Zumbiel v. Kappos

By Jason Rantanen

The C.W. Zumbiel Company, Inc. v. Kappos (Fed. Cir. 2012) Download 11-1332
Panel: Prost (dissenting-in-part), Moore, Wallach (author)

Prior to KSR v. Teleflex, the Federal Circuit granted significant deference to the PTO on obviousness determinations; following KSR, that deference has only increased.  Zumbiel v. Kappos represents possibly one of the more extreme examples of that deference.  This appeal is unusual, however, in that it involves substantial deference to the BPAI/PTAB's finding that a claim is nonobvious, deference that is (in the dissent's view) contrary to other aspects of the Court's holding in KSR

639 patent

Graphic Packaging International is the assignee of Patent No. 6,715,639, which is directed to a carton or box that holds containers such as cans and bottles.  Zumbiel filed for an inter partes reexamination of the '639 patent, arguing that the claims were obvious in light of various prior art references.  The BPAI (now the PTAB) determined that some of the claims were obvious (including claim 1) and some were nonobvious (including claim 2).  Both parties appealed the adverse determinations.

Representative Claim 1:

1. An enclosed carton for carrying a plurality of containers in two rows, with a top row and a bottom row, said containers each having a diameter, the carton comprising:

a. a top panel, side panels, a bottom panel, and closed ends, at least one of which is an exiting end;
b. a dispenser which is detachable from the carton to form an opening at an exiting end through which the containers may be removed;
c. the dispenser being a unitary structure comprising a portion of the top panel, portions of the side panels, and a portion of the exiting end, said portions being defined by a tear line extending across the top panel, side panels, and exiting end;
d. means for preventing the end container in the bottom row from accidentally rolling out of the carton after the dispenser has been opened, the height of the means above the bottom panel being less than the diameter of said end container; and
e. a finger flap located along the portion of the tear line extending across the top panel for pulling the dispenser open along the tear line,
f. whereby when the dispenser is opened it may optionally remain attached to the carton
at the exiting end to form a basket at the exiting end of the carton.

Representative Dependent Claim 2:

2. The carton of claim 1, in which the finger flap is located between the first and second containers in the top row.

Prior Art Reference 1 (Ellis):

Ellis 242

Prior Art Reference 2 (German '718) (note that there were two additional prior art references):

German 718The Federal Circuit began by affirming the PTAB's determination that representative claims 1 and 13 were obvious.  Among other issues, the court employed a "predictable variations" approach to conclude that a claimed limitation would be met.  German argued that the prior art did not teach the claimed location of the finger flap; the court, however, agreed with the Board that "providing the finger opening on the top wall of the carton would be a predictable variation that enhances user convenience…and is within the skill of a person of ordinary skill in the art."  Slip Op. at 15. 

The court next turned to Zumbiel's appeal of the PTAB determination that representative claim 2 was nonobvious.  The sole additional limitation added by claim 2 is that "the finger flap is located between the first and second containers in the top row."   Thus, "the dispute lies in whether the location of the finger flap between the first and second cans is obvious in light of the prior art."  Slip Op. at 20.  Applying a substantial evidence standard, the majority affirmed the Board's determination that (1) a third prior art reference did not provide the necessary teaching for moving the tear line and (2) "there was little incentive to relocate Ellis's finger flap to a position between cans in order to provide space for the fingers."  Slip Op. at 22.  Based on these findings, the majority held that claim 2 was nonobvious.

Judge Prost's Dissent: In a plain language dissent, Judge Prost strongly disagreed with the majority's determination of nonobvious:

"Failing to apply KSR to the facts of this case, the Board has concluded that the invention recited in claim 2 is non-obvious. Because I believe that a common sense application of the obviousness doctrine should filter out low quality patents such as this one, I cannot join the majority in endorsing the Board’s incorrect approach on this question. Thus, with respect, I dissent."

[L]et’s be clear what claim 2 is about. The claimed invention takes the opening from Ellis, takes the stacked can configuration from another box, and puts them together. The result is—as one would expect—a box that has the known benefits of Ellis’s opening and the known benefits of a stacked can configuration.

Why is this assembly non-obvious? Because, the Board explains, the patentee has solved a difficult implementation problem, the solution to which was supposedly not obvious to box makers who lacked extraordinary skill. The secret lies in the proper positioning of the tear line. That is, according to the Board, ordinary box makers would not have put the tear line between the first two cans in the top row.

Where else could have they put it? There are just four other options: (1) above the first can, (2) above the second can, (3) in front of the first can, (4) behind the second can. The first two alternatives are just offensive to common sense: With the cans right below, there would be no room to push the flap through (the flap is positioned at the center of the tear line). The third and fourth options are not quite as illogical, but even without expertise in box making, one may intuit that they make awkward designs (the third opens too little, the fourth too much).

More importantly, however, whether some of the alternatives would work just as well or not, the patentee’s choice of tear-line-placement involves no more than the exercise of common sense in selecting one out of a finite—indeed very small—number of options. And there are no unexpected results[.]

The point here is not that the Board got the facts wrong. The point is that contrary to the Supreme Court’s instructions, an “overemphasis on the importance of [teachings of prior art]” has insulated the Board’s analysis from pragmatic and common sense considerations that are so essential to the obviousness inquiry. KSR, 550 U.S. at 419. The Board’s approach relegates one of ordinary skill to an automaton. Should this approach become commonplace, it would lower the obviousness bar and
hence hinder competition and innovation. That is why, unlike the majority, I do not see any room for deference to the Board’s determination in this case.

 

 

 

181 thoughts on “Zumbiel v. Kappos

  1. Negative consequences for the applicant have to be balanced against negative consequences for the competitors of the applicant.

    IF these balancing factors are actually required by law.

  2. Please elaborate a bit.

    What . does . “sole . novelty” . mean?

    Where . do . I . find . that . in . 35 . USC?

    These are simple and straight forward questions needing no elaboration. You are using a term of “sole novelty.” Where is the legal basis for this term, and what exactly does it mean?

    I suspect that you are trying to smuggle in a “point of novelty” “policy” view without proper legal foundation, but did not want to accuse you of that because you may have meant something else.

  3. Negative consequences for the applicant have to be balanced against negative consequences for the competitors of the applicant. Les, half my time is spent getting prosecution amendments in, and the other half dealing with the consequences of my client’s competitor having improved its position illegitimately by smuggling in, during prosecution, an amendment which should not have been permitted.

    Absent the EPO’s strict line on “added subject matter” I cannot deliver to my client meaningful clearance opinions on what his competitor has pending in Europe. Strong clearance opinions promote the progress just as much as soft treatment of applicants.

  4. Even more important Les, is whether or not verbatim-ism is supported by the law.

    Convenience to the state, if not actually in the law, is no substitute for the law.

  5. Ned,

    How is my question a sign of “deliberate refusal to listen?”

    In fact, between you and I, it is most definitely you that exhibts this “refusal to listen” – based on your abdication of discussion threads that turn to areas where your third party induced interests do not want to go.

    Very intellectually dishonest of you to accuse me of that which you do.

    Now then, do you actually care to answer my question, or would you rather kick up dust and hide in the cloud of accusation?

  6. 1. I think there are more examiners examining in a second language in the USPTO than there are at the EPO.

    2. That was my point, the verbatim-ism is understandable where patents have to be translated and enforced in several languages. However, it does have some negative consequences for applicants.

  7. from over 30 years of experience of them

    For MaxDrei, that’s actually 6 months of experience repeated over 60 times.

  8. It’s funny that what you consider a silly challenge (and due fully to you reading too much into the post based on the moniker [the Leopold disease]) results in one of the best posts that I have ever seen you write, with you fully owning up to critical differences in the US/ROW states of patent law (something that you alarmingly gloss over in your typical proselytizing mode).

    Silly? Not at all – highly successful for obtaining a critical admission from you.

    Now let’s see if you can grasp the lesson at your fingertips and actually have a mind, willing to learn (the history of dead horses and penchant for all things EP indicate otherwise, but Hope springs eternal).

  9. You are right anon, it is not a snark question. that’s not because it is not a snark but because it isn’t a question. I see it instead as yet another sad attempt to provoke a response, any response, for then there’s work to do, again.

    But, in case other readers are interested, I will say that I have indeed been trying to write perfect patent claims since the early 1970’s. Not quite there yet, but I’m still working on it.

    Claims for the world outwith the USA, that is. I simply don’t understand how to write the perfect claim for the USA. The law there keeps changing.

    The USA is indeed an exceptional jurisdiction, with special law unique to that jurisdiction. Claim drafting is one of the highest forms of the patent attorney’s skill. Therefore, I leave to others, learned specialists with long experience of the US jurisdiction who are able to express themselves accurately and concisely in the English language, the challenge of writing good claims for the USA.

    I might add that great results can emerge from a 3-cornered discussion, sometimes on the phone, between in house at the US corporate client, outside US counsel and outside EPO counsel (me). Because it so seldom happens that the claim optimal for the EPO is also optimal for the US courts (and vice versa) the discussion about what works in each jurisdiction, and what doesn’t, frequently raises the quality of the claims in both jurisdictions.

    What I also know, from over 30 years of experience of them, is that such discussions only work when there is mutual respect between US and EPO counsel and when both enjoy the solid confidence of the common client.

    Readers, I apologise for indulging myself, replying to the silly challenge to my competence. But I am encouraged by the thought that there have been many dialogues between anon and me which end when he chooses not to reply.

    anon, I suggest you turn now to the M+F thread. There you will find a more promising opportunity to comment.

  10. Drafting in First to File country is on an “onion layer” notion, with many dependent claims of progrssively narrower scope, each delivering a better technical performance than the wider claim, till you get to your Best Mode.

    You don’t draft claims for a living, do you MaxDrei? (Not a snark question)

  11. The silence for this point has been around almost as long as his [oldstep]+[newthought] chicanery.

    The obvious reason he does not address it is because it shines a critical weakness on his pet theory.

  12. demonstrate how a step of thinking about something new can be sufficiently “integrated” with an old (but otherwise patent eligible) process such that a patent-eligible claim results. If you can identify such a claim, …Alternatively, you could simply acknowledge that it’s not possible to draft such a claim”

    Then what is the point of posting this abstract hypothetical muck that has no application to actual patent law?

    Why not focus on a real set of claims, you know to an actual case in view of Prometheus? ( your favorite case)

    Why do you run away from the challenge I gave you for performing “integration” on Ultramercials claims according to the USPTO Guidance on integration?

  13. Nor am I. The “verbatimism” is because the examiners at the EPO are examining in a language (English) which, for them, is not their first language. No other Patent Office is in that predicament.

    But as the EPO grants patents in English which are then litigated in EPC Member States (such as Germany) where the language of the court is also not English, it is no bad thing that applicants, during prosecution at the EPO, rehearse making themselves clear to people who are not English native speakers. What then gets issued is more likely to be meaningful to the judges.

  14. anon, the way I viewed this case, and if the facts are different, explain, is that carton openings were known and the location of the tear line, or perforation, between to top two cans was the sole novelty.

    As you pointed out, once the patented carton was introduced in the market, everyone adopted the new version. This seems to be the strongest evidence of non obviousness available.

    However, if there was no such evidence, I think the location of the tear line was someone of an arbitrary choice given that it could be located at any location that would allow the cans to be withdrawn from the carton. Why one position and not another? To support a patent, the applicant or the patentee should have evidence of an unexpected result.

    To me, this case is close. The law suggests that the secondary considerations decide the outcome. But if not for that, I think the claims obvious.

  15. “I suspect you drink too much.”

    When you have been defeated, and humiliated on this blog as much as MM, and this blog is your only validation of self esteem and intellect, well you might drink too. Let’s hope the assault weapons ban gets passed before the booze runs out.

  16. “Still waiting for your recognition that mental steps are perfectly valid parts of patent eligible claims.”

    Well MM?

    Are they?

    :: Silence::

    ” Silence is the thunder of cowards”

  17. “Yes, your fondness (for the wrong reasons) is by now legendary as you indeed were the first to post the link to the government’s implementation response to that decision, even if you did not bother reading what that link had to say (and the fact that that link reinforced what you opponent 101 Integration Expert had to say and completely ignored your bogus pet theory [oldstep]+[newthought] crrp was not lost on anyone (except you) as you danced continuously in your own special self-defeat way.”

    LOL! I had no idea this was still going on and in this thread. Meanwhile in the Carnegie thread MM has run away once again from the challenge to apply the USPTO Official Guidance, on Integration Analysis to Ultramercials, or ANY claims. Even though the use of “integration” is from Prometheus, his favorite case..lol What a joke!

  18. Les I do agree, that verbatim word for word support is too strict. as to the rest, until I can see your EPO file history it is hard to comment further. the reality is though, in First to File country, prosecution amendments that go beyond folding a dependent claim into a claim higher up can be problematic. Drafting in First to File country is on an “onion layer” notion, with many dependent claims of progrssively narrower scope, each delivering a better technical performance than the wider claim, till you get to your Best Mode.

  19. In the present case, there is not 5″ slip on vs. 6″ issue. The inventors created the market by making the invention and showing its advantages and C.W. Zumbie saw its success and wants to jump on board. The patent is necessary to protect the investment in the development. If anyone were free to copy any good idea, then no one would invest in improvements and new ideas, because someone else could undercut the price they need to recoup the investment. Its as true for soda cartons as it is for Lipitor.

    I’ve showed why it wasn’t obvious…. its the other side that’s entire argument is eye rolling and belittling.

  20. Why don’t YOU look that up. I think you are confusing tests for obviousness (of which you are latching on to one) with the definition of obviousness, which is the ordinary meaning.

  21. Les, perhaps it helps if you pause and think for a moment who carries the burden of proof. Imagine that the claim under scrutiny is a human being and if the Plaintiff succeeds, then that human is put to death. To get a death sentence, you need more than the mere fact that industry is doing something today that it wasn’t already doing before the claim was born. There are a thousand plausible reasons other than legal obviousness why industry makes one product today that it wasn’t making before. Perhaps a 5″ slip-on cover or a 6″ cover for a mobile phone, when, before, the covers were all smaller. There’s a reason now, isn’t there, which was not there before. it is simply that there’s a market now for such covers which wasn’t there before.

    As you know, if you want to invalidate a duly issued claim as obvious you need evidence of obviousness that is clear and convincing. Just arguing “Well it stands to reason, doesn’t it” won’t cut the mustard.

    Legal certainty Les. It matters.

  22. We seem to have veered off topic, and it probably my fault. Actually, my suspicion is that the Examiner was being intentionally obtuse. Part of the problem was the spec was written at a very high level and did not walk one of less than ordinary skill in a fairly technical art gently through an explanation of the invention. As we tried to fill in the gaps, the EPO’s penchant for literal word for word support, which is fully understandable in a world where you are dealing with translation issues over several languages, got in the way. If you want to call that applicants fault go ahead. The same application was allowed in several other jurisdictions.

    I maintain it is unreasonable to require clairvoyance and a listing of all elements not included in an invention.

  23. ob·vi·ous
    /ˈäbvēəs/
    Adjective

    Easily perceived or understood; clear, self-evident, or apparent.
    Predictable and lacking in subtlety.

    Synonyms
    evident – manifest – apparent – plain – clear – patent

    If it was clear, self-evident or apparent, then why did I have to disclose it before you were at all interested in doing it?

  24. Every time I read “the Examiner did not understand” I get sceptical

    You should spend more time reading US office actions then.

    You don’t answer my question Les

    LOL – maybe he got bored with you (or insert one of your excuses).

  25. It’s seems that a judge actively balancing desires is doing the wrong job. He should be applying the law.

    Lady Justice wears blindfolds for a reason.

  26. Sorry MaxDrei, Hal’s emails do not have a link.

    Feel free to search for him on the web and write to him to be put on his email distribution.

  27. Every time I read “the Examiner did not understand” I get sceptical. At the EPO, Examiners examine only in areas of technology that they do understand.

    More likely, I suspect, is the lack of a competent interpreter/representative/attorney getting paid for mediating between two worlds, that of Les and that of the EPO Examiner.

    You don’t answer my question Les. In that all-important role, what professional qualifications and experience were at work in your case. Look, I am not trained to represent clients before the USPTO. Neither are US attorneys trained or qualified to represent clients before the EPO. What counts, before each Patent Office, is an accurate appreciation how the Examiner is fitting the facts to the governing law and practice. The cry “the Examiner at the EPO did not understand” is for me the give-away sign that the applicant’s attorney did not understand how things work at the EPO.

    If I’m wrong, tell me so!

  28. That is clear evidence that you did not think to do what I showed you to do. That is clear evidence that it was not obvious to do.

    It would be clear evidence, if I were a person of ordinary skill in the art. But a market competitor is not a person of ordinary skill in the art, as you demonstrated at 9:32 AM this morning in this very thread. You noted that you(r client?) was not aware of a piece of published prior art, which was undoubtedly within the knowledge of a person of ordinary skill.

    Go look up the definition of obviousness, and then we can discuss this matter further.

  29. No, the argument is my patent is not of obvious subject matter. Now that I’ve shown you what do do, you want to copying it. But before I showed you what to do, you didn’t do what I have shown you. That is clear evidence that you did not think to do what I showed you to do. That is clear evidence that it was not obvious to do.

    That cancels out all your hand waving and eye rolling and assertions that is just moving a dotted line a half inch. If that’s all it is, then why didn’t you think or bother to do it earlier?

  30. as you are continually making a fool out of yourself.

    Yet another troll post in the lines of “accuse others of what MM does.”

    Y A W N

  31. per MM the motivation to file is enough to deny any filing.

    That’s not what I said. Read carefully, anon. I know it’s extremely difficult for someone who is a non-native speaker. But you need to try harder as you are continually making a fool out of yourself.

    The statement I was responding to was Les’ statement that there was “nothing to motivate the move.” That’s false. If a manufacture wants to manufacture a product and secure a patent on that product, the manufacture will be motivated to create a product that differs from the prior art. If the prior art is very crowded and/or there are only a finite number of substantial variations available in the prior art, then the novel product will invariably be similar to the prior art. But it won’t be identical. It won’t be identical because the business goal of the manufacturer is not compatible with copying the prior art product exactly. That business goal motivates a change in the design.

  32. As you know, I’m rather fond of that decision.

    Yes, your fondness (for the wrong reasons) is by now legendary as you indeed were the first to post the link to the government’s implementation response to that decision, even if you did not bother reading what that link had to say (and the fact that that link reinforced what you opponent 101 Integration Expert had to say and completely ignored your bogus pet theory [oldstep]+[newthought] crrp was not lost on anyone (except you) as you danced continuously in your own special self-defeat way.

    That laughter you hear is not laughter with you.

  33. the reverse is also true – to rephrase as you have done is to define everything as obvious

    Anon will never be explain the “logic” here so let’s just call it another chapter in the “Book of Because Anon Said So.”

  34. The mere fact of the re-exam and appeal are all that is needed.

    “If my patent was really invalid, you wouldn’t be trying to invalidate it.”

    Uh huh. Let me know how far that gets you before the Federal Circuit.

  35. I’ve never tried either. Gathering the data is prohibitive. However, the circumstances here require no data gathering. The mere fact of the re-exam and appeal are all that is needed.

  36. So the carton is a tad shorter OK. But the consequence of that is that it is higher (2 x full diameter). Which arrangement requires the most space Les? Which arrangement wastes the most space? Is there a big “difference”?

    What I see in applicants from the USA is the attitude “Hey. Come on. I have paid a heap of money to get to exam on the merits. You are surely not going to tell me now that I get NOTHING for all my investment. What sort of a system is that?”

    What I get from clients observing what issues from the USPTO is “THAT not obvious. They cannot be serious”.

    ….and some people (judges) have to balance those two.

  37. “Les what you are describing is a situation where it ought to have been possible for you to have established patentability under the EPC, without adding matter. ”

    I agree, but the examiner did not understand the invention and didn’t understand how the claim language distinguished over the cited art, so we added the language about not including X, as we thought it easier to understand and could be included at no scope penalty to us.

  38. Perhaps I should have said it allows for such a solution. By finding finger room between the first two cans, the claimed carton allows the cans to be stacked one on top of the other, center over center, as opposed to the top layer being nestled in the valley between the cans. The claimed carton allows for a shorter carton lengthwise, which might allow it to fit into more refrigerators.

  39. Les what you are describing is a situation where it ought to have been possible for you to have established patentability under the EPC, without adding matter.

    You say “I”. I wonder who was prosecuting your case at the EPO. To qualify as a European patent attorney you must pass a tough examination of your real life ability to draft, file, prosecute and run oppositions at the EPO. The pass rate is poor, even though the persons sitting the exam have science or engineering degrees, languages (at least three), and at least three years of supervised certified on the job training.

    I wonder, in your case, was it you pro se, was it a US patent attorney (in Ch I PCT) or was it a European Patent Attorney qualified by examination to prosecute at the EPO?

  40. “You are surely not advancing the case that the less you know of the art, the wider the claims you should be allowed?”

    No. But I am advancing the case that if I disclose three embodiments that do not include X I should not have to explicitly point out that they do not include X in order to later help the examiner see that my claim is distinguished from the prior art, even if the examiner does not understand the disclosed math, because the prior art needs X and the claimed invention does not need X to function and accordingly does not include X.

    The system should not play a game of “gottcha” with inventors and patent drafters. If I must list every component not included in my invention, then you can’t whine about the length of my application and charge me extra for submitting a long application.

  41. You’ve lost me there Les. Sorry. Do you mean that, until Spivey came along, cans were slopping around in over-sized packages, and no engineer could think how that problem might possibly be solved?

  42. It DOES solve THE wasted space problem of the prior art, which made the package, in some instances, TOO long. A trade off in the solution may be tolerable extra height. With this innovation, the consumer can select the product in the carton best suited to their situation. Coke and Pepsi are free to over their beverages in both the tall boy and long boy styles.

  43. Thanks Les. I do agree that patent practitioners in the USA find the EPO’s thinking bizarre. Would it surprise you if I told you that interested circles in Europe find US caselaw bizarre? One way to help mutual understanding is to talk about it.

    You say of your EPO experience that you were unaware of the prior art. But the EPO examines patentability objectively, through the touchstone of the notional PHOSITA, who knows ALL the art but is devoid of any inventive faculty. You are surely not advancing the case that the less you know of the art, the wider the claims you should be allowed?

    As a patent attorney, what I see amongst corporate applicants, almost every day, is ambition to amend their pending claims to cover a device from a competitor which they have newly seen. Rival applicants try to amend their patent application to dominate that of their competitors. This is one reason why, in any First to File jurisdiction, the granting authority has to be super-careful not to allow prosecution amendments that invert the filing date heirarchy established by respective original filing dates. Your wished-for EPO amendment is tantamount to a fresh statement announcing in your application “Folks, listen up. Here’s my invention. What you gotta do to enhance performance is to omit component X”. Now that particular invention you certainly did NOT announce in your EPO app as filed but if you could smuggle it in you could then argue non-obviousness on the basis that there is nothing harder to do than to simplify existing technology.

    As for Spivey ‘639, under consideration here, my understanding is that he did not invent the “basket” feature. I assume Prost is saying that using a finger to tear the tear line is old and that to use that finger you need a void behind the perforated card. So, putting a finger-operated tear line between C1 and C2 is obvious when your aim is to provide that prior art basket.

    Anyway,even with claim 2, I still don’t know exactly where to put the tear line. It depends whether the two rows of cans in the as yet unopened case are staggered (hexagonal close packing) or not staggered (cubic close packing). Once you open the case and lay it down on its long face, of course, the upper row of n-1 cans lie in the valleys between the n cans of the lower row, but that’s irrelevant to the location of the tear line in the as yet unopened case.

  44. Have you had much luck traversing obviousness rejections using secondary considerations, Les? I’m not sure that I’ve ever even tried.

  45. I’m talking about the definition of obviousness allegations of which can be overcome by analysis of “secondary considerations” such as no prior use followed by copying after disclosure. Traversal of obviousness rejections on such a basis is dicussed, for example in the U.S. Manual of Patent Examination Procedure section 716.06 Copying [R-9].

  46. I pointed out that if applicants were required to list every component NOT included in their invention, patent applications would be quite long.

    Ah, but imagine if you were entitled to claim the absence of any component not recited in your specification, as a point of novelty/inventiveness.

    We were unaware of the other different device.

    Which is precisely why “large, successful company didn’t think to do it” is no argument against obviousness. The hypothetical person of ordinary skill in the art was very much aware of the other device, even if no actual person working in the industry had heard of it.

    an obvious problem solved by the inventors (of at least claim 2) is that of wasted space and material in the package of the primary cited document

    Except that it obviously doesn’t solve those problems. The wasted space is a function of the HCP packing that the art is apparently so fond of (and is largely saved back by having the two rows closer together than in a rectangular stacking), and the spacer is still needed to make sure the top row and bottom row each have the correct alignment. Unless you want to make the box open on both sides, but that’s clearly not the claimed invention.

  47. Hi Max. I’m we’ll aware of the sometime bizarre logic applied by the EPO. For example, the EPO once cited a document against me showing a device that because of it’s different design, required an additional component than disclose in any drawing or discussion in the specification in the application I was involved in. Accordingly, I amended the claim to explicitly recite the exclusion of the additional component to emphasize the difference in the rest of the claimed combination. The EPO asserted that such a claim extended beyond the original specification, even though we showed 3 embodiments without the additional component. The EPO said we were required to specifically state that the component was excluded in the original specification.

    I pointed out that if applicants were required to list every component NOT included in their invention, patent applications would be quite long. We disclosed and claimed what the invention was. We were unaware of the other different device. How could we be expected to know to make such a statement?

    Anyway, I digress. You say are no cans in the claim. I was using “cans” as a short hand for the recited “containers”

    2. The carton of claim 1, in which the finger flap is located between the first and second containers in the top row.

    I understand that the containers are not part of claimed package. Nevertheless, the package is described in terms of the containers its designed to package. One of ordinary skill in the art would understand what is being claimed, unless one was being intentionally obtuse.

    I haven’t read the spec. However, an obvious problem solved by the inventors (of at least claim 2) is that of wasted space and material in the package of the primary cited document in order to proved room for a finger to press into the box. Their solution was to move the top can forward and place the finger tab between the cans instead of in front of the first can.

  48. Well well. What Wegner writes is worth reading. The man takes a keen interest in cases over here. Can you possibly provide a Link?

    It is true that “unassailable” is a risky thing to aver. Margaret Thatcher once said it of her favourite Chancellor of the Exchequer. Within weeks he was gone.

  49. Asked and answered Leopold.

    Have you nothing else to do but to try to mischaracterize me? I thought you were too busy to address the points I raise. Surely you have better things to do than to post such empty nonsense (even if I am handing one of your circle mates head back to them).

  50. Your attempts to explain why a Yes or No does not serve a satisfactory answer assumes far too much, and simply does not address the question I asked of you.

    Instead of the smarminess that you have exhibited, all you would have had to do to avoid what you consider “bitter barking dog biting your hand” (LOL on that as I was the one polite until you bit my hand) was to simply state that my question was not a binary yes/no question. explain why and clarify your initial self-contradictory post.

    Of course, my question was a quite simple request for you to correct a self-contradictory statement and that statement needed to be clarified.

    It still does.

    As my followup below at 12:32 PM indicated, anything but a yes/no answer is arbitrary and (possibly) capricious. To play on your analogy, you have been beating your wife. If you don’t like that type of question, don’t beat your wife to begin with.

    As for shame, that would be yours for simply not providing a simple clarification when politely asked.

    And by the way, not answering is a form of dialogue (don’t assume that other readers might be interested in what you write) and speaks more clearly the message that you just don’t know what it is that you peddle. If you did know, then a straight forward answer would have been forthcoming to my straightforward question, avoiding your smarminess and my rapier wit serving up your head back to you.

    As for what Leopold thinks, he has consistently shown his errors and you should put no account into his suppositions.

  51. You asked a question that obliges a Yes or a No for an answer. Ever since then I have been trying to explain to you why a Yes or a No does not serve as a satisfactory answer, you know, like to the question “Have you stopped beating your wife?”.

    I do know what is making this so difficult. It is your offensive and unpleasant hectoring manner, dishing out needle to anybody on this blog who comes to your attention.

    Like some disturbed barking dog behind bars, your relentless obsession is to bite the hand that feeds you, whenever you can engineer an opportunity. Leo thinks you are sad. I’m not sure about that. I think you might be embittered about something. Shame you cannot identify the chip on your shoulder, and then shrug it off.

    Dialogue between you and me proceeds only for as long as I think other readers might be interested in what I write.

  52. “Are you also going to claim that I’ve never expressed an opinion regarding whether mental steps are “allowed” in patent claims?”

    Nice deflection – but that’s not the question at hand.

    It certainly is the question “at hand”. You brought it up. I’m asking NWPA for his opinion because he’s been reading the blog for the past couple years and he knows how to find old archived threads and re-read them to confirm that his gut feelings are correct before he types them up and hits “post”.

    It is perfectly clear (to those willing to see) that you are attempting to eliminate any presence of thought from patentability considerations

    I think you can write more clearly than that, anon. In any case, you should strive to write more clearly. “Eliminate presence of thought from patentability considerations”? That sounds exactly like the new legal doctrine proposed by the government in Prometheus. It’s certainly a helpful step on the road to determining whether a method claim reciting a mental step is patent eligible but it’s not permitted in a 102 or 103 analysis. The Supreme Court didn’t adopt the government’s position.

    Rather than focus on my future “agenda”, you’d be far better served by trying to understand what the Supreme Court did in Prometheus. As you know, I’m rather fond of that decision. If I were you, I’d try to demonstrate how a step of thinking about something new can be sufficiently “integrated” with an old (but otherwise patent eligible) process such that a patent-eligible claim results. If you can identify such a claim, I might indeed “attempt” to “eliminate it”, just for grins.

    Alternatively, you could simply acknowledge that it’s not possible to draft such a claim and that the Supreme Court in Prometheus made it impossible to protect a new thought merely by appending some patent-eligible process step to a step of thinking about that new thought. Put on your big boy pants, anon. It’s about time, isn’t it?

  53. So, do you derive the OTP without recourse to the specification? You demanded a Yes or No answer. So, Yes or No? You tell me.

    It’s your EP jurisprudence MaxDrei. I asked you for an answer.

    An answer is not turning around and asking me that very same question.

    Why are you making this so difficult? If you don’t know the answer, just say so.

  54. It’s the Approach as such that is unassailable by now.

    Right. Gotcha the first time on that part. It’s your contradicting parts that still need some work.

    So what does the unassailable Approach say about how to do that critical part of the approach?

    You aren’t really saying that the choice of one or the other is completely arbitrary are you? These approaches yield very different things. You cannot be “unassailable” if you are operating a legal system “on a whim” can you?

    What kind of system have you been pushing?

  55. Right from the early days of the EPO, so-called “problem inventions” have been acknowledged, where implementation of the solution is trite, once the “solution” has been identified.

    Got it, MD. We’re on the same page, I believe. A solution may be trite, but it’s still a solution. You can’t claim the problem itself, even in the case where you are the first person to perceive of the problem. You still need to claim at least a “trite” solution. That’s what I was getting at in my 6:40 comment.

  56. It’s the Approach as such that is unassailable by now.

    The EPO runs a civil law system, without Binding Precedent. There is enough wiggle room to accommodate the issue above.

    I have explained the two extremes. Individual Decisions are always in between these two extremes. in each case, the deciding Board sincerely believes that it is faithfully following the EPO-PSA Rules, in every case to get to a just result.

  57. What do I mean by “context”? That one can’t understand what any claim means except when one construes it in context with the specification that supports it and breathes into it its life and meaning. Suppose the claim calls for a “slide”. What might that mean? Or take the sentence “Helen rushed to the bank”. What does it mean? Is she rushing to get cash or to save a child drowning in a river?

    You derive the OTP exclusively from the claim and D1. But first you need to know what the claim means.

    So, do you derive the OTP without recourse to the specification? You demanded a Yes or No answer. So, Yes or No? You tell me.

  58. FINALLY – now was that so hard?

    What does the unassailable case law say?

    Surely, a system you preach with such vigor must have this very basic understanding already figured out, right? Please, tell me that it is so, and tell me, what is the black letter EP law?

  59. As far as anon is concerned, earlier posts hopelessly unclear? Yes, that I do see clearly.

    You missed a critical word MaxDrei – “yours”

    And back to the point at hand: what do you mean by “in context?” Are you saying that the problem statement is derived from the claims in context of the (applicant’s) specification? That the problem statement is derived not just from the applicant’s claims themselves? You have yet to answer the simplest of questions here and instead seem to want to swagger when you have zero justification for doing so.

    The more proper response from you would be a polite acceptance of my gentle nudging you to actually make sense (with your very own special EP jurisprudence no less), rather than attempting to be a smart-@_$$ and badly missing the smart.

    That’s not the kind of swagger that you want, now is if?

    You do realize a simple and straightforward correction from you at the onset would have avoided all this embarrassment of yours, right? But it appears you, like others simply cannot look at the content of a post and go from there but rather get all hung up on who the poster is.

    How sad – especially when you try so hard and miss so badly.

  60. Good question. Answer: Opinions differ.

    I (and many EPO Boards) say that D1 is legitimate only when it is a realistic starting point to solve the subjective problem announced by Applicant in the specification of the application as filed, in the specific technical field set there by Applicant.

    But others say you are free to choose any D1 that just happens to have the most features in common with the claim, regardless which field it’s in and which problem it addresses.

  61. Two very different things? No, I don’t see that. To understand what words mean, they have to be read in context. Nobody disputes that, do they?

    As far as anon is concerned, earlier posts hopelessly unclear? Yes, that I do see clearly.

  62. …And don’t you get to that starting point prior art document D1 through the applicant’s entire application and not just through the claims?

    (this too is not a dig – a serious question that is absent from your answer)

  63. and think you can explain your comprehension problem in a way even I can understand.

    You see MaxDrei, that’s the kind of B$ smarmy posting that really sets me off. I was trying to be nice, with no digs and understand you when you posted in a lazy and self-contradicting manner. I was patient and explained what should have been obvious to you right from the start, and you have to go and be an @_$$ about it.

    Nice deflection – you might note that the “problem” was on your end – your contradictory statements just did not make sense on their own accord – and it was only through my patient cajoling of you that elicited a post that wasn’t self-contradicting (albeit, still not clear).

    So, there is no need for me to “come back and have me explain” – it was you that needed to clarify.

    Now, if we can return to being civil without your failing attempt at “swagger,” let’s look at your point 2. From what you post here, the problem is not defined by the applicant’s spec at all, but rather, the applicant’s claims – and claims alone – are taken and then the prior art is referenced to build the problem statement. Or is it that you mean that the applicant’s claims and specification (reading the claims in light of the specification and what it discloses) are both used with the prior art to determine the problem statement.

    You, of course, realize that these are two very different things, right?

    You, of course, realize that your earlier posts were hopelessly unclear about this, right?

  64. OK anon. Now we are in business.

    1. The “problem” of which I speak is the “objective technical problem” (the OTP) that is the fundamental of EPO-PSA obviousness.

    2. You derive it by comparing the technical features of your CLAIM (my first Zumbiel point) with the disclosure of prior art starting doc D1.

    3. So you don’t fix (or shall we say “establish”) the OTP until AFTER you have seen the EPO search report and opinion on patentability (EESr) and have amended your independent claim to give it novelty over D1.

    4. BUT: in FtF country, you can’t invent the OTP on the day you amend your claim to get novelty over D1.

    5. Rather, in arguing non-obviousness, you are limited to (and here’s my second Z point) those problems that your written description (your “specification” if you will) on your filing date reveals as having been perceived by you already on the day you filed your application.

    It’s tricky because it’s FtF thinking. I understand your distress. But do come back when you want more and think you can explain your comprehension problem in a way even I can understand.

  65. From my initial question to you at 8:47:

    You state “There are no cans in the claim so you can’t use can location to define the ‘problem’.” This statement indicates that you have to define the problem using just the claim.

    Yet you repeatedly state things like “hat problem has to be derivable from the application as filed.” (also in my question to you at 8:47). This statement indicates that the application and not just the claim can be used to define the problem.

    These are contradictory indications.

    That’s why I asked for some clarity from you.

    Thanks.

  66. I have been very clear in my questions to you MaxDrei, showing that you have not been clear in pointing out where the question needs to be defined (your last post, referencing the White Book is fine for what is says, but is says nothing about your posts here).

    You flit back and forth between the claims and the specification.

    Without having me read the White Book, can you plainly tell me where the problem needs to be defined?

    Is the problem to be defined in the specification, or in the claims? Your posts here (your words) lead me to believe that you can define the problem in the disclosure and not necessarily in the claims. And yet your posts seem to contradict this and indicate that you need to define the problem solely in the claims.

    All I am looking for from you is a clear statement of where the problem is to be defined. That’s the only step right now that I am asking from you.

    Please don’t refer me anywhere. Please just give me a straight forward, simple answer.

  67. Well yes anon but you say it is my “other posts” that are confusing you and i don’t know what it is in those other posts that is tripping you up.

  68. Afterthought for you, MM. Functional claiming. When I claim “Means to solve (problem x)” I am claiming the solution not the problem. Whether that claim is novel and not obvious, clear and enabled, then falls to be determined. Nearly always, in Europe, it will fail on at least one of these. But every once in a blue moon, one such gets through. After issue, in Europe, its validity hangs on the preponderance of evidence. Different from the USA.

  69. Perhaps we have here a nice example of words having precious little meaning when stripped of context.

    LOL – That’s the friendliest way I’ve seen of someone calling out MM and saying his post is pure B$.

    Sorry MaxDrei, that was way too subtle for MM.

    The other word stripped of context that for me is notorious is “process”. When you look at it in 101 I think the context informs its meaning. I doubt it means every “process” under the sun.

    Another LOL – the meaning of process is explicitly informed in 100 (But then again, I am sure you were well aware of that). And of course it does not mean every “process” under the sun (and absolutely no one has ever held so). At the same nod, it does mean every process that does not impinge on the Supreme Court’s implicit reading of 101 (see the Judicial Exceptions, and note how those exceptions apply no matter the form of the claim), and most assuredly, it does mean – as a category – that business methods are patent eligible (same as medical methods, even after Prometheus). See Congress’ explicit words of 273, and note that even after the AIA, Congress still has not disallowed business method patents as a category.

  70. A pleasure to hear from you MM. Perhaps we have here a nice example of words having precious little meaning when stripped of context. When I write of “problem” in the context of patentability under the EPC, other EPC practitioners can put the word in its proper context. Right from the early days of the EPO, so-called “problem inventions” have been acknowledged, where implementation of the solution is trite, once the “solution” has been identified. So after 30 years of argument, in thousands of opposition proceedings at the EPO, I doubt you (sharp even though you are) have identified a point that has never occurred to anybody else.

    I agree with you that you must claim the solution, not the problem, but putting your finger on “the problem” can perhaps, in a sense, amount to the solution of the problem.

    Perhaps you might like to read the White book, along with anon.

    The other word stripped of context that for me is notorious is “process”. When you look at it in 101 I think the context informs its meaning. I doubt it means every “process” under the sun.

  71. These cases will invariably contain a fundamental error in fact or reasoning.

    At least according to the holy writ of “I Smell It” MM. Funny that – the preacher preaching about reasoning, but yet, has never shown any himself.

  72. MD: a claim that merely announces the problem to be solved is not fit to issue (unless perceiving the problem was an invention in itself)

    Even if you invented a method of identifying “problem X”, you still can’t claim “problem X.” The “problem to be solved” is never the invention. The invention is the solution to the problem.

    Likewise, the conception of “a problem” is not an invention. Likewise, the conception or identification of a market for a specific commodity or service is not an invention. These activities are better characterized as abstractions. The commodity or service, if anything, is the inventive subject matter and even these may not always be eligible for patenting in all jurisdictions.

    There may be cases that suggest a different result. These cases will invariably contain a fundamental error in fact or reasoning.

  73. Perhaps it helps to think of the claim reciting technical features. These features deliver a technical effect. That effect can be parsed into the objective technical problem.

    But the invention is defined clearly only when it recites the features. Putting into effect the claimed subject matter, if it is a patentable invention, delivers the solution to the problem. a claim that merely announces the problem to be solved is not fit to issue (unless perceiving the problem was an invention in itself).

    If you are really interested, you could try going online to the EPO site, download and read the White Book of EPO jurisprudence, in which it explains the (by now unassailable) Problem and Solution Approach to obviousness.

  74. Sorry MaxDrei, your post is still not clear. I keep tripping on your reference to the specification (for example, in your response you reiterate “so you must be able to find it in the as filed disclosure.” which leads me to believe that you can define the problem in the disclosure and not necessarily in the claims. Your other posts seem to indicate that you need to define the problem solely in the claims.

    Thanks for your patience.

  75. Thanks anon, for revealing to me that things self-evident to those familiar with practice at the EPO might not be evident at all to US patent attorneys.

    So here goes. For Europe, an invention is what is defined in the claim in terms of technical features. To be patentable, claimed subject matter must be capable of being appreciated as the solution to a technical problem. To analyse patentability objectively, the technical problem must be an objective one when seen against the background of the entire prior art (not just that known to the named inventor).

    The objective problem has to be framed by reference to the feature combination of the claim. In First to File country, you can’t invent the problem after your filing date, so you must be able to find it in the as filed disclosure. If you rely on solving problem X but your claim lacks one or more features essential for solving X then either your claim is uninventive or it is unclear.

    So, no typo. OK?

  76. MaxDrei – is there a typo in your question:

    if you want to rely on the argument that the claimed subject matter has solved a problem, that problem has to be derivable from the application as filed. Les, before you reply, remember, there are no cans in the claim so you can’t use can location to define the ‘problem’.”

    It appears that you are leaning on defining the question in the claim right after stating that the question is to be defined in the application.

    Not a dig – just trying to understand your post.

  77. Are you also going to claim that I’ve never expressed an opinion regarding whether mental steps are “allowed” in patent claims?

    Nice deflection – but that’s not the question at hand.

    No one cares about your “expressed opinion” because that “expressed opinion” isn’t the question being asked. It’s not the point of law you keep dodging.

    It is perfectly clear (to those willing to see) that you are attempting to eliminate any presence of thought from patentability considerations, just as it is perfectly clear (to those willing to see) that the current state of the law ALLOWS the presence of thought TO be a part of patentability considerations. The prohibition is against COMPLETELY IN THE MIND – but you insist on perpetually kicking up dust.

    Once again (and again no answer from you on this question): What is the state of the law as regarding allowing mental steps to be a part of a valid, patent eligible claim? What is it? Tell. Do (and try to leave the dust-kicking alone – the dust-kicking would be the insertion of your banal [oldstep]+[newthought] crrp).

    Still waiting for an actual answer from you (but not holding my breath).

  78. What makes you so?

    Because I would comment differently to a lawyer than I would a layperson or an examiner – three different languages are involved.

    Regarding your comment that I quoted, there’s nothing wrong with your logic, but there’s nothing wrong with IANAE’s, either. There’s no point in arguing about what is “obvious” until we agree on whether we’re talking about the legal definition or not.

  79. Les wrote above:

    “The inventors saw a solution to a problem that apparently no one else recognized was a problem. The inventors solved that problem and now others want to piggy back on that solution.”

    …but I want to know what, here, is that “problem”. I’m from Europe and, at the EPO, if you want to rely on the argument that the claimed subject matter has solved a problem, that problem has to be derivable from the application as filed. Les, before you reply, remember, there are no cans in the claim so you can’t use can location to define the “problem”.

    Solving a problem is indeed important to patentability. If the prior art has disclosures of a 5 inch plate and a 6 inch plate, well then a 5 1/2 inch plate is novel. The patent owner has it that a 5 1/2 inch plate is also inventive because, before his “invention” of it, nobody was practising 5 1/2 inch plates. Same here with the location of lines of perforation, isn’t it?

  80. Manual of Patent Examination Proceedure 716.06 Copying [R-9]

    “Another form of secondary evidence which may be presented by applicants during prosecution of an application, but which is more often presented during litigation, is evidence that competitors in the marketplace are copying the invention instead of using the prior art.”

    Here I assume we don’t have copying yet. However, we have the clear desire to copy and the expenditure of resources to get permission to copy. So, like I said, the mere fact that they were not doing it in the prior art and that they would litigate over it shows that it was not obvious.

  81. I don’t know what they had in mind, but according to what appears to be their web page:

    Sounds like it’s your position that if a company has a sufficiently laudatory website, any patent they infringe is presumptively non-obvious.

    I’m not sure that’s strictly in line with the legal test, which is very much about what a hypothetical person of ordinary skill in the relevant art would have in mind.

  82. I don’t know what they had in mind, but according to what appears to be their web page:

    “We offer a variety of paperboard packaging solutions to customers throughout many industries and markets, including: beverage; food; health care; consumer products; and automotive. Our experienced packaging experts are here to help you succeed in the marketplace with clever branding, usability and production solutions. We’re small and nimble enough to experiment with our customers on new ideas. And we’re big enough to produce these solutions on a large scale.”

    So, it appears they should have at least been aware of the packages, if not the cited documents describing the packages.

    link to zumbiel.com

  83. Obviousness is based on whether or not it was obvious at the time of the invention to one of ordinary skill in the art. It appears to me that C.W. Zumbiel Company includes people of at least ordinary skill in the art. Since C.W. Zumbiel Company wasn’t doing it, and now that it has been disclosed C.W. Zumbiel Company wants to do it, logically, it was not obvious to do prior to the disclosure.

    What do you do for a living, Les? I’m curious.

  84. It appears to me that C.W. Zumbiel Company includes people of at least ordinary skill in the art.

    Did they have the two cited prior art references specifically in mind before this application was filed? If not, they were not of ordinary skill in the art.

    Ordinary skill in the art doesn’t mean “reasonably good at your job in the field”. It means you are aware of all the relevant art, and you have all the skills of a person employed in that field. That’s why the person of ordinary skill in the art is a hypothetical person. No real human anywhere is “of ordinary skill” in any art.

  85. Obviousness is based on whether or not it was obvious at the time of the invention to one of ordinary skill in the art. It appears to me that C.W. Zumbiel Company includes people of at least ordinary skill in the art. Since C.W. Zumbiel Company wasn’t doing it, and now that it has been disclosed C.W. Zumbiel Company wants to do it, logically, it was not obvious to do prior to the disclosure.

    I’m sorry if that logic is so powerful that it should end all court challenges to patents on the basis of obviousness. But there it is.

  86. Why wasn’t it important enough to do before and is important enough to litigate over now?

    Because that’s what obviousness litigation means. It wasn’t done exactly this way before, and now it’s a big enough deal that the patent finds itself in court. If you asked that question in every obviousness case, there would be no such thing as obviousness.

    Besides which, I’ve already given five or six reasons why. Not to mention that something could be legally obvious even if no real person would have thought to do it, because obviousness is based on more prior art knowledge than real people have. Just because it hasn’t been done, that doesn’t mean your claimed invention represents a patentable contribution to the state of the art.

  87. Why wasn’t it important enough to do before and is important enough to litigate over now? It wasn’t done before because no one thought of it or no one saw an advantage to doing it. I.e., it was not obvious.

    The inventors saw a solution to a problem that apparently no one else recognized was a problem. The inventors solved that problem and now others want to piggy back on that solution.

    YOU are talking about indefiniteness. The court apparently is not.

  88. The issue is what is Obvious to do in light of the prior art.

    We were talking about indefiniteness, actually.

    Perhaps

    Yes, perhaps all those things. But they’re all speculative unless you have some sort of non-hindsight evidence for them. Until then, it’s a perforation a little ways along a planar surface, and there’s no specific teaching that it couldn’t be anywhere else. Moving that perforation around is certainly well within the skill level of a person who stamps out cardboard shapes for making boxes.

  89. You can use the prior art box to store dirty socks too I suppose. The issue is what is Obvious to do in light of the prior art. The prior art suggests HCP, and goes out of its way to enforce HCP. The prior art also teaches the finger tab in front of the first top can. Indeed, perhaps the reason HCP is enforced is to make room for the finger tap. Perhaps it did not occur to the package designer to place the finger tab between cans because that was not obvious. Or perhaps the package designer ruled that out as placing the tab too far back or because everyone “knew” that perforations that far back would cause structural problems for the box or that perforations that far back are “impossible” for the perforation machine to make. Given THAT teaching, it is not obvious to use rectangular packing and it is not obvious to place the finger tab between cans.

  90. And it’s not really that much more efficient

    And if you ignore the art, you can make any statement you want…

    Lest we forget – “the height of inventiveness” is apparently code word for flash of genius.

    Sorry – that is not a part of patent law. It’s a good thing that you don’t get to decide what the appropriate “due respect” to any art is.

  91. One cannot re-size the cans without resizing the box and box features in proportion.

    Yes, one can. For any given box, there’s a first can diameter that stacks rectangularly, a second can diameter that stacks hexagonally, and a whole range of diameters smaller than the first diameter where you can stand the box end-on, drop cans in, and they’ll settle into two suboptimally-packed rows. Each of those diameters has two possible positions for the last can in the top row, depending on whether the first can was in the top row or the bottom, which is essentially a coin flip.

    The prior art very specifically teaches the use of spacers to force hexagonal close packing,

    The claim very specifically doesn’t. And it’s not really that much more efficient than rectangular packing if you only have two rows in a box, and every dozen cans (again, not specified in the claim) requires you to waste a can’s packing volume on spacers.

    Besides which, even a box perfectly dimensioned for two rows of hexagonal close packing gives you two possible positions for the last can in the top row.

    Lest we forget, amid all this talk of geometry, that shifting a perforation in a planar surface over by about half an inch isn’t exactly the height of inventiveness. With all due respect to the “art” of putting openings in boxes of things.

  92. I agree that read in isolation the claims have clarity issues. However, it does not appear that clarity has been raised; or if it has been raised, the clarity issue did not invalidate the claims. If the court understands the claim, then I think we should be able to read the claim in light of the specification and not pretend that we don’t know what is meant.

    From Fig.3 above we can see that the hinge portion of the finger tab is very near the 0.5 diameter point. One cannot re-size the cans without resizing the box and box features in proportion. The prior art teaches a finger tab at .5 diameters, in front of the top can, not between the first 2 top cans. The prior art very specifically teaches the use of spacers to force hexagonal close packing, as you observed earlier. It would not be obvious to modify any of that since doing so would make the prior art unsatisfactory for its intended purpose (low profile HCP can packing).

  93. And of course, the reverse is also true – to rephrase as you have done is to define everything as obvious. After all, when you stand in the middle of a parking lot, everything looks like the road.

  94. Moving a feature of a flat surface a little bit to the left is a trivial modification in any art.

    Making such a broad overstatement is itself trivial. And should be dismissed as readily as you wish to dismiss such a lowly art.

    Luckily, such false elitism is not the law.

  95. “If it were obvious, then why were it not done before”

    Didn’t I give about five or six possible reasons upthread? There are others, too.

    The question itself is a fallacy. By the statutory definition of obviousness, the thing has not been done before. To ask the question rhetorically is to define obviousness out of existence.

  96. According to claim 2 the finger tab is at 1 or 1.5 diameters.

    No, it’s not. It’s set at wherever the last can in the box happens to wind up.

    And the “diameter” can’t even be determined from the dimensions of the box. You can fit in two rows of cans with any diameter between half the box height and about 2/3 of the box height.

    However, in the cited art, the finger tab is at 0.5 diameters and it would not have been obvious to move it to 1 or 1.5 as there is nothing to motivate the move.

    If you take reference 1 and reverse the stack of cans left to right (the claim doesn’t specify how the unclaimed cans are arranged, remember?), you very nearly have an anticipation of claim 2, so far as claim 2 can be understood. Re-sizing the cans (or the box) could easily make up the difference too.

    Moving a feature of a flat surface a little bit to the left is a trivial modification in any art. Not that “a can-sized opening for removing a can therethrough” is a big motivational stretch for one of ordinary skill in the art of … retrieving cans of soda from the fridge, I guess?

  97. You’re sounding mean there MM

    It’s wrong to target the handicapped, I’ll grant you that. Are you also going to claim that I’ve never expressed an opinion regarding whether mental steps are “allowed” in patent claims?

    Step up, NWPA. Maybe do the right thing. You understand how computers work. You know that all the comments are archived. How’s your memory?

  98. The joke, MM, is you – you are the one with the endless wedgie. Parading around like it is some prize and bringing laughs is a laugh AT you, not WITH you.

  99. the heart of my initial comment

    Whatever you say, Humpty.

    “kings of the schoolyard.”

    Welcome to the Endless Wedgie, anon. You can’t say you didn’t ask for it.

  100. “If it were obvious, then why were it not done before” – a quote from Diplock, LJ, in Catnic, I believe. Nice to see some English jurisprudence.

  101. LOL – both MM and Leopold are too busy reaching around their circle to actually address the points I raised (or address them incorrectly and not bother to see why they have addressed them incorrectly, but not too busy to indulge in third grade name calling (and yet want others to “find their big boy pants”).

    The funniest thing is that they don’t even realize how foolish they look and think of themselves as “kings of the schoolyard.” All the time, they STILL have not addressed the straightforward and simple difference between “must” and “likely” that is at the heart of my initial comment.

    That’s one whole h311 of a lot of jerking going on. Guys, make sure you clean up when you are done.

  102. it would not have been obvious to move it to 1 or 1.5 as there is nothing to motivate the move

    Sure there is: filing a patent application on the “novel” box and hoping that the PTO drops the ball.

    Or is that sort of business-motivation not allowed on your planet?

  103. Agreed. According to claim 2 the finger tab is at 1 or 1.5 diameters. However, in the cited art, the finger tab is at 0.5 diameters and it would not have been obvious to move it to 1 or 1.5 as there is nothing to motivate the move.

  104. the word “must” (as used in a meaning that is not combinable with “likely” or the use of caveats) is inappropriate.

    LOL. Or is it just “likely” inappropriate?

    I used to think anon would find his big boy pants and eventually learn when to STXU. Lately, however, I’m more inclined to believe that our days of listening to this bxtt freeking rxtxrded fortune cookie with a typo are going to continue for a few more months at least.

  105. 1) Is Ned talking about a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field? If not, the Supreme Court’s “must” statement doesn’t apply.

    2) Are you seriously using an offhand question from Ned to rebut a rule of law articulated by both the Federal Circuit and the Supreme Court (twice)?

    What a plonker.

  106. The question by Ned (of all people) indicate that the possibility exists that unexpected results may not be needed. In other words, the word “must” (as used in a meaning that is not combinable with “likely” or the use of caveats) is inappropriate.

  107. Yet another non-answer MM.

    Wheeee indeed.

    Still waiting for an actual answer from you (but not holding my breath).

  108. Still waiting for your recognition that mental steps are perfectly valid parts of patent eligible claims.

    And after I recognize it (again), in a few weeks you’ll pretend that I never recognized it (again) and you’ll call me liar etc.

    Yet another aNontucket Sleighride. Wheee!!!

  109. Between cans is exactly one diameter.

    Actually, it’s indefinite as recited in claim 2.

    The cans are not positively recited in the claim, much less their position in the box. Two rows can stack either rectangularly (as in most boxes of standing cans) or hexagonally (as shown in reference 1), depending on the (unclaimed) dimensions of the box and the (unclaimed) diameter of the cans. The hex stacking gives two possible orientations with different positions for the first can from the exiting end in the top row.

    Sure, once someone puts in some cans you can call them infringers if the cans line up with the perforation, but claim 2 to a box alone is insolubly indefinite. It could equally likely be one diameter or 1.5 diameters. It’s not even constant relative to the height of the box, which could itself be either 2 diameters for rectangular stacking or (1 + sqrt(3)/2) diameters for hex stacking.

  110. Sorry Malcolm, but I’m not taking your “bait.” As you and I know there won’t be any “debate” on this subject, so that’s it from me.

  111. Smear with blatant lie?

    What was the blatant lie?

    All you are doing is the typical MM non-answer crrp.

    Again.

    Still waiting for your recognition that mental steps are perfectly valid parts of patent eligible claims.

  112. No. If its novel and no one was doing it, yet now that it has been disclosed people are fighting to do it, by definition, it was not obvious to do it. If it were, they would have done it earlier.

  113. An apology for you twisting what I clearly said?

    No, an apology for your attempt to smear me with a blatant lie. As I noted, I’m quite sure you’ll never actually apologize for any misstatement, especially an insult directed towards me. I just wanted everyone to appreciate just how pathetic your dissembling gets (again).

    To recap, you wrote the following:

    Do you believe that mental processes are allowed as steps in a patent eligible claim? (You never seem to answer that question)

    Now, I’ll ask you again, since you (typically) avoided answering the question the first time: do you want to retract the bolded statement? Or do you stand behind it? Let me know. Maybe this time you can ask one of your friends to help you understand what you actually wrote before answering.

    Maybe EG can jump in with his thoughts. That would be refreshing. He’s been involved in many such discussions with me on that topic. I wonder if his memory is as poor as yours.

  114. Everything is obvious (i.e. lying in the road).

    Not true.

    Nobody cares about it though until somebody picks it up and asks the government to prevent anyone else from making, using or selling it for a couple decades.

    Fixed.

  115. An apology for you twisting what I clearly said? Not likely. As I also said – explcitly NOT your strawman restatement.

    Tell me an answer MM – not a retort. What is the state of the law as regarding allowing mental stesp to be a part of a valid, patent eligible claim? What is it? Tell. Do (and try to leave the dust-kicking alone).

  116. “Actually, you better not think about that. I own the patent rights to that thought”

    That’s funny, right there, I don’t care who you are.

  117. Everything is obvious (i.e. lying in the road). Nobody cares about it though until somebody picks it up.

    Just saying. :-)

  118. If there is an advantage to doing it and its easy to do and no one was doing it, then by definition, it wasn’t obvious.

    That’s actually the legal definition of something that is obvious. It’s novel, useful, and simple to do if you’re skilled in the art.

    Tell me, why do you think section 103 even exists? Can you think of any fact scenario that involves litigation, where you would personally consider a novel claim obvious?

  119. C.W. Zumbiel Company wants to place the finger tab between the first two cans, else they wouldn’t have challenged the patent. C.W. Zumbiel Company is in the box making business yet C.W. Zumbiel Company did not think to place the tab between the first two cans before doing so was patented by by GPI. Why is it important enough now to file a re-exam over, but it wasn’t important enough to do before? Could it be that C.W. Zumbiel Company didn’t think of it because it wasn’t obvious? Could it be that its such a good idea that Coke and Pepsi are insisting that their boxes have a finger tab at that position? If there is an advantage to doing it and its easy to do and no one was doing it, then by definition, it wasn’t obvious. Clearly, there are market forces here that want the finger tab in the claimed location. If someone had put it there before, the attorneys for C.W. Zumbiel Company would have found an example and cited it. Since they did not, we can conclude that no one saw the advantage that is now so important that re-exams must be filed. Hence it was not obvious.

  120. You are asserting that I “never expressed my opinion here as to whether an eligible patent claim can comprise a mental step. Is that correct?”

    No. That is not correct.

    Really? Do you also deny writing this:

    Do you believe that mental processes are allowed as steps in a patent eligible claim? (You never seem to answer that question)

    Do you want to retract the statement in bold? An apology would be nice, too, not that any of us ever expect one from you, Humpty Dumpty.

  121. never expressed my opinion here as to whether an eligible patent claim can comprise a mental step. Is that correct?

    No. That is not correct. What is the current state of law regarding mentall steps in claims as patent eligible material (note: this is explicitly NOT your strawman restatement).

  122. “about the fact that I’ve addressed this issue directly and unambiguously at least dozens of times’

    Except you haven’t – not once.

    Just to be clear before you do your usual Humpty Dumpty maneuvers: you are asserting that I have never expressed my opinion here as to whether an eligible patent claim can comprise a mental step. Is that correct?

    If that’s not what you are asserting, please tell me exactly what you meant when you wrote: Do you believe that mental processes are allowed as steps in a patent eligible claim? (You never seem to answer that question)

    I’m prepared to prove (again) that you are a dishonest and creepy hack but I would like to avoid your Humpty Dumpty games, if possible. So please confirm your position. I would advise revisiting some of the past threads first.

  123. Would you care to explain why no one was doing what you apparently believe was obvious to do?

    On Les’s planet, everybody has a machine for manufacturing perforated cardboard boxes.

    You know what else is non-obvious on Les’ planet? A box exactly identical to the current boxes except the finger performation is a tiny tiny tiny bit larger. Because nobody else made it before. Everbody can has patent! Think about all the jobs created on Planet Les under his magical patent regime. Actually, you better not think about that. I own the patent rights to that thought, on Planet Les anyway.

  124. Would you care to explain why no one was doing what you apparently believe was obvious to do?

    Because that’s what “obvious” means. That something was easy to do but not identically disclosed per section 102. The fact that it’s not anticipated is not probative of obviousness.

    Why wasn’t somebody doing the obvious thing? I don’t know. Maybe there were a bunch of equally obvious and trivial permutations, and they hadn’t gotten around to that particular one. Maybe it was technically obvious but nobody saw the business case for it (see also “commercial success”). Maybe it was “invented” as a marketing gimmick, which generally means the change was technically inconsequential but the marketing pitch was the real invention. Maybe it was so trivial that nobody who was doing it thought it was worth writing down. Maybe the field became standardized, deliberately or not, and nobody was even thinking about changing the product in simple ways.

    It doesn’t matter why. You can’t plead novelty as a defense to obviousness. Obviousness is a separate and sufficient basis for invalidity.

  125. No. I mean obvious. Would you care to explain why no one was doing what you apparently believe was obvious to do?

  126. Do you agree with Les that mental processes should be patent eligible?

    (You never seem to answer that question)

    Oh, but I have answered that question – I agree that purely mental processes should not be patent eligible, those that reasonably can be done by the human mind alone.

    Not sure why you think you can be as effective as I turning a phrase against the writer. You are just not that clever.

    about the fact that I’ve addressed this issue directly and unambiguously at least dozens of times

    Except you haven’t – not once. You continuously dodge discussing or admitting the current state of law as regards the allowing of mental steps in claims. Do you know what the state of the law is?

  127. “Do you still believe that mental processes should be eligible for patenting?”

    Nice non-sequitur.

    It’s not a non-sequitur. It’s amusing that you leap to Les’ defense, though. Do you agree with Les that mental processes should be patent eligible?

    (You never seem to answer that question)

    Nobody reading this blog as regularly as you have for the past several years could possibly be mistaken about the fact that I’ve addressed this issue directly and unambiguously at least dozens of times. I’m one hundred percent certain that I’ve responded to you and your sockpuppets on numerous occasions. If you can’t recall any of them, it’s time to get your medication adjusted or check yourself in for early Alzheimers.

  128. If it were obvious to place it between the cans, then that’s what everyone would have been doing in the prior art.

    You keep using that word. You mean to say “anticipated”, right?

  129. Mr. Rantanen takes the position that there are only 4 possible locations for the finger tab and that the claimed placement is obvious. But, the cited documents don’t suggest it. Anyone, in hindsight can roll their eyes and SAY something is obvious after the fact. But that’s not the case. If it were obvious to place it between the cans, then that’s what everyone would have been doing in the prior art. The fact of the matter is they were not. Apparently some other location was more obviously the best location for the tab. Perhaps if it were considered at all, between the cans was ruled out as a location because it would be too easy to accidentally open the package while handling them while shelving in the supermarket. Try not to be so childish.

  130. Do you still believe that mental processes should be eligible for patenting?

    Nice non-sequitur.

    Do you believe that mental processes are allowed as steps in a patent eligible claim? (You never seem to answer that question)

  131. Les: If the placement of the finger tab was “obvious”, then why wasn’t it in the prior art,

    That’s a fantastic “argument”, Les! Have you scoured the back issues of Finger Perforations Monthly?

    I’m not surprised that you believe that every (allegedly) novel patent claim is non-obvious, Les. Do you still believe that mental processes should be eligible for patenting?

  132. If the placement of the finger tab was “obvious”, then why wasn’t it in the prior art, in actual specimen samples if not explicitly disclosed in related documents?

    What about the height of the means of preventing? That also seems not obvious to me.

  133. Both the problem statement (i.e. there is a need to locate the tear so as to provide space for the fingers) and the solution (i.e. to locate it between the first two cans) are plainly OBVIOUS in light of the prior art. To say otherwise is a gross insult to those skilled in this particular art.

  134. Actually, the primary reference does already have the perforations exactly there as noted in the spec, “less than one diameter of one can”.

  135. Common Sense Prevails,

    Completely agree with you assessment of this misguided, inane, and bogus statement/interpretration by SCOTUS in KSR of what 35 USC 103 means and requires.

  136. No hindsight there. Just common sense

    Do you even know what hindsight is, MM?

    Hindsight reconstruction is also involved in stating the problem – here as Judge Prost does in creating the small set of “answers,” to a question that itself may not have been obvious.

    Now, I am not saying that this particular case is not obvious, but your flippant and dismissive call for “no hindsight” is simply off-base.

  137. The primary reference does not already have the perforation line exactly there – and all soda boxes moved to this design after the applicant’s invention (widespread copying of the invention after the fact is an indicator of nonobviousness).

  138. So the invention is an extra “finger flap” on the standard soda can box along the perforation line and it is between the first and second can of soda. However, the primary reference already has the perforation line exactly there (as all soda boxes are), and the finger flap (according to claim 1) has to be located on the perforation line.

    I’m with Prost on this one, he’s clearly the only soda/pop drinker on the panel.

    Of the only 4 possible locations along the perforation line in the Ellis primary reference, there is only one actual location that would allow your fingers to use the finger flap from the German reference. Since the majority agreed that claim 1 was in fact obvious, and the other 3 possible locations would render the combination non-obvious due to it being inoperable for its intended purpose, I can’t see how they can find claim 2 non-obvious when the only possible location that renders claim 1 obvious would also render claim 2 obvious.

  139. “Prost nails it.”
    I haven’t seen that kind of whining in a dissent since Scalia’s last dissent.

  140. This is what we all feared with KSR came out.

    Some judge (or examiner) doesn’t like a patent (i.e., it is “low quality”) and then proceeds to ignore the Graham findings of fact while worshipping upon the alter of “common sense.”

    What was troubling to many of us was that there is no limitation on where “common sense” can be found …
    Is it OK to find “common sense” from hindsight reconstruction? Why not?
    Is it OK to make up “common sense” on the spot? Why not?
    Is it OK to allege “common sense” without supporting evidence? Why not?

    If I was a judge, I could reject just about anything with that tool set. Fortunately, the Federal Circuit has not gone down that path (although the USPTO and PTAB frequently does) too often.

  141. Heckuva job, Kappos.

    Yet another crybaby MM QQ post.

    Heckuva job MM. Your next truckload of tissues just came in – put them in the usual place?

  142. hindsight.

    This from BJA, the guy who thinks that prior art for computer-implemented inventions doesn’t exist before 1996.

    Here’s Prost again:

    according to the Board, ordinary box makers would not have put the tear line between the first two cans in the top row.

    Where else could have they put it? There are just four other options: (1) above the first can, (2) above the second can, (3) in front of the first can, (4) behind the second can. The first two alternatives are just offensive to common sense: With the cans right below, there would be no room to push the flap through (the flap is positioned at the center of the tear line).

    No hindsight there. Just common sense.

    The third and fourth options are not quite as illogical, but even without expertise in box making, one may intuit that they make awkward designs (the third opens too little, the fourth too much).

    No hindsight there. Just common sense.

    More importantly, however, whether some of the alternatives would work just as well or not, the patentee’s choice of tear-line-placement involves no more than the exercise of common sense in selecting one out of a finite—indeed very small—number of options. And there are no unexpected results

    No hindsight there. This is black letter patent law. A small readily ascertainable number of choices plus no unexpected results. Picking one and filing a patent on it isn’t “inventing.” That’s just being a d–k. Unfortunately, this is the sort “invention” that typifies most of what is being filed and granted by our wonderful PTO.

    Heckuva job, Kappos.

  143. Prost nails it. Well done.

    But patent-savvy makers of boxes for cans have much cause to rejoice! Evidently your microniche is a suprisingly difficult art for the PTO and two out of three Federal Circuit judges to understand. We can only imagine why that might be the “case”. My guess is that these decision-makers usually buy bottled beverages.

  144. Just for stiring up a legal discussion, who would even been presenting an argument like the above to the Fed. Cir. to reverse an ex parte Board claim allowance? Certainly not an Appellant, who is only trying to reverse the Board’s claim rejections, not its claim allowances. Likewise, the PTO Solicitor’s Office is normally just defending Board decisions. Doesn’t that leave the Fed. Cir. in the position of having to sua sponte raise the issues itself, without record support, to reverse the Board on Board allowed claims? Thus, should ex partes PTO appeal decisions like this carry much weight as authority for contested inter partes litgation or IPR cases?

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