Judge Rader’s Obviousness Tutorial: Including the Conclusion that Older Prior Art is Less Credible and a Restatement that Objective Indicia of Nonobviousness Play a Critical Role

By Dennis Crouch

Leo Pharmaceutical Products, Ltd. v. Rea, 2013 WL 4054937 (Fed. Cir. 2013)

In a pre-AIA filing, Galderma challenged Leo’s U.S. Patent No. 6,753,013 in an inter partes reexamination before the USPTO’s now renamed Board of Patent Appeals. The patent claims a “storage stable and non-aqueous” pharmaceutical composition used to treat skin conditions such as psoriasis. Prior to the invention, it was well known that a combination of Vitamin-D along with a corticosteroid could form the basis of an effective treatment. However, no one had been able to manufacture a storage stable form of the combination. This was especially challenging because the stable forms of the active ingredients prefer different pH levels. To achieve the storage stable results, Leo added a solvent to the mixture. The claim identifies the solvent in a markush group that likely includes thousands of potential compounds. During the reexamination, Leo also added the particular limitation that “said pharmaceutical composition is storage stable and non-aqueous.”

In reviewing the case, the Board first construed these new terms “storage stable” and “non-aqueous” and then found the patent invalid as obvious over the prior art. On appeal, the Federal Circuit has reversed.

Claim Construction: The Federal Circuit continues, for the time being, to give no deference to PTO claim construction decisions. Here, the term “storage stable” was difficult to construe because it was never used during prosecution of the original patent application and only added during reexamination. However, the patent does discuss the composition’s “ability to resist degradation” according to test results presented in the specification and the PTO accepted that definition as proper. Noting that one of ordinary skill “would have reasonably looked to the described stability test as defining what was meant by ‘storage stable.’” On appeal, the Federal Circuit rejected that definition as impermissibly narrow and that instead allowed a broader definition. Although not elucidated by the opinion, the patentee is walking a fine line with this amendment between (1) having a sufficiently broad patent and (2) improperly adding new matter to the claims in violation of the written description requirement.

Obviousness: This decision may become a somewhat important obviousness case for patentees. The Board found the patent claims obvious in light of a combination of three prior art references. The Board basically found that it would have been obvious for someone of skill in the art to take the prior art combination of Vitamin-D and corticosteroids and add in the claimed solvent in order to achieve storage stability.

On appeal, the Federal Circuit faulted the Board for failing to give credence to the patentee’s identification of the problem (that a stable form should be designed). The prior art did not particularly recognize the problem but rather “either discouraged combining vitamin D analogs and corticosteroids … or attempted the combination without recognizing or solving the storage stability problems.” Leo also presented evidence that, at the time of the invention, researchers were being “warned that vitamin D should not be combined with other drugs requiring a low pH ( e.g., corticosteroids).”

[T]he record shows no reason for one of ordinary skill in the art to attempt to improve upon either Dikstein or Serup using Turi. The ordinary artisan would first have needed to recognize the problem, i.e., that the formulations disclosed in Dikstein and Serup were not storage stable. To discover this problem, the ordinary artisan would have needed to spend several months running storage stability tests Only after recognizing the existence of the problem would an artisan then turn to the prior art and attempt to develop a new formulation for storage stability. If these discoveries and advances were routine and relatively easy, the record would undoubtedly have shown that some ordinary artisan would have achieved this invention within months of Dikstein or Serup. Instead this invention does not appear for more than a decade.

Now, the Federal Circuit’s language here obviously includes some amount of doublespeak or could perhaps be described as slicing the bologna awfully thin since according to the court, researchers (1) recognized that vitamin D could not be stably combined with low pH drugs such as corticosteroids but (2) did not recognize that vitamin-D could not be stably combined with corticosteroids.

Old Prior Art: In the discussion, Judge Rader uses an interesting between-the-lines or perhaps behind-the-scenes analysis of the prior art:

First, the Board found motivation to combine Dikstein or Serup with Turi because one of ordinary skill would have used vitamin D to solve the well-known side effects of steroid treatment. However, combining Turi and vitamin D to address the side effects of a steroid treatment is only straightforward in hindsight. Turi was publicly available in the prior art for twenty-two years before the ′013 patent was filed, yet there is no evidence that anyone sought to improve Turi with vitamin D. According to the record, even when Serup published the well-known side effects of steroid-induced atrophy in 1994, no one—including Serup—sought to improve Turi by adding vitamin D to Turi’s corticosteroid composition. Serup even targeted the precise side effects that the Board believed would have motivated the addition of a vitamin D analog to Turi’s corticosteroid composition, yet Serup did not seek to improve Turi by adding vitamin D. . . .

The elapsed time between the prior art and the ′013 patent’s filing date evinces that the ′013 patent’s claimed invention was not obvious to try. Indeed this considerable time lapse suggests instead that the Board only traverses the obstacles to this inventive enterprise with a resort to hindsight. It took over a decade—after Dikstein’s disclosure of the benefits of combining vitamin D and corticosteroid treatments into one formulation—for Dikstein’s formulations to be tested for storage stability. And, until the advancement made by the inventors of the ′013 patent, no one had proposed a new formulation that would be storage stable. The problem was not known, the possible approaches to solving the problem were not known or finite, and the solution was not predictable. Therefore, the claimed invention would not have been obvious to try to one of ordinary skill in the art. Indeed ordinary artisans would not have thought to try at all because they would not have recognized the problem.

Under Judge Rader’s point of view here, older prior art should be seen as less credible in the obviousness analysis. The logic obvious improvements would have happened quickly and the long time span between improvements suggest that the improvement was not an obvious one. This logic is bolstered in cases such as this where research is ongoing in the area and a market has already developed.

Although the patentee claimed a wide variety of solvents, the Federal Circuit also found that there were many more potential solvents available to try and the PTO did not offer specific reasons why the ones selected would have been particularly obvious to try.

In addition, the Board found that a person of ordinary skill in the art would have been capable of selecting the correct formulation from available alternatives. Specifically, the Board found more than eight different classes of additives ( e.g., diluents, buffers, thickeners, lubricants). The Board also found more than ten different categories of composition forms ( e.g., liniments, lotions, applicants, oil-in-water or water-in-oil emulsions such as creams, ointments, pastes, or gels). “Based on these broad and general disclosures,” the Board reasoned that an artisan would have been able to “mak[e] choices about what ingredients to include, and which to exclude” in formulating a composition with a vitamin D analog and steroid. To the contrary, the breadth of these choices and the numerous combinations indicate that these disclosures would not have rendered the claimed invention obvious to try. See Rolls–Royce PLC v. United Techs. Corp., 603 F.3d 1325, 1339 (Fed.Cir.2010) (claimed invention was not obvious to try because the prior art disclosed a “broad selection of choices for further investigation”). . . . .

This court and obviousness law in general recognizes an important distinction between combining known options into “a finite number of identified, predictable solutions,” KSR, and ” ‘merely throwing metaphorical darts at a board’ in hopes of arriving at a successful result,” Cyclobenzaprine, quoting Kubin. While the record shows that, as early as 1995, the prior art indicated that both vitamin D analogs and corticosteroids were effective treatments for psoriasis, that same prior art gave no direction as to which of the many possible combination choices were likely to be successful. Instead, the prior art consistently taught away from combining vitamin D analogs and corticosteroids.

One important feature of PTO decision making is that Board conclusions of fact only require substantial evidence to be affirmed on appeal. Here, the Federal Circuit avoided that issue by indicating that all of its decisions were based upon the Board failure to properly apply the law to those facts. “In this case, however, with no material factual disputes, this court cannot share the Board’s analysis and application of the law to those facts.”

Objective Indicia of Non-Obviousness: Judge Rader writes:

The court now turns to the Board’s analysis of the objective indicia of nonobviousness. The Board reasoned that “the strong case of obviousness outweighs the experimental evidence and testimony about the advantages of the claimed composition.” Contrary to the Board’s conclusion, this court finds the objective indicia, in concert with the entire obviousness analysis, present a compelling case of nonobviousness. In fact, the objective indicia of nonobviousness highlight that the Board’s analysis regarding the combination of Serup or Dikstein with Turi was colored by hindsight.

Whether before the Board or a court, this court has emphasized that consideration of the objective indicia is part of the whole obviousness analysis, not just an afterthought. … When an applicant appeals an examiner’s objection to the patentability of an application’s claims for obviousness, the PTO necessarily has the burden to establish a prima facie case of obviousness which the applicant then rebuts. However, during inter partes reexamination, the Board is reviewing evidence of obviousness—including objective indicia—submitted by two adversarial parties for the claims of an issued patent. Thus, the Board should give the objective indicia its proper weight and place in the obviousness analysis, and not treat objective indicia of nonobviousness as an afterthought.

Objective indicia of nonobviousness play a critical role in the obviousness analysis. They are “not just a cumulative or confirmatory part of the obviousness calculus but constitute[ ] independent evidence of nonobviousness.” Ortho–McNeil Pharm., Inc. v. Mylan Labs., Inc., 520 F.3d 1358, 1365 (Fed.Cir.2008). This case illustrates a good reason for considering objective indicia as a critical piece of the obviousness analysis: Objective indicia “can be the most probative evidence of nonobviousness in the record, and enables the court to avert the trap of hindsight.” Crocs, Inc. v. Int’l Trade Comm’n, 598 F.3d 1294, 1310 (Fed.Cir.2010) (internal quotation marks omitted). Here, the objective indicia of nonobviousness are crucial in avoiding the trap of hindsight when reviewing, what otherwise seems like, a combination of known elements.

Unexpected results are useful to show the “improved properties provided by the claimed compositions are much greater than would have been predicted.” See In re Soni, 54 F.3d 746, 751 (Fed.Cir.1995) (internal quotation marks omitted). This record shows “extensive experimental evidence” of unexpected results that contradict the Board’s obviousness finding. J.A. 14. The Board concluded that the “unexpected results” claimed by Leo Pharmaceuticals were not surprising or unexpected. J.A. 19. However, substantial evidence does not support the Board’s conclusion.

During reexamination, the inventors of the ′013 patent submitted test results that analyzed the Dikstein and Serup formulations. The inventors found that the formulations disclosed by Dikstein and Serup result in significant degradation of the vitamin D analog and corticosteroid. See J.A. 1041–46 (testing formulations in Serup); J.A. 1625–27, 2152–2154 (testing formulations in Dikstein). The inventors also tested an improvement of Serup using Turi, by replacing Serup’s solvent with POP–15–SE, and still found significant degradation of the corticosteroid component. See J.A. 1045–46. These test results are a strong indication that the ′013 patent’s combination of known elements yields more than just predictable results.

In addition to evidence of unexpected results, Leo Pharmaceuticals provided other objective indicia of non-obviousness. For example, the commercial success of Leo Pharmaceutical’s Taclonex® ointment is a testament to the improved properties of the ′013 patent’s claimed invention. Taclonex® is the first FDA-approved drug to combine vitamin D and corticosteroids into a single formulation for topical application. While FDA approval is not determinative of nonobviousness, it can be relevant in evaluating the objective indicia of nonobviousness. See Knoll Pharm. Co., Inc. v. Teva. Pharm. USA, Inc., 367 F.3d 1381, 1385 (Fed.Cir.2004). Here, FDA approval highlights that Leo Pharmaceutical’s formulation is truly storage stable, something that the prior art formulations did not achieve.

The record also shows evidence of long felt but unsolved need, i.e., the need for a single formulation to treat psoriasis. The length of the intervening time between the publication dates of the prior art and the claimed invention can also qualify as an objective indicator of nonobviousness. See Ecolochem, Inc. v. S. Cal. Edison Co., 227 F.3d 1361, 1376–77 (Fed.Cir.2000). Here, the researchers were aware of the benefits of using both vitamin D and corticosteroids in the treatment of psoriasis as early as 1986. See, e.g., Dikstein col. 1, ll. 9–16. And Turi, upon which the Board relied to make its case, issued in 1978. Yet, it was not until the ′013 patent’s filing in 2000— twenty-two years after Turi and fourteen years after Dikstein-that the solution to the long felt but unsolved need for a combined treatment of vitamin D and corticosteroid was created. The intervening time between the prior art’s teaching of the components and the eventual preparation of a successful composition speaks volumes to the nonobviousness of the ′013 patent.

Here, the objective indicia—taken in sum—are the most “probative evidence of nonobviousness … enabl[ing] the court to avert the trap of hindsight.” Crocs, Inc., 598 F.3d at 1310. Viewed through the lens of the objective indicia, as opposed to the hindsight lens used by the Board, the ′013 patent would not have been not obvious over Turi in combination with Dikstein or Serup. Therefore, this court reverses the Board’s obviousness determination.

230 thoughts on “Judge Rader’s Obviousness Tutorial: Including the Conclusion that Older Prior Art is Less Credible and a Restatement that Objective Indicia of Nonobviousness Play a Critical Role

  1. I find it interesting that obviousness analysis in the US is trending toward the problem/solution context of EP.

    Along with pretty much everything else.

    Nobody could have predicted that.

  2. Maybe this is another person that Malcolm will greet with his usual name-calling.

    Maybe Tr0 llb0y will go f*k himself again.

  3. are you actually still trying to deny that the patent system is under attack?

    Are you still trying not to beat your wife?

  4. By saying ‘it depends’ you acknowledge that business methods exist that are patent eligible

    It’s impossible to parody your profound ignorance and your fantasies about scoring home runs while you’re passed out from sunstroke in the bleachers.

    1. A method for manufacturing a [new, non obvious eligible device], comprising steps a + b + c. < -- looks like an eligible claim

    2. The method of claim 1, further comprising offering the device for sale.

    Claim 2 is a "business method." It's eligible.

    So what? If this sort of thing represents some groundbreaking "admission" for you, then I pity you.

    You need to read Bilski again.

    No I don’t.

    your agenda to block ALL business methods at the 101 gate (and similarly, ALL software patents).

    Depends on the “business method”. And by the way, what just happened? You downsized “my agenda” (or at least your fantasy version of “my agenda”). I thought I wanted all patents to be “blocked” because I was a commie-loving socialist or something.

  5. “all of the “modern” (?) business owners I know think that it’s ridiculous to grant patents on methods of determining prices, accounting, or otherwise “monetizing” task”

    LOL – that’s exactly what the creationists say in regards to their faith – all the ‘right’ people believe as they believe.

    Huh? This isn’t a matter of “faith.” It’s a fact. Go ahead and deny it but the fact remains that the number of True Believer in the patent game is absolutely dwarfed by the number of people who simply approach business as business and who want nothing to do with patents.

    You need to travel in some different circles

    Why? You’re here all the time preaching the gospel and even if you weren’t the Church of Patent Apology is just a couple clicks away.

    business methods are patent eligible as a category

    That’s nice. Unfortunately for you, Bilski blew a huge hole in State Street Bank and whatever the “category” of business methods was thought to include before Bilski (and Prometheus, for that matter), it’s a smaller category now. You are well aware that merely defining a method as a “business method” achieves nothing in terms of sealing the eligibility of the claim (but of course you can’t admit that — not part of your script).

    business methods have been granted by the USPTO throughout its history

    The PTO granted patents on man-made non-natural chemicals throughout its history, too. Times change, TB. Times change.

  6. 6, thanks to the cite to Sitrick v. Dreamworks, LLC, 516 F.3d 993, 999 (Fed. Cir. 2008).

    For those who haven’t read the case, the patent owner tried to assert a video game invention against movies. The court had construed the claims to cover both. But, the defendant ably demonstrated that the invention was not enabled and could not work with movies. The court held the claims invalid.

    A simpler approach would have limited the claims to video games by claim construction as that was the only thing disclosed. That would have put the onus on the patentee to prove infringement of movies under the DOE.

    Another approach, and I think this is the one taken by the Supreme Court in any number of cases, is that if the claims are not fairly susceptible of a construction that covers the disclosed embodiments, the claims are indefinite. See, e.g., Perkins Glue.

    So, as part of any claim construction, I would recommend the courts decide whether the claims can be construed to cover disclosed structure, but no more. If not the claims cannot, but cover structure not disclosed, the claims should be declared invalid as indefinite.

    You guys in the PTO should do something similar.

  7. A gauzy “economics-based policy balancing” can be used by any mediocrity to advocate any particular position on either side of any issue.

    Indeed, that’s why it’s the favorite argument of the patent apologists, regardless of how awful the claim.

  8. anon, modern computers operate from code consisting of binary digits. When you speak of software, you mean such code.

    All code then consists of binary digits, zeros and ones.

    So, when you say, “Software has structure,” you say that code has structure, which means that zeros and ones have structure.

    So, lets begin at the beginning.

    Describe the structure of a “1.”

  9. Tourbillon, “abstract cannot be defined.”

    Really?

    Or is it that the Supreme Court is unwilling to make a definition for some reason?

    I think the latter and the reason to me seem somewhat clear. The SC likes narrow decisions that decide no more than they have to. Providing a definition of abstract that is too narrow or too broad can cause a lot of havoc. Thus they build their definitions by examples.

    Bilski was abstract. But beyond the facts of that case, we do not have a clear answer. I think that was intended.

  10. Got to this one late, but anytime I see an obviousness rejection overturned after KSR, I’m intrigued. Couple of my old colleagues in on the winning side to boot.

    Without delving into more, and perhaps someone else has already made this observation, above, I find it interesting that obviousness analysis in the US is trending toward the problem/solution context of EP.

  11. MM said:

    “That might be true but well-established case law (perhaps less well-established than we thought?) tells us that the justification for a claimed combination need not be the same as the justification provided by the applicants. That’s where the Federal Circuit’s opinion seems to take a turn for the worse. Prior art (happened to be old) was presented that taught the chemicals recited in the claim (prior to the re-exam) and provided a reasonable motivation to combine the art.”

    Weeelllll, while what you’ve said is true, from what I’ve read in the text of the opinion so far (still reading), the “motivation to combine” presented by the PTO is smoke and mirrors/mumbo jumbo at best. Of course, since KSR this type of motivational statement has been the M.O. of the examiners. They seem to concoct reasons for combination out of thin air, and rely on terms such as “better” and “more effective”, even when those terms are found nowhere in the references.

    Oh well, I guess legal fictions keep us all employed.

  12. “6 – I am not an an author of a work on ladders of abstraction.”

    Who on earth ever said it was you anon?

    Thanks for the confirmation by denial when nobody even accused you. :)

    “I certainly hope that whoever this author is does not take your comments in the wrong way.

    After the way the thread has been edited by Prof. Crouch, there is a colorable argument that he has lost any website operator protection, and I can easily see his master database as discoverable.”

    You’re so cute when you copy NWPA.

    In any event, I surely never suggested that there is a bio/CV that fits you to a T and would explain how a certain world-view arises, a publication by a certain someone that uses the same mannerisms as you, another publication detailing someone’s work where it appears that this someone is trying to invent UIs that will pass 101 (so that they can be patented lol) along with another publication that details someone’s attempts to make software into structure through semantics and theory, and some other interesting facts about a certain someone that resemble you quite closely.

    I never suggested any of that, and I never will ;) But others are of course free to do their own research into any topics they’d please.

  13. “Even as 6 now seeks to backtrack and play pedantic games by ‘introducing’ a modification to his ‘abstract theory’ with the notion of ‘generalization.’”

    Actually I’ve been saying that “modification” since when I first started teaching young pupils like yourself about it. In fact, I believe I even used the very same word(s) when discussing a similar matter with Ned years ago where he was similarly concerned that we’d be abstracting down past the realm of the abstract and into the realm of the non-abstract. He may have used a different example than the xray machine in the article, but the point was the same. He worried that even when specific structural machines have entered the picture we’d still be abstracting. The thing is, you guys always forget the basics which I toil to lay out, year after year, come up with some cockamamie reason why the supreme’s pronouncement will simply never work out (which is usually just an old reason with a new name attached), and go on beating your drum about it while ignoring how the basics have already addressed your concern. That, or not understanding the basics in the first place. Then, when I finally get around to figuring out how the basics address your newest concern because someone has been explicit in laying out what your beliefs are, instead of being nebulous like you are anon, you feel as if you were cheated and that I’m now preaching something wholly different than before. I’m not, unfortunately. It’s just that you have a hard time keeping up.

  14. LOL – well said.

    WHAT is surprising is that such could
    EVER survive the careful scrutiny of the censor’s gaze.

  15. What is configured to?

     
    We  ARE talking about software?  Software is code.  Code is a series of numbers that represent things.
     
    Lets start at the most basic.
     
    Describe the structure of “1".”
     
     
     
     
     

  16. “the precise label used to strike the claim down matters little if everyone understands the real test being applied is an economics-based policy balancing.”

    Nonsense on stilts. Worse gobbledegook than the mess the Supremes created when they invented the abstract idea dogma, since “abstract” cannot be defined and as case law has amplified, is in the eye of the beholder. A gauzy “economics-based policy balancing” can be used by any mediocrity to advocate any particular position on either side of any issue.

  17. They have utility.

    So does software.

    They are articles of manufacture.

    So is software.

    They are physical things.

    So is software.

    They are described in terms of their structure

    So is software – ‘configured to’ is structural.

    Any other concerns, Ned?

  18. Leopold,

    Withdrawal noted, without surprise.

    You see, Leopold, it is your (repeat) actions that drive this rather unfortunate perception that you now wish to label as ‘alleging.’

    You attempted once before in the past to get on an objective bandwagon, but you fell off (and fell badly) in your selective aiming of commentators and viewpoints to attack, er, um, address, alll the while choosing not to comment on much more egregious offenses (and even celebrating those).

    That you are ungracious is as unsurprsiing as that you are probably oblivious to this (and it would be even more shameful if you were not oblivious).

    C’est la Vie.

  19. Alleging that an apology is smarmy is not “graciously” accepting it. Nor is it particularly gracious to call your own actions “gracious.”

    I withdraw my apology, ungraciously.

  20. From PatentDocs by Andrew Williams under a new thread titled “The GAO Issues a Report on Patent Litigation Trends — It Turns Out that the Sky Is Not Falling”:

      As we have previously reported, the patent system is under attack, and has been for quite some time.

    Maybe this is another person that Malcolm will greet with his usual name-calling.

  21. (sigh)

    It’s too bad you could not contain the smarminess, but at least it is an apology of sorts.

    Apology most graciously accepted.

  22. OK. I acknowledge your mastery of the codified doctrine of the ladders of abstraction, and apologize for questioning you, as well as for any subsequent pedanticism.

  23. Leopold,

    You are obviously and desperately trying to find a (pedantic) tree in the wrong forest. Even as 6 now seeks to backtrack and play pedantic games by ‘introducing’ a modification to his ‘abstract theory’ with the notion of ‘generalization.’

    What can be gained? How about an acknowledgement and an apology? How about that? Maybe – just maybe – the red flag of ‘anon said’ wont stir you to immediate and thoughtless posting, and subsequent pedanticism from you.

  24. “by banning him”

    LOL – that is rich 6 especially coming from someone who actually has been banned from a blog directly due to a lack of knowledge of real law.

    Rich indeed.

  25. doesn’t actually discuss this codified doctrine

    Wrong – absolutely wrong. The concept is discussed and is applied.

    Where are my answers?

  26. Sir, you asserted that the use of abstraction in patent law has been “‘codified’ under a doctrine called ladders of abstraction.” And then you point me to a reference, while admitting (in Latin, impressively enough) that the reference doesn’t actually discuss this codified doctrine. I don’t think there’s much more to be gained from this discussion, do you?

  27. And thank you for yet another admission against your interests (even though you attempt to place some weasaling in the admission with the introduction of quotation marks (the Supreme Court did not use quotation marks by the way):

      First, the answer depends on the ‘business method’

    By saying ‘it depends’ you acknowledge that business methods exist that are patent eligible, and thus as a category, are within the ambit of patent eligible arts.

    Some business methods are not patent eligible. You should note that this has always been my position.
    Some medical methods are not patent eligible. This too has always been my position.
    Some ______ methods are not patent eligible (fill in the blank with any description). This too has always been my position.

    And this (correct) position that I have always held directly goes against your agenda to block ALL business methods at the 101 gate (and similarly, ALL software patents).

    The archives detail this out, along with the abundant dust-kicking and attempted obfuscations and attempted spins to keep the anti-patent agenda alive.

    You need to read Bilski again. Stevens’ view ended up as the dissent. Stevens’ view would have substantively rewritten the actual words of Congress (273) and simply could not be allowed to become the law of the land.

  28. all of the “modern” (?) business owners I know think that it’s ridiculous to grant patents on methods of determining prices, accounting, or otherwise “monetizing” task

    LOL – that’s exactly what the creationists say in regards to their faith – all the ‘right’ people believe as they believe.

    You need to travel in some different circles and get away from your own echo chamber (and your accusation of that which you do to follow in 4… 3… 2…)

    I would further add two quick points. Whether any select group (especially a select group made by anti-patent Malcolm) believes something or not is immaterial to both law and fact.

      1) Law: business methods are patent eligible as a category (See Bilksi)
      2) Fact: business methods have been granted by the USPTO throughout its history (See the archives of this very blog as Prof. Crouch has had a guest speaker demonstrate this)

    You cannot change either law or fact with your spin Malcolm. ALL you are left with is your ‘feeling’ and your selective group of people you know that believe as you believe – to use your own religious analogy – believe as a fundamentalist would believe, shutting their eyes to any contrary fact (or law).

  29. Leopold asked:

      “Can you point us to a reference that describes the application of this concept to either engineering or patent law, please?”

    Then asked again (twice within an hour and a half:

      “All I asked for was a reference that describes the application of a “ladders of abstraction” doctrine/tool to either engineering or patent law?”

    So when I reply not with one reference, but two, and even point out the particular chapter in his further request, the only response I get is a smarmy, pedantic, and empty one. Notably celebrated by a shill who has admitted that he does not want to have any actual conversation, or have his agenda questioned in any way (gee, I hope that pointing this out is not so offensive that this post is expunged – I might have to dress it up with some pr0f@nity).

    Leopold, where are the answers to my questions? And giving me back my reference does not count.

    Step up your ‘game,’ if you can. Or better yet, don’t play your ‘game’ in the first place.

  30. “personally” being the operative word there, Malcolm.

    Given your record of spin, well, that just proves my case. Thanks for that.

  31. I see that it was not possible for Leopold to address the point raised in any sense of intellectual honesty.

    C’est La Vie

  32. The attack on my legal knowledge is not only uncalled for, it is completely inaccurate.

    Personally, I found it accurate and necessary. Also humorous.

  33. After the way the thread has been edited by Prof. Crouch, there is a colorable argument that he has lost any website operator protection, and I can easily see his master database as discoverable.

    LOL!

    And then what?

  34. After the way the thread has been edited by Prof. Crouch, there is a colorable argument that he has lost any website operator protection, and I can easily see his master database as discoverable.

    Please elaborate. A website operator’s database is not discoverable if he doesn’t edit it?

  35. This is not so much about old prior art as it is the idea that if something has been around a long time the odds that no-one would have thought to use it decline exponentially, hence the one who does has has had more of a brainwave.

  36. A lot of good stuff in that article MM, first and foremost I notice that “Vague claim language should be clarified by looking to the specification, 45 and the claimed monopoly should be allowed to cover only those things that the specification teaches.46″ is a very interesting citation from See Sitrick v. Dreamworks, LLC, 516 F.3d 993, 999 (Fed. Cir. 2008 which resolves almost entirely the question of whether Rader is doing his claim construction correctly or not as we’ve been discussing.

    I also like his little intro to abstraction levels and all that but I find that his article suffers from the same thinking as some other people’s do. They let the “abstracting” go on down through what I would call the “levels of generification” of actual non-abstract inventions. In his article he claims that the generalization/generification of the details of a certain xray machine are in fact “abstracting” it down further and further. I would say this is false. At the point where you’re arriving to real machines specified at their structural levels (not a faux structural level mind you) you’re usually quite safely into the non-abstract, even if you keep your claim language generalized, or even if you make your claim language more generalized than it stasrted out as after an amendment. That’s a rather key difference which makes all the difference in whether your views spiral into tar dville like anon/IE’s have, or if you begin to understand and accept the supreme court’s law on 101. And I’m surprised that more people writing articles about the “levels of abstraction” haven’t picked up on it just yet. At some point (after I’ve brought it up of course and trailblazed) we’ll start to see people publishing with that in mind. It resolves much of the angst people have over the 101 criteria.

    Finally, I rather disagree with him on his assertion that what he calls the “unitary invention principle” is not “true”. He states it isn’t true because the spec shows embodiments and the claims cover “ideas”. Note first how all his citations throughout his book on that topic will be to other treatises coming to his conclusion, and also decisions which state the opposite of what he says though never says exactly what he says. The decisions all say the idea is the invention, or some permutation of that. But that doesn’t necessarily mean that the invention is also the/any WHOLE idea in the abstract. And the same applies to the rest of the quotes he provides in various ways. The “unitary invention principle” very much is true, for the very reason that if what he states is happening in a claim, i.e. that it is covering an “idea” where I take it he means “abstract idea” or idea in the abstract, then that claim will unquestionably get 101′d. The claims do not cover “ideas” though they should SUFFICIENTLY cover the embodiments within an idea so as to make the patent meaningful, which is what his citation to another reference talking about claims covering the “concept” means. If your claim does indeed cover a whole idea, in the abstract, then yo sht be invalid. What we’re looking for in patent law is claims to applications of ideas which will provide meaningful coverage to the inventor of the application of the idea, but without preempting the whole of any ideas in the abstract themselves. And it is a shame that people throughout the years have gotten so distracted about “ideas” to have let this sort of thinking seep in. Perhaps what is really needed is for the USSC to step in and clarify this for the common attorney since it is apparently beyond their ken to pick it up by themselves. It appears that judge Rich had his hand in making this travesty a reality, as per usual with these sorts of things.

    I also liked the part about what happened to Morse though I’m not sure I agree it is a modern day enablement problem vs. a 101 problem.

    He is also fundamentally mistaken about what shows possession and he even goes out of his way to cite a pre-ariad decisison to back his words.

    “On the other hand, an idea is abstract if it lacks specific context.186″

    That is an interesting take on “abstract”. Not sure if I quite agree that such is the full and complete definition or meaning.

    “But the question is not abstract because it refers to one specific person and the specific attribute of his height.”

    Even his example elucidates how he is mistaken due to his definition. I would say, if the question is not abstract, then it is abstract because it refers to a person (not even necessarily a specific one) and an attribute (not even a specific one). Though frankly, for our purposes in patent law, I would deem his question to be somewhat abstract regardless of the specifcity of the person or property. Thought the example doesn’t extend well to patent law. He goes on though to give other examples of why his conception of abstraction is mistaken.

    As a final note he seem much too cynical about today’s patent law. It works out just fine like probably 95%+ if not 99%+ of the time. In the rare cases that go to litigation sure, with determined parties adversarily facing each other down ripples will arise. But those are few and far between, and the amount of disclosure we get for our trouble is just fine compared to those small ripples.

  37. Interesting that a rather innocuous comment containing the word wh@t3v3r disappears without a trace.

    C’est La Vie.

  38. LOL,

    6 – I am not an an author of a work on ladders of abstraction.

    Straight up.

    I certainly hope that whoever this author is does not take your comments in the wrong way.

    After the way the thread has been edited by Prof. Crouch, there is a colorable argument that he has lost any website operator protection, and I can easily see his master database as discoverable.

  39. 6,

    You might actually try to read what I wrote and how I distinguished my comments from the present case.

    The attack on my legal knowledge is not only uncalled for, it is completely inaccurate.

  40. Did you miss the part about how Leopold responded with actual examples (as I provided actual examples) when he was challenged?

    How do you miss what was never there?

  41. There is a laugh alright – celebrating when someone blatantly mischaracterizes another is such a hoot.
    Nice to see what passes as enjoyment here.

    C’est La Vie

  42. “That itself seemed odd”

    Obviously it is odd, so odd I’m not even responding to his post. Rader wasn’t arguing in the alternative, or basing his position on one or the other, the whole premise of the conversation was that he was adopting both simutaneously, and not alternatively. But it’s fine, I can only /facepalm so many times in response to anon in a week. It’s literally almost as if he gets on this website every week/day, decides he’s going to try to find something “wrong” with what one of us says, and take a contrary position, just for giggles, even about topics which he hasn’t been introduced to in the slightest. There’s only so much you can do for such a man. Denise would in fact be doing him, as well as everyone else, a favor by banning him just so he can move on to subjects about which he knows something, or else get an IP related job so he can learn about the field.

  43. Man MM, whoever wrote that must be a super genius. Now all the hubbub over 101 seems super silly to me! No abstractions should ever be excluded! Long live the ladders doctrine!

  44. Maybe you should google some more. Using, I don’t know “patent” related words. You might come across a website that I posted a link to several times here on PO back in the day, though you don’t recall it I’m sure from back then. And you might find a specific name attached thereto, providing insightful comments. But it isn’t really worth your time. It was just supar interesting to me back when I didn’t know who a certain poster here was.

  45. Just wanted to say that LB gave me the best laugh today, at 12:14 pm.

    As we all know, anon is obsessed with the notion of “Ladders of Abstraction”. Fancy words (like a lot of fancy words, these were coined in social science), which I grant you do roll off the tongue and do sound impressive and evidently do appeal to anon as yet another stick to beat us all with. No engineer “worth his salt” says anon, over and over, is ignorant of this key concept.

    But, would you believe, when challenged, all that anon wants to tell us is that when you (as a patent drafter) are trying to claim an inventive concept, you should abstract what is the irreducible minimum combination of features that defines the concept.

    As if that basic claim-drafting skill is something which anon’s powerful brain knows about, but which nobody else here does, as in: “You are familiar with that concept Ned, aren’t you”

    So, for your amusement, here again is anon (first para) and then (second para) LB’s reply:

    “Still your turn, Leopold – what patent writing reference do you have that does not have this concept?”

    “I don’t have a copy in front of me, but I’m going to go out on a limb and say that Faber on Mechanics of Patent Claim Drafting is a reference that does not discuss the “ladders of abstraction” tool or doctrine.”

    Thanks for the laugh, LB. Without your wit, and that of MM, this blog would be a poorer place.

  46. How much elaboration is needed to support the proposition that unexplained delay in making an invention is evidence of patentability? The UK courts have long been aware of this, and there is a section on it in the CIPA Guide to the Patents Acts. Even the EPO which is not so receptive to circumstantial evidence will accept arguments along these lines on occasions. It is fine for a paragraph. But a whole article??

  47. Maybe you missed a few points while reading my post

    It was difficult to follow what you were getting at. You were trying to teach 6 how an “argument in the alternative” works? That itself seemed odd.

  48. Certainly long felt need must be something more than that people tried and failed.

    Except for the passage of some “long” length of time, I don’t think more is necessary.

    The problem must have existed and was a known problem that has solutions, but not good ones.

    I think those facts exist in every situation where “people tried and failed”.

  49. MM, consider a transmission between to devices where the signal is encoded in a series of dots and dashes (time).  I think we had that case somewhere in our history. 
     
    Can you help?  Name the case.

     
     
     

  50. “abstract idea” was written into 101 by the Supreme Court

    What shall we do about that grave miscarriage of justice, which they perpetuate on all Americans? Should we impeach them all?

    And then what? Do you think one should be able to patent purely mental processes?

  51. MM, good points.  But there does seem to have been a need to combine the various treatment compounds into one solvent given the 1990 article showing that providing separate and serial treatments were not effective.
     
    Certainly long felt need must be something more than that people tried and failed.  The problem must have existed and was a known problem that has solutions, but not good ones.
     
    Here, the prior art apparently tried to solve the problem of efficacy by adjusting the schedules of treatments, and to coach the patient to apply them regularly, etc. The problem of efficacy existed in a larger sense, and the invention solved that problem by combining the two medicaments into one, stable product.
     

  52. Thanks. I actually read that just an hour ago – I tried to comment on it, but couldn’t get one through. I also thought it was very interesting, but I don’t think TJ’s conclusions are what the “pro-patent” people on this blog are looking for, however.

  53. Ned: I think communications between computers might be sufficient if the communication itself is new as opposed to the novelty being in the content of a communication. For example, if the timing of transactions is new, I think the claim might be eligible because time is physical.

    So computer-implementer patentees won’t be able to control the kind of data you recieve/transmit/process with your computer, but they’ll still be able to control when you receive/transmit/process that data …?

    I don’t approve. ;)

  54. LB, I found an interesting article on line from Professor Chiang at Northwestern where he discusses “ladders of abstraction” at length, mainly in the context of claim construction.

    link to law.northwestern.edu

    Lots of interesting ideas in there. Chiang has argued before (in a guest post on this blog) that the “formal approach” that the Federal Circuit (and other courts) take in deciding, e.g., claim construction, is a mythology. He proposes more “realism” in the case law wherein decisions about the disputed scope of claims are resolved expressly on the basis of determinations about the effect that those decisions will have on the patentee’s business and/or the ability of others to innovate in the same field.

    This quote from page 1148 is interesting:

    once a court decides that the scope of a patentee’s claim is overbroad under an economic policy-based abstraction analysis, the precise label used to strike the claim down matters little if everyone understands the real test being applied is an economics-based policy balancing. The rejection may be classified under doctrines of enablement,
    written description, patent eligibility, or proper claiming. If the analysis is transparent to everyone involved, then its labeling becomes largely an inconsequential matter of semantics.

    Truer words were never spoken.

    I couldn’t find anything in there that would tell us when a “price” becomes non-abstract however.

  55. “Can you point us to a reference that describes the application of this concept to either engineering or patent law, please?”

    Why not google it and get more than your money’s worth? I promise you will get more than your money’s worth if you add in some special terms and pay attention to the authors ;)

  56. Still your turn, Leopold – what patent writing reference do you have that does not have this concept?

    I don’t have a copy in front of me, but I’m going to go out on a limb and say that Faber on Mechanics of Patent Claim Drafting is a reference that does not discuss the “ladders of abstraction” tool or doctrine.

  57. it will not be ipsissima verba”

    Oh, I see. So you don’t have a reference that describes the application of a “ladders of abstraction” doctrine/tool to either engineering or patent law. Thank you.

  58. I’ll try again with better formatting:

    Ned: one of the references disclosed that Vitamin B and corticosteroid were useful to treat psoriasis. But it took 15 more years before anyone put both into one solvent. This evidence alone seems convincing that the claimed invention here was nonobvious.

    I don’t follow, Ned. There’s all kinds of chemicals that are useful to treat psoriasis and all kinds of reasons that companies don’t bother combining two or more useful drugs and market them in combination. If there was documentation that people tried to find a shelf-stable combo and failed, that’s another story.

    The parts existed side-by-side to complete the patented combination for 10 years while a demonstrated need to make the combination existed. I don’t think the law should require more than this to grant a patent.

    I disagree. Just because someone says “It would be nice if someone were to combine X and Y in a shelf-stable manner so I could buy it” and ten years or even 100 years passes before someone bothers to manufacture and sell the combination, by itself that lapse in time does not make the combination more patent-worthy.

  59. one of the references disclosed that Vitamin B and corticosteroid were useful to treat psoriasis. But it took 15 more years before anyone put both into one solvent. This evidence alone seems convincing that the claimed invention here was nonobvious.

    I don’t follow, Ned. There’s all kinds of chemicals that are useful to treat psoriasis and all kinds of reasons that companies don’t bother combining two or more useful drugs and market them in combination. If there was documentation that people tried to find a shelf-stable combo and failed, that’s another story.

    The parts existed side-by-side to complete the patented combination for 10 years while a demonstrated need to make the combination existed. I don’t think the law should require more than this to grant a patent.

    I disagree. Just because someone says “It would be nice if someone were to combine X and Y in a shelf-stable manner so I could buy it” and ten years or even 100 years passes before someone bothers to manufacture and sell the combination, by itself that lapse in time does not make the combination more patent-worthy.

  60. the Right’s agenda is to eviscerate the power of patents and to minimize rather than promote the existence of patents.

    Fascinating. And what’s your evidence for this? You have some “secret memo”?

    And does “the Left” have a similar agenda?

    And what about “the Center”? I suppose that’s where all the reasonable patent-worshippers reside.

  61. Anyone with any inkling of modern business practice will readily realize that business methods are applied science.

    You’re wrong. First, the answer depends on the “business method”. Second, all of the “modern” (?) business owners I know think that it’s ridiculous to grant patents on methods of determining prices, accounting, or otherwise “monetizing” tasks.

    a very creationist view of business

    What?

  62. anon, on software, you know my position. If the claim is to an application, like a circuit or a machine that does something different, the novelty can lie in the software. That is what Diehr taught us.

    But if the claim is to manipulation of abstract concepts without any application to a circuit or a specific machine or system, then the claim is not eligible.

    Merely reciting convention elements in a computer is not enough. I think communications between computers might be sufficient if the communication itself is new as opposed to the novelty being in the content of a communication. For example, if the timing of transactions is new, I think the claim might be eligible because time is physical.

    I don’t know a simpler way of putting it than first determining what is old and what is new, and then determining whether the new, even if abstract, modifies the old in an eligible way. Creating a new machine where the programming is part of the machine may be sufficient.

  63. Well if the art didn’t try to solve the problem, the art must not have recognized the problem, where the inventors did recognize the problem and the invention is non-obvious for THAT reason.

  64. Max, what I see new in Rader’s approach is to infer long felt need from each of the references themselves.

    I tend to agree with Rader here. For example, in this case, one of the references disclosed that Vitamin B and corticosteroid were useful to treat psoriasis. But it took 15 more years before anyone put both into one solvent. This evidence alone seems convincing that the claimed invention here was nonobvious.

    But when one adds the 1990 article about how treating psoriasis with multiple different compounds that have to be applied serially was not only inefficient but ineffective, the need to find a solvent to combine vitamin B and corticosteroid existed from that date.

    The parts existed side-by-side to complete the patented combination for 10 years while a demonstrated need to make the combination existed. I don’t think the law should require more than this to grant a patent.

  65. When was the last time you did any engineering, Ned?

    You are so far into the weeds here, I am not sure that you can hear the sound of my voice calling you to get back onto the road.

  66. I would think engineering is more akin to applying abstract principles than abstracting principles from the application.

    The philosopher attempts to define principles from existence. The scientist attempts to abstractly describe physicality, and then prove his theories by repeatable experiments. The patent attorney seeks to abstract the principle from the examples, but that does not mean he can claim the principle in the abstract.

    Our debate on software is not a debate on its value. Rather it has to do with the scope of claims. Can one claim, for example, the Pythagorean theorem sans application? The mathematics is clearly valuable. But what do we give patents for?

    Engineering. Not abstractions.

  67. Perhaps it would be easier Leopold for you to provide a reference on writing patent claims that does not use the idea of ladders of abstraction.

    Faber on Mechanics of Patent Claim Drafting is a reference that uses the concept, as is Slusky’s Invention Analysis and Claiming.

    Your turn.

  68. Max -
    In the U.S., “long felt need” is a factor in the Obviousness analysis:

    From the Manual of Patent Examination Procedure Section 2141(IV)

    V. CONSIDERATION OF APPLICANT’S REBUTTAL EVIDENCE

    Office personnel should consider all rebuttal evidence that is timely presented by the applicants when reevaluating any obviousness determination. Rebuttal —evidence may include evidence of “secondary considerations,” such as “commercial success, —-long felt but unsolved needs—-, [and] failure of others” (Graham v. John Deere Co., 383 U.S. at 17, 148 USPQ at 467), and may also include evidence of unexpected results–. As set forth above, Office personnel must articulate findings of fact that support the rationale relied upon in an obviousness rejection. As a result, applicants are likely to submit evidence to rebut the fact finding made by Office personnel. For example, in the case of a claim to a combination, applicants may submit evidence or argument to demonstrate that:

  69. I don’t think I’m kicking up anything. Just 90 minutes ago you said that “the [ladders of abstraction] tool is especially helpful in claim drafting (and any patent attorney worth their salt knows this).” You also said that “it very much is an engineering tool.”

    All I’m asking for is a reference that describes the application of a “ladders of abstraction” doctrine/tool to either engineering or patent law. Can you not provide one?

  70. I disagree. I believe Radar is saying older prior art is quite relevant as failure to improve upon the prior art in the manner of the invention tends to show a “long standing need” and is therefore evidence of NON-obviousness.

  71. MPEP question from 2013 exam.

    143. How did Chief Justice Rader get to be the Chief Justice of the CAFC.

    a) “Ability” to sing.
    b) Plays in a “band.”
    c) Likes to tell “jokes.”
    d) Wrote “Patents in a Nutshell”.
    e) Professor somewhere.
    f) BA in English.
    g) More important than Supreme Court.
    h) Peter principle.
    j) All of the above.

  72. I’m still having trouble following this. So, large well-established firms (The Right) like IBM, Intel, and Qualcomm are trying to eviscerate the power of patents, while simultaneously filing thousands of applications?

  73. If you have 6 years of engineering education and 20 years of engineering work, you have used abstraction without realizing that is may now be ‘codified’ under a doctrine called ladders of abstraction.

    Right, that’s pretty much what I just said. But you said that this doctrine/tool has made it into engineering and patent law, and you’ve repeatedly suggested that all of us should be as keen on this topic as you. Just the other day, for example, you said that “chair” and “price” are equivalent terms with respect to the ladders of abstraction. I would simply like to know what you’re talking about.

    All I asked for was a reference that describes the application of a “ladders of abstraction” doctrine/tool to either engineering or patent law?

  74. And Ned, I would add that his ‘creationist’ view extends to how he views business methods (something you too may be ‘guilty’ of).

    Anyone with any inkling of modern business practice will readily realize that business methods are applied science. If you think otherwise, you have to ignore Deming and you have to embrace a very creationist view of business.

    And this is very clear to anyone willing to have a mind open to understanding, anyone without an agenda.

  75. Open your eyes, Leopold. If you have 6 years of engineering education and 20 years of engineering work, you have used abstraction without realizing that is may now be ‘codified’ under a doctrine called ladders of abstraction.

    Have you ever written a single patent claim that was not a (useless) picture claim?

    If so, then congratulations – you have used the ladders of abstraction.

    You may want to attempt to not see the red flag of ‘anon said’ in this discussion.

    If that is possible.

  76. I am suggesting that the Right’s agenda is to eviscerate the power of patents and to minimize rather than promote the existence of patents.

    Their actions (driven against one art) will have effects across all arts – even those that they may want to ‘quarantine.’

    This is readily seen (but you have to open your eyes) in the NIMBY effects and the “Oh CRP” exclamations most generally coming from your beloved in our 101 discussions of Prometheus and Myriad.

  77. Perhaps I’m not worth my salt, but I have never consciously used a “ladders of abstraction” tool in claim drafting, and I don’t recall it from any of my 6 years of engineering education or 20 years of engineering work. But perhaps I’m just too old.

    Can you point us to a reference that describes the application of this concept to either engineering or patent law, please?

  78. Ned – you could not be farther off the path with your comment of

      Are those two words even remotely compatible? Are they not oxymoronic?

    Engineering requires critical thinking and innate to that critical thinking is the ability to abstract.

    This has absolutely nothing to do with Malcolm’s polemics concerning science and religion. Quite the contrary, Malcolm seeks to deny science its full scope, and is very much the ‘creationist’ viewpoint when it comes to modern day science.

    After all, he simply believes that the modern day world owes nothing to software (and is yet unwilling to put his money where his mouth is and refrain from interacting with anything that has advanced through software).

    How about you Ned? Are you willing to give up any innovation that has been driven by software? I think you should at least consider what giving up all innovation driven by software would actually mean to you in your everyday life. Give that thought some serious, intellectually honest consideration.

  79. … the pharma industry would be gutted, as the mere race of more than one company towards a new drug makes that drug obvious in light of market conditions. “Simultaneous discovery” means no one gets a patent and large well-established firms (The Right) win by eliminating the ability of patents to reset the marketplace.

    Are you suggesting that “The Right” wants to eliminate patents for pharma?

  80. MaxDrei,

    No. The ladders of abstraction has made its way into engineering.

    It may be similar to, and may even be based on, the political and social science version, but it very much is an engineering tool.

    And yes, the tool is especially helpful in claim drafting (and any patent attorney worth their salt knows this). That is why 6′s frankly asinine ‘abstract theory’ is so offensive.

  81. The Flash of Genius mindset aligns well with the attempted re-imagining of patent law, as patents would be much more tightly constrained to not only flashes, but flashes by the elite.

    Any mechanism that so tightly constrains the power of upsetting markets will naturally be advanced by those who are entrenched in the market – and is the enemy of true innovation, which by its very nature is destructive to established powers.

  82. Even the idea of ‘race to the patent office’ would mean the prize being raced for was obvious, as any race with more than one runner means the prize was there ‘in short order.’ The mere presence of a patent would destroy the ability to obtain a patent and the flame of interest would consume the very vehicle meant to carry that flame (or those competing flames) to fruition.

    Judicial tampering would bring the evisceration of actual (that is, Congress written) patent law. It is not up to judicial imagination to find the right balance (to put its fingers in the nose of patent law). As Rader also admonishes: stick to the actual words used by Congress.

    Those attempting to paint Rader as a renegade are the actual brigands, attempting to use the judiciary for what is the job of Congress.

  83. Sartori’s Ladders of Abstraction is a concept in political and social science, rather than engineering. Fancy name. Sounds impressive.

    I think anon is trying to tell us something about how to draft a good claim, to embrace an inventive concept. In particular, one should reduce to a minimum the number of features needed to realise the concept. But Ned, isn’t the claim drafting process somehow a process of abstraction?

  84. As one example of irreparable damage, the pharma industry would be gutted, as the mere race of more than one company towards a new drug makes that drug obvious in light of market conditions. “Simultaneous discovery” means no one gets a patent and large well-established firms (The Right) win by eliminating the ability of patents to reset the marketplace.

    Can you say ‘agency capture?’

  85. “Engineering”

    “Abstraction”

    Are those two words even remotely compatible? Are they not oxymoronic?

    As in when MM suggests at times that science and religion are polar opposites.

    Also consider the difference between faith and knowledge.

  86. And what’s more, Rader is very much aware of exactly which branch of the government should be writing patent law (hint: it is not the judiciary, no matter what the Supreme Court says).

  87. ps: Duffy was wrong (for a variety of reasons, but chief among them is that his view solidifies hindsight into the analysis and does irreparable damage to the 101 section of “or any new and useful improvement thereof”).

  88. The specification’s background states that Vitamin-D (“A”)and a corticosteroid (“B”)were commonly used in separate preparations to treat psoriasis:

    “Thus, in the treatment of e.g. psoriasis, it is common to use a combination treatment involving a steroid compound, such as a corticosteroid compound, and a vitamin D analogue such as calcipotriol, and where each of the active compounds are formulated in separate preparations.”

    It goes on to state a general problem of incompatibility of solvents having widely spaced pH’s, forcing sequential treatment of psoriasis:

    “Consequently, physicians have had to resort to letting patients under this type of two-component regimen perform sequential application of two creams/ointments, each containing one of the compounds formulated at its maximum stability pH. This may lead to incompatibility of the preparations so that patients must, e.g., apply one cream/ointment in the morning and the other in the evening. Needless to say, patient compliance as well as correct administration dosage is a problem under such circumstances. Richards, H. L. et al. report in J Am Acad Dermatol 1999 October; 41(4):581-3 on a study of patients with psoriasis and their compliance with medication. They report that poor compliance with treatment advice in chronic conditions, such as psoriasis, represents a major challenge to health care professionals.”

    The above does suggest that “stability” the problem solved by the patent (circa 1999) was known since at least 1990.

    Both Dikstein (1984) and Serup (1993) disclose combining A and B to treat psoriasis. Thus a need for a solvent for combining A and B into a stable combination was present since at least 1990, at least 9 years, and perhaps for as many as 15, given Dikstein (1984). Yet no solvent for both was developed in all that time?

    Turi, the 22 year old reference, only disclosed solvent C for compound B. That suggested that solvent C might be tried. But since it did exist, side by side, with the need for the combination for so many years, one might agree with Rader that it was not obvious to try.

  89. I recall a Paper by Prof John Duffy some years ago, that urged us to look at what he called “timing”, that is, how long ago the closest prior art was published, and be more willing to recognise non-obviousness when the art is aged. His Paper (published by a University in Texas, as I recall) was called something like “Obviousness: The Timing Factor”. Perhaps Prof. Duffy has influenced CJ Rader.

  90. Name calling – it is one of those “oh so shri11″ things that is a specialty of Malcolm’s.

    And any comment that truthfully noting that may or may not disappear. But what are the odds that outright pr0fanity remains…

    C’est La Vie

  91. So what purpose is served by 35 USC 103?

    The purpose it was meant to serve – obviousness.

    Do you have a point there, Malcolm? Maybe you missed a few points while reading my post (hint: “simply not obvious” and “still not being obvious“)

  92. Ned,
    In Ariad, Judge Rader got this right:

      The Constitution of the United States gives Congress, not the courts, the power to promote the progress of the useful arts by securing exclusive rights to inventors for limited times. Art. I, § 8, cl. 8. Yet this court proclaims itself the body responsible for achieving the “right balance” between upstream and downstream innovation. Ante at 28.

    “One has to wonder what else lurks in ‘implicit’ words…

  93. MM:”Man, this blog has the weirdest tr0lls.”

    MM, the Court does say “a principle in the abstract [IS] a fundamental truth; an original cause; a motive” , and these cannot be patented. ” My emphasis on “is”.

    The point is if Versatas claim as a whole was only a recitation of any of the foregoing principles, the claim would not be eligible for patenting under the abstract idea exception. On this there can be no debate. However, Ned, nor you or anyone else on the planet can prove the claims as a whole are “a fundamental truth; an original cause; a motive” and therefore Ned, nor you, or anyone on the planet, have no legal basis from the Court to declare the claims abstract. And calling me “the weirdest tr0ll” or some other silly name will not change this fact or the law.

  94. Either you have defined a new problem – and thus get the pass (whether or not you buy into it or not put to the side for the moment), because it simply was not obvious to think of the situation given the older prior art providing all the raw ingredients way back when; or you have resolved a long felt need that the prior art sitting around for decades and still not being obvious to any person having ordinary skill in the art to do what you did.

    So what purpose is served by 35 USC 103?

  95. there’s a problem with saying nobody did anything while simultaneously saying that they didn’t even appreciate the problem.

    I’d word it this way: there’s a problem with saying “nobody did anything to solve the problem that was appreciated” while simultaneously saying “the problem wasn’t appreciated”.

  96. Thanks,…

    …I think.

    That’s a formidable wall of text with all the circling round and round you are doing.

    I could be off, but it appears that you think ‘figuring out a new problem’ is a consideration, but you personally (along with a lot of you) don’t buy it as a consideration. And certainly, you don’t buy it for this case.

    I think it also appears that you are not all that familiar with the concept of arguing in the alternative, and that you think that such arguing automatically nullifies both of the arguments. I have not read the case yet to see if that is actually going on here, so I can only comment that generally, that is not how arguing in the alternative works.

    I also have trouble following your ‘doctor finding out’ discussion – is that finding out after the invention, in which case, I am not sure how you are using that information, or finding out before the invention, which also does not make much sense from what I read so far.

    In other words, the argument in the alternative does appear to work here.

    Either you have defined a new problem – and thus get the pass (whether or not you buy into it or not put to the side for the moment), because it simply was not obvious to think of the situation given the older prior art providing all the raw ingredients way back when; or you have resolved a long felt need that the prior art sitting around for decades and still not being obvious to any person having ordinary skill in the art to do what you did.

    And remember that the court’s decision is looking at how the Office argued the case, not necessarily how the end result is or should be. The Office simply used secondary considerations poorly, almost flippantly. That is not the way the Office is supposed to handle it. This appears to be a case where the prima facie case was rebutted. Once that happens, all the bits and pieces are to be analyzed without the conclusion already drawn from the prima facie case.

    As I said, I haven’t read the case, and don’t have an opinion about the actual obviousness determination, but from what I see of the posture of the case, the Office simply did not carry its burden of persuasion.

  97. Ned, can you please explain why, Versata’s claim from the PTAB Versata v SAP case, as a whole is a legally abstract intellectual concept in the form of a a fundamental truth; an original cause; or motive?

    Sorry, I have to chase you all over the blog with this but that’s what happens when you run away from discussions rather than be intellectually honest and answer the question. Oh and I would ask your fellow anti patent cronies to answer but LB would simply tell me to shut up, MM would LOL and call the claims cr*p. And 6, well 6 would not even go there. So that leaves you Ned Heller, the one so called credible anti that uses his real name. Now, lets see if you can give a real answer.

  98. Because you’re saying, in total, a. that nobody (meaning real people, not imaginary people) did anything, while simultaneously dismissing your own argument a. as to it showing non-obviousness in making your next argument b. explaining why they didn’t do anything, i.e. they didn’t see a problem with what they had and thus weren’t even trying to make combinations (as opposed to it simply being non-obvious). If they weren’t even trying, then their actions aren’t all that probitive of the non-obviousness. Just as an example, people could be unaware that sitting increases your chance of heart disease by 25% if you do it overmuch. Some inventions (special chairs that make you stand up every 20 minutes maybe) to address it are likely obvious, based on the prior art and other motivations to combine, or just as soon as doctors find this out and it becomes known. Just because nobody had been trying to solve the problem doesn’t mean that all those inventions are now magically unobvious, many of them are drop dead obvious regardless of the doctor’s findings being disclosed. In short, as the opinion what’s his name cited above, it is mainly when there is a failure of others to accomplish making the invention when they’re trying to that you infer non-obviousness, not when they’re simply sitting on their duff (or otherwise occupied) not thinking about making any combinations. You can only have the one or the other argument be at all convincing at one time. They’re pretty close to, if not entirely, mutually exclusive.

    All that is not to say that I might not have come out on Rader’s ultimate side on the issue of obviousness (save for his bizarro claim construction), but the argument he’s making is kind of bizarre.

    A lot of us out here don’t really buy into the whole “I figured out a new problem therefore I can has patent now for this thing that would otherwise be deemed obvious” paradigm. We evaluate the invention itself in relation to the prior art, and what the prior art suggests be done as to what combinations will or will not be obvious. We don’t toss in the “well we figured out this problem” too much, or at least we don’t simply withdraw a combination of prior art that the prior art itself suggests simply because the prior art didn’t note the problem that the applicant solved by making the combination. That is of course not to say that the “I figured out a new problem” isn’t always tossed out of consideration, it has it’s place, but not really so much in this situation.

  99. ” In the PTO, where there is an opportunity to amend and clarify, the broader, literal construction clearly is the right construction under BRI. ”

    I disagree that such is the case in every case depending on the circumstances. The case I discussed above is a good example, in fact an excellent example. Though in that case the literal construction clearly was the BRI, and it was narrower than the figurative, or less literal and more wink, wink, nudge nudge, construction they wished me to adopt.

  100. Well, MM, I think there is a difference between the PTO and the courts on this.  In the PTO, where there is an opportunity to amend and clarify, the broader, literal construction clearly is the right construction under BRI.  In court, the narrower construction that  preserves validity should be preferred if that is a reasonable and possible construction.  If not, then let his claim be held invalid as lacking written description support (new matter).

     
     

  101. “That’s no different than re-writing the claims for the applicant to preserve them. ”

    I’m afeered I can’t agree. Giving a narrow claim construction to a claim that should be interpreted in light of what was disclosed originally (which I presume is narrow) is somewhat different imho.

  102. “alleged inability to apply the written description requirement? ”

    I don’t think Ned is alleging they lack the ability, I think he was suggesting outright rebellion.

    link to cafc.uscourts.gov

    Looks like there is an interesting breakdown in the opinion that I’d forgotten about. I’ll have to re-check that sometime.

  103. That’s interesting you feel that way MM, with real world consequences I should add.

    I had a case just a little while back where I was going to allow the amended ind under a narrow construction and where there was a depending claim to a species that was non-elected. The applicant was trying to get me to adopt a broader interpretation of the limitation (one that went wholly outside of what is reasonable in our art, and especially when he was introducing a wholly new term into the case in his amendment) so that the ind. would be generic to the species in the depending claim and I would withdraw the species restriction as to that claim. I declined to so construe the claim, informing him that if I did so it would lead to a new matter rejection of claim 1 (as well as a distinct one from the depending claim) and then the claim 1 wouldn’t be a generic allowable claim and he wouldn’t get the depending claim back in the case anyway. The man had the gall or outrigth paranoia to construe this as a threat, if you can believe it. Here I am being generous to the man, and simply explaining to him how it would wreck his case (or at least his amendment) if I construed the ind. more broadly so as to make it generic and get the dependent back in the case and he thinks I’m going all bad a ss on him. In any case, I think I was eventually able to cut through his apparent paranoia that I was totally out to get him by a little explanation and hand holding.

    See, under your and Rader’s proposed claim construction model I just 112 1st his entire endeavor and his sht is wrecked. Under mine, he gets the narrower claim construction (which, I stress is the BRI for sure) and the independent survives to issue. Them’s some real world consequences to this difference.

  104. Ned the real point of departure between Rader and Lourie is what you said just now. A generic claim term is added that is not defined in the specification. Rader will interpret the claim term literally, raising all sorts of WD problems which he not only does not recognize, but which he actively opposes

    I recognize the difference. I’ll note again that construing claims that contain new matter is a real problem and the answer is: just invalidate the claim as new matter. But if you are going to construe such a term, I think Rader has the better approach.

    It’s also true that if you lack written description support for the words you are using in the claim, then the claims should be invalid. Similarly (very similarly, in most cases) if the claim is not enabled for the full scope of the “new” term’s ordinary meaning: then it’s a 112 enablement issue.

    If it’s true that Rader does not recognize written description issues, then that’s a real problem (but not a problem with claim construction per se). How many of the other judges on the Federal Circuit also suffer from this alleged inability to apply the written description requirement?

    I find the alternative “approach” to this situation to be more problematic: instead of a written description rejection, construe the unsupported term so it covers only what is possessed, enabled and free of the prior art. That’s no different than re-writing the claims for the applicant to preserve them. And if it’s done in a manner that leaves the defendant still infringing, it’s a pretty rotten sight to behold. As noted upthread, in this instance it seems that the Federal Circuit’s broadening of the term leaves the applicant with a fair amount of scrambling in its future. That seems a reasonable price to pay to “stay alive” for a bit longer.

  105. “particularly the bit about discovering the problem of shelf stability being the invention when the specification stated this to be a known problem of the prior art.”

    lololololol. Looks like the feds phoned this one in if that is the case.

  106. yeah I’m going to have to agree. On the other hand, I do understand rader’s argument, though like MM said there’s a problem with saying nobody did anything while simultaneously saying that they didn’t even appreciate the problem.

  107. “but which he actively opposes as an independent legal requirement of claims, noting his opposition to the holding in Ariad.”

    Well son of a gun. I hadn’t even been aware of him opposing the ariad standard. That’s quite news to me, as I had forgotten if he wrote a dissent or otherwise noted his disapproval somewhere else. So help me go d that man needs to just step down and stop f in with the law if that’s true. If he can’t be bothered to apply the law properly he’s got no business being on the court. I know the man is willful and a leader and all that, but this outright rebellion he’s got a penchant for is just absurd.

    Though I note that would explain his behavior.

  108. Having reconsidered, I think the case should have considered how long the need to combine the two compounds stably was known before the applicants came up with the solution. The fact that the references were old is irrelevant.

  109. Anonymous,

    I think the better question is how long it took to come up with the industry-standard POP-15-SE solvent after the art recognized the shelf stability problem of combining Vitamin D with the corticosteroid in conventional solvents.

    The inventors did not claim to have discovered this shelf life problem as implied by the court. Once the problem was recognized, the solution may have been hit upon right away, or it might have taken years.

    But the court did not discuss this.

  110. While the mere (an overused modifier if there ever was one) age of the reference(s) may not be determinative, as Rader recognized, it is nonetheless one of the factors in the obviousness analysis; and must, where present and argued, be given due consideration.

  111. MM, on long felt need, I credit the specification which appeared to say that the problem of shelf life stability of combination of the two medicaments was known, but for how long the problem was known was not stated in the opinion IIRC. But how long is a critical fact.

    The old prior art did not recognize the stability problem. But as soon as the art recognized the stability problem, how long did it take for one to put the combination together.

    Rader does not appear to discuss this. As a result, I too see big holes in his case concerning long felt need.

  112. 6, I have been trying to point out to MM for some time that the real point of departure between Rader and Lourie is what you said just now. A generic claim term is added that is not defined in the specification. Rader will interpret the claim term literally, raising all sorts of WD problems which he not only does not recognize, but which he actively opposes as an independent legal requirement of claims, noting his opposition to the holding in Ariad.

  113. Functional claiming? MM, according to you, the claimed genus seems to be to a broad set of compounds some of which might work, some of which might not, for some arbitrary definition of “storage stable.”

    What does this suggest?

    It seems to me that all of the claimed compounds must be “storage stable” such that “storage stable” is a property defined by the genus. But what is that property if some compounds in the genus last 2 minutes on the shelf before degrading, and others last 2 years? How are we to determine what the range is except by testing the entire genus? And, if some of the genus did not produce storage stable compounds by any stretch of the imagination, what does storage stable mean if anything?

    I thought the law required enough examples to demonstrate efficacy of the entire claimed genus for the disclosed or claimed utility. How can a limited number of embodiments support a broad genus where some examples simply do not work? What benefit do we achieve from such a disclosure?

    Finally, the patentee submitted tests of combinations of the prior art. Are these combinations within the literal scope of the claims. If not, are there other combinations not tested that are?

    In an inter partes reexamination, did the third party have the right to cross examine the patentee’s experts? If they did, I might be a little less nonplussed.

  114. “The mere age of the references is not persuasive of the unobviousness of the combination of their teachings, absent evidence that, notwithstanding knowledge of the references, the art tried and failed to solve the problem.” In reWright, 569 F.2d 1124, 1127, 193 USPQ 332, 335 (CCPA 1977).

    Now that actually makes sense!

  115. “The mere age of the references is not persuasive of the unobviousness of the combination of their teachings, absent evidence that, notwithstanding knowledge of the references, the art tried and failed to solve the problem.” In reWright, 569 F.2d 1124, 1127, 193 USPQ 332, 335 (CCPA 1977).

  116. 6, the opinion, in some aspects is a joke — particularly the bit about discovering the problem of shelf stability being the invention when the specification stated this to be a known problem of the prior art.

    Where to they get off? Are they serious?

  117. Moreover, the a broader construction just might lead to invalidity due to indefiniteness and/or written description as stated by Dennis.

    The Feds here did not help the patentee at all. They may have doomed the patent for adding new matter.

  118. I agree that the case could be resolved on objective evidence, the fact that the references were old negated “obvious-two-try,” and, due to their very age, indicated long felt need. But the opinion as Dennis recognized is a joke to the extent that the court criticized the Board for not recognizing that the recognition of a problem can be the invention when the very problem that they say the board did not give credence to was stated to be a known problem in the art for which the invention provides a solution.

    What bunk.

  119. Patent Docs ran this story on August 13. I copy below my last comment to Dr Noonan, which is the 5th and last posting to his thread. I do that because it goes to the “long felt want” issue you mention:

    “Indeed Dr Noonan. When have we ever seen evidence of such persuasive force that i)the objective technical problem was old and had defied solution for many years and ii) the Inventor had solved it? The evidence was not only that the Invention delivered to the market a viable medicament and commercially attractive product but also that the prior teachings over many years did not.

    Not sure about your “unappreciated” though. Which did the pharma industry not appreciate: Patient compliance, storage stability, or both?”

    MM, how can anybody seriously assert that nobody was aware of the need for “storage stability”. It has been, since the year dot, a sine qua non of any commercially viable medicament, hasn’t it?

  120. The court said,

    “Because it is unnecessary for this court to adopt a specific alternative construction to resolve this appeal, this court declines to do so leaving that question to a later form with the issue is determinative.”

    I do not understand how the Federal Circuit even reached the issue of claim construction of “storage stable” because the answer to that question was irrelevant to the side in the appeal. At best this is dicta. Why did they even bother?

  121. You do know that ‘actual people’ are not used for the legal analysis, right?

    My point is that they are in fact being used for the legal analysis, but they shouldn’t be because there’s no legal/factual basis for it.

    Is this another one of those times when we “disagree to agree”?

  122. And really, if you think about it, that conclusion has always been imbedded within the objective indicia of nonobviousness, because it’s a species of “long felt unmet need.”

    But Rader et al also argue that there was not, in fact, a “long felt need” for the claimed invention because the “problem” of storage stability of the recited combination of active ingredients wasn’t appreciated by the prior art.

    when prior art is not improved upon in the manner of the invention for a long period of time, that particular prior art is less “probative” of or “relevant” to the obviousness analysis

    That might be true but well-established case law (perhaps less well-established than we thought?) tells us that the justification for a claimed combination need not be the same as the justification provided by the applicants. That’s where the Federal Circuit’s opinion seems to take a turn for the worse. Prior art (happened to be old) was presented that taught the chemicals recited in the claim (prior to the re-exam) and provided a reasonable motivation to combine the art. The applicant seems to have responded by pulling a rabbit out of its hat during re-exam and presenting (1) a new invention bounded by a functional limitation where the bounds of the function were not defined in the specification; (2) newly obtained (or disclosed?) data data showing that certain specific combinations suggested in the prior art didn’t achieve the newly recited results (never mind that the results with that newly obtained data could not have been “predicted” with any more accuracy than the results obtained using many (most?) of the massive combination of untested reagents disclosed in the claim, which is now apparently even broader than the narrowly contrued claim examined by the PTO).

    There is also a logical problem with the Fed Cir’s “long felt need” analysis:

    If these discoveries and advances were routine and relatively easy, the record would undoubtedly have shown that some ordinary artisan would have achieved this invention within months of Dikstein or Serup. Instead this invention does not appear for more than a decade.

    Indeed, “the claimed invention” does not appear in the record of human civilization for thousands of years because there is no dispute in this case that the claimed invention was not anticipated (it’s also true that the claimed invention was not actually claimed until the re-examination proceedings). According to this logic, every non-anticipated invention can be argued to fill a “long felt need”.

    The issue is whether the “need” for the claimed invention was actaully something that people have desired for a long time (e.g., a machine that can accurately read minds) or was the need merely some untapped or uncreated “market” for a product that people were perfectly content to live without until the “improved” version came along. This isn’t to say that the later “need” isn’t one that patents have a roll in filling. But it shouldn’t be confused with the former need and used to justify the granting of broad, late-presented claims that preclude others from entering the market with solutions that are similar (but no less predictably useful) than the solutions shown in the patent specification to achieve the recited functionality.

  123. And really, if you think about it, that conclusion has always been imbedded within the objective indicia of nonobviousness, because it’s a species of “long felt unmet need.”

    Not really.

    A patent that has been around for a while has been known to the fictional “person of ordinary skill in the art” for a long time, that’s true enough. But the actual people practicing in that field might never have heard of it, in which case what they spent twenty years not doing is no indication of what would have been obvious in view of that art.

  124. What if the old prior art was never improved upon because nobody really knew about it, i.e., indexed in a library in Zambia? Under the case law, that piece of prior art is just as valid as any other, right?

  125. Hey guys I just inventloled something. You guys can put this into formal patent language if you want. But it’s basically a computer program or add-on for a program like adobe that will read pdfs. or else it is a stand alone program. In either event, it constantly takes screen captures and analyzes them (or otherwise OCR’s or simply character captures) for references to technical papers (or other references, setable by the user) and which constantly googles (or searches in other places/also does other places) and then brings up the links for you to conveniently be able to click on them without having to hand search each one.

    Someone make this and it will be ftw for researchers. Maybe the office would buy it for us too, or incorporate the “inventionlol” into the new examiner software package due out next year. You can even tell them that you invented it, I won’t dispute it. FITF, get your patent app in before midnight!

  126. What I don’t understand is the post’s conclusion that Radar’s analysis suggests older prior art is not “credible”, or is less “credible.” I don’t see any relationship to or discussion of credibility.

    I do think that Radar’s analysis provides support for the conclusion that, when prior art is not improved upon in the manner of the invention for a long period of time, that particular prior art is less “probative” of or “relevant” to the obviousness analysis. And really, if you think about it, that conclusion has always been imbedded within the objective indicia of nonobviousness, because it’s a species of “long felt unmet need.”

  127. “It’s remarkable that the applicant here was allowed to throw in a functional limitation,”

    The best way to sneak those into cases involving the useful arts is through stand-in terms such as were used here, where the function is imported into the claim through the definition of the word. Unwary examiners will often overlook this or not understand what is happening. If called on the practice, most attorneys acknowledge that they used functional language intrinsically in the limitations explicitly recited and will roll with the office adopting such a construction. At least in my experience.

    Without having reviewed the case in total I find it hard to believe that there was WD support for the limitation as construed now. Thus, Rader strikes again with his wierd claim constructions that are divorced from what was actually disclosed. Remember how interpreting a claim term such that it isn’t supported doesn’t make any sense MM? We were just talking about it the other day, and Rader appears to be making a real habit of it. Hopefully the examiner understands claim constructions and WD and then on return pops a 112 1st if appropriate.

  128. Let me guess – the examiner construed “storage stable” to include a barn; the reference recited a warehouse, which was held to be the functional equivalent.

    You guessed wrong. In this case the Board used a reasonably narrow construction in spite of the fact that the term “storage stable” did not appear in the Applicant’s specification or in the prosecution history. Per Dennis’ summary:

    the term “storage stable” was difficult to construe because it was never used during prosecution of the original patent application and only added during reexamination. However, the patent does discuss the composition’s “ability to resist degradation” according to test results presented in the specification and the PTO accepted that definition as proper[, n]oting that one of ordinary skill “would have reasonably looked to the described stability test as defining what was meant by ‘storage stable.’”

    The Federal Circuit objected to that construction as too narrow, but apparently declined to offer its own construction of the term.

  129. I’m not sure I agree with Rader’s comment here:

    until the advancement made by the inventors of the ′013 patent, no one had proposed a new formulation that would be storage stable. The problem was not known, the possible approaches to solving the problem were not known or finite, and the solution was not predictable.

    The “problem” of improving storage stability is an over-arching one that is certainly “known” to anyone preparing a medicament (or many other non-medical chemicals for that matter). It’s not the only such over-arching “problem,” of course. “Faster acting”, “easier to administer”, and “more potent with less side effects” are also universally recognized “problems” in the area of medicaments (just as “faster” or “more informative” is a universally recognized “problem” in the context of information processing).

    As for the “possible approaches to solving the problem” of storage stability, those approaches are also well-known. They include: adding known stabilizers, adjusting the pH, removing destabilizing contaminants, etc.

    As for “predictability,” that depends very much on the definition of “storage stable” being used. The Federal Circuit chucked the Board’s “too narrow” construction but failed to provide an alternative construction (it cites but does not adopt the applicant’s construction: “Under its accepted and customary meaning, “storage stable” would include a composition that maintains its stability during its shelf life for its intended use as an approved pharmaceutical product for sale and home use by ordinary customers.”).

    It’s remarkable that the applicant here was allowed to throw in a functional limitation, argue unpredictability, and prove non-obviousness using evidence obtained long after filing by the inventors and performed for the sole purpose of bolstering the non-obviousness of the newly recited function. If that weren’t enough, they aren’t claiming a specific formulation that achieves the stated funciton, but a broad range of formulations which surely includes many (mostly?) non-functioning species.

    None of this is to say that the applicants in this case didn’t invent anything non-obvious. But the PTO’s handling of the claimed invention here seems much more straightforward and consistent than Rader et al.’s “bologna slicing” (to borrow Dennis’ phrase).

    What happens next? Is the case remanded back to the PTAB for further consideration or has the Federal Circuit simply decided that the claims are non-obviousness and valid not matter how “storage stable” is construed?

  130. “” ‘merely throwing metaphorical darts at a board’ in hopes of arriving at a successful result,” ”

    Ahhh, you mean like filing patent applications where there is no longer a requirement to show a working model? See, if there was still that requirement somehow I get the feeling that a lot of these obviousness cases that the federal circuit thinks are tots unobvious would have seemed somewhat less obvious to officer personel. As is, the mindset over here is all too often that the claims before us are nothing more than a metaphorical dart being thrown at a dart board in hopes of achieving a successful result (i.e. a patent). And that is precisely what lawlyers have made patent law into, for better or for worse. But it does make things a little more difficult for the people actually out there inventing, sweat of the brow style, to get their patents as the whole thing has been turned into a big metaphorical joke.

  131. Let me guess – the examiner construed “storage stable” to include a barn; the reference recited a warehouse, which was held to be the functional equivalent.

  132. There are some valuable tips in this decision for patent and patent application owners on how to get adverse Board decisions overuled at the Fed. Cir. in general [something that normally has very low odds of success] with effective declaration evidence [not mere attorney argumentation] and good legal arguments.

    BTW, the AIA name change is from the “Board of Patent Appeals and Interferences” to the “Patent Trial and Appeal Board” aka the PTAB. [For the good reason that Board run trials are no longer just for interferences. They have others under the AIA]

  133. What about prior art that is ambiguous and is subject to two equal interpretations. Can a prima facie case of obviousness be made over ambiguous prior art?

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