better so even if it isn’t great, it’s better than how it was when I first got here (a situation of my own newbie making).

    “Even when a discovery is stumbled upon, it is nearly always in connection with a search for a solution to a problem demanded by the market.”

    Post KSR, that’s obviousness for ya.

    “Its intellectually irresponsible to interpret this case for readers as meaning that market demand alone somehow counsels against non-obviousness.”

    That’s what the case itself says. Go read it.

  73. “For what it is worth, the statute (it’s not just a “rule”, Examiner X) says that “no information” shall be given. I don’t see the part that provides an exception for what an examiner decides that the public can “devine” from the public domain.”

    True, there are technically no exceptions. Perhaps I am banned from even discussing released opinions, even if I have only read the opinion itself. Technically, I would be giving information about a case kept in confidence. Then again, more technically I would be giving information about a document in the public domain. Quite a conundrum, but I do believe the more technical feature of the argument trumps all else.

    However, assuming your position to be the correct one, how then can I discuss KSR? How then can I discuss Graham? Diehr?

    In any event, how is information about what I can see information about the application itself? Hmmm, there’s another conundrum.

    “If you’re in the PTO, I daresay it ain’t pleasant, these days, eh 6? ”

    Idk max, what with the depression on and all stuff is going abandoned quite often. And, my OA’s are overall better so even if it isn’t great, it’s better than how it was when I first got here (a situation of my own newbie making).

    “Even when a discovery is stumbled upon, it is nearly always in connection with a search for a solution to a problem demanded by the market.”

    Yeah, post KSR, that’s obviousness for ya.

    “Its intellectually irresponsible to interpret this case for readers as meaning that market demand alone somehow counsels against non-obviousness.”

    That’s what the case itself says. Go read it.

  74. “For what it is worth, the statute (it’s not just a “rule”, Examiner X) says that “no information” shall be given. I don’t see the part that provides an exception for what an examiner decides that the public can “devine” from the public domain.”

    True, there are technically no exceptions. Perhaps I am banned from even discussing released opinions, even if I have only read the opinion itself. Technically, I would be giving information about a case kept in confidence. Then again, more technically I would be giving information about a document in the public domain. Quite a conundrum, but I do believe the more technical feature of the argument trumps all else.

    However, assuming your position to be the correct one, how then can I discuss KSR? How then can I discuss Graham? Diehr?

    In any event, how is information about what I can see information about the application itself? Hmmm, there’s another conundrum.

    “If you’re in the PTO, I daresay it ain’t pleasant, these days, eh 6? ”

    Idk max, what with the depression on and all stuff is going abandoned quite often. And, my OA’s are overall better so even if it isn’t great, it’s better than how it was when I first got here (a situation of my own newbie making).

    “Even when a discovery is stumbled upon, it is nearly always in connection with a search for a solution to a problem demanded by the market.”

    Yeah, post KSR, that’s obviousness for ya.

    “Its intellectually irresponsible to interpret this case for readers as meaning that market demand alone somehow counsels against non-obviousness.”

    That’s what the case itself says. Go read it.

  75. 35 USC 122 does not say “acting” directors too.
    anyway, what are the odds that the applicant’s/owner’s or any “director’s” written permission slip to go public with the board decision is currently in this file?

  76. Banned,

    Agreed. How many of our clients’ applications are derived from work that had no commercial purpose?

  77. If I understand right the effect of KSR it is to encourage every inventor to urge “secondary considerations” on the PTO. Maybe one reason for making this case precedential is to give Examiners some help, in fending off aggressive prosecutors who are taking loadsamoney off their naive clients in return for trumping up fatuous sec con arguments in support of an incurably duff claim. If you’re in the PTO, I daresay it ain’t pleasant, these days, eh 6?

  78. “Just because I can’t see anything in the deps doesn’t mean there is nothing there. In fact, can I even see the deps? No, I cannot. Tell me, after reading the decision, can you not devine the answer which I presented to anon’s concerns?”

    Nice attempt to cover your tracks. For what it is worth, the statute (it’s not just a “rule”, Examiner X) says that “no information” shall be given. I don’t see the part that provides an exception for what an examiner decides that the public can “devine” from the public domain.

  79. Its sheer folly for this article to isolate market demand as some sort of factor in supporting a finding of obviousness. The important factor to consider is the availability of a predictable variation.

    Market demand is precisely the opposite under Graham, and a classic secondary indcia of nonobviousness and always will be so. Invention is nearly always driven by “market demand.” Even when a discovery is stumbled upon, it is nearly always in connection with a search for a solution to a problem demanded by the market.

    Its intellectually irresponsible to interpret this case for readers as meaning that market demand alone somehow counsels against non-obviousness.

    But then, around here, what else is new.

  80. “It seems that long-felt need unmet in the marketplace ”

    iirc there was no long-felt need displayed by the applicants that the Board found. They failed to establish one. All too typical, argue a long felt need was present, but then don’t establish what that long felt need was. Same ol’ same ol’. If examiners are making baseless rejections, applicants are making 100x more baseless arguments. And you attorneys supposedly look over the responses.

  81. It seems that long-felt need unmet in the marketplace is now trumpped by “market driving demand”; and, commercial success is now trumpped by “industry’s need.” Was KSR intended to changes objective factors (so called ‘secondary considerations’) of obviousness? I think not. This broad interpretation is troubling as a precedential BPAI opinion, because of the non-consideration of secondary factors. (DISCLAIMER: I did not read the application, or the whole opinion).

  82. Garage door panel, characterized in that its height is substantially 28″. This a patentable invention? For the last 25 years, UK patents appeal court judge Robin Jacob has cited the “five and a half inch dinner plate” as an example of something too silly to deserve a 20 year monopoly (Plates are known, at five inch diameter, and six. But the PTO Exr just can’t find a prior publication of a 5 1/2 inch plate. Inventor is insistent that his plate wasn’t obvious. Does he get a patent?). I never thought to see the day when just such a case would get as far as this. Thank you so much for the entertainment, John F. Jella, and all who comment on this case.

  83. “They consistently leak information to others about the applications they examine to friends in firms on applications.”

    Holy bejezus. Come on, seriously?

    Although yes, there is considerable “power” over those same attorneys. That’s why they go out of their way to put down the PTO. If not for the power they’d be jovial as can be.

  84. I have seen so many PTO Examiners violate that rule 122(b), its not even funny… They consistently leak information to others about the applications they examine to friends in firms on applications.

    But no one ever actually reports any examiners to the OED, it just shows the real power some examiners have over you hot-shot attorneys, who go out of their way to put down the PTO.

  85. “Max, I don’t know.”

    Hmmm, strange that, all your beliefs and knowledge are called into question on this case. However, I can assure you that everything has been done in accordance with the lawzorz.

  86. You infer too much Big Guy, the fact that I don’t believe that the particular anon will ever find something in some public databases is irrelevant to anything. It is an opinion of anon’s abilities, nothing more, nothing less. How would I ever know if he’d ever find something in a public database? I’ll riddle you that, because even I don’t know.

    Perhaps you’ll be able to find it in a public database, give it a try.

    You probably infer too much from my second line as well, but you shouldn’t. Just because I can’t see anything in the deps doesn’t mean there is nothing there. In fact, can I even see the deps? No, I cannot. Tell me, after reading the decision, can you not devine the answer which I presented to anon’s concerns?

    All of the information I have provided is freely available to you in the public domain, and was before I presented it to you, as that was how I obtained it.

    In sum, the law is followed.

  87. Does anyone see an appreciable increase in the technology available to the public (i.e., the utility/usefulness in the public domain) a result of the 3-panel invention?

    Considering (1) the line of cases that led to In re Kubin, (2) the post-KSR enantiomer cases (e.g., Sanofi), and (3) the EPO’s treatment of the same, it appears as though “nonobviousness” ultimately turns on whether the public is provided with usefulness that exceeds what was previously available in the public domain (either expressly or inherently by applying ordinary creativity).

    While it now seems that this utility can come from a fishing expedition (without real intellectual advance) the case here doesn’t seem to exhibit evidence of providing the public with utility beyond what it had prior to the invention of a 3-panel door.

    I wonder how this case would have turned out if there was a clear “teaching away” from 3-panel doors.

  88. BigGuy can you help me? I’m (yet again) deeply confused. Is the BPAI not also subject to page 1 of the MPEP? Or was publication of its Decision with the authority of the Inventor, or necessary in order for the Act to be carried out? Or has the Director determined circumstances so special that we can know all about the invention from the Decision but not from the app as filed, which is the basis of the Decision?

  89. “And you never will. As to your question, nothing that I can see in the deps.”

    Dude, this is on the very first page of the MPEP:
    “35 usc 122(b): applications for patents shall be kept in confidence by the Patent and Trademark Office and no information concerning the same given without authority of the applicant or owner unless necessary to carry out the provisions of an Act of Congress or in such special circumstances as may be determined by the Director.”

    Is there any part of the law that you actually do follow, or is it all just optionalol?

  90. Man, having read that decision entirely I think the examiner is entitled to rule 11 sanctions. The kind of arguments presented remind me of the kinds I get all too often. Arguments that appear on their face to say something, but indeed fall short of what is required to make a sufficient showing to be relied upon. Either the applicant/attorney is being tricksy, the attorney is an idiot, or their attorney is allowing them to argue things they know should not legally be persuasive. I tend to believe the later.

    There should be sanctions. Increased fees or something that go directly to the examiner for having to deal with that mess. That sht is time consuming to properly dispose of you know. Just look at the response the BPAI typed up to respond to all that mess. You think an examiner can do that for each case when it comes back after nonfinal?

    And I’ll tell you what, I would accept their being sanctions on me if I make a ridiculous rejection if you’ll accept the sanctions on you if you make a ridiculous argument or present evidence that is blatantly not sufficient. Heck, I could make a fortune like that. I’d be a rich man in no time.

  91. “I could not find the application via pair or google.”

    And you never will.

    As to your question, nothing that I can see in the deps.

    You may find 6554048 interesting though.

  92. I could not find the application via pair or google. I would be interested to know if any of the dependent claims mentioned anything about the technical difficulty in getting a 28″ steel panel to work smoothly in the existing tracks.

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