by Dennis Crouch
In an interesting September 2014 decision, the Federal Circuit upheld a USPTO determination of obviousness. The majority decision (authored by Judge Newman) touches on both (1) analogous-art and (2) motivation to combine references. The problem-focused approach taken by the majority in determining analogous art is fascinatingly similar to parts of the abstract-idea analysis in Alice Corp. — looking generally to the problem-to-be-solved as the overarching focus of the invention. Writing in dissent, Judge Moore characterized the obviousness determination as “[h]indsight, hindsight, hindsight.” [Decision]
Scientific Plastic Products (SPP) holds a number of patents relating to cartridges for low pressure liquid chromatography (LPLC) with a resealable screw-on cap. See U.S. Patent Nos. 7,138,061, 7,381,327 and 7,410,571. When SPP sued Biotage for infringement, the defendant responded by filing an inter partes reexamination. Reexam Nos. 95/000,495, ‘496, and ‘497 (filed in 2009, pre-AIA). Based upon his consideration of the prior art, the patent examiner rejected all of the claims of each patent — finding them obvious under 35 U.S.C. 103. That decision was affirmed by the PTAB and is the subject of the appeal here. Meanwhile, the district court case has been stayed pending outcome of the reexamination. On appeal here, a split panel of the Federal Circuit has affirmed the USPTO rejection – with Judge Newman joined by Judge Wallach writing the majority and Judge Moore in dissent.
The primary obviousness reference in the case apparently discloses all of the elements of the patented LPLC cartridge except for one – a tapered lip of the cartridge that corresponds to a taper in the screw-on cap. The tapering helps create a better seal and avoid leakage when the cap is on. It turns out that the tapered lip feature is not new, and the USPTO identified two different patents from the soda-pop bottle industry that disclosed the approach. See for example, Strassheimer (Patent No. 5,100,013).
Obviousness: Section 103 of the Patent Act provides the basic test for obviousness — whether “differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious . . . to a person having ordinary skill in the art to which the claimed invention pertains.” The two primary interpretations of this decision are Graham v. John Deere Co., 383 U.S. 1 (1966)(outlining test) and KSR Int’l Co. v. Teleflex, Inc, 550 U.S. 398 (2007) (explaining that test should not be rigid but instead apply common sense).
Deere explained that there are four factual prerequisites to consider when determining the legal question of obviousness.
- The level of ordinary skill in the art;
- The scope and content of the prior art;
- The differences between the claimed invention and the prior art;
- Any objective indicia of nonobviousness.
Those who know Deere well will notice that I have re-arranged the order of the test by placing the level of ordinary skill in the art as the first step in the analysis. I do that because – as explained below – the scope-and-content of the prior art is impacted by the level of skill in the art.
In many obviousness cases, all of the elements of the invention are found within a limited set of prior art references. The argument then is that it would have been obvious for one skilled in the art to think of combining the elements from those references to create the claimed invention. In KSR, the Court held that the justification for such a combination can be based upon common sense or other evidence and does not require a particular teaching-suggestion-or-motivation found within the prior art itself.
Scope of the Prior Art: The scope and content of prior art is determined by several factors. First, evidence must fall within the prior art definitions for anticipatory references under 35 U.S. 102. Second, the prior art must also be seen as “analogous art.” The analogous art requirement is based upon the idea that someone working in a particular field would be unlikely to search through or know all possible prior art but rather would focus attention on what is known (1) in the same field of endeavor or (2) to be addressing the same problem. The general question is whether it would have been “reasonable” for a person of ordinary skill in the art to consider the given prior art in order to solve the problem confronting the inventor. In re Clay, 966 F.2d 656 (Fed. Cir. 1992).
Here, the problem identified by the inventor was to prevent leakage on a plastic screw-cap and everyone knows that the soda-pop bottles have solved that problem. From that framework this is an easy case. However, the patentee here argued that this analysis involves improper hindsight because the leakage problem was one identified by the inventor as part of the invention process and was not previously identified in the prior art.
The Federal Circuit implicitly agreed that it would be improper hindsight to rely upon the problem first identified by the inventor for determining analogous art. However, the court rejected that argument as applied to the facts here. In particular, the PTAB noted that the primary LPLC reference includes a particular o-ring seal that serves as an implicit recognition leakage could be a problem. On appeal, the Federal Circuit confirmed that the implicit concern was sufficient to avoid hindsight concerns. Affirmed.
= = = =
Writing in dissent, Judge Moore argues that majority opinion is hindsight of the worst kind, ‘wherein that which only the invention taught is used against its teacher.’ quoting W.L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540(Fed. Cir. 1983).
The patents do not indicate that leakage was a problem identified in the prior art or a problem known to those of skill in the art. Rather they indicate that the claimed design will avoid leakage. These inventors identified a design problem, articulated it, and solved it. There is absolutely no evidence of the existence of a known leakage problem that would have motivated skilled artisans to modify Yamada. The Board is taking the ingenuity of these inventors and, without any record basis, attributing that knowledge to all skilled artisans as the motivation to make the inventions at issue. Hindsight, hindsight, hindsight. . . .
I would reverse because I conclude that the Board’s cancellation of the claims at issue was based entirely on hindsight reconstruction—there is no record evidence that one of skill in the art would have been motivated to modify Yamada with soda pop bottle sealing closures.
An implicit suggestion from Judge Moore is that in hotly contested post-issuance cases invalidating evidence should be high quality:
These were inter partes reexamination proceedings between sophisticated parties. Both parties put on expert testimony regarding obviousness. Yet there is no evidence that the chromatography cartridges in Yamada had
a leakage problem that skilled artisans would have been motivated to address.
Judge Moore also challenged the PTAB’s failure to determine the level of ordinary skill in the art. “An ordinarily skilled chemist would have likely looked to a different body of prior art than an ordinarily skilled mechanical engineer with industrial design experience. . . We cannot answer the analogous art question without knowing who the person of ordinary skill is.”
Setting aside quibbling about procedural issues (whether the Board made the arguments using the words that “it needed to make”), there doesn’t seem much room to doubt that the claims here were properly tanked as obvious.
In particular, excessive reliance on the “analogous arts” defense to prima facie obviousness is a good sign that the claims are, at best, hanging on by a threat. That’s because the “analogous arts” requirement (such as it is) is little more than a result-oriented “test” that allows a judge to shrink the prior art that can be relied on by an examiner or a defendant in a patent case. One would expect the oh-so-“principled” opponents of terms like “abstract” to be equally dismayed by the “analogous arts” test … but of course nothing that leads to more patents will ever be criticized by those “principled” folks.
The bottom line is that absent an express teaching away, the “analogous arts” to any patent claim include all of the arts where particular solutions have been developed to address the generalized problem implicated by the patent claim. The question then becomes: is there more to the claim than the art-recognized solution? In this particular case, the answer is most definitely “no”. The solution described (the screw cap with the tapered lip) is disclosed in the prior art exactly as it appears in the claim.
The relevant art here is “the container arts.” All containers will need to solve three fundamental and long-recognized problems: how to contain the material inside, and how to control when material enters the container, and how to control when material leaves the container. There are a myriad solutions already in the prior art. Does this mean that all container claims are invalid? Of course not. But it does mean that a combination of an old container (as in this case) with an old solution (as in this case) is going to require more than merely describing the combination. If that can’t be done in a manner that results in a “valuable” claim, then the patent system is probably not worth engaging for that particular container. Perfectly reasonable result.
I also wanted to revisit the hypothetical I proposed earlier since many of the responses seemed to miss the point or relied on facts that weren’t in my hypothetical. It’s a very mundane — but very important — fact pattern:
Gary Goosey lives in Hawaii. He invents a new kind of sock for keeping your feet dry. On Day Zero, Gary begins selling his socks to his neighbors in Hawaii who enjoy them very much.
One Day Two, Gary sells his socks to a tourist from Alaska. Later that evening, the tourist flies home and discovers that while his feet do stay dry in the new socks, they still get cold from the Alaskan air. The tourist looks around and sees his warm fleece slippers and he thinks “Hey, I’ll add fleece to these socks and see how it works.” Lo and behold, the tourist’s modification results in socks that keep his feet warm and dry.
The tourist files a patent on the improvement to Gary’s socks. Should the tourist get a patent? Why?
The answer to my first question is “Of course the tourist should not get a patent.” The answer to my second question is “The tourist should not get a patent because granting a patent on that kind of ‘innovation’ does not promote progress in the useful arts. It just promotes the filing and assertion of patents on everything that was not previously in the prior art.”
Fleece is an old material used for warming. There is no art (at least not in my hypothetical) that teaches that fleece couldn’t be used for warming. The motivation to combine exists and there are no unexpected results. That’s the end of the analysis. It’s fascinating that anybody would try to make it more difficult than that but such is the lure of the “analogous arts” b.s. that some members of the Federal Circuit seem to be pulling for in their efforts to keep the patent system “juiced” for patent applicants.
Note that the result is identical when the tourist goes home and sees a report on TV about some “space age” insulating fabric that was used on the space shuttle. There’s no difference in the analysis because, again, there’s a clear motivation to combine and there’s no teaching away. If the “innovator” of such a combination wants to argue that the “space age” insulating fabric is super expensive, then there had better be something in the claim that describes, in structural terms, how the cost of manufacturing the combination socks was solved.
I think the judges misunderstood what the Board was saying. I think the Board could have spoken more clearly, but did the judges misunderstand deliberately?
Yamaha shows that, in the context of LPLC cartridges, a thread is not enough. To ensure a seal, Yamaha resorts to an O-ring.
To any engineer, busy designing such cartridges, providing an O-ring is self-evidently a burden for those downstream. For the engineer PHOSITA, at the date of the claim, was there available an alternative sealing solution less burdensome on the manufacturing process than an O-ring. Yes there was.
Obvious to use it? You tell me!
Max, I couldn’t help but notice that the present case was very much like the seal at issue in Graham v. John Deere. link to scholar.google.com
“Cook Chemical argues, however, that Livingstone is not in the pertinent prior art because it relates to liquid containers having pouring spouts rather than pump sprayers. Apart from the fact that respondent made no such objection to similar references cited by the Examiner,[18] so restricted a view of the applicable prior art is not justified. The problems confronting Scoggin and the insecticide industry were not insecticide problems; they were mechanical closure problems. Closure devices in such a closely related art as pouring spouts for liquid containers are at the very least pertinent references.” Id. at 35.
In that case, there is no question of motivation because the patentee had argued long felt need. Id. at 35-36.
“Cook Chemical insists, however, that the development of a workable shipper-sprayer eluded Calmar, who had long and unsuccessfully sought to solve the problem. And, further, that the long-felt need in the industry for a device such as Scoggin’s together with its wide commercial success supports its patentability. These legal inferences or subtests do focus attention on economic and motivational rather than technical issues and are, therefore, more susceptible of judicial treatment than are the highly technical facts often present in patent litigation. See Judge Learned Hand in Reiner v. I. Leon Co., 285 F. 2d 501, 504 (1960). See also Note, Subtests of “Nonobviousness”: A Nontechnical Approach to Patent Validity, 112 U. Pa. L. Rev. 1169 (1964). Such inquiries may lend a helping hand to the judiciary which, as Mr. Justice Frankfurter observed, is most ill-fitted to discharge the technological duties cast upon it by patent legislation. Marconi Wireless Co. v. United States, 320 U. S. 1, 60 (1943). They may also serve to “guard against slipping into use of hindsight,” Monroe Auto Equipment Co. v. Heckethorn Mfg. & Sup. Co., 332 F. 2d 406, 412 (1964), and to resist the temptation to read into the prior art the teachings of the invention in issue.
However, these factors do not, in the circumstances of this case, tip the scales of patentability. The Scoggin invention, as limited by the Patent Office and accepted by Scoggin, rests upon exceedingly small and quite nontechnical mechanical differences in a device which was old in the art. At the latest, those differences were rendered apparent in 1953 by the appearance of the Livingstone patent, and unsuccessful attempts to reach a solution to the problems confronting Scoggin made before that time became wholly irrelevant.”
It seems that there is not a seal patent that ever reaches a court that is sustained.
Ned, perhaps the dissent got it right, but without all the facts, and so for the wrong reasons.
There is nothing so hard as simplification. The simplification of doing away with the O-ring is a super step forward in the art. Now, what if there had been evidence of a prejudice in the industry, that the O-ring was not negotiable? Might the outcome then have been different?
I recall the DYSON bagless vacuum cleaner cases in England, where the evidence revealed a PHOSITA mindset that refused to countenance a bagless vacuum cleaner system, with the result that the claims were held not obvious.
Now, what if there had been evidence of a prejudice in the industry, that the O-ring was not negotiable? Might the outcome then have been different?
Yes. It’s called “teaching away” and it does make a big difference if it actually exists. In this case, it didn’t exist.
It seems that there is not a seal patent that ever reaches a court that is sustained.
Is that unexpected in 2014?
It’s not like containers needing seals were invented yesterday.
NO MORE SEAL PATENTS !!
(said in the best Duell tones)
Part I
Dennis Crouch wrote: “The problem-focused approach taken by the majority in determining analogous art is fascinatingly similar to parts of the abstract-idea analysis in Alice Corp. — looking generally to the problem-to-be-solved as the overarching focus of the invention.”
Really? Has 103 become the new 101 now? So, using this obvious problem-focused approach I suppose the real reason an Integrated Technological process such as the Ultramercial invention was ruled an abstract idea was because Lourie and Mayers felt the solution to the problem was obvious. And obviously, Mayers feels that inventions with an Entrepreneurial solution, are also abstract and therefore obvious? (See Mayers DDR dissent )
And apparently Dennis feels the same way since he said he didn’t believe Chens majority decision would stand up to Supreme Court scrutiny.
Part II
Well, the Supreme Court also said claims are to be considered as an ” Integrated” whole, like Diehr. And that if a court does disintegrate the claims anyway, they “MUST” determine if the so called abstract idea is “integrated” to the point the idea itself is no longer preempted.
But with the exception of Chen and Wallach in DDR, how many CAFC panels have even come close to applying a complete and thorough analysis of the Court’s Integration?
The answer is, none! And now we even have Dennis implying the Court will not back their own words in Diehr, Prometheus, and Alice while giving an air of legal legitimacy to the conflation attack of 103 on 101, that without, “integration” has no possible defense. It’s enough to make you want to give up on the entire patent system.
Another problem with accepting and legitimizing these 103 attacks on 101 is that the minute a patent attorney employs a 103 defense the courts are going to scream you can’t bring 103 into 101!!! The Supreme Court said so!!!
What a mess.
“It’s enough to make you want to give up”
Illegitimi non carborundum
It’s enough to make you want to give up on the entire patent system.
Does that mean you’re going to stop littering this blog with your meaningless nonsense about “integration”?
“going to stop littering”
Coming from the guy who rather boastfully was the one who FIRST provided a link to the USPTO guidance which featured integration (rather than his own b@nal pet theory)….
Now that is funny.
The issue is not whether “integration” of an abstract idea with otherwise eligible subject matter can occur. The issue is: how does it occur?
Saying that a “an innovation must be integrated before it is eligible” or “integration has occurred when the claim is eligible” isn’t helpful to anyone.
The PTO guidance I linked to is perfectly consistent with the undisputed (and undisputable) fact that merely reciting a step of thinking about an ineligible fact will never suffice to “integrate” that fact into, e.g., a data gathering step that is eligible but also within the prior art. You can play the f 0 0l and pretend that isn’t the case but, at the end of the day, you’ll still be holding a worthless piece of paper and screaming at the sky.
[shrugs]
so does a patent draftsman want to include the problem to be solved in his application or not?
Fish sticks wrote:
“so does a patent draftsman want to include the problem to be solved in his application or not?”
Absolutely. Make sure that the solution to the problem is “Integrated” to the point all possible solutions are not preempted. And just to be safe make sure the application of that solution involves some type of real world technology that is described in the specification.
Now this wont stop some grade 6 level MM Examiner from glancing at the app and seeing that it involves business or computers and promptly rejecting it as junk. And you know you risk facing judicial activist like Mayers that feel the same way. But at least you will have some powerful and compelling questions of law for your brief to the Supreme Court.
I have read the decision including the dissent. Some things are clear.
Yamaha works, but only because it has an O ring. The claim works, with the inclined surfaces doing the job of the O ring. So, the claimed subject matter delivers an alternative seal that avoids the complication of an O ring.
When you need a seal, who do you ask? not a chemist, i would suggest.
For such a person, are inclined surfaces a known and banal alternative to an O ring? I suspect they are.
Of course this claim is obvious. Moore knows it too. The engineered 2:1 split is once again to provoke review, this time of the “analogous art” jurisprudence . Good so.
I agree that the ends here is that the patent is invalid for obviousness.
I agree that the dissent has the better argument concerning the means that the court took to arrive at its ends. Has the court not learned yet that “taking shortcuts” is frowned upon? See eBay.
That said, I think that the dissent does not knock this out of the park, as it is clear that trying to focus on the reason for non-analogous as “but I operate in this art field” is a clear losing argument.
The issue of hindsight and to what degree hindsight is an issue remains muddled and unclear (the Court writing in KSR on the topic is beyond atrocious).
I question MaxDrei as to what basis or support he has for labeling this an “engineered split.” Such implies that opinions were had and known a priori, that the judges were selected for such and that “Justice” here was staged for an ulterior motive. That’s not a flippant charge to be made.
Is there a Court writing in patent law that is not atrocious? I have yet to see one that is not atrocious, but I haven’t read all of them. I find the Court’s opinions create more questions than they answer. Further, many of them no longer make sense in light of 40+ years of technology advancements (yet the Court never seems to review those decisions, for reasons that elude me).
There is a limit to what a court of appeal can do with facts already found by the court of first instance. Before criticizing the Fed Ct judges pause to think if the criticism is better directed elsewhere.
Directed elsewhere…?
Good advice.
For the “court of appeal” called the Supreme Court, there is no limit to what it can (or should do) – least wise if you listen to those who don’t understand their attorney’s oaths and swear feality first to the Royal Nine.
I wonder how much Newman is looking to her background as a chemist where a leaky chromatography column would be a problem. At the end of the opinion she states “However, the issue here is not whether the Yamada cartridge leaked, but whether there was a concern with leakage in LPLC cartridges such that a person of ordinary skill would have provided a known pressure resistant cap.”
There is also the issue, however, of modifying chromatography columns generally v. modifying the device of the primary reference. This part sounds strange.
Perhaps the affirming judges actually reviewed the cited prior art of the SSP patents and saw patent 6565745 which fully disclosed the “inventive” feature of tapered seal (48,49 in fig. 7) between a cap and container in the chromatographic art and they simply realized that such a seal was known in the art….albeit not on a threaded cap.
But oldguy, this still begs the question as to why anyone would modify Yamada that had an O-ring a screw on cap that had no known leakage problem in the 10 years it was on the market. There was no other evidence of a reason to change the O-ring for any other seal arrangement.
Simply because something is within the skill of the art because all the parts are known and how they can to be combined is known should not be enough. There should be a reason to make the combination, some problem in the art which the combination solves. That is the central problem in this case.
Ned,
Your post here can be translated to my two circles explanation.
The novelty circle, the larger circle, is all of prior art in its entirety.
The obviousness circle is a subset of that “all the prior art.”
If, as some are advancing, the act of solving ANY problem, known or unknown, is accepted as defining the inner circle, you have effectively inflated the inner circle to match the outer circle.
As I also mentioned, since only God starts from scratch, this evoscerates patent law.
And yes, there is a logical connection to my other rhetorical t001 of my big box of electrons, protons, and neutrons.
Anon, I fully agree. There has to be a reason for one to modify one reference to include the disclosure of a second reference. One cannot just say that the combination provided predictable results – looking for some synergy in the combination before a combination could be declared nonobvious. The obviousness seems to be whether to make the combination not whether the result of the combination was predictable.
Hmmmm, what happens if that synergy merely comes from a law of nature…?
this still begs the question as to why anyone would modify Yamada that had an O-ring a screw on cap that had no known leakage problem in the 10 years it was on the market.
I don’t think there has to be a problem with Yamada’s device, specifically. Leakage is a general problem with closures, and there are several known ways to solve it, including O-rings and (apparently) including tapered lips/caps. There’s also no requirement that a combination of references actually improves one of the references – it can be obvious to simply substitute one technical solution for another.
Once you accept the proposition that leakage is an applicable problem, then you’ve got a situation that looks like several of the rationales discussed in KSR and summarized in the MPEP:
(B) Simple substitution of one known element for another to obtain predictable results;
(C) Use of known technique to improve similar devices (methods, or products) in the same way;
But DanH, such a formulation would make all inventions unpatentable provided that their parts were known in the art.
Perhaps this helps explain what is happening in IPRs where 75% of IPRs result in every challenged claim being held unpatentable. The Board may be simply ruling that because the parts are known, there is no invention, citing the MPEP and KSR.
…all inventions unpatentable provided that their parts were known in the art…
I agree with DanH – in general, it’s obvious to combine/substitute things that were known in the art. The “articulated reason with a rational underpinning” to support the conclusion of obviousness is often just that – that the combined/substituted components were known in the art and the results were predictable.
I understand that a “motivation” or a “solution to a problem” may be more compelling as rejections go, but that doesn’t make the weaker rejection legally wrong.
One of ordinary skill does not seek to innovate, i.e. Seek to introduce something new or alter something established. There has to be a reason one of ordinary skill in the art would modify/combine the prior. “Well he could if he wanted to” is not a reason.
I agree with you, AAA JJ, but saying “should I use this cap or this cap” is not innovation.
If one reference shows a cartridge and a cap, and a second reference shows a cap that is perfectly suitable for attaching to the cartridge, substituting it is probably obvious, even if there’s no particular advantage to changing the original combination. Swapping out components or subassemblies for others that perform the same function is just what engineers do.
If you really think “that’s just what engineers do,” you have never been “just an engineer.”
You’re an engineer named Winslow, and are responsible for designing a cartridge for low pressure liquid chromatography (LPLC). Before this job, you spent a few years designing closures for soda-pop bottles – indeed, that’s why you were hired for this job, since you had experience designing packages for liquids.
For this project, you have tentatively settled on a design that incorporates a resealable screw-on cap like the one shown in the Yamada reference, when you get a visit from (a) the VP of IP, who tells you that you can’t use that cap/cartridge combination, since you’ll infringe Yamada’s patent, and/or (b) procurement, who tells you that the supplier of the screw-on cap with O-ring is suffering from capacity problems, and really screwed the company over on an earlier project, and/or (c) a sales rep that you knew from your time in the soda-pop business, who is a great chum (or at least he buys good lunches) and who tells you that he represents a manufacturer who makes great screw-on caps with tapers on them, you know, like you used on that energy drink bottle back in 2008.
You re-familiarize yourself with the specs on the screw-on cap and determine that it can be substituted for the O-ring cap with only trivial changes to the cartridge body itself, with absolutely no performance improvements or penalties, and no improvements in cost. What do you do?
You swap out the cap design, because that’s just one of the things that engineers do. You may have incorporated a lot of innovations into this project, but this isn’t one of them.
^^^ how to assume conclusions and paint a set of “facts” to meet that conclusion.
Btw, this only adds to the notion that you have not spent any time as an engineer in the real world.
Btw, this only adds to the notion that you have not spent any time as an engineer in the real world.
Impressive counter-argument, anon.
Compare my “painted set of facts” with this quote, from a rather famous case:
[P]icture the inventor as working in his shop with the prior art references . . . hanging on the walls around him. . . . what applicant Winslow built here he admits is basically a Gerbe bag holder having air-blast bag opening to which he has added two bag retaining pins. . . . Winslow would have said to himself, “Now what can I do to hold them more securely?” Looking around the walls, he would see Hellman’s envelopes with holes in their flaps hung on a rod. He would then say to himself, “Ha! I can punch holes in my bags and put a little rod (pin) through the holes. That will hold them!
Throw in this line, from KSR:
When a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one. If a person of ordinary skill can implement a predictable variation, §103 likely bars its patentability.
I think my scenario is pretty much the “Winslow tableau” plus a couple of ordinary “market forces,” per KSR. You apparently think differently. I don’t need to convince you. But something tells me that my argument will beat your “You’re not a real engineer!” argument, in front of 99 of 100 CAFC panels.
Great – since no one is saying anything about arguing in front of CAFC panels, it is clear that you are missing the point about actual engineering experience.
Anyone worth their salt with actual engineering experience would have replied focusing on that experience.
Clearly, you have none.
When we start actually talking about legal experience, maybe – just maybe – your attempted reply may have some pertinence.
But please, continue to have these non sequitur discussions that “you win” in your mind.
Anyone worth their salt with actual engineering experience would have replied focusing on that experience.
Right. In a discussion about obviousness on a patent law blog, you tell us that comments about persuasiveness in front of the CAFC are out of place, because the focus should instead be on my actual engineering experience. And I’m the one engaged in “non sequitur discussions.”
Have a nice weekend.
It’s out of place NOT because we are on a patent blog – it is out place because apparently you cannot read a comment in context.
You are the one that stepped out of line as to what engineers do – and clearly you have never been an engineer.
Instead of taking a moment and realizing that you were out of line, you reached for your bucket if smarm and started slinging.
Next time, think before you start yapping about something you have no experience with, realize when someone with experience corrects you that the better path is to humbly accept the correction and above all, THINK.
And yes, “have a nice day.”
His comment is out of line because he didn’t read yours in what context?
It seems to me that the judiciary’s understanding of how engineers work and think is very pertinent to this discussion. DanH’s position seems reasonable to me, and I didn’t hear anything of substance from you in rebuttal.
Just FYI, anon – people read insult-laden posts as an admission of defeat. Sounds like you lost that battle, anon.
Not at all RH.
DanH has a (bad) habit of misplaced smarm. This is yet another example of it.
He then tried to “spin” this as some pure-patent-law thing, and sorry, but such spin is insulting.
It insults both the notion of patent law and the notion of what it means to be an engineer.
If you feel his portrayal of being an engineer is “ok,” well, let only lessens my opinion of your views as well. Perhaps you should spend some time in those shoes before taking on such a dismissive attitude.
“anon”: DanH has a (bad) habit of misplaced smarm.
Try to believe it, folks.
And remember: “anon” is the “most articulate” guy here defending patent expansion.
LOL
patent…
…expansion…?
How Orwellian-speak of you, to portray the defense of laws as written to their full measure as somehow being expansionist.
You are aiming at the wrong target again. It was Congress that choose the expansive language.
So once again, may I suggest that if you want the law changed to something else, something more in line with your belief system, that you contact your Congressman.
(I recommend that you take off your tinfoil hat before you meet with him though)
It stretches my credibility to assert that in the area of closure caps, the problem of sealing is “unknown”. To be useful, a cap must do its job ie seal. What else does a cap do?
Therefore, for those designing closure surfaces of caps and containers, it is not inventive to use teachings in the art as to what surfaces do actually seal properly.
OT, but it is completely nonobvious to me why the firestorm around Mr. Battistelli is receiving no coverage here – either through a dedicated thread or in response to questions put directly to our known Europhiles.
What’s up with that?
To assuage your curiosity about The Sun King, I suggest you repair forthwith to the IPKat blog, where there are about six threads running on this topic.
The governance of supra-national organisations is a topic much in the news these days. Egregious behaviour, if not nipped in the bud, becomes the new norm. Until now, it has been a matter of trust, that trans-nationals will not abuse their privileges. Alas, no longer. Trust is leaking away, wherever you look.
I chuckle – not at the problem itself – but at the ironic confirmation of my views here as being exemplified by the tyranny abroad.
We still have people here who see no problem whatsoever with Star Chamber tactics and violations of 37 CFR 1.2.
What else would we uncover if we were to scrutinize the shadow powers in this particular executive agency?
The ends do not justify the means.
Ever.
Alas, a further post – with great thought and detail – has been snagged by the filter.
link to youtube.com
Gary Goosey lives in Hawaii. He invents a new kind of sock for keeping your feet dry. On Day Zero, Gary begins selling his socks to his neighbors in Hawaii who enjoy them very much.
One Day Two, Gary sells his socks to a tourist from Alaska. Later that evening, the tourist flies home and discovers that while his feet do stay dry in the new socks, they still get cold from the Alaskan air. The tourist looks around and sees his warm fleece slippers and he thinks “Hey, I’ll add fleece to these socks and see how it works.” Lo and behold, the tourist’s modification results in socks that keep his feet warm and dry.
The tourist files a patent on the improvement to Gary’s socks. Should the tourist get a patent? Why?
The converse to that question:
Tourist sells his Warm and Dry socks.
Does Tourist infringe on Goosey’s patent?
Goosey never filed a patent so there’s nothing to infringe.
Let’s try to focus on the issue of the thread (obviousness)?
Thanks for clarifying (after all, it was your hypo).
That being said, my alternative hypo (Goosey has a patent) is very much concerned with the issue of the thread (obviousness).
Or don’t you remember the quote from KSR?
Let me know if you need me to remind you.
Obviousness you say. OK.
Why put a fur collar on a Hawaiian Shirt? Who would come to that idea? Why? So, why put fleece on a Hawaiian sock?
I like to think that, if I were to be tasked with drafting the claims and writing the supporting descrioption, I could get through to issue at the EPO. Why not also at the USPTO?
link to styleisstyle.com
Amusing Link. When choosing an outfit for a photoshoot is what decides patentable non-obviousness, things have come to a pretty pass.
In writing my post and asking “why”, I had mistakenly supposed that obviousness is judged on technological considerations, rather on caprice.
And anyway, in the photo, is the fur collar on the shirt? I think not.
Your last statement betrays a confusion between novelty and obviousness.
Betray? Or merely reveal? No it doesn’t.
Be sure, I’m not confused between the two utterly different legal concepts. That’s because, under the EPC, so many of the search report references are citable under novelty but not the obviousness section. Through constant daily practice, one develops a very sharp sense of what is a matter of novelty and what of obviousness, much more refined than another important jurisdiction that comes to mind.
We are debating MM’s hypo. He has already asked you to stick to the point: obviousness. How many times must you be told?
Now, on obviousness, as we were saying……………
You chide me in error, as I am already sticking to the point of obviousness.
Nonetheless, your statement of whether the shirt itself has the fur collar indicates that you are looking for a single prior art item with all attributes and missing the combination effect: thus the miss between novelty and obviousness.
In other words, once again what you post does in fact betray your own boastful view of your own understanding.
It’s rather comical how often you do that.
The “combination effect” you say. OK. Imagine (as prior art) a photo of a pair of trousers, with a conventional zipper, being modelled. Imagine (however unlikely) the claimed invention to be trousers with a shoelace shown as a closure, instead of a zip. Does the photo touch novelty, or obviousness?
Now imagine that the photo includes also a pair of laced-up shoes, warn on the feet, below the trousers. Does that make any difference?
just because all elements of the combination are in the same photo does not render the claimed subject matter obvious. Or are you saying it does.
Not every collocation is a combination. Or do you say it is?
The difference between novelty and obviousness is more sophisticated than the question, one reference or two, one photo or two. Or am I making things too complicated here?
Same photo test…
How bizarre.
Why would you think I believe in a same photo test?
Or do you still think that your asking about a single item reference with all attributes still does not confuse novelty and obviousness and you are furiously trying to kick up a dust storm to hide your oops?
Making things too complicated, you ask – not too complicated to see right through the pretense.
The comedy continues.
“Why put a fur collar on a Hawaiian Shirt? Who would come to that idea? Why? So, why put fleece on a Hawaiian sock?”
I think the problem with this approach is that it ignores the “creative inferences” (whatever the heck those are) that PHOSITA may apply to the prior art. It may be disclosed as a “Hawaiin” shirt or sock, but it’s still a shirt or sock.
MM, I think the facts were more like this: dry socks with fleece have been on the market for 10 years keeping people’s feet warm and dry. The inventor replaces the fleece with a particular kind of foam used in blast furnaces to keep the furnaces hot and the workers alive. The result is a vastly improved dry sock for keeping people’s feet warm.
Along comes the Board and the Federal Circuit led by Newman and says that because we have dry socks with fleece, that there was a known problem with dry socks in keeping people’s feet warm. That might be true, but there was no known problem with dry socks with fleece in keeping people’s feet warm, and there was no reason to modify this solution to provide a better solution.
And since there was no reason to modify the primary reference, there was no reason to look to the field of blast furnaces for a better solution to keeping one’s feet warm. Just because blast furnace foam blocked heat transfer, that fact alone is irrelevant to whether one would have any reason to modify the primary reference when one had no reason to do so.
And even if there is a reason to modify the sleepers, one skilled in the arts of sleepers may not expect that the furnace foam, which perform well on furnaces, performs better than fleece on sleepers.
The obviousness analysis should include the last step of the Graham analysis, the research of indicia of non-obviousness, and in particular of unexpected results. I did not see the last step of the Graham analysis discussed in the opinion.
PiKa, thanks for your analysis. So you think the bottom line here is whether pop bottle solutions would be considered by someone trying to solve the problem of leakage in screw-on caps in LPLC cartridges. Clearly, they are not the same field of endeavor.
So the question is whether it would have been reasonable to look at the pop bottle art to find a solution for LPLC cartridges. Apparently, the pressure differentials for the LPLC cartridges were significantly different than anything that could be expected to be found in the pop bottle art. Perhaps that is the central reason why one of ordinary skill would not look at that art for a solution.
I have not made my opinion on whether the art was analogous. And maybe you are right it is not analogous.
My point was that even if the court finds the art to be analogous, the analysis should not stop there. Even if the patent holder had not presented any indicia of non-obviousness to the board, and the Federal Circuit has no fact finding to review, I would have expected the opinion to at least mention it. And then, the court can affirm obviousness.
I like the hypo, Ned, but if it came my way in examination I’d reject it under MPEP 2143(I)(B) “Simple Substitution of One Known Element for Another To Obtain Predictable Results” which does not require a motivation but only requires
(1) a finding that the prior art contained a device (method, product, etc.) which differed from the claimed device by the substitution of some components (step, element, etc.) with other components;
(2) a finding that the substituted components and their functions were known in the art;
(3) a finding that one of ordinary skill in the art could have substituted one known element for another, and the results of the substitution would have been predictable; and
(4) whatever additional findings based on the Graham factual inquiries may be necessary…of which there really aren’t any.
This requires only that one of ordinary skill could have (and the results would have been predictable), and does not require a reason why one would want to.
That said, if I were prosecuting the claim and the rejection was not made under this rationale, but was made under the TSM rationale, then whatever the Examiner offers as a motivation (and I don’t care where it comes from) is subject to be challenged if it does not make sense. In your hypo, if the motivation to combine was that the furnace lining was known, in the context of furnaces, to be beneficially non-oxidizing, and the Examiner said that the reason one would combine the references was because it would yield a combination in which the sock lining was non-oxidizing, I would challenge the rejection as lacking a rational underpinning. That is when you also have to start to question whether the art is analogous. I would argue that furnaces are not in the same field of endeavor as footwear, so the question would turn on the second analogousness prong, would the furnace reference have commended itself to the inventor in view of the inventor’s problem. Honestly, I don’t know why examiners cling to TSM when these other rationales are available and so much more unassailable, yet they keep flailing at TSM with ridiculous motivations that make no sense in context.
znutar,
Does not your (2) and (3) simply circle back to the determination of “in the art,”…?
Common sense indicates that if you merely enlargen the circle of prior art suitable for obviousness to be the same circle of art suitable for novelty, that literally nothing is patentable, as only God starts from scratch.