K/S HIMPP v. Hear-Wear Technologies: Common Sense and Claim Elements

By Jason Rantanen

K/S HIMPP v. Hear-Wear Technologies, LLC (Fed. Cir. 2014) Download Opinion
Panel: Lourie (author), Dyk (dissenting), Wallach

This nonobviousness case is significant because it illustrates an important way that some Federal Circuit judges are pushing back against KSR v. Teleflex (2007): by focusing the analysis on the presence or absence of individual limitations in the prior art and limiting what can be considered in establishing the presence of that limitation.  Here, the majority holds that while common sense or basic knowledge may provide a reason to combine elements present in the prior art, it cannot establish the presence of an element itself.

Background: Hear-Wear is the owner of Patent No. 7,016,512, which relates to hearing aid technology.  At issue in the appeal were dependent claims 3 and 9 (Hear-Wear did not appeal the BPAI’s ruling that the remaining claims of the ’512 patent, including the claims from which 3 and 9 depended, were invalid in light of the prior art).  Claim 3 of the ’512 patent states:

3. The at least partially in-the-canal module for a hearing aid of claim 2 wherein said insulated wiring portion is terminated by a plurality of prongs that provide a detachable mechanical and electrical connection to an audio processing module.

Claim 9 similarly depends from claims 7 and 8, adding the identical “wherein said insulated wiring portion is terminated by a plurality of prongs that provide a detachable mechanical and electrical connection” language.

Patent Office Proceedings: During prosecution of the ’512 patent, the Examiner rejected all claims as obvious, and further stated with respect to claims 3 and 9 that “providing a plurality of prongs for the electrical connections or for the plugs is known in the art.” Slip Op. at 3, quoting office action.  In response, the applicant amended independent claims 1 and 7 to expand on the “cushion tip” element and the Examiner allowed all the claims.

HIMPP subsequently instituted an inter-partes reexamination, challenging the validity of claims 1-12 of the ’512 patent (note that the reexamination request was filed pre-AIA).  In that proceeding, the Examiner concluded that all of the claims of the ’512 except claims 3 and 9 were invalid in light of the prior art.  The BPAI disagreed with the Examiner’s basis for rejecting claims 1, 2, 4-8, and 10-12, but nevertheless concluded that these claims were invalid in light of prior art.  The BPAI declined, however, to reverse the Examiner’s decision not to reject claims 3 and 9 because there was no factual support in the record for the plurality of prongs element.  HIMPP appealed the BPAI’s refusal to reject claims 3 and 9; Hear-Wear did not appeal the rejection of the remaining claims.

Result: The only issue on appeal was whether the additional limitation in dependent claims 3 and 9, viz: that the “insulated wiring portion is terminated by a plurality of prongs that provide a detachable mechanical and electrical connection,” was sufficient to render the claims nonobvious.  Writing for himself and Judge Wallach, Judge Lourie affirmed the BPAI.  Writing in dissent, Judge Dyk would have reversed the BPAI and rejected claims 3 and 9 for obviousness.

What’s going on here? At the outset, it’s important to recognize what this appeal is not about.  It is not about whether or not electrical plugs were actually known in the art as of 2001, except to the extent that the court might take de novo judicial notice of that fact.  Nor is it about whether, assuming that electrical plugs were present in the prior art, common sense could provide a reason to combine plugs with the other elements of claims 1 and 2 of the ’512 patent.

Instead, K/S HIMPP v. Hear-Wear highlights two important tensions in nonobviousness jurisprudence that are now bubbling to the surface: first, whether the standard for nonobviousness under KSR is so flexible as to allow common sense or basic knowledge to provide an element of the claimed invention, and second, the degree to which Examiners and the BPAI/PTAB may rely upon their own technical expertise.  Here, the majority embraces a strict evidentiary approach: a claim element must be present in the record and if it is not, the PTO may only consider it in narrow, peripheral circumstances.  The dissent criticizes the majority for adopting an overly rigid approach that denies examiners recourse to common sense.

Strong Evidentiary Requirements for “Core Factual Findings”: In Judge Lourie’s view, KSR does not dispense with the need to have evidence in the record disclosing each claim limitation, particularly where those limitations are “important structural limitations”:

“Here the Board refused to adopt HIMPP’s proposed rejection of claims 3 and 9 because it found that there was not a suitable basis on the record “for concluding that the particular structural features of claims 3 and 9 [were] known ‘prior art’ elements.” Board Opinion at 24. The Board’s decision was correct because an assessment of basic knowledge and common sense as a replacement for documentary evidence for core factual findings lacks substantial evidence support.”

Rather, there must be “evidence on the record, particularly where it is an important structural limitation that is not evidently and indisputably within the common knowledge of those skilled in the art.”  Slip Op. at 7 (more on the emphasized text in a moment).  KSR does not require otherwise:  “[T]he Board’s holding is not inconsistent with KSR’s caution against the overemphasis on publications and patents for combining or modifying prior art that are already on the record….In contradistinction to KSR, this case involves the lack of evidence of a specific claim limitation, whereas KSR related to the combinability of references where the claim limitations were in evidence.”  Id. (internal citations omitted).

Nor may employees of the PTO rely on their own technical knowledge.  Examiners should only do so in narrow circumstances, i.e., where the facts asserted to be well known are not capable of instant and unquestionable demonstration as being well-known), and even then must “provide an affidavit or declaration setting forth specific factual statements and explanations to support that finding,” if challenged by the applicant.  Slip Op. at 8, citing 37 C.F.R. § 1.104(d)(2) and the M.P.E.P.  And while the court recognizes that the BPAI has subject matter expertise, it “cannot accept general conclusions about what is “basic knowledge” or “common sense” as a replacement for documentary evidence for core factual findings in a determination of patentability.”  Id.

Common sense and Agency Expertise: Judge Dyk disagreed.  “In my view, the majority’s holding is inconsistent with the Supreme Court’s decision in KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007), and will have substantial
adverse effects on the examination process.”  Dissent at 2.

Here, the majority’s imposition of a rigid evidentiary standard for the presence of claim elements in the prior art goes too far.  To the extent In re Zurko, 258 F.3d 1379 (Fed. Cir. 2001) (the primary case relied upon by the majority) held otherwise, it is inconsistent with KSR:

In Zurko, we held that, as to core (as opposed to peripheral) issues, “the Board cannot simply reach conclusions based on its own understanding or experience—or on its assessment of what would be basic knowledge or common sense.” Id. That statement is contrary to the Court’s holding in KSR that “[o]ften[] it will be necessary for a court to look to . . . the background knowledge possessed by a person having ordinary skill in the art” when examining obviousness, 550 U.S. at 418 (emphasis added), and that “[r]igid preventative rules that deny factfinders recourse to common
sense . . . are neither necessary under our case law nor consistent with it.” Id. at 421. The majority’s approach here is inconsistent with KSR itself and also with our post-KSR approach. Following KSR, we recognized that the Court “expanded the sources of information for a properly flexible obviousness inquiry to include . . . the background knowledge, creativity, and common sense of the person of ordinary skill.” Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009). Consequently, obviousness inquiries “include recourse to logic, judgment, and common sense available to the person of ordinary skill that do not necessarily require explication in any reference.” Id.

Furthermore, the PTO should be able to rely on its own expert knowledge when addressing issues of patentability:

Deference to the agency’s expert knowledge is particularly important with respect to obviousness. Throughout [the Supreme] Court’s engagement with the question of obviousness, [its] cases have set forth an expansive and flexible approach . . . .” KSR, 550 U.S. at 415. The Court emphasized that “[r]igid preventative rules that deny factfinders recourse to common sense . . . are neither necessary under our case law nor consistent with it.” Id. at 421. The Court specifically rejected the approach that
the majority adopts here, stating that “[t]he obviousness analysis cannot be confined by . . . overemphasis on the importance of published articles and the explicit content of issued patents.” Id. at 419. Publications and patents are not sufficient by themselves because “[i]n many fields it may be that there is little discussion of obvious techniques or combinations.” Id.

Dissent at 5.  This approach – of allowing examiners and the BPAI to rely on their own technical expertise, is consistent with the approach of the predecessor to the Federal Circuit, the Court of Customs and Patent Appeals.  It also maintains  safeguards to prevent its abuse: specifically, the requirement that Examiners “state on the record that they are relying on a fact well known in the art and provide their rationale for doing so” and the opportunity that applicants have to challenge the Examiner’s “determination that particular features were common knowledge in the art.”  Dissent at 7, 8.

No Judicial Notice: Is the presence of a plug in the prior art as of 2001 a “core factual finding” related to an “important structural limitation” that is “not evidently and indisputably within the common knowledge of those skilled in the art”?  Judge Lourie thought so, and further declined to take judicial notice of the presence of electrical plugs in the art as of 2001 for the same reason that it was reasonable for the Board and Examiner to decline to take official notice (i.e.: that these facts were “not capable of instant and unquestionable demonstration as being well-known.”).   Slip Op. at 8.  On this point, Judge Dyk jabs back: “Every purchaser of electrical devices in the United States for the past 50 years or more is familiar with multipronged electrical connections.”  Dissent at 4.

 

 

177 thoughts on “K/S HIMPP v. Hear-Wear Technologies: Common Sense and Claim Elements

  1. If an office action includes a conclusory statement that a thing is known to those of ordinary skill in the art, has the examiner taken official notice? According to this case, the answer is no. Whew! That’s a relief!

    It is common practice, and best practice, not to make every possible argument or separately argue every claim when replying to an office action. Excessive argument creates estoppels, wastes client resources, and makes the relationship with the examiner more adversarial. A classic reply makes one or two effective arguments for each of the independent claims, with supporting amendments if deemed necessary. Redundant arguments are often withheld.

    But rejections of dependent claims often include conclusory statements such as the ones that were at issue here. If those statements amount to official notice, they must be challenged in the next reply. If not challenged, they will be deemed admitted. If the grounds for rejection currently at issue can be easily overcome, must the applicant still parse every detail of the office action to avoid loss of rights? Must the applicant challenge every assertion the examiner has made, implicit or explicit, without regard to relevance? Thankfully, no.

    I’m not sure it does any good, but I have been using the following boilerplate in my replies:

    The applicant believes this reply addresses all cited grounds for rejection and that further traverse, including traverse of official notice, would be moot. The applicant reserves the right to traverse additional aspects of the office action should such traverse appear necessary at a later date.

    1. Paul, sage advise. The more one says about anything, the worse it gets in litigation. Reducing the argument to the barest minimum is always the best policy.

    2. It is common practice, and best practice, not to make every possible argument or separately argue every claim when replying to an office action.

      Careful there as some may view this as less than thorough or somehow less than “honest.”

  2. Marbury v. Madison

    May I respectfully point out that the job of examination is with the executive, not with the courts. If the PTO is not examining the way the courts would like, they cannot order the executive to do it differently.

    The courts can decide issues of law, substantial evidence, and claim construction de novo. But they cannot tell the examiner what to do, to enter a rejection that he did not make.

    It is about high time some posters here re-read Marbury and try to understand why the Supreme Court said that it could not order the executive to issue the commission to the Justice of the Peace in that case even though he had established a legal right to such a commission.

    1. I find it a bit shocking Ned that you turn around and do not realize the limits of the Royal Nine when it comes to the legislative branch and writing patent law in the first instance.

      Reading a map just is not the same as writing a map.

        1. despite that you do not believe this

          Can you clarify exactly what it is that you think that I believe and do not believe?

          I will tell you this: I believe in the U.S. Constitution, and in the premise that it is the Constitution (and NOT the Royal Nine) that attorneys owe fealty to.

        2. Posted on another thread as well…

          Ned,

          In light of our past dialogues on the proper role of the Court in relation to Congress, I thought you might enjoy the article by Amanda Frost, Academic highlight:

          Congressional overrides of Supreme Court decisions,

          SCOTUSblog (May. 30, 2014, 2:56 PM), link to scotusblog.com

  3. “This nonobviousness case is significant because it illustrates an important way that some Federal Circuit judges are pushing back against KSR v. Teleflex (2007): by focusing the analysis on the presence or absence of individual limitations in the prior art and limiting what can be considered in establishing the presence of that limitation. Here, the majority holds that while common sense or basic knowledge may provide a reason to combine elements present in the prior art, it cannot establish the presence of an element itself.”

    How is this “pushing back” against KSR? WTF are you talking about, Jason? Where in KSR does it say that the examiner, or an accused infringer, is relieved of the burden of establishing, by a preponderance for the examiner and by clear and convincing for an accused infringer, that every feature of the claim is within the scope and content of the prior art?

    There’s no “push back” here. It’s a very simple case. If you want to reject a claim for being obvious, you have to produce evidence that establishes 1) that every feature claimed is within the scope and content of the prior art and 2) that there exists a reason to modify/combine the prior art to arrive at the claimed invention. That was the law before KSR, and that is the law after KSR. There’s nothing new, significant, or ground breaking about this decision. Other than J. Dyk’s incredibly lame effort to kick up dust.

    1. “Where in KSR does it say that the examiner, or an accused infringer, is relieved of the burden of establishing, by a preponderance for the examiner and by clear and convincing for an accused infringer, that every feature of the claim is within the scope and content of the prior art”

      That’s never been the burden on the examiner/infringer, so I don’t know why it would need to be relieved.

      A novel feature is not sufficient to surpass 103. Obviousness is not a series of anticipation rejections.

      “If you want to reject a claim for being obvious, you have to produce evidence that establishes 1) that every feature claimed is within the scope and content of the prior art”

      Strike two.

      1. Finally, a comment in this thread that shows that points out the difference between obviousness and novelty, something that the majority clearly misses in this case.

        To pass 103, in must be something more than someone with obvious knowledge in the art could do. If an expert says, “any of the 300 students I taught when getting my PhD could come up with this,” then it is not sufficiently creative or inventive, and therefore not patent eligible even if it is completely novel.

        1. not patent eligible

          Sure sign of BLOWING any credibility you may have wanted to portray by conflating patentability and patent eligibility.

          “J” is more like “F”

            1. I read over “eligible”. It was obvious what you meant, J.

              But tell me more about who has the burden, when it comes to 103, is it the Inventor or the USPTO. Then tell me who has the burden after issue; is it the patent owner or is it the party putting validity (103) in issue.

              I’m seeing here a Presumption of Patentability, from the get go, and an even more unassailable Presumption of Validity, after due issue.

              Applicants have to be careful what they winsomely/guilefully/skilfully ask for, OK. But the USPTO should be even more careful, what it magnanimously acquiesces to, that is to say, what it benevolently lets through to issue.

              That’s something that everybody who is in business can agree with, no?

            2. Max, burden?

              1. In the PTO, the examiner has the burden, but he can simply provide notice of his position pursuant to 132. In re Antor Media Corp., 689 F.3d 1282 (Fed. Cir. 2012). References are deemed enabled. If he relies on common knowledge, he can be challenged to provide support. Once the examiner makes a prima facie case even by notice, the applicant then has the burden. The standard of proof is preponderance.

              2. Third parties in the PTO cannot rely on 132. They have the burden of proof. See the present case.

              3. In court, the party alleging invalidity has the burden by clear and convincing evidence. In most cases, both sides present evidence and argument to the trier of fact.

            3. Ned,

              Please be aware that all that MaxDrei is doing is climbing up on his old soapbox to bash the US presumption of validity for issued patents.

              Nothing more – nothing to see here.

        2. I might be inclined to give you a pass, J, but the “context” of the issue is snarled in massive and persistent misunderstanding of the differences between patent eligibility and patentability up to and including the U.S. Supreme Court. Thus, there is no small and innocuous error when it comes to any discussion in patent law about 103 and mixing up patent ability for eligibility, and conversely, there is no small and innocuous error when it comes to any discussion in patent law about 101 and mixing up eligibility for patent ability.

          101 and 103, patent eligibility and patentability are tied at the hip and reflect a MAJOR shift in US patent law undertaken in the 1952 Act.

          Far far far far too many times the effort is afoot to not recognize exactly what happened in 1952, and that effort to not recognize the extent of the 1952 Act is a major reason why we have such a mess in patent jurisprudence today.

          Sorry to impugn you if you had made an honest error – but that error just was not a small error. Treating it as a small error only compounds the obfuscation that needs to be rooted out and quashed.

          1. I am ok with being corrected. In law, and even more so in patent law, exactness in our words are extremely important. I shouldn’t criticize others for obfuscating 102 and 103 when I obfuscate 101 and 103.

            Nevertheless, I think Dyk’s critique is right on, but misses the major philosophical reason why the Supreme Court has allowed flexibility in 103. 103 corrects errors for things that are old but undisclosed, prevents non-patent driven inventions from being patented, and ensure that there is sufficient subjective creativity. There can never be a bright-line rule for obviousness, which is why the Fed Cir’s “show me the teaching” rule in the 1990s was overturned by KSR. But, once again, the Fed. Cir. doesn’t get it. It’s another effort to make a bright-line rule but it hampers 103 too much.

            Tell me, exactly, how the patent in Graham v. John Deere would be ruled obvious under the Fed. Circ.’s ruling in Hear-Wear?

            On your point on the 1952 act, I do not see the 1952 Act as a major shift in patent law, but an effort to codify the existing law. Pasquale Federico, historian for the PTO, did a quite a lot of research for (and wrote much of) the 1952 patent act, which signals to me an effort to codify rather than major reform. Much of patent law was and still is a judicial creation. For example, obviousness was used before 1952 (I can look for cases if you don’t believe me.)

            Anyways, that’s an interesting philosophical difference, and something that will be important in interpreting the AIA (especially on-sale bar, best mode requirement).

            1. Thanks J for the response.

              However, this case has less to do with what you identify, and more to do with a simple procedural notion of evidence on the record.

              Put simply, the dissent is just off-base in trying to say that the majority is ignoring KSR. See my other posts on this thread to see what the gist of this particular case is really about.

              As to what you view of the 1952 Act, well, you are wrong. No one – and I mean no one – that knows anything about the act will say that it was a mere codification. Many sources have already been shared, including congressional records, Cornell Law annotated statutes, Frederico’s commentaries, and even the words of the Supreme Court itself (and the dance that they do with “implicit” and the overt lip service to “the words that Congress has chosen”) that flat out indicate that you are wrong. The ability of the judiciary to be involved was changed by the 1952 Act. Prior to that Act, Congress had invited the judiciary to define the word “invention” by the use of common law evolution. In reaction to an anti-patent Court, Congress revoked that authority.

            2. The Hear-line case echos the bright-line test that it must be expressly in the teaching for the invention to be unpatentable. The KSR decision should have knocked in down. The Federal Circuit in the 90s required either an express showing of a teaching, or a teaching that shows the invention was clearly derived from. I read the decision, I’ve read your posts, I don’t see how this decision is not “express teaching” test the Fed. Cir. used to do.

              I’ll reexamine my understanding of much of the Patent Act, and maybe I am just thinking too narrowly on only a few key provisions. It’s never too late to learn! Let’s save the debate for later, though.

            3. J, there were two patents held obvious in Graham. Pick one for anon’s analysis. I particularly like the pump sprayer, as it is there that the Court defines what “claim as a whole” means as that issue was litigated and decided.

              Regarding “overruling” of the prior Supreme Court-developed standard, after a long review the history of the patent statutes and case law development, the Court concluded,

              “Although we conclude here that the inquiry which the Patent Office and the courts must make as to patentability must be beamed with greater intensity on the requirements of § 103, it bears repeating that we find no change in the general strictness with which the overall test is to be applied. We have been urged to find in § 103 a relaxed standard, supposedly a congressional reaction to the “increased standard” applied by this Court in its decisions over the last 20 or 30 years. The standard has remained invariable in this Court. Technology, however, has advanced—and with remarkable rapidity in the last 50 years. Moreover, the ambit of applicable art in given fields of science has widened by disciplines unheard of a half century ago. It is but an evenhanded application to require that those persons granted the benefit of a patent monopoly be charged with an awareness of these changed conditions. The same is true of the less technical, but still useful arts. He who seeks to build a better mousetrap today has a long path to tread before reaching the Patent Office.”

            4. J,

              You are misreading the decision and placing too much credence in “angle” that the dissent takes.

              The fact pattern here is not one of a mandatory nature. The Article III court merely reflected what the examiner (Examiner II) and the Article I court decided – a different fact pattern would be needed to make this decision be of a mandatory nature.

              Dyk is misguided.

            5. I am curious Ned – is it a quote of dicta, or of holding? Is it a self-aggrandizing, power-addiction-maintaining repainting of what the Court wants to keep its finger into (the nose of wax of 101), or does it properly reflect the fact that Congress slapped down the activist Court in 1952?

            6. anon, the quote directly addresses the propaganda that you have been spewing here for quite some time.

              I wonder why it is being held up now for two days.

            7. As I thought Ned – you quote dicta and false dicta at that, as NO ONE believes the self-serving, addiction-addled nonsense that the Court spouted in order to attempt to keep its finger in the nose of wax.

            8. “103 corrects errors for things that are old but undisclosed…”

              Ah yes. I’ve gotten this rejection before. It’s the old, “Well, the examiner can’t find it but is pretty sure it’s out there somewhere” rejection. Love those.

            9. Just gotta love anon, who insists that 103 was intended to reduce the standard of patentability used by the Supreme Court in the twenty years prior to ’52 (the Douglas era), and so-called dicta of Graham that refuted this by noting that its standard had not changed.

              Cuno was addressed in the second sentence of 103. The first sentence was treated as a codification and not as a wilful lowering of the prior Supreme Court standard.

              After the Federal Circuit was formed, it wilfully ignored Sakraida and Andersons Black Rock. It also ignored the actual holdings of Graham regarding the two patents at issue, especially on the issue of “claim as a whole.” This willful lowering of the standard by the Federal Circuit resulted in KSR, that went out of its way to rely on pre-52 cases, and as well as the Federal-circuit ignored cases of Anderson’s Black Rock and Sakraida.

              Today, as others have noted, the motivation requirement is somewhat reduced — common sense can be substituted. There is also the bit about synergism must be found when a combination of old elements is being claimed.

              But still, the Supreme Court has not eliminated the requirement that the prior art as a whole demonstrate all structural limitations.

          2. Ned @ 23.1.1.1.1.3 above (“Reply” link missing):

            “In re Antor Media Corp., 689 F.3d 1282 (Fed. Cir. 2012). References are deemed enabled.”

            But such enablement presumption can now be challenged via In re Steve Morsa (Fed Cir 12-1609); and without affidavits or declarations:

            “[t]he presumption in Antor is a procedural one—designed to put the burden on the applicant in the first instance to challenge cited prior art.” Slip op. at 9. But “[o]nce an applicant makes a non-frivolous argument that cited prior art is not enabling, . . . the examiner must address that challenge.” Id. at 10.

      2. A novel feature is not sufficient to surpass 103. Obviousness is not a series of anticipation rejections

        Indeed, but that’s not the way the know-nothings look at 103. Let us not forget the ever-popular zombie “argument”, floated here on these threads hundreds of times: “If this is so obvious, then why wasn’t it invented before?”

        If anybody is confused about why the patent txxbxggers despise eligibility considerations and want their functionally-claimed jxnk examined under 103, look no further than this case (and this thread).

        Any child can keep sticking “new” functions (or hey, just use old functions and describe them with new words that you just made up!) or meaningless “limitations” that do nothing except what everybody knows they do (“b-b-but our white-colored detachable wire is easier to see when it’s sort of dark!”).

        And if you keep getting pushback from the Examiner, the same Federal Circuit that gave us this gxrbxge opinion also says that it’s okay to concoct some previously undisclosed “evidence” years after your application filing and hire some “expert” to present that evidence to the PTO. Or you can just borrow some recent “evidence” that someone else figured out.

        Wonderful system we have here.

        1. …and any child can keep sticking more electrons, protons and neutrons onto other configurations of such well known prior art items…

          /off sardonic bemusement

      3. “That’s never been the burden on the examiner/infringer, so I don’t know why it would need to be relieved.”

        Uhm, yes that is the burden.

        Strike three.

        You’re out.

      4. I am not sure what prompted this response.

        The majority clearly interpreted KSR correctly. For a 103 rejection, the examiner has to show that all the limitations are found in the prior art. KSR merely lessened the motivation to combine requirement.

        That’s not to say that during prosecution that the claims in question should not have been rejected, just that the Examiner failed to do their work properly by not pointing to a piece of art showing the pronged connector.

  4. Friendly reminder to folks who were born yesterday: the patent txxbgger types who insist that every common sensical rejection of their jxnky claims needs to be backed up with “evidence” are the same folks who will then turn around and cite the number of references being cited or the number of pages in the Office Action as “evidence” of the non-obviousness of their claims. Of course, that “argument” is meritless when the limitations in question are just functionally-claimed gxrbxge or old components doing nothing other than what they were designed to do in the first place.

    But that’s how the “appeal everything” crowd plays the game. And everybody knows it.

    1. are the same folks who will then turn around and cite the number of references being cited or the number of pages in the Office Action as “evidence” of the non-obviousness of their claims

      That’s one H of a strawman.

      1. That’s one H of a strawman.

        You still haven’t figured out what a “strawman” argument is, apparently. And now you’ve apparently confused AAA JJ, too (who was pretty confused already).

        Maybe instead of adding further confusion to AAA JJ’s plate, you can instead help him out with that impeachment drive he and Eric G. cooked up a couple months ago. <–also not a strawman

        Or maybe he could help you "appeal everything." Because that's how he rolls. Or have you forgotten? <– also not a strawman

        Try to keep up.

      1. Keep beating that straw wife of yours, Examiner Mooney.

        The truth kinda stings you, doesn’t it, AAA JJ? Unlike you, I wasn’t born yesterday. I’ve had my eye on the patent txbxggers for years so I know exactly how the game is played. Everybody does. Even the judges on the Federal Circuit know how it works.

        The main difference, really, is whether you come to the table with the mindset that it’s much, much better to err on the side of granting reams of junk patents that diminish the rights and increase the costs of the non-patenting public versus occasionally denying some already wealthy and well-off “innovator” the opportunity to further line his/her pockets.

        But you knew this already.

        1. AAA JJ,

          I don’t know about you, but the implication from Malcolm (the sting) is that you are his straw wife that he beats.

          (ewwww – the mere impression of this impropriety makes me nauseous)

        2. “The main difference, really, is whether you come to the table with the mindset that it’s much, much better to err on the side of granting reams of junk patents that diminish the rights and increase the costs of the non-patenting public versus occasionally denying some already wealthy and well-off ‘innovator’ the opportunity to further line his/her pockets.”

          WTF are you talking about?

            1. Most likely the part about how you refuse to understand (and properly use) law in your arguments concerning the law.

              You seem to have a deep aversion to pounding law.
              You seem to have a deep aversion to pounding facts.

              You seem only capable of pounding tables of “policy”/opinion.

              That does not work out so well.

        3. I’ve had my eye on the patent txbxggers for years

          Apparently not the only thing – not saying that I believe the rumors about those restraining orders against you…

          granting reams of junk patents that diminish the rights and increase the costs of the non-patenting public versus occasionally denying some already wealthy and well-off “innovator” the opportunity to further line his/her pockets.

          Bias much? (as if your anti-patent tendencies was not already well enough established….)

          1. your anti-jxnk patent tendencies

            Fixed.

            Note that in the same thread we find this from “anon”: counsel is not doing the client any favors here obtaining a patent that will not be enforceable

            Why do you believe this patent is “not … enforceable”?

            Tell everyone.

            1. A little thing called pragmatism.

              Note the difference though between you and I on this thread: I know, understand and pound the law.

              Pay attention.

  5. I think what is missing in this conversation, and what the majority misses, is that this hamstrings one of the major functions of sec. 103- that is to ensure that the claimed invention has a sufficient inventive step for patent eligibility.

    While many here do not like it, novelty and obviousness are two separate requirements. That necessarily means that something can be novel but still not get a patent. If something is novel, the examiner may not be able to meet the high-evidence standard set here by Judge Lourie. That doesn’t mean that the application should pass the obviousness standard.

    This decision flies in the face of 102, 103, and several Supreme Court decisions (take a look at Graham v. John Deere, for example)

    1. “While many here do not like it, novelty and obviousness are two separate requirements.”

      Everybody here understands that. And none of us have a problem with it.

      “That necessarily means that something can be novel but still not get a patent.”

      Again, all of us here understand that and none of us have a problem with it.

      ” If something is novel, the examiner may not be able to meet the high-evidence standard set here by Judge Lourie.”

      The high-evidence standard set by J. Lourie? What is that? You mean when some examiner like Mooney claims that some feature is “evidently and indisputably well known” but when is actually asked to produce evidence to support the contention can only pound his fist on the table and rail on and on at the “patent teabaxxers”? If something is “evidently and indisputably well known” how hard is it to find evidence of it?

      “That doesn’t mean that the application should pass the obviousness standard.”

      So even if the examiner can’t meet the evidentiary burden (of a preponderance) of establishing that all of the claimed features are within the scope and content of the prior art and that there exists a reason to modify and/or combine the prior art the examiner should still be able to reject the application? I don’t think so.

  6. This is a race of dumb v. dumb. Sure, the attorneys were dumb to not put it in. The system was dumb to not invalidate the patent anyway. I can see no way to say that the patentee hid the prior art from the patent office with deceptive intent. How do you hide the not merely ubiquitous, but the outright omnipresent?

    The patent world obviously needs a few children to point out the painfully obvious.

  7. What happens to the applicant/patentee’s duty of candor and good faith during these proceedings? Does it disappear?

    I’m just trying to figure out how it’s possible for the applicant to pretend that multi-pronged electrical connectors don’t exist in the prior art when every other honest adult person on the planet earth knows otherwise and isn’t ashamed or afraid to admit that.

    1. (sigh)

      You are not paying attention, are you?

      Mere existence does not make the obviousness argument.

      (You might try to figure things out the meaning of law for a legal discussions that you want to join)

      1. Mere existence does not make the obviousness argument.

        It’s fun watching the patent txxbxggers dive to the bottom.

        Apparently these super awesome “innovators” — responsible for all that is shiny and wonderful in our modern society — now need to be told that ancient electrical connectors exist to create electrical connections. If they aren’t told these things by the government over and over and over and over, apparently terrible things will happen and we’ll end up like the Amish.

        The best part: watching them try to play these games with functional claim language.

        What a bunch of clowns.

        1. Dive to the bottom?

          Hey, if that is what it takes to get to your level to tell you about the law as it is today, then don’t you think diving down to tell you should be allowed?

      2. You are not paying attention

        Indeed, I am. We both recognize this patent is unenforceable jxnk. But you seem incapable of recognizing that the patentee and its attorneys are ethically bankrupt. Of course, you’ve always had a hard time with that. Maybe ask your buddy on “the ethics side” to help you out. You two seem to get along quite well.

        1. We both…

          Um, you are kind of missing the important point about the law involved.

          That is an important and not-small difference.

          1. you are kind of missing the important point about the law involved

            Not at all. But keep pretending that’s the case. It’s what you always do when people disagree with you about anything.

            1. A familiar adage, no less pertinent by its oft well-targeted use:

              When you have the law, pound the law.
              When you have the facts, pound the facts.

              When you have neither, pound the table.

              Or in Malcolm’s case, pound that “policy’/opinion table.

              (I heard its resonating sound is a great way to save those lemmings marching up the hill and through the field of rye from that cliff…)

    2. Even the applicant’s background section admits that there is nothing new about detachable wiring in an earpiece.

      existing earpiece auditory devices are typically designed such that the electrical components of the device (e.g, the speaker, receiver, microphone, etc., or whichever of such components are included in the particular device) are coupled to each other via some fixed connection. For example, in at least one instance, a speaker of an earpiece auditory device is electrically coupled (either directly or indirectly) to a microphone, processing circuitry, and/or a transceiver of a device via some form of fixed wiring.

      “In at least one instance”? LOL. That’s some weak sauce there. Jeebus cripes, can you get down deeper into the muck than that?

      Never mind the fact hear on Earth it’s the atypical “existing auditory earpiece” that is attached to a “transceiver” via a fixed wire.

      But surely the patent applicant wasn’t trying to play games with universally understood facts in their background section. That might shock everyone. You know who’d be especially shocked? Judge Rader.

      LOL.

      1. How is Judge Rader implicated in the present thread?

        Or are you just not able to help yourself from Malcolm-Self-FAIL?

  8. The courts generally do not force the executive to do something within the executive’s discretion. The examiner could have, but chose not to, provide the missing evidence. That was within his discretion.

    One must also observe that this was an inter partes reexam. One wonders why the 3rd party did not supply the missing evidence instead of appealing? Am I missing something?

  9. “Judge Dyk disagreed. ‘In my view, the majority’s holding is inconsistent with the Supreme Court’s decision in KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007), and will have substantial adverse effects on the examination process.’”

    If you need any more proof, beyond any shadow of a doubt, that J. Dyk has no clue about what actually goes on during the “examination process” (i.e. “the I need a counter, baby!!!!!!!!” shenanigans examiners routinely rely on), see the above quote.

    1. I would tend to agree that there is some shinanigans, but it isn’t for dyk et al. to take legit tools away from legit examination to try to transform himself into pto management or try to do their jobs for them.

      1. Short cutting the burden of resolving the factual inquiry into the scope and contents of the pertinent prior art (i.e. providing applicants with evidence that every element/feature claimed is actually within the prior art AND providing a evidence and reasoning establishing why one of ordinary skill in the art would modify/combine the prior art) by simply declaring, “Well, that item is well known, so therefore it’s obvious to combine” is hardly a “legit” examination tool. I realize in your world of “gotta git my counters!!!!!” it is, but not anywhere else. Well maybe in J. Dyk’s lazy arse mind too, but that’s another story I guess.

        1. The Supreme Court takes a dim view of “short-cutting” cf eBay.

          Of course whether this “do-not-shortcut” applies to a pro-patent stance might be a different question for the Royal Nine.

        2. AAA JJ reasoning establishing why one of ordinary skill in the art would modify/combine the prior art

          “provide a detachable mechanical and electrical connection”

          The “reasoning” is right there in the claim. That’s just common sense, of course, as is true of 99.99% of functional “limitations”, particularly those we see in the softie woftie arts.

          But you knew that already.

          Let’s all pretend we were born yesterday. Multi-pronged electrical connectors never existed until now, and patent attorneys are the most honest and candid people on earth.

          What a wonderful, wonderful fantasy world the patent txxbxggers live in! It’s like some sort of weird paradise, where the coddling never ends and neither does the whining. Kinda like a big echo chamber.

        3. “I realize in your world of “gotta git my counters!!!!!” it is, but not anywhere else.”

          Well, you know, “not anywhere” else besides the vast majority of the entirety of the years in which the patent system existed.

          I often wonder how they would have made factual findings in the olden days when there was barely enough written information to fill a library published on the useful arts in the entire world (or the new world o merica anyway). Especially if the evidentiary standards you’d like to be in place where in place.

          1. I often wonder how they would have made factual findings in the olden days when there was barely enough written information

            I will tell you what they did NOT do: Just make things up or treat facts and law as “subjective, completely in the mind make up anything you want and anything goes”

            You would be as awful with law and facts then as you are now.

          2. ” Especially if the evidentiary standards you’d like to be in place where in place.”

            They are in place. Just because you and your fellow examiners Mooney and Dyk don’t like them doesn’t mean they’re not in place.

            1. Well I guess that explains why they spill so much ink and spend so much training time telling us all about them here at the PTO. Esp since, if they’re at your “standard” then that should be the number 1 thing all examiners are most familiar with right after dates on prior art.

            2. It’s not my standard, 6tard. It’s the law’s standard. If you can’t produce evidence that makes it more likely than not that the claim is obvious, the claim is patentable. Pretty simply really. The fact that this still seems to be eluding you establishes your willful ignorance beyond any shadow of a doubt.

            3. establishes your willful ignorance beyond any shadow of a doubt

              6′s willful ignorance has never been in doubt. He is a poster child of the lemming crowd.

    2. Allowances require less work, take less time and provide more counts than rejections at any point of the examination cycle. If you’re getting rejected it’s because your application is truly terrible. There are reams of statistics on this.

      Seems you’re the one who doesn’t know what goes on in the examination process. And it’s counts, not counters.

      1. Candidate for the worst 1ie of the day (and that is saying something as it does not belong to Malcolm):

        If you’re getting rejected it’s because your application is truly terrible. There are reams of statistics on this.

        Party admission: Kappos “Quality does NOT equal Reject”

        1. Anon, just for an outsider’s perspective I’m curious:

          What percentage of patent applications do you think are allowed their first time around?

          What percentage of patent applications do you think are eventually allowed?

          1. Random,

            I have a feeling that you are trying to be as random as possible.

            Do you have an actual point in mind here? Anything even remotely citable (you know, your “reams of statistics”…?)

            1. I suppose it’s random. I’m curious as to what outside people would put the numbers at. It has nothing to do with anything other than for my own information.

      2. ” And it’s counts, not counters.”

        Lulz. Well sonny, back in my day many examiners, including myself, referred to them colloquially as “counters.” Go ask any old timer (i.e. anybody who started before you) if they’ve ever heard the term.

        As to the other nonsense in your post, anon addressed that sufficiently.

        1. But let me address this particular foolishness: “If you’re getting rejected it’s because your application is truly terrible. There are reams of statistics on this.”

          Right. Because in all cases in which a pre-appeal and/or an appeal brief is filed, 75% get re-opened by the examiner. That’s my ream of statistics. What’s yours?

  10. If its so common to have multiple prongs in connectors for hearing aids, then why was no art showing that cited?

    “Common Sense”, would argue for a connector as small as possible, such as no connector at all (hard wiring) or a single prong connector, such as a headphone jack in miniature. Why is it obvious to use a multiple prong connector in this application?

    The claims were allowed for a reason…..

    1. Les, not to disagree with you (and more in alignment), the problem with “common sense” is that it is sometimes not common and often only makes sense in hindsight.

  11. “The dissent criticizes the majority for adopting an overly rigid approach that denies examiners recourse to common sense.”

    Supreme Court speaks, Fed Cir does its best to worm out of it. Shocking.

    It’s often useful to simply complete the thought – if the argument is the prior art doesn’t show something, then a 112, 1st analysis better show that the specification itself enables and describes the structure, and does so based on the same lack-of-knowledge standard that is negating the 103 rejection.

    “Every purchaser of electrical devices in the United States for the past 50 years or more is familiar with multipronged electrical connections.”

    Maybe that’s why whoever drafted the application didn’t feel the need to explain how one could fit multiple prongs within the same insulated wiring portion, which is an alleged novelty according to the majority.

    “My claim contains a pen, you didn’t show me a pen, pull your 103.”
    “Let me check your specification, ah here it is – ‘the system contains a pen’ and right there in your claim: A system comprising: a pen.”
    “That’s right, pull your 103.”
    “112, 1st, the record contains no evidence one of ordinary skill could make a pen or that you possessed one. Submit evidence people in the art knew what a pen was and how to make it.”
    “That’s ridiculous, of course they knew how to make a pen.”
    “103.”

    The only reason this doesn’t happen in pretty much every application is because of compact prosecution rules. Lawyers are not so limited.

      1. (in this case, it was the second examiner that refused to make the obviousness rejection – this is a very different focal point from what KSR addressed)

        1. The second Examiner acted correctly as to office policy. Is that what I’m arguing about?

          Office policy also requires inclusion of search notes. Is that a legal requirement of a prima facie case of obviousness?

          Is the Federal Circuit bound by USPTO policy, or by the law?

            1. The Office standard to show obviousness is stricter than the legal standard for obviousness.

              The second Examiner was correct – the first examiner did not meet the office standard to show obviousness.

              Does that tell you whether or not the claims are legally obvious?

            2. You kind of miss the point with your comment concerning the second examiner evaluating the work of the first examiner – examiners are not ‘judges’ as you would indicate.

              The second examiner was, well, examining, for lack of a better word.

    1. The only reason this doesn’t happen in pretty much every application is because of compact prosecution rules. Lawyers are not so limited.

      The laughable QQ combined with “poor poor examiners just don’t have the wherewithall that lawyers have” brings one response: Do your Fn job.

    2. Random, this was an inter partes prosecution. Couldn’t the third party have provided the needed evidence?

      1. The third party could have – and should have,

        Random Examiner’s post misses because the USPTO choose not to (in fact, as noted, the second examiner’s action was to effectively remove the obviousness rejection).

    3. I guess my post on what a silly POS post Random Examiner posted didn’t meet this site’s ever shifting and slippery moral requirements.

    4. Very first question at oral argument: “General knowledge and common sense do make sense if you’ve read KSR, but when you’re talking about a structural claim limitation, don’t we need a reference for that?”

      Just so we’re clear here: A homicide conviction requires that the homicide occur within the jurisdiction. If a body is found in the jurisdiction, that is sufficient to uphold a finding that the homicide took place in the jurisdiction, despite there being no actual evidence of that limitation. Why? Common sense. Standard: Beyond a reasonable doubt.

      Majority’s holding: If a claim has two limitations “catching a ball; throwing a ball”, a reference that directs one to “take the ball out of the glove and throw the ball” wouldn’t render it obvious, because there’s no record evidence that the ball necessarily got into the glove by catching. Standard: clear and convincing or preponderance.

      Not to mention the following:

      Ref A: A red truck
      Ref B: Blue paint
      Ref C: Pen

      Claim 1: A truck; a pen; wherein the truck is painted blue
      Claim 2: A blue truck; a pen

      Under the majority’s reasoning, claim 1 is obvious because KSR provides the combination, claim 2 is not because a limitation lacks record evidence. Patentable scope does not turn on drafter’s skill. Obviousness is not a series of novelty rejections.

      If the claim is “catching a ball” or “a pen” or any other thing to which any reasonable person would know, the lack of a formal citation does not mean the fact isn’t known. The office need only show that the claim is obvious, there is no requirement that the obviousness fact be supplied in any particular way, KSR specifically counsels against creating a rigid, non-textual test.

      1. I wonder if this was the post that rankled AAA JJ….

        This is utter and complete dross. It is clear that you are clueless not only to what this case was about, but your rambling here shows a serious lack of understanding on the law of 102 and 103.

        While you do state correctly that 103 is not a series of 102′s, you basically are untethered to any legal analysis beyond that.

        Stunningly bad.

    5. “The only reason this doesn’t happen in pretty much every application is because of compact prosecution rules. Lawyers are not so limited.”

      If this “112, 1st, the record contains no evidence one of ordinary skill could make a pen or that you possessed one. Submit evidence people in the art knew what a pen was and how to make it.” is the typical rejection you write for lack of written description and lack of enablement (and something about your posts tells me it is), then you’re doing it all wrong. Rejections like that are meritless and it takes about 2 minutes to successfully traverse them.

  12. When the facts and law aren’t on your side … pound the sand.

    ““Every purchaser of electrical devices in the United States for the past 50 years or more is familiar with multipronged electrical connections.” Dissent at 4.”

    … but were they familiar with the use of such connections in hearing aids?

    And more importantly … were artisans of the time?

      1. If it’s such a joke to claim otherwise the Examiner should have gotten off his rear and produced the evidence.

        Examiners cannot just get away with handwaving and day everyone knows it.

        KSR was good for reducing the motivation to combine requirement (That was always easiest to overcome a rejection) However, reducing the motivation to combine is not the same as establishing the existence in the prior art. Further, given the reason for the use of a multi-pronged connector, there would likely be a stronger argument in this case for overcoming motivation to combine even in the face of KSR.

  13. Oh well actually yeah I def agree with the outcome of the case, the PTO’s factual findings get difference and all that iirc. If the board finds the element is missing (for whatever reason including lack of evidence) then so the PTO finds and that gets difference.

    1. Although I definitely agree with the dissent that the PTO can and should be able to take official notice of facts that are not merely personal knowledge of the individual. That particular part of the decision needs a striking for sure.

    2. I was wondering as I scaled up the list of responses whether anyone would applaud the CAFC for granting deference to the “experts” at the Patent Office. 6, you’re softening…something is actually patentable now?

      1. Don’t be so surprised Thomas.

        Trivial items (including some chemical claims that are nothing more than excessive picture claims) have passed the sniff test for a long time.

      2. “6, you’re softening…something is actually patentable now?”

        Man I’ve been issuing patents hand over fist for many years now.

  14. “holds that while common sense or basic knowledge may provide a reason to combine elements present in the prior art, it cannot establish the presence of an element itself.”

    While I probably technically agree with that, hearing it “out loud” like that makes it sound less appealing and seems almost like a setup for the supremes to knock down their bright line rule. Frankly it may well be the other way, especially in some very simplistic arts. For example, if you have a gas car reference from 1990, your common sense tells you that implicitly there is a gas tank even if it is never specified.

    1. Frankly it may well be the other way, especially in some very simplistic arts.

      The electric plug arts are like sooper compilicatud. It took Thomas Edistein a long time to invent because he had to invent a lite bulb first so he had something to turn on.

      1. Thing is though I’m not really sure that’s the type of plug they’re talking about. I’d have to look at the pros. and the claim and all more than I have.

        1. It’s an electrical wire with a multi-pronged connector.

          They might as well have claimed a wire “insulated in plastic.” It has nothing to do with the non-existent “invention” that is the subject of the application. It’s just happened to be only lifeline for the patentee who apparently enjoys throwing money down the t-let.

          1. MM I’m going to be frank brosef. You and I approach your standard device invention from different viewpoints. In my viewpoint, the inventor usually came up with some device. He is an innocent man or entity just going about his business in these sorts of arts a good solid majority of the time. It isn’t some slimey lawlyer dreaming sht up at his kitchen table pretending to invent through the manipulation of language and his own abstract ideas. He writes down his invention or pays someone else to. Then he goes ahead and makes an attempt to put what he regards to be the invention into the english language, or pays someone else to help him out. He then files for a patent if he wants to. Keep in mind this is, at this point, nothing but him applying for a government entitlement, just like any other. As regrettable as that may be since the government is paying for this entitlement with other people’s money taken directly from individuals or entities.

            Only once we come and put some art on the table does he have to start fidgeting around to try to draw a line between the thing he came up with and what came before, and variations on what came before that would have been obvious to a person of ordinary skill at the time of the invention. This is just what congress laid down for their entitlement program.

            So then, when we do that, and he starts fidgeting around, a key difference between our two approaches takes place. I’m looking just at what he invented to see if it is obvious in the way he has claimed it. I’m first and foremost not looking to see if his words that he used to claim it were obvious. Or whether the manner in which he is attempting to fidget by distinguishing over the art is obvious. And what you seem to often be doing is nothing more than acting like meh, the words he’s using, or the substance of just the new words that he’s tossing in, are/is obvious since they’re just some of what was old tossed in. That’s not really the way to do it brosef. We always have to go back to the invention as a whole (or “claimed invention” in the AIA whatever). As in, we look back to the invention itself, and note the way he’s claiming it, and determine obviousness based on that.

            Now, I don’t know if you’ve done much prosecuting in such arts or what, but this may differ from the kind of stuff you usually work on. But frankly I think that is the proper approach in these arts brosef. Anything else leads to some preposterous calls. Generally I can persuade my fellows of this no problem. This simply isn’t the same thing as taking two abstractions and piling them on top of each other where your approach may well be justified.

            1. You are seriously clueless as to why we have a patent system 6.

              Your emphasis on “entitlement” misses the foundation of Quid Pro Quo.

              But you are at least correct in that “We always have to go back to the invention as a whole (or “claimed invention” in the AIA whatever).

              What you have identified in the Malcolm psyche is his amalgamation non-integration assumption of his pet theory – his “anti-Diehr bias, as it were.

              He just does not recognize (or refuses to recognize) that bias.

              but this may differ from the kind of stuff you usually work on.

              That too is easy to see: Malcolm is just too accustomed to chemical picture claims, and (like yourself – witness your ending comment) does not grasp the ladders of abstraction concept that is used in more than 98% of claims of any value.

              proper approach in these arts brosef” (emphasis added)

              As I have been pointing out, claims are read and understood in the shoes of a person having ordinary skill in the art to which the invention pertains, having been informed by the specification. There has been far too much attempted obfuscation for far too long by those unwilling to recognize just what that last part of the legal phrase of PHOSITA means.

              People that profess to be attorneys have an ethical obligation NOT to advocate by omitting this known material aspect. People that are not attorneys need to be aware that advocating by omitting this known material aspect only leads to a FAIL argument. Either way, a genuine discussion must integrate the material facts and material law into the discussion.

              Once we all recognize this, then – and only then – can the discussion progress in any meaningful manner.

            2. Now, I don’t know if you’ve done much prosecuting in such arts or what, but this may differ from the kind of stuff you usually work on.

              The “kind of stuff” does not change the basics of patent law.

              That’s what is so funny about how bad Malcolm is with the basics. His inability to comprehend the basics speaks ill even of his picture claim background.

            3. 6 I don’t know if you’ve done much prosecuting in such arts or what

              I’ve done plenty. Did you know that biotech companies and researchers also invent devices? It’s true.

              But frankly I think that is the proper approach in these arts brosef. Anything else leads to some preposterous calls.

              Really? What’s “preposterous” about an Examiner noting that a claim “limitation” that is indisputably tangential to the applicant’s invention is “evidently and indisputably within the common knowledge of those skilled in the art”?

              The answer: nothing at all.

              That’s all we’re taking about here. Other fact patterns should lead to different results. If they don’t, that’s not a problem with this kind of fact pattern or Judge Dyk’s approach to this kind of fact pattern.

              Let’s face it: most of the time this fact pattern never gets addressed because most people don’t have the money and time to waste appealing an unenforceable patent claim, where that precedent itself isn’t even worth the paper it’s written on.

            4. Did you know that biotech companies and researchers also invent devices? It’s true.

              Gasp, it is also true that many such devices involve innovative software!

              Oh, the horrors.

              /eye roll

            5. That’s all we’re taking about here.

              Actually, the case is about something else.

              Not that you can’t talk about whatever, but just in case a pertinent legal point wanted to be made, you might want to have a clue.

              (One can always hope for Malcolm)

            6. the case is about something else.

              It’s always about “something else” with you. The sad part is that 99% of the time you can’t find the English words to explain what that “something else” is. So you spew insults and non-sequiturs instead. Get a life.

            7. “Really? What’s “preposterous” about an Examiner noting that a claim “limitation” that is indisputably tangential to the applicant’s invention is “evidently and indisputably within the common knowledge of those skilled in the art”?”

              First of all you’re making a subjective determination about what is tangential to the “invention”. The applicant makes that call brosefus. But nothing is preposterous about an examiner taking official notice of a FACT (as opposed to some “limitation”) regarding x being old in the art as of y date. But then making a call as to obviousness based upon that fact is another thing entirely.

              And then, once you have the fact that x is old as of y date sitting there on the table, so to speak, then you have to do something with that fact. Say, for instance, making an obviousness determination. That may take even more facts found or taken notice of in order to answer in the affirmative.

              Keep in mind though, in this case the PTO declined to take official notice of anything. They get difference as to their factual findings. Dyk et al. could take judicial notice of the facts necessary to make an obviousness determination and still not overrule the PTO due to the difference.

              Also keep in mind that it will take more than an official notice about “an electrical wire with multi-pronged connectors” being old in ANY art as of x date. Gotta have them in analogous art, blah blah blah blah. All that shizzle. It is no wonder why the PTO declines to take official notice here.

            8. “They get difference as to their factual findings.”

              This is about the third time you’ve said “difference” when you mean “deference.” Of course, displaying your incredible ignorance is one of your favorite past times. And you’re very, very good at it. Keep up the record breaking outstanding quality postings.

            9. “This is about the third time you’ve said “difference” when you mean “deference.” Of course, displaying your incredible ignorance is one of your favorite past times. And you’re very, very good at it. Keep up the record breaking outstanding quality postings.”

              Awwwww little dumas AAA doesn’t like it when people play with his dumas legal language. Cry me a river tard.

          2. Egads, I agree with Malcolm on this – counsel is not doing the client any favors here obtaining a patent that will not be enforceable (to assuage the poor feelings of Random Examiner, whoever this is attempted to be enforced against will have the wherewithall to to find the prior art that Dyk oh so casually mentions).

          3. the lack of any evidence in the record that such an “indisputably tangetial” limitation is actually within the scope and content of the pertinent prior art.

            You need “evidence” that multi-pronged electrical connectors are in the prior art?

            How old are you? Five years old?

            1. I know you are but what am I?

              Yeah, I need “evidence” that multi-pronged electrical connectors are in the prior art pertinent to the subject matter sought to be patented. And then I need some evidence that there existed a reason to combine multi-prong electrical connectors with the prior art.

              And no, simply pounding your fist on the table and declaring “It’s well known therefore it’s obvious!!!” doesn’t cut it. It might be sufficient for the garbage OA’s you’re churning out, Examiner Mooney, but it doesn’t meet the burden of proof of obviousness.

            2. I need “evidence” that multi-pronged electrical connectors are in the prior art pertinent to the subject matter sought to be patented.

              Because you were born yesterday and somehow the “pertinence” of electrical connectors to electrical hearing aids is too difficult for you to figure out.

              At the same time, you and/or your know-nothing clients are sooper dooper important “innovators” who need to be coddled at every turn because otherwise we’ll all end up like Amish people without knowledge of how to make an electrical connection.

              simply pounding your fist on the table and declaring “It’s well known therefore it’s obvious!!!” doesn’t cut it.

              LOL! Because fist pounding is only for sooper dooper “appeal everything” patent agents like AAA JJ.

              How are those impeachment proceedings coming along, AAA JJ? Oh right: blowing up in your face. LOL.

            3. AAA JJ,

              You might need to explain to Malcolm what the concept of “burden of proof” means.

              He is simply so used to spinning things and calling his own spin “proof” that he might not understand what you are talking about.

            4. I need some evidence that there existed a reason to combine multi-prong electrical connectors with the prior art.

              Try to believe it, folks.

            5. “LOL! Because fist pounding is only for sooper dooper ‘appeal everything’ patent agents like AAA JJ.”

              Lulz. Keep insisting that applicants provide picture claims before you’ll allow anything, Examiner Mooney. And I’ll keep kicking the arse of examinertards like you all the way to 3+ years of PTA.

  15. Dyk: “Every purchaser of electrical devices in the United States for the past 50 years or more is familiar with multipronged electrical connections.”

    Super Important “Innovator” responds: “What is electricity? How do I know if those plugs are for electricity or some other source of power? The Examiner has not proved that this “electric” power is actually in the prior art and not a popular myth. Pieces of paper with writing on them can be forged. The Examiner has not proven that she did not fabricate all copies of the reference she is citing. She could have deposited them in libraries around the world using cars or planes that don’t have plugs. Blah blah blah blah pound the table blah blah blah I want my unenforceable patent blah blah gestapo death squad so unfair blah blah blah.”

    1. One problem with Dyk’s speech is that he cannot have it both ways – it cannot be so easy and then turn around and be such a detriment to the examination process.

      The bigger problem though is that this quibbling is not the focus of the evidence provided.

      1. This is exactly correct. If some “fact” is “common knowledge” to the point that the examiner wants to take Official Notice of it, the examiner should have zero trouble providing the documentary evidence. After all, only facts capable of instant and unquestionable demonstration as being well known. So if it’s a “fact” that is capable of “instant” demonstration as being “well known” it shouldn’t take the examiner more than, say, a minute to produce the evidence. Considering that 6tard regularly boasts of finding killer knock out 102(b) art with 10 second Google searches, what’s the problem with the examiner producing the evidence.

        It’s also incredibly sad that we have judges like Dyk who don’t understand the distinction between the concepts of “common knowledge” and “common sense.” The former is a lazy arse technique employed by lazy examiners trying to short circuit the fact finding requirement (which again shouldn’t take them more than a minute at most) and the latter is nothing more than the idea that the prior art doesn’t have to explicitly suggest the modification/combination.

        1. If some “fact” is “common knowledge” to the point that the examiner wants to take Official Notice of it, the examiner should have zero trouble providing the documentary evidence.

          The fact is that the softie woftie know-nothings are especially expert at pretending that they were born yesterday and they know their best chance at “success” is to hope that someone at the USPTO blinks.

          We’ve all seen this happen scores of times.

          1. Have you stopped beating your straw wife?

            This is not a “softie woftie” case.

            Please feel free to provide any portion of J. Dyk’s dissent where he actually provides a reason why it would have been obvious to combine the “well known” element with the prior art. Of course you won’t be able to because J. Dyk’s “analysis” is nothing more than, “It’s well known therefore it’s obvious.”

            I have no doubt that if J. Dyk were an examiner he would be receiving record breaking outstanding quality reviews for his work. Unfortunately, he’s not an examiner. He’s an appeals court judge.

            1. This is not a “softie woftie” case.

              Yes but similar issues arise in the softie woftie arts all the time because, as you know, the softie wofties love to play the know-nothing card and pretend they were born yesterday.

              J. Dyk’s “analysis” is nothing more than, “It’s well known therefore it’s obvious.”

              I think that’s because Dyk understands he’s writing for adult humans and not mental defects like yourself.

            2. Keep beating it, Examiner Mooney. You’re doing a heckuva job.

              J. Dyk is free to flaunt his ignorance of the law all he wants. He’s a life tenured Art. III judge. Doesn’t mean he knows his arsehole from his elbow.

  16. I see that the EPO family member EP-B-1415507, issued but was opposed and on May 6, 2014 was revoked. I guess that the patent owner will appeal.

    link to register.epo.org

    Given that the debate over the US case is about evidence, I imagine that the differences between the cases in DC and Munich will be stark.

    Given that the technology is so simple, it might be a good case for comparing the two jurisdictions on obviousness. Well, KSR was a good one, so why not this one too?

    1. Official Notice is officially dead?

      Not at all – it merely means that Official Notice must be properly and fully employed (note that not only was Official Notice NOT properly and fully used by the first examiner, but that the actions of the second examiner effectively rescinded the beginning use of that first examiner’s attempt at Official Notice).

      The takeaway as I see it is that the court here simply did not act as an examiner in the first instance at this stage of the game. They refused to sua sponte create a new rejection that lacked the evidentiary support – reflecting instead that those doing the examining (in particular the second examiner), and the Article I court that may sua sponte make a new rejection (the Board), did not do so on the record.

      This decision should be read more from a procedural standpoint than from a particular case-fact standpoint if you want to be able to apply the law to any future case with that future case’s different fact pattern.

    2. I doubt it, the courts can hold as they please of course, but I doubt the pto saw this coming or fought it in this case. Bottom line, the executive can always fight back. If need be, congress can step in to help the majority understand patent practice.

  17. Jason: Is the presence of a plug in the prior art as of 2001 a “core factual finding” related to an “important structural limitation” that is “not evidently and indisputably within the common knowledge of those skilled in the art”? Judge Lourie thought not,

    I think you meant to say “Judge Lourie thought so.”

    Judge Lourie is a very silly person indeed. This is just another example of the Federal Circuit’s incredible cluelessness and willingness to make fools of themselves in order to coddle know-nothing patent applicants.

    1. Another possible nit…

      From the decision:

      Because the Board did not err in holding that claims 3 and 9 would have been obvious, we affirm.

      Probably meant to say:

      Because the Board did not err in holding that claims 3 and 9 would NOT have been obvious, we affirm.

  18. Have aliens kidnapped the real Judge Lourie and replaced him with an impostor?

  19. Here’s a tidbit the MPEP has to share on the topic:

    The “mere existence of differences between the prior art and an invention does not establish the invention’s nonobviousness.” Dann v. Johnston, 425 U.S. 219, 230, 189 USPQ 257, 261 (1976).

    1. does not establish the invention’s nonobviousness
      … bearing in mind that the initial burden of proving obviousness rests with the USPTO.

    2. Here’s another tidbit you might be interested in:

      “…a patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.” KSR, 550 U.S. 398, 418 (2007).

      That’s another thing that the dingaling J. Dyk does not understand: the “conclusion” that some element is “well known” or within the “common knowledge” of one of ordinary skill in the art, or the examiner (who is not one of ordinary skill in the art, but rather a fact finder charged with factually resolving the scope and content of the prior art and the level of ordinary skill in the art) is not, in and of itself, a reason for modifying/combining the prior art to include such a “well known” element. There still has to be a reason why one of ordinary skill in the art would modify/combine the prior art to include the “well known” element. Under the approach of legal ignoramuses like J. Dyk, the mere demonstration of each element, and even worse the mere allegation by an examiner or APJ that such element is “well known” allows the entire obviousness analysis to short circuit the required reasoning and collapse it to nothing more than the examiner finding, or alleging, that all of the elements were known. So in this instance, it’s dummy J. Dyk who is not following S.Ct. precedent.

      1. B-b-b-b-but “common sense” means that if the item was there that anyone could have combined them, right?

        /off sardonic bemusement

        Isn’t it true that the well known “elements” of electrons, protons and neutrons have been around since the dawn of time?

        And isn’t it true that the law of nature of combining these well known “elements” is also well known?

        Why then, it just becomes common sense to combine these well known “elements” in any type of (actual new) configuration, then right?

        Wow – who knew that the law of obviousness could be applied so easily? It all makes sense that everything is obvious in hindsight.

        /off logic applied to its natural end

        1. Isn’t it true that the well known “elements” of electrons, protons and neutrons have been around since the dawn of time?
          —————————
          Well, that depends on what your definition of the “dawn of time” is, now doesn’t it? ;^)

  20. Bully for the majority (and “pound salt” for the disingenuous dissenting Judge Dyk) in this case for requiring that there be “evidence in the record” to support what is part of the “art.” “Official Notice” and that which is alleged to be “well-known” has be used and especially abused too often by the USPTO examining corps. Unless you know the context (i.e., the whole “evidence”) of that which is alleged to be “well-known,” you don’t know what that “art” really is.

  21. This is why we have patents that claim swinging sideways. And what is the point of hiring examiners with expertise in the art if the examiners cannot use their common knowledge of the art?

    1. Adam – you quite miss the point of the case.

      The case is just NOT that examiners cannot use their common knowledge of the art – see my post at 7:46 am today (currently designated as 8.1).

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