Federal Circuit to PTO: Apply KSRs Broad Basic Mandate

Randall MFG v. Rea (Fed. Cir. 2013) (Inter Partes Reexamination No. 95/000,326)

FG Products owns U.S. patent No. 7,214,017 that is directed to a moveable bulkhead for partitioning cargo space in a shipping container. Back in 2007, Randall requested inter partes reexamination of the '017 patent. The reexamination examiner found the claims as obvious based upon a combination of three prior art references. However, in a 2012 decision, the USPTO's Board reversed – finding that someone of skill in the art "would not reasonably have appreciated" that the prior art could be combined in the manner suggested. Now on appeal, the Federal Circuit has vacated the Board Decision – finding that the Board's approach failed because it narrowly focused on the four cited prior art references while ignoring other factual evidence presented. In essence, the Federal Circuit is demanding that the flexible analysis of KSR be applied by the USPTO.

In KSR, the Supreme Court criticized a rigid approach to determining obviousness based on the disclosures of individual prior-art references, with little recourse to the knowledge, creativity, and common sense that an ordinarily skilled artisan would have brought to bear when considering combinations or modifications. Rejecting a blinkered focus on individual documents, the Court required an analysis that reads the prior art in context, taking account of "demands known to the design community," "the background knowledge possessed by a person having ordinary skill in the art," and "the inferences and creative steps that a person of ordinary skill in the art would employ." KSR. . . .

The Board's analysis in this case ran afoul of that basic mandate. By narrowly focusing on the four prior-art references cited by the Examiner and ignoring the additional record evidence Randall cited to demonstrate the knowledge and perspective of one of ordinary skill in the art, the Board failed to account for critical background information that could easily explain why an ordinarily skilled artisan would have been motivated to combine or modify the cited references to arrive at the claimed inventions. As KSR established, the knowledge of such an artisan is part of the store of public knowledge that must be consulted when considering whether a claimed invention would have been obvious. . . .

The Board's failure to consider that evidence—its failure to consider the knowledge of one of skill in the art appropriately—was plainly prejudicial. Once it is established that a prevalent, perhaps even predominant, method of stowing a bulkhead panel was to raise it to the ceiling, it is hard to see why one of skill in the art would not have thought to modify Aquino to include this feature—doing so would allow the designer to achieve the other advantages of the Aquino assembly while using a stowage strategy that was very familiar in the industry. Moreover, although FG claims that, as depicted, the panels of Aquino may have been impeded by the rails from being raised all the way to the ceiling, there is no dispute that it would have been well within the capabilities of an ordinary bulkhead designer to adjust the geometry ( e.g., drop the hinge axis down a few inches) so that the panels could be freely raised to the ceiling. There are no apparent functional concerns that would have discouraged a bulkhead designer of ordinary skill from attempting the combination.

Particularly when viewed in the context of the background references Randall provided, the evidence strongly supports the notion that the bulkhead design FG claimed was nothing more than the "combination of familiar elements according to known methods,"" 'each performing the same function it had been known to perform,' " "yield[ing] predictable results." KSR (quoting Sakraida v. Ag Pro, Inc., 425 U.S. 273, (1976)). In addition, neither FG nor the Board points to any objective indicia of non-obviousness. On this record, the Board's finding of lack of motivation to combine is infected by prejudicial error. We accordingly vacate the Board's reversal of the Examiner's rejection.

Based upon Judge Taranto's writing here, it is unclear why he chose to vacate the Board holding rather than reverse as the Supreme Court did in KSR. Joining Judge Taranto on the panel were Judges Dyk and Rader.

In the context of the hallmark obviousness case of Graham v. John Deere, 383 U.S. 1 (1966), this case should probably be seen as placing focus on "the level of ordinary skill in the pertinent art" and a mechanism for evidencing the type of creativity

One interesting issue that I'll write on more later is that the Federal Circuit did not address the issue of standing – i.e., whether there is a sufficiently ripe case-or-controversy between the parties to comply with that Constitutional requirement.

109 thoughts on “Federal Circuit to PTO: Apply KSRs Broad Basic Mandate

  1. Today we have another strange animal, Sanofi-Aventis v. Pfizer. It involves an interference between two issued patents both claiming the same “invention:” 1st, the isolated protein of claim 4 of the ’480 patent and 2nd, the isolated cDNA of claim 1 of the ’023 patent.Two issued patents?

    1. Back in February I discussed the depressing oral arguments in this case (the text is “lost” along with all the other old comment threads). This case is a classic example of the Federal Circuit shoving aside good case law that can be applied in a predictable manner in favor of meaningless gobbledygook.The bottom line is that (for pre-AIA cases), a claim to a specifically recited (and previously undescribed) molecule can be conceived in a fixed and permanent manner on date X by first conceiving of the wrong structure, then correcting it on date Y, after somebody else’s accurate conception of the claimed molecule. Follow that? Heckuva job, CAFC.The good news, I suppose, is that the precedential value of this case will expire soon enough, along with interference practice itself.

      1. Do you realize that ‘interference practice’ is not going away, but that ‘practice’ has been largely adopted into the AIA under a different name?

        1. ‘interference practice’ is not going away, … that ‘practice’ has been largely adopted into the AIA under a different name?”Largely adopted”? Exactly what parts of interference practice have been “adopted” and which haven’t been “adopted” by the AIA? Let everybody know. Then when we can see whether the practice is “largely adopted” or not. Go ahead. Follow up your usual innuendo with some actual facts so we can evaluate the veracity of your statement.

          1. Try looking up the word ‘derivation.’Note where all of the derivation procedures cam e from.And what is with the ‘innuendo’ meme? Don’t you get tired of throwing around baseless accusations? Seriously, Malcolm, grow up already.

  2. Dennis, you need to post on Lifescan Scotland v. Shasta Tech., decided today, Nov. 4. It is, frankly, the best opinion ever written on exhaustion.

      1. LB, the dissent clearly adopts the view of the “overruled” Leed & Catlin v. Victor Talking Machines (No. 2), 213 US 325 — that where the novelty lies equally in the consumable part (there the record of the record player) the sale of the record player does not exhaust the patent such that a sale of the record infringes the combination patent. But, given the recent case of Monsanto, I think the dissent has a good point. The sale of the seed does not exhaust the “seed” patent.

        1. Ned: where the novelty lies equally in the consumable part (there the record of the record player) the sale of the record player does not exhaust the patent such that a sale of the record infringes the combination patentNed, I’m just trying to follow this old “overruled” rule from Leed & Catlin that you described.Let’s say you have a patent on a “talking machine”, where your claim comprises a detachable/interchangable “recording medium.”I buy the machine from you. I make my own recording on my own medium and use the machine to play it. Under the old rule, you could sue me for infringement?

          1. Malcolm, yes. The invention was a record with a flat bottom groove with the sound recorded on the sides of the groove. The stylus ran on the flat bottom and the sound moved it side to side.But the stylus and receiving mechanism that detected these side-to-side undulations was in the claim.The infringer sold records. The Supremes held the sale contributory infringement. This case was overruled by the overruled Mercoid. When one overrules and overruled case statutorily, is the that case restored?The logic of both the majority and the dissent in this case would seem to suggest yes.

            1. Thanks, Ned. That’s what I suspected you were saying. Not such a great business model, really. It would seem to me that if you want people to buy your music playback device, you make it as easy as possible for third parties to produce compatible recorded media. The availability of recorded media is what builds demand for such devices … isn’t it?As an aside, it’s always surprised me that laterally incised records were deemed patent-worthy over the well-understood principle that sound vibrations could be recorded onto a substrate.

            2. Actually, the business model most companies use is exactly what was employed in this case; sell below cost or give away the console and make money on supplying the games, cartridges, or whatever that only work with those consoles. Think back to Betamax. Had Sony given away its players/recorder and made its money off of selling Betamax cartridges, VHS may never have gotten off the ground.Sony did something like this for the 3 1/2″ floppy. It freely licensed the players, and made money from the cartridges.

            3. Had Sony given away its players/recorder and made its money off of selling Betamax cartridges, VHS may never have gotten off the ground.I am pretty sure that during the period of highest sales of record players, film projectors, cassette decks, and compact disc players that the most popular forms of pre-recorded playback media being purchased were mainly unprotected by patents (certainly unprotected by patents owned by the manufacturers of the playback devices).For media that the user could use to record their own content, different factors come into play. VHS seems to have won out mainly because users could record more content onto the tapes (at low quality, but guess what? most consumers don’t care — McDonald’s anyone?).

            4. One merely needs to look closer to see the fallacy here.Pull the curtain aside and note that Malcolm is attempting to portray playback media (like movies and music) as “unprotected by patents” as some type of augmentation for his position.However, he avoids completely the massive amount of work that belongs in the patent sphere that was sought to be protected by patents.

            5. “it’s always surprised me that laterally incised records were deemed patent-worthy over the well-understood principle that sound vibrations could be recorded onto a substrate.”Now you are complaining about structure? How about the well understood principle that atoms can be put together to form molecules?There’s a word for this type of double-dealing….

          2. In further reply, 271(c) was drafted precisely to restore the rule of Leeds & Catlin. The record was a material part of the combination, was not a stable and had no substantial non infringing use.

        2. “The sale of the seed does not exhaust the “seed” patent.”Not the right take away from the Monsanto case, Ned.In Monsanto, the (first) sale in fact does exhaust the “seed” patent for the initial seed sold. It was the product of that first seed – the next generation (actually third generation) seed – that was unaffected by the first sale. It was that seed that was not sold (by Monsanto) and thus not exhausted.Note that there were actually three sales (and three+ generations of seeds) in the Monsanto case: 1) Monsanto to undisclosed farmer (for gain to Monsanto) – first generation, 2) undisclosed farmer to grain elevator (potentially covered by the agreement of Monsanto with undisclosed farmer) – second generation, and3) grain elevator to Bowman, who then made more seeds – third+ generation – for which Bowman was found guilty of infringement.I am still digesting the case, so I will delay my view on how this fully comports (or not) with the Monsanto case (but the notion of intended use seems critical).

          1. Anon, quite. We agree on Monsanto. Where the novelty is in the consumable, like the seed, the sale of the first one does not exhaust the combination nor does it give the end user the right to make more.

            1. Ned,I have to disagree with your thought that we agree.There was no combination in Monsanto, so your statement is quite unclear. Also, I advise you to re-read this decision as the part of the consumable and the part of the intended use actually speaks AGAINST the result reached in Monsanto.The issue of ‘make’ falls to the express intended use of why the seed was sold and directly ties to the the importance of what the actual patent is.

            2. Well, anon, if the method is “performed” each time a test is conducted and it uses each time a test strip, constituting a material part of the patented invention, that is not a staple, that has no other substantial use, then the sale of those test strips is contributory infringement per 271(c). The only way the majority is right is if the test strip is NOT a material part of the patented combination.The result would be the same if the claim were a combination claim per Leeds & Catlin (271(c)). There is no exhaustion when the novelty is as much in a consumable element not sold.Univis Lens was somewhat premised on the fact that the finishing of the blanks was conventional and that the entirety of the novelty was in the blanks themselves.Monsanto was another case where the sale of one seed did not authorize the subsequent making of others. But this is exactly what happens if the reconstruction of the patented combination is not repair and it is not repair if the one element is designed to be used and replaced.

            3. I do not think the repair doctrine is implicated here.It is unhelpful to bring that up.It is NOT a patented combination (as a thing) that is under analysis. Both the majority and the dissent (in my opinion) get mired down in an analysis of ‘things,’ and fail to give full credit to the patent eligible category of ‘method.’To even consider the repair doctrine is to have the wrong focus on a ‘repaired thing.’ This is not about things, but rather, about methods.

            4. Ned, we may find some agreement in this case. All we have to do is realize that valid method patents may be put together COMPLETELY with steps that are each old in the art. To attempt to parse to one step or another may be a mistake in and of itself.Just as clear that elements of a perfectly patent eligible claim are allowed to be mental steps, so too a perfectly patent eligible claim may be comprised of steps that are each singularly non-inventive.

            5. anon, a valid claim can be a combination of old elements, but the sale of an old element even for use in an infringing combination is not an infringement under 271(c) for at least the reason that the old element has substantial non infringing uses.

            6. anon, they stopped on the claims to test strip were rejected. I researched it a bit more. They filed a continuation directed to the test strip. I appeared that the claims were anticipated by identical test strips.It seems clear that the test strips themselves were not only old, but in use for other testers.

            7. “Monsanto was another case where the sale of one seed did not authorize the subsequent making of others.”Not exactly the right take away either..The Monsanto case did allow and authorize the subsequent making of other seeds. Additionally, the making of other seeds was the intent of the sale (remember, the first sale that did benefit Monsanto to the unidentified farmers) and was intimately tied to the nexus with the essential patent features. Monsanto did not have an invention that was meant for better pig feed or for better flour. Their invention was meant for the seed to be planted and consumed in the making of other seeds. That was the only intended use of Monsanto’s patented technology.The problem that remains with the Monsanto exhaustion case is that Monsanto tried to constrain the item once they let it loose into the stream of commerce (their business model that should not be protected, but was). They constrained the item only partially though. They drew up the contract with the first set of farmers concerning the second generation of seeds (made not by Monsanto, but by the first set of unidentified farmers) and ALLOWED those seeds to be sold a second time to grain elevators (a sale allowed, even though Monsanto gained no benefit – sound familiar?) Monsanto could not force a contract term on the grain elevators who lacked privity with the first sale. The grain elevators then sold the second generation seeds – a third sale for which for a second time Monsanto saw no benefit (which as I posted before is technically infringement according to the Supremes) to people like Bowman. Further, only through the tie into an unpatented item is Bowman found to be an infringer.As I posted on the other thread, there are several serious considerations that need to be thought of:- intended use- nexus with essential patent features- let into the stream of commerce- not protecting a business model- tie in with something unpatentedSomething simply is not cohesive between the case here and the Monsanto case.

            8. anon, I think the SC did hold that the farmer had the right to plant the seed he bought from the grain elevator. But, this did not give the farmer the unfettered right to make new seeds from subsequent crops. This IS similar to the distinction between repair and reconstruction in the case of combinations.

            9. Incorrect Ned. There was no logical difference in the planter making Monsanto seeds with seeds from the grain elevator and any further making of additional generations of seeds from the products of the seeds bought from the grain elevator. Making is making. Monsanto is not rewarded in either case.3 and 3+ generations were equally infringing based on the logic used by the Court.This problem was pointed out immediately in the discussion after the Monsanto decision (as was the fact that grain elevators are infringers because they are selling a patented – and newly found to be non-exhausted item). Remember, Bowman (and like farmers take some of their 3+ generation seeds and sell that back to the grain elevators who in turn sell that product on the open market.Further – there is absolutely no tie to the doctrine of repair and reconstruction – there is no combination effect in the seeds, so let’s not muddy the water with trying to squeeze that doctrine where it just does not fit.

            10. Anon, the principle involved in Monsanto and the repair/reconstruction doctrine is identical. Exhaustion does not extend to reconstruction because that is a making. It does not extend to making additional copies or to repeatedly practicing the patented process except where the sole novelty is embodied in a machine or product transferred to the end user.

            11. The principles are clearly not identical. You need a combination to be able to apply the repair/reconstruction doctrine set. There is no such combination in the Monsanto seed case.

    1. Dennis, you might want to comment on the fact that Univis Lens relied on Leeds & Catlin for its holding that the unlicensed sale of the lens blanks infringed the method patents as contributory infringements. (The majority here cited Univis Lens for this proposition, but not that the SC relied on Leeds & Catlin.) “Exhaustion” was at issue in Leeds but denominated “implied license” — the infringer relying on Morgan Envelope. But the Court held that there was no exhaustion because the novelty was equally as much in the record as the player distinguishing Morgan Envelope. It appears from the rationale of both majority and dissent that Leeds & Catlin is fully restored. The divide between the majority and the dissent was factual in nature: whether the test strips with two active terminals was a material part of the patented combination.Leeds & Catlin: link to law.cornell.edu

  3. Dennis, may I suggest that if the competitor does not have standing for the appeal due to no case and controversy, then it neither had standing to engage in the inter partes reexamination..

    1. An interesting corollary to the question is whether congress by statute can authorize anyone to bring a DJ action in court alleging patent invalidity.

    2. One might argue that one has a first amendment right to petition the government for a redress of grievances. But if one really is not adversely affected by another’s patent, but only is desiring to inflict on the patent owner the economic burden of defending one’s patent in the PTO as leverage in some collateral matter, what then?

  4. Take a close look at Taranto’s exact wording: “Once it is established that a prevalent, perhaps even predominant, method of stowing a bulkhead panel was to raise it to the ceiling, it is hard to see why one of skill in the art would not have thought to modify Aquino to include this feature…”Think about the burden here: once the invention is adequately 112 described and satisfies 101, for application purposes, isn’t the burden then on the examiner/PTO/Board to affirmatively prove obviousness? Even more so during IP re-exam, where the patent has already been granted. That is, is it not true that they must prove that the invention IS OBVIOUS, not that it ISN’T UNOBVIOUS? Finding that a fact has been initially proven does not shift the burden to the applicant/patentee, only a preliminary finding that the ultimate legal issue has been proved can do that, and this is what it appears that Taranto doesn’t understand.It’s not up to the applicant/patentee to prove why someone “would not have thought” of the invention, until such time as the PTO/Board has met their initial burden, and at which point it is then up to the applicant to present rebuttal evidence.This is not a subtlety–the system of presumptions and burdens is of foundational importance to our system of law. This is judicial error of the worst kind, that goes far beyond a lack of understanding of patent law, and evidences a lack of understanding of the very system of law in which patent law exists.In my opinion.I hope I’ve missed something, please set me straight.

    1. It’s not up to the applicant/patentee to prove why someone “would not have thought” of the invention, until such time as the PTO/Board has met their initial burden, and at which point it is then up to the applicant to present rebuttal evidence.The “initial burden” is met by showing (1) that a second reference provides the element that is missing from the closest reference and (2) that the element when combined with the first reference would function as intended. If the applicant believes that the proposed combination would not work, then the applicant has to explain why, in a manner that sufficiently negates the PTOs initial findings of fact.the system of presumptions and burdens is of foundational importance to our system of lawIndeed. That’s why for a granted patent to be “presumed valid” over a combination of references that teaches each element of the invention, it’s critical for the applicant to explain, on the record, why the PTO’s prima facie case of obviousness is incorrect. Nothing in Taranto’s statement that you quoted is inconsistent with established law regarding obviousness.

      1. A fine mix of mess you present here, Malcolm.First, you have not completed the prima facie case with your (1) and (2). Guess what you are missing.Second, You ASSume that the prima facie was made. Read again what IBP has posted – there is no prima facie case made.

        1. Guess what you are missing.No thanks. If you have something to say other than your usual insults and innuendo, please struggle harder to say it. Good luck, TB! I know you’ll need it.Read again what IBP has postedI don’t need to do that. You ASSume that the prima facie was made.No, I didn’t.

          1. “your usual insults and innuendo”Try again – your reading skills need work too.And yes, if you are going to comment on IBP’s posting, you really should read it.

            1. f you are going to comment on IBP’s posting, you really should read it.I did read it. And I responded directly to specific points that he made, after clearly and fairly excerpting those points so everyone could see exactly what I was responding to.You should try it sometime.

            2. Your attempted parsing (read that as spin) is a fail, Malcolm.Read again my first counterpoint in the immediate thread – you do not establish a prima facie case with your (1) and (2) and you do not actually address what IBP posts, as he is not posting anything in response to a prima facie case – he is saying one is not there in the first place.Try again.

            3. Read again my first counterpoint in the immediate threadI don’t need to do that.you do not establish a prima facie case with your (1) and (2)If you believe that’s the case, then please tell everyone exactly what you believe is missing instead of playing your little innuendo/insult game.you do not actually address what IBP postsYes, I did.he is saying [a prima facie case] is not there in the first placeThat’s nice. I responded to what IBP “actually” wrote because I disagree with what he “actually” wrote. I explained my disagreement in clear statements. You should try it some time.

            4. LOL – you are back to not needing to read the comments in order to reply to them?Instant FAIL.And please, you are a biog boy, right? You can figure out why your (10 and (2) are not sufficient to establish a prima facie case. There is no “innuendo/insult” present so stop the vacuous whining.And you still have not responded to what IBP actually wrote – instead you parsed what he wrote and responded to a strawman. But then again, that is your standard operating procedure and it is not surprising that you really cannot even see what you are doing.GIving clear strawmen is simply not what is desired here.

            5. You can figure out why your (10 and (2) are not sufficient to establish a prima facie case.Ah, so you’re just going to stick with your insults and innuendo. No surprise there! Keep up the great work, TB.

            6. Again with the vapid innuendo.insults accusation? (followed with name calling (TB? really?)Do I really need to hold your hand and explain what it takes to establish a prima facie case or why your posted (1) and (2) alone do not suffice?Grow up Malcolm.

      2. This opinion serves as an excellent example of why the current “obviousness test” is in actuality insubstantial and largely meaningless.Sure, there is all the groundwork of the “factual predicates”, but when the rubber hits the road–when it’s time to “make the call”–all that groundwork becomes essentially a smokescreen used to obscure the coin-toss final decision.Taranto admits evidence of prior art for the purpose of proving the knowledge that would be possessed by a PHOSITA, which he refers to as “common knowledge”. Fair enough–however, he also acknowledges that in addition to “common knowledge”, there is such a thing as “common sense”, presumably the ordinary creativity of the PHOSITA, that must also be proved.While the “common knowledge” (stowing a bulkhead panel by raising it to the ceiling) is proved by the PA references, Taranto never explains how the “common sense” is also thereby proved. His statement that “doing so would allow the designer to achieve the other advantages of the Aquino assembly while using a stowage strategy that was very familiar in the industry” RELIES on that unproven “common sense”, rather than PROVING it; this is the very definition of hindsight. All Taranto has done has been to look at what happened, and substitute the word “would” for the word “did”: that is, “doing so DID allow the designer…”. The utility of this type of judicial action is restricted to deciding this, and only this, particular case, and has no broader applicability whatsoever.Taranto tells us what he believes should be “common sense”, but never provides any evidence to support his belief.I agree with the other posters on this thread who demand technical experience and/or expertise from judges deciding patent issues.

  5. Suppose that on remand the PTAB says that it has now considered the other references but that they are cumulative of the four of record, i.e. that even collectively these additional references don’t teach anything beyond what’s taught in references relied upon by the Examiner. How will the CAFC respond to that?

    1. Precisely the same way that they responded in this situation: a judge will write an opinion in which he or she makes a conclusory statement about what is “common sense”–which, since it has no supporting evidence, is essentially impossible to argue against substantively, or to anticipate such that it can be avoided.It will be business as usual at the CAFC.

  6. The language –”In KSR, the Supreme Court criticized a rigid approach to determining obviousness based on the disclosures of individual prior-art references, with little recourse to the knowledge, creativity, and common sense that an ordinarily skilled artisan would have brought to bear when considering combinations or modifications” — seems likely to cause mischief. Where does “creativity” of ordinarily skilled artisans stop and an inventive step start? Seems to encourage a subjective assessment of whether the examiner deems this “creative enough”, untethered from a written record. I assume that this will lead to more appeals.

    1. From Standard Oil v. American Cyanamid, 774 F.2d 448 (Fed. Cir. 1985):”The issue of obviousness is determined entirely with reference to a hypothetical ‘person having ordinary skill in the art.’ It is only that hypothetical person who is presumed to be aware of all the pertinent prior art. The actual inventor’s skill is irrelevant to the inquiry, and this is for a very important reason. The statutory emphasis is on a person of ordinary skill. Inventors, as a class, according to the concepts underlying the Constitution and the statutes that have created the patent system, possess something — call it what you will — which sets them apart from the workers of ordinary skill, and one should not go about determining obviousness under § 103 by inquiring into what patentees (i.e., inventors) would have known or would likely have done, faced with the revelations of references. A person of ordinary skill in the art is also presumed to be one who thinks along the line of conventional wisdom in the art and is not one who undertakes to innovate, whether by patient, and often expensive, systematic research or by extraordinary insights, it makes no difference which. See the last sentence of § 103, supra.”

  7. “The Board’s analysis in this case ran afoul of that basic mandate. By narrowly focusing on the four prior-art references cited by the Examiner and ignoring the additional record evidence Randall cited to demonstrate the knowledge and perspective of one of ordinary skill in the art, the Board failed to account for critical background information that could easily explain why an ordinarily skilled artisan would have been motivated to combine or modify the cited references to arrive at the claimed inventions.”If the examiner didn’t make any explicit findings regarding the level of ordinary skill in the art, how is the Board supposed to review that? They can only decide based on the record. They could make additional findings of fact and enter a new grounds, but they can’t affirm based on facts that were never determined.”Based upon Judge Taranto’s writing here, it is unclear why he chose to vacate the Board holding rather than reverse as the Supreme Court did in KSR.”It’s pretty clear why. The Court is telling the Board to make a factual determination of the level of ordinary skill in the art, a factual determinaton that wasn’t previously made. The Board can’t affirm an obviousness rejection based on new factual determinations made regarding one of the four Graham factors without designating a new grounds of rejection. If new evidence and arguments is going to be introduced to allege that the combination was within the level of ordinary skill in the art, the applicant/patentee has to be given a chance to address that.

    1. the level of ordinary skill in the artIt’s bizarre phraseology like this that makes people dislike attorneys. How many levels of ordinary skill are possible in any given art? Low, medium and high?

      1. There’s one level of ordinary skill in the art. That’s why it’s referred to as “the level” of ordinary skill in the art.Get it?

        1. There’s one level of ordinary skill in the art.Okay, so why does anyone have to make a “determination” about the level of skill? It’s not relevant. The relevant question is whether there was a motivation to combine the elements found in the prior art, i.e., was it known and published (by anyone, anywhere, ever) that such and such element would have this function or property in combination with that other thing, or (equally valid under KSR) was it common sense to make the claimed combination?

            1. anon, a little off topic, but consider the trained bird — trained to do useful things. You file and receive a patent on a “trained bird.”Next you teach it a few more tricks. You file another application, again seeking to patent the trained bird, but now configured to perform the new tricks. You receive a double-patenting rejection of both kinds, statutory and obviousness.Your response?

            2. Easy: Anthropomorphication.A word you know well, even if you have never acknowledged it, nor taken up my call for you to integrate its meaning into our discussions.Quite simply, machines do not think.Your attempt here to use a proxy of a living animal (bird) avails you not in regards to what ‘configured’ means in the software arts.

            3. anon, I was almost willing to concede. The trained bird with new training where he does something new that is useful I think would be patentable as a new trained bird.I begin to wonder what the PTO would do with such a claim?

            4. Ned,I am not sure just what you were willing to concede. Are you ready to embrace machines and manufactures are purely patent eligible items?As for the bird, that is only minorly interesting. It is not a human, so arguably the mental steps doctrine still would not apply. But if you are interested in animals, I would suggest you work on our voracious patented fish project that will supplant all of the ocean’s fish – think of the market we would have cornered!

            5. anon, what I think patentable is a bird trained to do useful things. Now, if we limit the programmed computer to doing useful things, then I think such a claim is eligible. Note, that in a way, Alappat was just this: It was limited through its preamble to a useful end.

            6. Doing useful things is – and always has been – a requirement in my understanding of the law.That is one reason why I chide you when you meander off and attempt to present a hypothetical outside of the useful arts.

            7. Now consider a rivet.By itself, it can serve no useful purpose and yet, it is a useful thing.Now consider a tire.By itself, it can serve no useful purpose and yet, it is a useful thing,Now consider a bullet.By itself, it can serve no useful purpose and yet, it is a useful thing.

          1. Its not a matter of whether its merely in the art, but whether thecombination being asserted by the Examiner would have been obvious to the person of ordinary skill. The Examiner has the benefit of hindsight

            1. The person of “ordinary skill” is aware of all the prior art and what it teaches (in other words, this fictional person is possessed of superhuman intelligence). Without an express teaching away in the art about the undesirability of a claimed combination of old elements, there must be some profoundly unexpected result flowing from the combination to support a finding of non-obviousness.

            2. Teaching away is surely not the only way to find non-obviousness.Your version here completely dismisses motivation to combine.

            3. You need to work on your “English” as a first language, Malcolm. Your tone was imperative (note the ‘must’).

            4. Your tone was imperativeThat’s nice. Regardless, I didn’t say that “teaching away is the only way to find non-obviousness.” What I said was closer to the exact opposite of that.

            5. “Regardless” nothing. When you lecture others that ‘words count’ you should pay attention to your own.Do you know what imperative even means?

            6. “person of “ordinary skill” is aware of all the prior art”All?No.See the excellent post today by AAA JJ with reference to Standard Oil v. American Cyanamid.

      2. Malcolm, The better question would be to ask the trier of fact, a judge or a jury, whether the “level” had anything at all to do with their decision. I think not — just as the “level’ is never really of issue in the PTO.It is what the prior art in fact teaches that is at issue. The person of ordinary skill is a person who presumably knows of this art. That is all it really means. To say anything else essentially confuses.

        1. I didn’t “attempt” to inject any “factor in understanding basic patent law”, whatever that is supposed to mean. All I did was state a fact about poorly phrased legal jargon and how people typically react to it.

          1. You stated a fact?What was the ‘fact’ that you stated?Name-calling is not “stating a fact.” YOu inserted your (typical) spin, and I busted you on it.Put.The.Shovel.Down.

            1. Name-calling is not “stating a fact.”In the comment we are discussing, I didn’t call anyone names so I don’t know what you are talking about.

            2. Malcolm, you do realize that people are not the only things that can be called names, right?ALso, you did not answer my question: What was the ‘fact’ that you stated?Put.The.Shovel.Down.

    2. I think you have it basically right. There are going to have to some new form paragraphs to comply with this one. I just resent that a person with essentially no science background and no patent background is now making law when I am sure he doesn’t even appreciate hindsight.

      1. I don’t see any new form paragraphs or new law coming out of this. The factual determination of the level of ordinary skill in the art has been with us since Graham (which was what, 1962?). During prosecution, it’s hardly, if ever, determined, but the court has ruled this is not error on the part of the PTO if the references relied upon reflect the level of ordinary skill in the art. (Don’t have the case cite handy.) In the very unlikely event that you actually receive an OA with an explicit determination of the level of ordinary skill in the art (i.e. supported by evidence and not the typical conclusory bullsh!t from the examiner), you can address it and rebut it with evidence and/or arguments of your own. But in a case like this where no factual determination as to the level of ordinary skill in the art was actually made by the examiner, the Board can’t make the determination to support the rejection without designating it a new grounds. Nor can the court.

    1. The Europeans have this one right. When it takes four references….. it’s not obviousThe Europeans have a 3 reference limit for inventive step? I wasn’t aware of that. I can “innovate” a lot of incredibly obvious junk that it will take 4 references to “tank”. But it’s still junk.

      1. If the features that make the claim novel all relate to the same technical problem, then the limit according to European practice is, save for exceptional cases, two references.You can use more references if you have so-called partial problems, i.e. if you can argue that features of groups of features solve different technical problems and their interaction does not lead to any surprising synergy. As long as you have different problems, you can introduce as many references as you want, although in practice going beyond three or four is very rare.

        1. As long as you have different problems, you can introduce as many references as you want, although in practice going beyond three or four is very rare.No doubt, because most people don’t bother patenting that silly stuff anyway.

        1. Patent Attorney,You would be wrong. Malcolm has repeatedly shown that even though he knows controlling law with his own volunteered admissions against interest, (for example, the controlling law on the exceptions to the printed matter doctrine), he continues to post positions unsupportable by that knowledge.He has shown that he is not interested in incorporating valid points (such as anthropomorphication) into any discussions on the merits.He has shown by continued name-calling , attempted denigration, and accusing others of that which he does that he is only interested in soapboxing and not engaging in any dialogue.

  8. So here is the first of it: Taranto probably has never given hind sight much thought. Probably has never designed anything in his life. Probably couldn’t explain the basic laws of physics if his life depended on it. And, now this person is going to decide what is obvious for us all. Wonderful life. Yes, I know in some sense all he did was force a new procedural statement. But, really, what ego a person like this must have to not understand science or engineering or design and to have never done anything in his life beyond humanities and to image that he could envision what a real engineer or inventor would think or do. Just a shameful time we live in. This judge is not qualified and should be removed.

    1. Actually, Taranto didn’t say it was obvious. Taranto criticized the Board for not considering the references not cited by the Examiner (i.e., “the additional record evidence Randall cited to demonstrate the knowledge and perspective of one of ordinary skill in the art”). It seems that the Federal Circuit is telling the Board that they need to be “Super Examiners” instead of just focusing on affirming/reversing the rejection made by the Examiner.Taranto is inferring that the claims would be obvious once this additional evidence is considered, but he isn’t willing to make the analysis himself. Instead, he left that up the Board.

      1. Just to be clear, the Board was scolded for failing to consider evidence that Appellant Randall provided. So I don’t know that “Super Examiners” is an accurate description of what Taranto expects. This decision doesn’t require the Board to search for further evidence. They are only required to consider all the evidence presented, whether by the Examiner during prosecution, or by the Appellant during inter partes review.

        1. Just to be clearer-er, the Board was scolded for failing to consider art that was A) not part of the rejection (note footnote 3) B) petitioned for entry by Randall when the examiner rejected it (petition before final), and petition denied, and C) Ordered removed from Randall responses at the PTO after the petition was denied .What was the PTAB thinking following Office guidelines!?! How dare they!!So, no, the evidence was not presented.The PTAB would be wise to simply point this out in their reconsideration to show the CAFC they wont be pushed around.Bottom line: CAFC found the invention obvious in hindsight, but since they can’t do the fact finding, sent it back to the scapegoat PTAB.

          1. Thanks for taking the time to look at this 1211snake. About what I figured. This new judge is going to be a nightmare. The message seems to be that circuit judges are going to psychotically determine everything is obvious. Nice of Obama to give us a non-science non-patent lawyer person in their 50′s.

          2. so you are saying that the deference on a fact basis was less than what is normally called for?Or were the omission of these facts serious enough to meet the higher level of ‘interference’ on a fact basis?

          3. “In its briefing before the Board, Randall argued that the state of the art and the level of skill at the time of FG’s application included well-known options for lifting moveable, track-mounted bulkheads and stowing them against the ceiling. As evidence of what one of ordinary skill in the art would have known, Randall cited a host of references that had been considered by the Examiner during the course of the reexamination—some of which had provided the basis for rejecting FG’s original claims—including multiple references disclosing track- and trailermounted bulkheads that could be raised to the ceiling, and a variety of references teaching straps and lift mechanisms to assist in stowage.”So, yes, the evidence was presented by Appellant. And CAFC is asking PTAB to consider it on remand.

            1. If your argument is that once a third party is on appeal, they should throw as much additional art into the brief as possible, even when specifically excluded and told not to previously by the PTO, and that is “presenting evidence” to you, that is an interesting concept of procedure.

      2. I didn’t say that Taranto did say it was obvious. My post also states that he is just adding procedural steps. My thrust, though, is that he is unqualified to even be writing the word obvious and it is offensive to the entire patent bar that this person is sitting on the bench. He has probably never considered hindsight more than as an abstract word to throw in an opinion. He probably can’t read a patent. Etc. We can be sure that bad law is going to follow these judges that Obama has stacked the court with.

  9. One of the reasons for the formation of the Federal Circuit was to rein in Circuits who were applying cases like Sakraida v. Ag Pro as “opposed to the statute” when functional analysis (actually used in Greenwood) was instead used. “Obviousness” seemingly required proof of a reason, suggestion or motivation from the prior art for making the combination. That became an iron rule from the Federal Circuit — then overturned in KSR.The more things change, the more they are the same.

  10. Particularly when viewed in the context of the background references Randall provided, the evidence strongly supports the notion that the bulkhead design FG claimed was nothing more than the “combination of familiar elements according to known methods,”" ‘each performing the same function it had been known to perform,’ ” “yield[ing] predictable results.” KSR (quoting Sakraida v. Ag Pro, Inc., 425 U.S. 273, (1976)). In addition, neither FG nor the Board points to any objective indicia of non-obviousness.What to do when an article of manufacture is claimed functionally? Does the recited function perform according to its function? Does the recited function lead to unpredictable functions?

      1. Should a claim be considered as a whole?Sure! Why don’t you tell everyone exactly what you think that phrase means in the context of a claim that recites, say, an old conventional step and a step of thinking a new thought about the results of that old conventional step. What does that phrase tell you about how to examine the claim, exactly? Let everyone know.Then tell everyone exactly what you think that phrase means in the context of an article of manufacture claim that recites the combination of two old elements for the purpose of achieving two dual purposes, each purpose of which is old and predictable. Tell us what “considering the claim as a whole” means.I think you know the answerLet everyone know what you think. You’re a big boy now.

    1. The typical (ancient) and well understood functions of electrons, protons and neutrons are going to be a real downer under this logic.

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