The USPTO has released a set of updated examination guidelines on the core patentability issue of obviousness. The 18–page guidelines do not have the force of law, but will impact how examiners judge obviousness in practice. The updates primarily focus on Federal Circuit opinions that interpret and implement the holdings of KSR v. Teleflex, 550 U.S 398 (2007). I have copied the following tables from the Federal Register. [http://edocket.access.gpo.gov/2010/pdf/2010-21646.pdf].
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Combining Prior Art Elements |
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In re Omeprazole Patent Litigation, 536 F.3d 1361 (Fed. Cir. 2008). |
Even where a general method that could have been applied to make the claimed product was known and within the level of skill of the ordinary artisan, the claim may nevertheless be nonobvious if the problem which had suggested use of the method had been previously unknown. |
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Crocs, Inc. v. U.S. Int'l Trade Comm'n., 598 F.3d 1294 (Fed. Cir. 2010). |
A claimed combination of prior art elements may be nonobvious where the prior art teaches away from the claimed combination and the combination yields more than predictable results. |
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Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356 (Fed. Cir. 2008). |
A claimed invention is likely to be obvious if it is a combination of known prior art elements that would reasonably have been expected to maintain their respective properties or functions after they have been combined. |
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Ecolab, Inc. v. FMC Corp., 569 F.3d 1335 (Fed. Cir. 2009). |
A combination of known elements would have been prima facie obvious if an ordinarily skilled artisan would have recognized an apparent reason to combine those elements and would have known how to do so. |
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Wyers v. Master Lock Co., No. 2009–1412, —F.3d—, 2010 WL 2901839 (Fed. Cir. July 22, 2010). |
The scope of analogous art is to be construed broadly and includes references that are reasonably pertinent to the problem that the inventor was trying to solve. Common sense may be used to support a legal conclusion of obviousness so long as it is explained with sufficient reasoning. |
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DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314 (Fed. Cir. 2009). |
Predictability as discussed in KSR encompasses the expectation that prior art elements are capable of being combined, as well as the expectation that the combination would have worked for its intended purpose. An inference that a claimed combination would not have been obvious is especially strong where the prior art's teachings undermine the very reason being proffered as to why a person of ordinary skill would have combined the known elements. |
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Substituting One Known Element for Another |
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In re ICON Health & Fitness, Inc., 496 F.3d 1374 (Fed. Cir. 2007). |
When determining whether a reference in a different field of endeavor may be used to support a case of obviousness (i.e., is analogous), it is necessary to consider the problem to be solved. |
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Agrizap, Inc. v. Woodstream Corp., 520 F.3d 1337 (Fed. Cir. 2008). |
Analogous art is not limited to references in the field of endeavor of the invention, but also includes references that would have been recognized by those of ordinary skill in the art as useful for applicant's purpose. |
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Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318 (Fed. Cir. 2008). |
Because Internet and Web browser technologies had become commonplace for communicating and displaying information, it would have been obvious to adapt existing processes to incorporate them for those functions. |
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Aventis Pharma Deutschland v. Lupin, Ltd., 499 F.3d 1293 (Fed. Cir. 2007). |
A chemical compound would have been obvious over a mixture containing that compound as well as other compounds where it was known or the skilled artisan had reason to believe that some desirable property of the mixture was derived in whole or in part from the claimed compound, and separating the claimed compound from the mixture was routine in the art. |
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Eisai Co. Ltd. v. Dr. Reddy's Labs., Ltd., 533 F.3d 1353 (Fed. Cir. 2008). |
A claimed compound would not have been obvious where there was no reason to modify the closest prior art lead compound to obtain the claimed compound and the prior art taught that modifying the lead compound would destroy its advantageous property. Any known compound may serve as a lead compound when there is some reason for starting with that lead compound and modifying it to obtain the claimed compound. |
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Procter & Gamble Co. v. Teva Pharmaceuticals USA, Inc., 566 F.3d 989 (Fed. Cir. 2009). |
It is not necessary to select a single compound as a ''lead compound'' in order to support an obviousness rejection. However, where there was reason to select and modify the lead compound to obtain the claimed compound, but no reasonable expectation of success, the claimed compound would not have been obvious. |
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Altana Pharma AG v. Teva Pharms. USA, Inc., 566 F.3d 999 (Fed. Cir. 2009). |
Obviousness of a chemical compound in view of its structural similarity to a prior art compound may be shown by identifying some line of reasoning that would have led one of ordinary skill in the art to select and modify a prior art lead compound in a particular way to produce the claimed compound. It is not necessary for the reasoning to be explicitly found in the prior art of record, nor is it necessary for the prior art to point to only a single lead compound. |
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The Obvious To Try Rationale |
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In re Kubin, 561 F.3d 1351 (Fed. Cir. 2009). |
A claimed polynucleotide would have been obvious over the known protein that it encodes where the skilled artisan would have had a reasonable expectation of success in deriving the claimed polynucleotide using standard biochemical techniques, and the skilled artisan would have had a reason to try to isolate the claimed polynucleotide. KSR applies to all technologies, rather than just the ''predictable'' arts. |
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Takeda Chem. Indus. v. Alphapharm Pty., Ltd., 492 F.3d 1350 (Fed. Cir. 2007). |
A claimed compound would not have been obvious where it was not obvious to try to obtain it from a broad range of compounds, any one of which could have been selected as the lead compound for further investigation, and the prior art taught away from using a particular lead compound, and there was no predictability or reasonable expectation of success in making the particular modifications necessary to transform the lead compound into the claimed compound. |
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Ortho-McNeil Pharmaceutical, Inc. v. Mylan Labs, Inc., 520 F.3d 1358 (Fed. Cir. 2008). |
Where the claimed anti-convulsant drug had been discovered somewhat serendipitously in the course of research aimed at finding a new anti-diabetic drug, it would not have been obvious to try to obtain a claimed compound where the prior art did not present a finite and easily traversed number of potential starting compounds, and there was no apparent reason for selecting a particular starting compound from among a number of unpredictable alternatives. |
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Bayer Schering Pharma A.G. v. Barr Labs., Inc., 575 F.3d 1341 (Fed. Cir. 2009). |
A claimed compound would have been obvious where it was obvious to try to obtain it from a finite and easily traversed number of options that was narrowed down from a larger set of possibilities by the prior art, and the outcome of obtaining the claimed compound was reasonably predictable. |
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Sanofi-Synthelabo v. Apotex, Inc., 550 F.3d 1075 (Fed. Cir. 2008). |
A claimed isolated stereoisomer would not have been obvious where the claimed stereoisomer exhibits unexpectedly strong therapeutic advantages over the prior art racemic mixture without the correspondingly expected toxicity, and the resulting properties of the enantiomers separated from the racemic mixture were unpredictable. |
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Rolls-Royce, PLC v. United Technologies Corp., 603 F.3d 1325 (Fed. Cir. 2010). |
An obvious to try rationale may be proper when the possible options for solving a problem were known and finite. However, if the possible options were not either known or finite, then an obvious to try rationale cannot be used to support a conclusion of obviousness. |
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Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324 (Fed. Cir. 2009). |
Where there were a finite number of identified, predictable solutions and there is no evidence of unexpected results, an obvious to try inquiry may properly lead to a legal conclusion of obviousness. Common sense may be used to support a legal conclusion of obviousness so long as it is explained with sufficient reasoning. |
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Consideration of Evidence |
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PharmaStem Therapeutics, Inc. v. ViaCell, Inc., 491 F.3d 1342 (Fed. Cir. 2007). |
Even though all evidence must be considered in an obviousness analysis, evidence of nonobviousness may be outweighed by contradictory evidence in the record or by what is in the specification. Although a reasonable expectation of success is needed to support a case of obviousness, absolute predictability is not required. |
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In re Sullivan, 498 F.3d 1345 (Fed. Cir. 2007). |
All evidence, including evidence rebutting a prima facie case of obviousness, must be considered when properly presented. |
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Hearing Components, Inc. v. Shure Inc., 600 F.3d 1357 (Fed. Cir. 2010). |
Evidence that has been properly presented in a timely manner must be considered on the record. Evidence of commercial success is pertinent where a nexus between the success of the product and the claimed invention has been demonstrated. |
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Asyst Techs., Inc. v. Emtrak, Inc., 544 F.3d 1310 (Fed. Cir. 2008). |
Evidence of secondary considerations of obviousness such as commercial success and long-felt need may be insufficient to overcome a prima facie case of obviousness if the prima facie case is strong. An argument for nonobviousness based on commercial success or long-felt need is undermined when there is a failure to link the commercial success or long-felt need to a claimed feature that distinguishes over the prior art. |
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Ping: Could you answer my question – what do you do which is different from me and why is it better?
For us in Europe it is important to be aware of US concerns and practice, even if we do not always agree with you.
“You and ping, carry on, do.”
Aw Maxie – don’t get your knickers in a bunch, we be just helping you learn is all.
IANAE, I was alluding to “useful” in “useful arts” rather than “useful” as in “utility” but never mind. You and ping, carry on, do.
Max: 1. One should never say Never but, meanwhile, MoT is not a bad test,
Pretty much. Never say never, but we can’t say how it could ever, so don’t hold your breath.
Max: 2. it is politically impossible, and therefore foolhardy, for the majority to hold that business methods as such are not “useful”.
I wouldn’t say “politically” when speaking of judges with tenured lifetime appointments. I also wouldn’t say “useful”, since Bilski was about statutory subject matter which isn’t quite the same thing as utility. I would, however, agree that they knew it would be foolhardy to kill off all business method patents based on a single data point.
They really couldn’t have done better without a better claim to rule on.
Maxie,
Just like a blimey – you got the wrong message if you truly believe 1. above was the takeaway. Likewise, your 2. above should say minority, rather than majority. Do you evenknow which side was victorious (and I not be talking Bilski or the government – I be talking Stevens and Kennedy, where the real battle was at).
Anon’s lecture reinforces my conviction that the wise Justices of the Supreme Court in Bilski delivered in their 5:4 split exactly the right aggregate message to those who are guided by their Opinions, namely that:
1. One should never say Never but, meanwhile, MoT is not a bad test, and
2. it is politically impossible, and therefore foolhardy, for the majority to hold that business methods as such are not “useful”.
I am fine with Bilski. I do not see what else SCOTUS could have done to survive ridicule but get to the right result. I see its use of “abstract” and MoT as in harmony with TRIPS, and the EPC statutory provision, which lets all sorts of business method type stuff through to issue but excludes from patentability business methods, as such.
Punches
What do you do then?
How do you go about the drafting task?
Oooohhh, I can’t WAIT to hear Paul’s answer to Max’s question.
Note the usage of the word “invention” in 35 USC 103, and the fact that it doesn’t refer to “the act of invention”, but rather to when “the invention was made”.
The ACT of invention is never spoken of–instead we have the concepts of conception and reduction to practice of “the invention”.
Mercifully for all, I’m sure, this will be my last comment on this thread. It’s like banging my head into a wall.
On second thought, I’ll ignore Paul’s answer entirely.
Paul, this “reduced to practice” issue. You pointed out the differences in the predictable and non-predictable arts but is there another issue here, namely, when exactly do we assess obviousness.
In an FtF jurisdiction, we assess on the filing date. That is after the spec has been written. The spec is a constructive reduction to practice.
But in a FtI jurisdiction, does one not try to measure obviousness as of the date of conception, before any constructive reduction to practice has occurred?
EPO-PSA compares the disclosure in two docs both written before the decisive date, namely, the app as filed, and D1. But what if the comparison with the state of the art must be made, before the spec has even been written? The “invention” is that which you have written down in your claim precursor, nothing more.
This leaves me wondering how to get any handle at all, on obviousness in a FtI jurisdiction.
Paul, you’ve thrown another slow pitch that is just hanging over the center of the plate, in the middle of the strike zone.
“I have written and edited enough material to tell in 5 lines what is good and of a high standard and what is b/s.”
Expertise in the synthesis of textual content into a broader paradigm obviously does not necessarily result from simple repetition of the tasks of “writing” and “editing”. If one does something poorly for years, one merely becomes an expert at doing something poorly. On this board, you have demonstrated neither the mental acuity nor the cogency of argument that would be required to even understand what the cases say, let alone what they mean in the broader context of US patent law.
“I could write you thousands of grammatically correct claims, all in immaculate style, and all devoid of any invention whatsoever.”
No you couldn’t. A grammatically correct claim is BY DEFINITION the disclosure of the invention. EVEN IF THE OPERABILITY REQUIREMENT OF 101 IS NOT MET, AN INVENTION HAS BEEN DISCLOSED–it is simply an “inoperable invention”. See In Re Mitchell R. Swartz, 232 F.3d 862 (Fed. Cir 2000) for a fedcir-level discussion of this concept.
“But in reality if the technical analysis has been done right, the grammar will look after itself.”
Absolutely incorrect–I don’t even need to provide reasoning. There is no logical nexus between the two. I don’t know how anybody literate could make such a statement.
“And I have now read the Guidelines, and my initial impression was right.”
You lack the quality of character (so valued among the English upper-classes) to explicitly admit your unfortunate mis-statements or outright errors. You have, however, implicitly acknowledged that it is not possible to judge the guidelines objectively without having read them, something you previously claimed to have done. That is at least something.
“The claim language merely expresses the science.”
There is nothing “mere” about it–the expression of the “science” (or correctly, the “invention”) is EVERYTHING. You don’t get patents for performing inquiry that comports with the scientific method–you get them for claimed inventions. The fact that you don’t understand that this is the very crux of patent law is disturbing.
“The case with, in my opinion, the best ever one-sentence epitome of the legal importance of new function is Loom v Higgins…”
Why are you flogging this dead horse? Are you looking for an argument? As I said before, “…nobody is arguing, or has argued, that achieving a new and preferably unexpected result is unimportant.”
Staying on that idea, however, the discussion presently focuses on the predictability of the result, not on its novelty. Back when Loom v Higgins was decided, there were indeed many results to be achieved that had never before been achieved. There certainly still may be many, but that is not what KSR and Adams were about. From KSR discussing Adams: “The Court recognized that when a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result. 383 U.S., at 50–51.” This discussion is well-known. The cases were not about demonstrating a “new result”, as you put it, but about the predictability of the result of the substitution of one element for another known in the field. These are two different things, and AGAIN, in Rolls-Royce the “new result” was used as a secondary factor in the Graham analysis.
I think you may have a problem with articulation–you seem to prefer the use of the word “invention” to refer to an “act” rather than to a “device” or “method”. The old quote you supplied from Loom v Higgins exemplifies your preferred usage: “…if a new combination and arrangement of known elements produce a new and beneficial result, never attained before, it is evidence of invention.”
This usage is antiquated in the US, and serves no current specific purpose. ONCE AGAIN, WE HAVE NO INVENTIVE STEP. In OUR formulation, we don’t care about the “act of invention”, or how “inventive” the act is–such a convention proved to be of limited utility in the practical application of US patent law. We currently use the term “invention” to refer to a device or method (or ornamental appearance), which usage permits a more rational analytical paradigm.
More evidence for your confused usage comes from your statement that “…the nature of invention does not suddenly change when you leave the US for Canada or China or Japan or Germany or the UK…”, using the word “invention” once again to refer to an “act” as opposed to a device or method. It is irrelevant whether or not “the nature of invention” changes, since such a formulation is useless in US patent law. What DOES change is the patent paradigm, and applications must change accordingly.
THIS is but one example of how your concepts are outdated in the U.S.. Been there, done that. You guys have stuck with your formulation–fair enough. It forms a cornerstone of your system. We have OUR formulation, that forms a cornerstone of OUR system. Deal with it, but don’t think that your mis-guided ideas have any cachet with those who understand the U.S. system. (BTW, I don’t think the US system is any great shakes, but Paul’s commentary is confused and unhelpful.)
Comments like this one by Paul serve as a good example: “By all means ignore the requirement for new function.” Of course, there IS NO SUCH REQUIREMENT.
Good grief, Paul. I have no reason to doubt that you could draft an excellent EPO application, and prosecute it well. However, the understanding that you have demonstrated about US patent law, or at least your expression of your understanding, is very weak indeed.
“ping, in this blog we are not talking”
MaxDrei,
As annoying as Ping is, he is correct in a few points.
The shear amount and consistent tenor of your postings belie your professed “just wanting to learn” and “innocent third party” contentions. You post as if this is your bully pulpit, and your aim is not to make the US system stronger or better. Typically, I discount your posts and have an auto-filter to take them as what they are – proselytizations.
Even given this filtering, you are too quick to dismiss Ping’s point about “science” and the Technological Arts. Given that the Bilski decision decidedly did not kill “Business Methods” – even in face of Steven’s tremendous efforts, “science” cannot be taken as synonymous with “Useful Arts”. In fact, the US has long since moved from any sort of “technological arts” test. This is a tremendous burden for you and your efforts, and Bilski must have been quite a setback for you personally.
You also show a bias (personally, I disagree with that bias, but I do recognize the debatable nature of the position) that the Constitution locks in what should be considered patent-eligible to only those items foreseen at the time of the Founding Fathers. In this vein, the Bilski decision must have been difficult, as that position ended up on the losing side.
And I think it did so for a fundamental reason. The US Constitution was never meant to be locked in stone as to its applicability and its enduring substance is the ability to continue to be applicable as the ages unfold.
Two of the most “scientific”, to borrow the word, advances of the past century were computers and the treatment of business in a scientific manner (e.g. Deming et al.). To believe that fields of human endeavor must be locked in the staid categories of the 18th century is to deny progress, to deny one of the very cornerstones of why the US even has a patent system.
If there is any one area empowered by the Constitution that needs to be able to be flexible, to absorb and to reflect the advancements of our society, that area is the intellectual property area.
To lock yourself in the 18th century as you have also flatly ignores the actual case law that has developed and, as I have mentioned, most recently been reinforced in the Bilski decision. The topic broached by Ping is by no means settled – and by no means is your post trying to hush Ping (as pleasant as that may be) in any way reflective of any type of “we” on this board. I for one do not want your proselytizations dictating the subject matter discussed. I for one do not even want to see you attempting to so dictate.
Paul: Thanks. I see that you are now equating “every new result clearly and objectively stated” with “all the differences between the embodiments of the invention and that prior disclosure” and “advantages associated with those differences”. Is that because you view such “differences” and “advantages” as necessarily “more than the predictable use of prior art elements according to their established functions”?
“However, he is entitled to protect no more than he knows or could reasonably predict on the basis of that information. ”
What about inherent characteristics of a newly invented material…?
“My routine is to take a fixed point in the field of endeavour…Then I note all the differences…”
This is a notably poor technique in US practice for a number of reasons (IC, estoppel, BUI).
Halitosis: On re-reading your comment I see that I have not fully answered your point.
My routine is to take a fixed point in the field of endeavour of the invention e.g. a prior published paper or a prior patent. Then I note all the differences between the embodiments of the invention and that prior disclosure and look systematically for advantages associated with those differences. The question: “Why did you do that?” often produces an interesting and informative answer. That includes not only the pre-existing embodiments, but the further embodiments that the inventor(s) can identify in pre-filing discussions. We may not find everything, but if we have done the best we can we can then as a drafting team (which must include the inventor(s) and the attorney(s) as active and fully contributing members if the best outcome is to be obtained) have good grounds for optimism about the applications we file.
Paul: Too oblique. Once again, the questions remain, “What about those inventions that have not been actually reduced to practice? How then do we draft our specifications with every new result clearly and objectively stated?”
Halitosis: A patentee is entitled to the benefit of what he knows and everything that a skilled person could reasonably predict on the basis of the information available at the time of filing. However, he is entitled to protect no more than he knows or could reasonably predict on the basis of that information.
At times that can create great difficulty especially in empirical arts such as pharmaceutical development. The temptation is to go from reasonable prediction to wild and unsupported speculation, and is by no means confined to the empirical arts.
For example, in the Windsurfing case the patentees speculated that their new sailing rig could be applied to land yachts. They had never built a prototype of a land yacht, they had never designed either at the feasibility study level or at the detailed design level a land yacht incorporating their sailing rig, and a moment’s consideration shows that a Windsurfing rig would have been utterly unsuitable for that purpose. Land yachts have achieved speeds of over 100 m.p.h., and the danger of such a vehicle with a user merely standing on the body and controlling a long unsupported mast which if it collapsed could bury itself like a spear in the sand is so obvious as to need further comment.
In relation to KSR, the golden sentence is in the discussion of Adams Battery and reads: “The fact that the elements worked together in an unexpected and fruitful manner supported the conclusion that Adams’s design was not obvious to those skilled in the art.”
The Supremes also said: “a court must ask whether the improvement is more than the predictable use of prior art elements according to their established functions.” If the answer to that question is “YES” there cannot be a straightforward objection of obviousness, although (as in the UK and Europe) the totality of the evidence has to be considered and an obviousness objection may well succeed when all the evidence is in. As we say in Europe, the unexpected advantage may be a mere ‘bonus effect’ from something that it was obvious to do, but that is a matter of evidence and has to be considered on a case-by-case basis.
Maxie,
Funny that you make sooo many assumptions about what “we” know….
Paul: The questions did not rest on the assumption that “it is not known what the benefit is or even if a benefit is likely to exist”. Instead, they were clearly directed to your encouragement that we “draft specifications with every new result that [we] find clearly and objectively stated”.
So ignoring your straw man, the questions remain, “What about those inventions that have not been actually reduced to practice? How then do we draft our specifications with every new result clearly and objectively stated?”
Although KNOWING (i.e., proving) a benefit might require actual reduction to practice, and will be required in some arts, in almost every case one can PREDICT a benefit of the invention even if that invention has not been actually reduced to practice. But to fulfill this “requirement for a new function or result”, for those inventions that have not been actually reduced to practice, how do we draft our specifications with EVERY new result clearly and objectively stated?
Shifting gears, where can we most easily see “the same golden thread” in KSR?
PUNCHES: If you read my postings, I know I am writing for a predominatly US Audience.
That is why I have predominantly been referring to US sources. GEORGE TICKNOR CURTIS was a highly successful BOSTON-based patent attorney. In case geography is not your strong point BOSTON is in the UNITED STATES. The case with, in my opinion, the best ever one-sentence epitome of the legal importance of new function is Loom v Higgins which is a decision of the Supreme Court of the UNITED STATES. For the avoidance of doubt the Supreme Court is based in WASHINGTON DC, part of the UNITED STATES. It is an institution established under the Constitution of the UNITED STATES. The same golden thread is to be found in statements in the Adams Battery case, and in the KSR decision itself, both decisions of the Supreme Court of the UNITED STATES. In other words, it is to be found not only in OLD decisions of the Supreme Court but also in the MOST RECENT decision on the subject.
Any suggestion that the Supreme Court is located in MUNICH, GERMANY is clearly incorrect, and I am not attempting to advance that hypothesis. If you do not like what the Supreme Court has said, that is YOUR problem because I am discussing YOUR law, not that prevailing in Europe.
I am not selling PSA for use in the US because I am perfectly well aware that PSA is not applicable in the US. I am simply pointing out what has been said in leading cases by UNITED STATES judges, and which are available for all to read, even us folk in Europe.
It happens that PSA can readily be reconciled with the requirement for a new function or result, which is demonstrably part of the transfer function in US law as is made abundantly clear in the decisions to which I have referred, and with decisions of the UK courts. Widespread international agreement on fundamentals is not surprising since the nature of invention does not suddenly change when you leave the US for Canada or China or Japan or Germany or the UK (although the reasoning does change, the outcome changes far less). The fundamentals of patent law were worked out by the Venetians in the fifteenth century and we in the UK merely copied them.
By all means ignore the requirement for new function. I wish you luck. Whether you are likely indeed to be lucky is for you to find out from your own experience. Mine is that identifying and using new function is very helpful in professional practice. New function is not the answer to life, the universe and everything, and I make no pretense that it is. But as I have said it is very helpful to a prosecution attorney and I cannot think of any single thing more helpful.
ping, in this blog we are not talking inter rusticos. I think most of us know what “science” means and what “technology” means and what TRIPS means by “all fields of technology”. Most also know what was meant by “useful arts” when the US Constitution was written. There is no doubt in my mind, that if the Framers of the Constitution had intended that business methods were patent-eligible, they would have used different words in the patent clause. After all, innovation in business methods was not unknown, even back then in America.
IBP, what Paul Cole writes, even if you personally think it is worse than useless for the USA jurisdiction, is good for the whole of the rest of the world. Do you ever write cases that will be filed outside the USA? Ever? Do you have any clients at all, for which what Paul writes is useful? Or do you draft your PCT cases US-style (no background art, no summary of the invention, few if any decent fall-back positions defined in the dependent claims) and tell your clients that it’s only a matter of time before ROW falls in line with the “gold standard” and meekly adopts US drafting style?
But go ahead, blame Paul for the new MPEP text. He is was, who put the idea first to Kappos, at an AIPLA Meeting. No wonder he thinks the new text is useful.
“in the science”
Is that sorta like in the technological arts?
IBP – and I thought that I did not like ivory tower (policy) pontifications…
Punches: I have written and edited enough material to tell in 5 lines what is good and of a high standard and what is b/s. And I have now read the Guidelines, and my initial impression was right.
And the invention is, and always has been, in the science. The claim language merely expresses the science. I could write you thousands of grammatically correct claims, all in immaculate style, and all devoid of any invention whatsoever. And I could write an ungrammatical claim to a good invention. But in reality if the technical analysis has been done right, the grammar will look after itself.
Paul:
“New result, as is clear from the EPO Guidelines and appeal board decisions is also the basis for formulating technical problem for PSA.”
Who cares? That is irrelevant to US patent law, unless US adoption of the EPO model is the goal.
“If you look at the Rolls-Royce decision in the new Guidelines, you will see how important new result is, even today. The 1.9% increase in efficiency is a new result which is evidence of patentability…”
First, it was 1.8% not 1.9%. Second, it was used as secondary evidence of non-obviousness under Graham. Third, nobody is arguing, or has argued, that achieving a new and preferably unexpected result is unimportant.
“If I draft specifications with every new result that I find clearly and objectively stated…there is a good statistical chance that many of those specifications will do well, in the US and incidentally everywhere else. If you draft your specifications without those things there is a good statistical chance that many of those specifications will do badly…”
The particular drafting of the specification is a strategic exercise, the strategy being a response to patent goals, cost, prevailing technological conditions, and prevailing legal conditions, to name a few. The legal conditions under which US specs are drafted are different than those under which EPO specs are drafted, and many commenters on this board have been over this innumerable times. You have provided no empirical evidence for your suggestion, which is of course so vague that it wouldn’t admit of meaningful empirical study anyway.
“If we hunt for unexpected advantages and put them into the specifications we write, then those specifications will contain within them evidence of invention.”
In the US, we don’t care about your specific construct of “INVENTION”. “Invention” is not something that is extracted from a patent application, it is something that is inherent in EVERY application. As long as there is a grammatically correct claim, there is an invention disclosed. Although the term “invention” appears in statute law and elsewhere, the term by itself has no meaning–it is defined by secondary indicia, and it is those secondary considerations that are where the work gets done. The questions are whether that invention is novel, non-obvious, within the scope of patentable subject-matter, sufficiently described, enabled, etc…and it is evidence of these things that the spec must contain, not “evidence of invention”, by which of course you mean “inventive step”, trying once again to parachute your european ideas into the territory of US patent law.
Paul, are you for real? Seriously, your points are not well-structured and lack a basis in either expression or knowledge, or both. Either that, or you are cleverly subversive, which is doubtful. This quote of yours said it best:
“I have not read the guidelines yet, but very plainly they are the result of a lot of study and thought.”
I bet that your conclusion was the result of “common sense”.
Halitosis: There is sound prediction in the predictable arts and to a lesser extent in the chemical arts. However, if it is not known what the benefit is or even if a benefit is likely to exist, why is a patent being filed?
Paul: What about those inventions that have not been actually reduced to practice? How then do we draft our specifications with every new result clearly and objectively stated?
I think I like this signature better, at least for present purposes.
Punches: If I draft specifications with every new result that I find clearly and objectively stated (bearing in mind the need to avoid patent profanity) there is a good statistical chance that many of those specifications will do well, in the US and incidentally everywhere else. If you draft your specifications without those things there is a good statistical chance that many of those specifications will do badly As Saruman said to Frodo Baggins: “That is not my doing, I merely foretell.”
If you look at the Rolls-Royce decision in the new Guidelines, you will see how important new result is, even today. The 1.9% increase in efficiency is a new result which is evidence of patentability, just as the increase in speed was in the 1881 decision in Loom v Higgins. And it enabled them to make some fabulously successful engines.
New function or result got into the transfer function of the patents machine at least by 1750. It is still there, and will remain there for the foreseeable future. Not my doing, merely my observation.
Maxie,
I aint never said the US System aint a “respectable paradigm”.
And while I do bash the operation of the system due to both the patentee side (Ned anyone?) and the Office side (6, even though this may fuel certain posters phantasies), keep in mind that this system simply provides a more coveted (and stronger) patent than anything on your side of the pond.
It be my system – I be allowed to bag on it. Your bagging stems from your jealousy and desire to weaken it.
ping, IBP, can either or both of you explain to me how the present US system is the “gold standard” yet at the same time not a “respectable paradigm”?
Exemplary? Or not?
And please tell us, IBP, specifically how you would change our current system into a respectable paradigm.
IBP writes:
“We should strike out in our own direction, at once different from both harmonization and our own previous direction. We are sufficiently large to be the leader in this area, if we develop and implement a respectable paradigm. Our current system sucks, but in many respects so does the current European system, from the point of view of an American inventor.”
Well said. Germany and UK vie for European leadership on substantive patent law. You could not wish for poles further apart, so the debate is keenly fought, with the Brits getting egged on from North America, while the Germs draw enthusiastic support from Asia.
Tell me please, IBP, some of the “many respects” (apart from the basic fact of FtF) in which substantive patent law under the EPC “sucks” for inventors in North America.
Ping–
Not that there’s anything wrong with that…
“We need to learn from history, not be mired within it.”
I know me somebodys who be deeply mired.
My fave – “phalanx of pseudo-intellectual sycophants”
Even quoting Twisted Sister – let’s have drinks IBP (in a non-gay sort of way).
Paul, I realize that your tactics of waxing nostalgic and pandering to ego probably win you friends among the comfortable classes, and that these were survival skills you learned early on, that have served you well in your society.
But this is a new era, where warm and fuzzy feelings of belonging are no longer sufficient in view of the historical failure to successfully meet the challenges that loom large today.
Your tone evokes memories of my first year in law school, where the old boys’ network welcomed me to the club with a hearty handshake and a pat on the back. I was wary of the pitfalls of inclusion even then, and have since reacted with horror, disgust, ennui, and finally a purposeful response.
We need to learn from history, not be mired within it. You seem to be taken by the FACT of history, rather than being interested in, and aware of, the LESSONS of history.
Bureaucratic efforts at tinkering around the edges, supported by a phalanx of pseudo-intellectual sycophants, serves merely to dig the hole deeper.
As Twisted Sister said, “If that’s your best, your best won’t do.”
What is needed is a new formulation. While some may be content to fetishize their legal inheritance, others take a rational approach to determine what actions are required to synthesize the practical and symbolic requirements that are represented by US patent law.
The new formulation for which you have argued is one of harmonization–it is all there on other threads on this blog. Again, you seem to be mesmerized by the FACT of harmonization, and you gloss over those pesky practical issues of implementation and policy.
Your mentality is entirely consistent with that expressed by many western europeans of your generation, especially those at work internationally through vehicles such as the UN and its branches like UNESCO.
It IS one approach, but it is certainly not the ONLY approach. And, it is an approach that has had a pretty long run historically, and that has enjoyed significant support through official state policy.
When it is allowed to propagate unquestioned and unilluminated by rational examination, it becomes a de facto neo-colonial mentality. You are once again trying to export the normative standards of the homeland to the unwashed savages in existing and former colonies, exhibiting the characteristic and enduring cultural arrogance for which you are so famed and excoriated by those whom you would purport to “help”.
It’s time to take your pension and step aside–you have spun the wheels long enough.
Again, the US has no inventive step guidelines, and does not examine patent applications for unobviousness. These new “guidelines” MUST be characterized as providing limits on the scope of rejections, and not as aids to determinations of unobviousness. The PTO should remove from its NOA the wording “the examiner has found allowable subject-matter”.
These guidelines, if mischaracterized, are the first step toward an examination paradigm that is less rational, more “european”, less amenable to the US method of dispute resolution, more centralized, and more the province of an institutional elite that will be increasingly difficult to investigate and challenge.
It’s a step backward, and not to a good place. It’s a veritable reversal of the reasons the United States declared independence from its colonial master.
Is it a good time for that reversal? Has the appropriate time come? Euro-intellectuals like Paul Cole think so. I haven’t seen any evidence from him that current conditions favo(u)r such harmonization for those in the USA.
We should strike out in our own direction, at once different from both harmonization and our own previous direction. We are sufficiently large to be the leader in this area, if we develop and implement a respectable paradigm. Our current system sucks, but in many respects so does the current European system, from the point of view of an American inventor.
And it is of no use to heap praise on the PTO. Government agencies are impersonal–you won’t build any capital with them by such tactics, especially with the turnover in staff and administration. What survives is the institutional template and the statutory framework, and those within the institution understand to whom they have to answer.
The PTO cannot be “encouraged”, as could be an individual with a personality. It is a machine. It responds to inputs, outputs, and engineering of its transfer function.
Paul Cole and others are engaging in a subtle form of this engineering.
Paul Cole: It is a little bit like smoking – there are those who deny and say nay about a link between smoking and health, but what the statistics irrefutably prove is that those who smoke on the whole are likely to have bad luck with regard to their health.
Actually, smokers will probably be fine.
Seriously though, it’s not a tremendously good analogy. Sure, smoking correlates to an elevated risk of a variety of ailments. But when it comes to inventiveness, we’re not looking for an elevated risk. We’re looking for an accurate diagnosis.
A new result only gets me as far as novelty. I would rather see a new or newly-applied structure or principle at work than a new result, when it comes to proving inventiveness. Don’t show me the cigarette butt, show me the MRI.
Even, ping, after that Examiner has read the latest Guidelines on what is obvious, and what not?
Aggressive, you say ping. What proportion of PTO Examiners would you say are “aggressive”?
“If we hunt for unexpected advantages and put them into the specifications we write”
Careful Paul – this could also be taken by an aggressive examiner as nothing more than obviousness due to design needs and market pressure.
Anon is quite right – the message from early times was indeed confused, and people have been grappling for over 200 years with the question what sort of novel subject matter should be patentable. Not only was the law in an earlier stage of development, but also technology was in an earlier stage of development, and in the beginning the art of writing patent specifications was in its infancy. Superimposed on that is litigation pressure – the common law system has the advantage that opposing views are presented concerning real cases, but the disadvantage that the pressure on the advisors for each side is to present the law and facts in a way which will achieve a desired result for their client, not necessarily in a way that will achieve the most straightforward and beneficial development of the law. There have been many blind alleys in judicial reasoning, or lines of reasoning that were more applicable to situations in the past than now.
However, through all these decisions, I submit that there is a golden thread in terms of new result that has a large impact on validity/invalidity and can be traced back to the inventions of Dolland and Watt. New result, as is clear from the EPO Guidelines and appeal board decisions is also the basis for formulating technical problem for PSA.
My very favourite quote in the whole of the case law on this subject (as readers will remember from previous posts) comes from Mr Justice Bradley in Loom v Higgins (1881): “It may be laid down as a general rule, though perhaps not an invariable one, that if a new combination and arrangement of known elements produce a new and beneficial result, never attained before, it is evidence of invention.”
I cannot think of any better statement of the principle: If we hunt for unexpected advantages and put them into the specifications we write, then those specifications will contain within them evidence of invention. How can we fail to do that if we wish to do the best for our clients? It is a little bit like smoking – there are those who deny and say nay about a link between smoking and health, but what the statistics irrefutably prove is that those who smoke on the whole are likely to have bad luck with regard to their health. Much the same with new function or result – if it is not in the specification the applicant or patentee is likely to have bad luck with examination or enforcement. Like Mr Justice Bradley, I cannot lay down any universal principle, but the one that he advocates will take us a long way in many cases.
7,
That was a Malcolm-Rhetorical question. He don’t want real answers.
“You know this how?”
My own experience during the Dudas era.
One is living in a fool’s paradise to categorize the older era as so assured in what was considered patentable. Just as Jefferson said “The fact is that one new idea leads to another, that to a third, and so on through a course of time until someone, with whom no one of these ideas was original, combines all together, and produces what is justly called a new invention.” He also waned on the property rights issue. The notion of “property” itself was hotly debated.
Antiquity wasn’t so clear.
And while I find Paul Cole’s positions typically well grounded (indeed a rarity on these boards), I fully understand where Inviting Body Punches is coming from.
The situation under the Dudas regime was so bad, that now, when Kappos puts out a mediocre direction (yes it is mediocre), the fact that the piece is even researched and even attempts to be balanced (when those characteristics should be expected, even if difficult) is treated with such aw and gaa, should raise a few eye brows.
It appears that IBP is a child commenting on the King’s accouterments, and there is no shortage of advisers trying to hush the child.
Punches, yes please. About Paul Cole, you wrote:
“The types of ideas that you have presented on this blog and elsewhere have been antiquated, cumbersome, and in some cases even retrograde.
If you really wish it, and are willing to accept the inevitable chagrin with character and dignity, I will present examples of the above for everyone’s reading pleasure, to demonstrate objectivity and a lack of abusiveness.”
My memory is poor. I don’t remember any of Cole’s contributions that meet your description of them. Refresh my memory will you? Cole won’t mind your putting them up again for us to scrutinise and enjoy. He’s proud of them, and I thought they were all helpful.
What do you think about Cole’s basic point though, that he personally made to Kappos at an AIPLA annual meeting not long ago (and which was followed by his airing it on this blog), that PTO Examiners need in the MPEP plenty of Examples of cases where the claim was found not to be obvious?
One further thought which is directly relevant to the present topic.
If we want to learn what is patentable, the cases where validity has been upheld are likely to be more instructive than cases where objections of obviousness have succeeded.
It sounds very simple, but I believe that it is well worth pointing out.
Punches: I remain convinced that what is really needed for a valid patent has not changed since the eighteenth century when John Dolland corrected chromatic aberration in lenses using a combination of crown and flint glass and when James Watt reduced the fuel consumption of Newcomen’s atmospheric engine to a third by the provision of a separate condenser. It was very well known to George Ticknor Curtis who wrote a treatise on patent law in 1848 and who had Samuel Morse, Charles Goodyear and Cyrus McCormick amongst his clients. In that respect to call my ideas antiquated is praise, not abuse: sometimes the old ideas are the best ones.
Thanks so much, Dennis!
You’re missing the point… the total number of allowed patent apps may be going up, BUT these are apparently issued to large entities who can afford to pursue rejected patent apps. Small entities can’t afford to keep arguing or filing appeals. In terms of the basic patenting statutes, examiners understandably ignore them in order to be perceived as actually examining a patent application. Examiners need guidance on when to allow patent apps; there is plenty of guidance on how to reject them.
And also issuing patentable claims which the previous administration would not have issued due to reject, reject, reject.
You know this how?
“Sure. The current regime is issuing more crxp than the previous one.”
And also issuing patentable claims which the previous administration would not have issued due to reject, reject, reject. If we can’t get a perfect system, I prefer the current scheme, considering that some 90%+ of patents are never asserted.
If you really wish it, and are willing to accept the inevitable chagrin with character and dignity, I will present examples of the above for everyone’s reading pleasure, to demonstrate objectivity and a lack of abusiveness.
Get over yourself. I doubt that many (any?) of your posts provide anyone “reading pleasure.”
Paul, your threshold for abuse seems to be as low as your threshold for scholarship.
Please explain to all of us precisely how you could know that the guidelines in their current form are the result of a lot of study and thought WITHOUT HAVING YET READ THEM.
Or even AFTER HAVING READ THEM, unless you were a part of the team that put them together.
“Willing to devote their time?” Were team members all volunteers? It is my expectation that they are remunerated for their efforts.
I see no abiding reason to “respect” anybody for their willingness to perform a task that is their contractual duty to perform, and for which they are handsomely compensated pursuant to a negotiated contract.
Furthermore, the “law” of obviousness, such as it is, is disappointingly inadequate on many levels, both in its formulation and application. These “guidelines” are a typical bureaucratic attempt to address symptoms while leaving the problems to persist.
The types of ideas that you have presented on this blog and elsewhere have been antiquated, cumbersome, and in some cases even retrograde.
If you really wish it, and are willing to accept the inevitable chagrin with character and dignity, I will present examples of the above for everyone’s reading pleasure, to demonstrate objectivity and a lack of abusiveness.
These things aren’t the province of a blog such as this, though. Nobody wants to hear it. But if you want it out there, and Dennis is willing, I will oblige your desires.
In the meantime, the “guidelines” are still lipstick on a pig.
Paul,
I thought you would like these 2010 Guidelines. I remember you posting here about providing examples of “claimed invention isn’t obvious.” The 2010 Guidelines definitely do that.
We may want some more “claimed invention isn’t obvious” in the mechanical invention category (most of the unobvious examples are chemical/pharma) but this definitely an improvement over the 2007 Guidelines. And you correct, we can attribute this improvement to the current Kappos regime. The best appointment by far by the Obama administration as far as I’m concerned.
Punches: Apart from abusive comments on this blog have you written articles or a book? If you have, you will have immense respect for those willing to devote their time and effort to such a task.
I have not read the guidelines yet, but very plainly they are the result of a lot of study and thought.
“A work of scholarship”?
Dismaying to see that the USA doesn’t hold a monopoly on mediocrity.
Malcolm – you still be dizzy from your spinning – you was to esplain the drop, not the new rise (Ya know – the drop below any possible trendline explanation except Reject-Reject-Reject).
That be what you need to esplain. Sit down, gather your thoughts, and start spewin.
EG: You are absolutely right about this, and the suggestion was made, and noted by David Kappos, at last year’s AIPLA annual meeting. You may recall a Patently Obvious posting on that subject.
I have just seen these new Guidelines, but they are clearly a work of scholarship and deserve careful study.
“Last I checked, the allowance rate was going up.”
Coincidentally it’s been just about 2 years since the filing rate of appeals jumped up significantly, and appeal pendency has been running about 2 yrs.
link to patentlyo.com
The current regime is issuing more crxp than the previous one.
Can you blame them? The agents are producing so much of it that they have to wear diapers.
you want to take a whack at explaining the well beyong three sigma drop in historical allowance rate and the return to closer to the historical average with the current administration?
Sure. The current regime is issuing more crxp than the previous one.
One big difference between the 2007 and 2010 Guidelines is that the 2010 Guidelines also provide case law examples where the claimed invention was deemed to be unobvious. A huge concern with the 2007 Guidelines was that they only provided examples where the claimed invention was deemed to be obvious.
6: “O rly? I think I stated that it might just have not issued yet (being implicitly under a nonpub request). ”
Or secrecy order, perhaps? I mean, iirc, the patent claim is directed to a missile guidance system, amirit?
Every time you file an RCE a baby penguin dies. Take it to appeal instead.
“the reject reject reject mentality of the prior USPTO administration
Ah yes, the reject reject reject mentality which issued more patents than another USPTO administration in history.”
Malcolm – nice spin. You be dizzy yet?
Pure issue number not be nearly as important to the original comment as allowance rate – you want to take a whack at explaining the well beyong three sigma drop in historical allowance rate and the return to closer to the historical average with the current administration?
PO’ed – what IANAE said. Focus on the words of actual law: “unless”
I am deeply troubled by the USPTO’s “guidance” on why a patent application should NOT be allowed without providing any meaningful guidance as to when a patent application should be allowed.
The statute is pretty clear in that regard. If none of the reasons why a patent application should not be allowed apply, the application should be allowed.
This “guidance” lacks balance and only promulgates the reject reject reject mentality of the prior USPTO administration
Ah yes, the reject reject reject mentality which issued more patents than another USPTO administration in history.
Last I checked, the allowance rate was going up. I doubt these new guidelines will impact that trend in any significant way. Better examination might impact the trend, but that would require more Examiners and better training.
I am deeply troubled by the USPTO’s “guidance” on why a patent application should NOT be allowed without providing any meaningful guidance as to when a patent application should be allowed. The US is losing its competitive position in the world marketplace by the wholesale rejection of patent applications based solely on highly subjective obviousness considerations. This “guidance” lacks balance and only promulgates the reject reject reject mentality of the prior USPTO administration.
IANAE RE: If I had to guess, I would say it’s because of the undeniable fact that every new patent granted to an entrepreneur creates at least one job.
It also is an undeniable fact that every patent application rejected to an entrepreneur creates at least one tear from a child’s eye at his parent’s loss of that one job.
“Not all applicants routinely elect to have their applications published. If they don’t have plans to foreign file them, they are not obligated to have the application published. If they elect non-publication the record doesn’t become public until there is a grant, or the application is relied upon in some other application which is published/granted. ”
O rly? I think I stated that it might just have not issued yet (being implicitly under a nonpub request).
“Seems as if he won the appeal so handily that his patent still hasn’t issued. Public pair shows that I can’t see the app, so it must not have even published. Or is it under secrecy order?”
Not all applicants routinely elect to have their applications published. If they don’t have plans to foreign file them, they are not obligated to have the application published. If they elect non-publication the record doesn’t become public until there is a grant, or the application is relied upon in some other application which is published/granted.
If the USPTO is going to summarize case law, can they at least summarize it accurately? From the snippet above:
Procter & Gamble Co. v. Teva Pharmaceuticals USA, Inc., 566 F.3d 989 (Fed. Cir. 2009).
It is not necessary to select a single compound as a ”lead compound” in order to support an obviousness rejection.
What the case actually says:
An obviousness argument based on structural similarity between claimed and prior art compounds “clearly depends on a preliminary finding that one of ordinary skill in the art would have selected [the prior art compound] as a lead compound.” Takeda, 492 F.3d at 1359; see also Eisai Co. Ltd. v. Dr. Reddy’s Labs., Ltd., 533 F.3d 1353, 1359 [87 USPQ2d 1452] (Fed. Cir. 2008) (stating that “post-KSR, a prima facie case of obviousness for a chemical compound still, in general, begins with the reasoned identification of a lead compound” in the prior art). Teva argues that the ‘406 patent identifies 2-pyr EHDP as the most promising molecule for the inhibition of bone resorption. The trial court disagreed and concluded from the evidence that a person of ordinary skill in the art would not have identified 2-pyr EHDP as a lead compound for the treatment of osteoporosis.
We need not reach this question because we conclude that even if 2-pyr EHDP was a lead compound, the evidence does not establish that it would have been obvious to a person of ordinary skill at the time of the invention to modify 2-pyr EHDP to create risedronate.
Deciding a case on other grounds is not the same as saying that a lead compound analysis is “not necessary”.
“Is Sarah insane? I can’t understand her posts…
No, people do occasionally understand some of my posts.”
There is no way you will be ocnfused with sarah.
AI: Actually I have shown it to be fact.
By defining it into a tautology. Very inventive.
BWA: Is Sarah insane? I can’t understand her posts and I’ve read quite a few of them.
No, people do occasionally understand some of my posts.
BWA: For every patent issued there are 1 million jobs created.
No, you’re doing it wrong. You have to say “for every patent issued to a new entrepreneur, there are 1 million jobs created”. When someone points out that this statement defies all common sense, you come back with “if the patentee doesn’t create 1 million jobs, he’s not really an entrepreneur, and if he created those jobs before the patent was granted he’s not a ‘new’ entrepreneur”.
There you go. Instant “truth”.
Anything can be obvious after all. The solution to a problem often bcomes obvious after research to solve it.
The whole subjective notion behind it always bothered me. My one patent took almost ten years and an appeal to grant because a stuborn examiner had differing notions of what is obvious.
^8^
\~~~/
exquisite sarah
Hey Blimey Limey,
Pick up your teeth. And close your mouth.
My very small mind has had an epiphany. There has been a Divorce. And the Divorce was a high price to pay for help. So now I know there is only a back and forth on the blog, to hide the real big C. So I did the right thing. I will re date it.
And if anybody claims foul on this Blog it should be me. And I ain’t crying foul so nobody else should either. And Mr.Rebound you don’t have a leg to stand on. You have stepped on the foul line. And so has shorty.
I did what I was supposed to do.I am now free to take that call.
Free at last, free at last.
“Sarah McPherson” is actually a Turing machine. Nobody has yet been able to show that this is false.
The words “stream of consciousness” come to mind. Mind you, they would suggest she’s not a machine.
Is Sarah insane? I can’t understand her posts and I’ve read quite a few of them.
As for the patent to invention ratio, let me one up IA. For every patent issued there are 1 million jobs created.
No one has been able to show that this is false. Therefore, I must be right.