Appealing Obviousness not the Factual Basis for Obviousness

Plasmart v. Kappos & Wang (Fed. Cir. 2012)

Jar Chen Wang‘s company Wincell sells the TwistCar and owns patent No. 6,722,674. PlaSmart sells the similar product – PlasmaCar. The toy cars look virtually identical to one another and operate the same way – twisting the handlebars make them go. 

Wang threatened, PlaSmart sued for DJ and then filed for inter partes reexamination in 2008. As with all reexaminations, the issue is whether the prior art renders the claimed invention unpatentable. The BPAI found several of the claims patentable. On appeal, however, the Federal Circuit has reversed.

USPTO Board factual findings are reviewed for substantial evidence. This is a low standard that results in an affirmance so long as more than a scintilla of evidence supports the Board’s conclusions. Legal conclusions made by the Board are reviewed de novo. Thus, as you might imagine,

Obviousness is somewhat tricky – the ultimate conclusion of obviousness is a question of law. However, that conclusion must be based upon factual predicates outlined in Graham v. John Deere Co., 383 U.S. 1 (1966). In KSR, the Supreme Court wrote that “[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007). That statement seems to be one applied as part of the final question of obviousness that would also be reviewed de novo on appeal.

Factual versus Legal Conclusions: The language of the opinion here is somewhat unclear, but the Federal Circuit appears to have accepted all of the BPAI’s factual findings regarding the scope and content of the prior art; the level of skill in the art; and the differences between the claimed invention and the prior art. However, the court rejected the BPAI’s ultimate conclusion obvious – holding that the “minor distinctions” identified by the Board were insufficient to distinguish the claimed invention from the prior art.  Another way to look at the case is that the court rejected the Board’s factual conclusion that the differences between the claimed invention and the prior art were major.

This case highlights the trouble that I have in our obviousness jurisprudence. In most cases, the Graham analysis does not do a very good job of leading to an answer of the obviousness question.  Thus, even after determining the scope and content of the prior art; the differences between the claimed invention and the prior art; the level of ordinary skill in the prior art; and any secondary factors, the court (or PTO) still has a large amount of analysis/discretion in determining whether those factors lead to a conclusion of obviousness. 

54 thoughts on “Appealing Obviousness not the Factual Basis for Obviousness

  1. Standard for 101 as understood from Benson, Flook, Diehr, Bilski, Prometheus.

    Good luck with that. The Supremes don’t even understand what the standard for 101 is as evident from those cases.

  2. and read the cases with a willingness to understand what the actual standard for 101/103 is

    Coming from IANAE, this is pretty funny. What it probably should say is a willingness to accept the anti-patent viewpoint of what the actual standard for 101/103 is.

  3. And there is the problem. There is no actual standard for 101/103. THEY ARE SEPARATE!

    Thanks, Les. I can always count on you for being willing to understand. I see I’m going to have to type slower.

    Standard for 103 as understood from KSR. Standard for 101 as understood from Benson, Flook, Diehr, Bilski, Prometheus.

  4. “, and read the cases with a willingness to understand what the actual standard for 101/103 is. ”

    And there is the problem. There is no actual standard for 101/103. THEY ARE SEPARATE!

    If something is allegedly obvious under 103, then the Office or Infringer must be made to prove it with citations to documents that make it obvious and with coherent explanations.

    By confusing 101 and 103 you and the Supremes are taken IP law through the looking glass and declaring that processes are not processes because they are known or obvious.

    NONSENSE!!!

  5. The supreme court is hurting the consistency of the system,

    The system would be perfectly consistent (as consistent as one can expect 6000 individual examiners to be) if we stopped all the hand-wringing and crying every time the Supreme Court happened to invalidate a claim, and read the cases with a willingness to understand what the actual standard for 101/103 is. These cases are not difficult to understand or apply.

    Bright line rules don’t work in patents, because every claim is unique and every set of citable prior art is unique. All bright line rules do is let lazy agents like N-Dubz argue technicalities (but Reference A doesn’t say it has to be blue!) instead of arguing the technology.

    KSR is a perfect example of a fact scenario that should result in a finding of obviousness. It’s also a perfect example of a failure of TSM. And judging by the past few months of patent grants and the the past few years of validity litigation, it’s a very bad example of the sky falling.

  6. yep. The supreme court is hurting the consistency of the system, the inventors attempting to utilize the system, and the overall economy. I still don’t understand why as their explanations have been clear as mud lately.

  7. TSM is what it should go back to. TSM was very good to police examiners. TSM gave a way for the PTO to force the examiners to try and find a TSM in the prior art, which if something is obvious shouldn’t be that hard. Moreover, TSM prevented examiners from allowing claims as there was at least a standard by which supervisors could say well come on this isn’t that hard to find a TSM and you are allowing it. No TSM doesn’t mean easier or harder to get a patent, it means inconsistency. Power to the examiner who has as many reasons to allow as reject.

  8. and to some extent why that technical solution was unexpected.

    Great. Trade the word obvious for the word unexpected.

    That’s even worse than the already horrendous Flash of Genius.

  9. Alun, I am forced to agree with you.  It is the statute that is causing the problem here.   Perhaps when Rich wrote it his intentions were good, but it is one more example of a botch.

  10. I would not have found the claims to be obvious either. Nor would I have found them to be infringed. It took me less than five minutes to decide that, and if I were a judge I would then spend several hours trying to come up with some legal justification, which I suspect is what they do most of the time, and in this case there is so little to work with, most of the jurisprudence having been demolished by KSR v Teleflex.

    Graham v John Deere is about as vague as it gets. I don’t think whether TSM is consistent with it is the right enquiry, though. IMHO the real problem is that TSM isn’t consistent with the statute, which is a pity as it used to give us some certainty, but now there is none.

  11. Dennis, can you please 1) link to the case with these posts, and also note who authored the cases and who was on the panel?

  12. CAFC: “Such a modification is nothing more than a predictable use of prior art elements (universal wheels in contact with the ground in front of the twister member) to address a known problem (stability), and would thus have been obvious.”

    Although derived from KSR, this passage reminds me of the “function-way-result” of Graver Tank (DOE).

    So, can that which is obvious under KSR be considered prima facie equivalent under Graver Tank?

    The two tests might be close enough.

  13. Under KSR, nothing is patentable.

    Right. But more patents are being granted than ever before, because the PTO is ignoring KSR. By name. In every other office action.

    At least the courts aren’t ignoring KSR, right? I mean, it was their idea. So I guess no patent in the last five years has been held non-obvious in a judgment on the merits. Unless for some reason the defendant forgot to mention KSR in its brief.

    If you think KSR is bad, wait till you read Prometheus. That case makes everything ineligible to even be found obvious. Or so I hear.

  14. Really were looking at some 40 different inventing retartive incentive destroying provisions and lack of provisions in the new and old legislation. Congress really butchered it badley compared to what it could have been if ide been on comittee. Your vision of the percise defination of the problem to be solved is a bit off the reality is they dont have the original idea or they have a major subinvention missing that can only be solved by me. There largely not willing to partnership with independant inventors only steal from them so in the last eight years the top 200 marketable inventions have gone unconcieved

  15. “However, a few people trying to invent a new thing in parallel does not establish predictability to a person in the broader art who is not inventive. ”

    Are you lowering the bar on ordinary skill in order to make things patentable under KSR?

    I guess that’s as close to getting you to agree with me as I’ll ever get.

    Under KSR, nothing is patentable.

  16. The art most certainly did exist. Their competitors were up in arms over their patents.

    I’ll grant you that it can be difficult to assess what counts as “ordinary skill in the art” when everybody practicing in the art works in R&D and is employed on the basis of inventive skill.

    However, a few people trying to invent a new thing in parallel does not establish predictability to a person in the broader art who is not inventive. If it did, we wouldn’t need interferences. Which I guess we don’t need anymore anyway.

  17. amen.

    often times, I see that the real issue keeping things from market isn’t technological capability, but the recognition and precise definition of the problem to be solved.

  18. Ill have to disagree Ianie the worlds first airplane was the bi-plane invented by my grandfather 2 years previous to the wright brothers inferior machine. The Wright brothers who lived only blocks from my grandfathers house wanted the r+d money from the government and a patent battle insued with the issue to the wrong person as usual

  19. You just said the same thing… why are you laughing?

    I said a very different thing.

    If you want to know why I’m laughing, get a job prosecuting US patent applications. Any time in the past 5 years will do.

  20. No it does takes extrodinaty skill to invent anything significant. The original usages for teflon and post it were mine. Creating the c hemical composition is able to be done by anyone with the skill and training therefor potentially obviousness. It does take noticeing and appriciation and financial incentive for both to occur though and obviousness decisions are one of the most innovation retartive concepts in the patent system today they allow one persons ptoduct to be stolen by another person

  21. I agree that out of a sense of self preservation the PTO has been ignoring KSR for the most part.

    Nevertheless, KSR says everything is patentable.

    Wilbur and Orville were of ordinary skill in the art. The art most certainly did exist. Their competitors were up in arms over their patents.

    Have a skim through the wiki:

    link to en.wikipedia.org

  22. Wilbur and Orville weren’t “of ordinary skill in the art”. They were inventive and creative. Their “art” didn’t even exist yet, and their achievement certainly wasn’t predictable. Plenty of people of ordinary skill thought what they were trying to do was impossible.

    There’s a difference between being methodical/rigorous/painstaking and being uninventive.

    KSR doesn’t make everything invalid. Even the PTO doesn’t think KSR makes everything invalid, judging by the mail they send me. All KSR does is remind us that sometimes even uncreative people think outside their art and use common sense, which is a remarkably trivial thing for a Supreme Court case to stand for.

  23. Bad Joke, I think that is somewhat what Dennis said as well.  The standard set forth in section 1023is not a legal standard because obviousness is the kind of thing personal to the observer.  If we wanted a legal standard that was certain, we would not have chosen to use that word.

    By any measure, I think the European standard is better when their standard of invention requires that the specification must set forth a technical problem in the art, the technical solution to the problem, and to some extent why that technical solution was unexpected.  If that explanation is not forthcoming from the specification, there is no basis for arguing lack of invention over the prior art.

    Using obviousness as a standard invites hindsight.  The TSM standard adopted by the Federal Circuit may not have been consistent with Supreme Court precedent, but it did have the beauty of all but eliminating hindsight.

  24. So, if you have only ordinary skill, you can’t methodically solve a problem and patent the solution, as Wilbur and Orville did, because then the results were predictable by one of ordinary skill in the art.

    As I said, under KSR, the Wright Flyer was obvious and their patent was invalid.

  25. Must you have extraordinary skill to invent something?

    No, you could do it by accident. Plenty of great inventions were invented by accident. Teflon and Post-It glue are well-known examples.

    It doesn’t take extraordinary skill in the art to notice and appreciate an invention once it’s made, which is good because guess who the patent spec is addressed to.

  26. Really? Where?

    Were the bike shop owners people of extraordinary skill in the art?

    Must you have extraordinary skill to invent something?

  27. The inventor predicted the results, else he or she wouldn’t have assembled the components thus. Ergo, the results were predictable.

    Let me know when the Supremes decide that the standard for obviousness is what an inventive person could have made or predicted. KSR goes very clearly in the opposite direction.

  28. upending all of our standards in favor of gut feeling and hindsight is not going to be good for the system as a whole or the economy in general.

  29. The problem is that under KSR, everything is obvious.

    Everything is made from known components. The inventor predicted the results, else he or she wouldn’t have assembled the components thus. Ergo, the results were predictable.

    Wilbur and Orville predicted the results. Under KSR the Wright flyer is obvious and unpatentable.

    The problem is the Supremes can spout any nonsense they want and we are stuck with it for ever.

  30. I look forward to the invention of a new type of scintilla-tion counter that will measure obviousness, objectively, to an accuracy of one scintillum.

  31. “Substantial evidence is something less than the weight of the evidence but more than a mere scintilla of evidence. Id. at 1312 (citing Consol. Edison Co. v. NLRB, 305 U.S. 197, 229-30, 59 S.Ct. 206, 83 L.Ed. 126 (1938)).” In re Kahn

    So, more than a scintilla, not a mere scintilla.

  32. USPTO Board factual findings are reviewed for substantial evidence. This is a low standard that results in an affirmance so long as a scintilla of evidence support’s [sic] the Board’s conclusions.

    So ‘substantial evidence’ means ‘scintilla of evidence’? That can’t be the case, can it? Isn’t the standard more like “such relevant evidence as a reasonable mind might accept as adequate to support a conclusion?”

  33. Gut reaction just looking at the references and the figures illustrating the claim invention, I would not have been lead to modify the Handong reference to incorporate a Song body mounted safety wheel directly on the twisting drive member.

    This is hindsight reasoning at it foremost. That would be the last location I would place the Song safety wheel. Using words like “minor differences” to substitute for “a good reason” is what this case stands for.

  34. Another way to look at the case is that the court rejected the Board’s factual conclusion that the differences between the claimed invention and the prior art were major.

    Thus, you are confused.

    The differences are not what was rejected. As factual matters, the differences are what they are.

    The significance of the differences is a legal conclusion (matter of “enough”).

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