Obviousness: Cannot modify Prior Art a way that Disrupts the Reference’s Contribution to the Art

by Dennis Crouch

Plas-Pak Indus v Sulzer Mixpac (Fed. Cir. 2015) (non-precedential)

In 2011, Plas-Pak requested an inter partes reexamination of Sulzer’s paint-mixing Patent No. 7,815,384.  After considering the prior art, the examiner refused to issue the proposed obviousness rejection and that determination was affirmed by the PTAB. The proposed obviousness rejection involved two prior patents: Fukuta and Morris (inter alia).  Although the two references taught all of the Sulzer claim limitations the USPTO found that it would be improper to combine the references in an obviousness rejection.  In particular, the PTO found that the central feature of Fukuta involved the prevention of back-flow and the proposed combination with Morris would eliminate that core feature.  That required “substantial reconstruction” that so greatly impacts the “principle of operation” led to the Board’s conclusion that the combination would not have been obvious to one of ordinary skill in the art.

In most cases USPTO does not appeal an adverse PTAB decision. Here, however, the third party requester has appellate standing.

Under the rules of administrative procedure, factual findings made by the PTAB are reviewed by the Federal Circuit for “substantial evidence.” Under that low standard, the Federal Circuit will affirm factual conclusions so long as the evidence is sufficient such that “a reasonable mind might accept” that the conclusion is supported by the evidence.  Legal conclusions, on the other hand, are reviewed de novo by the Federal Circuit.

As with many areas of patent law, obviousness involves mixed questions of law and fact. On point here, questions of fact include (1) what a reference teaches; and (2) whether a proposed combination of references would impact a reference’s “principle of operation” while the ultimate conclusion as to whether an invention is obvious is seen as a question of law.  Of course another fundamental question of law is interpretation of the statute and precedent.

At first cut, the Federal Circuit appeared to follow these rules of review and gave deference to the PTAB’s principle of operation ruling. And, as a consequence affirmed the refusal to reject.

I see some error in the Federal Circuit’s approach.  In particular, the challenger’s argument here was not simply that the PTAB erred in reading the prior art to discover its principle of operation.  Rather, Plas-Pak argued that the PTAB erred by ruling that a prior art’s principle of operation should be limited to its innovative contribution to the art.  That general question of “how do we define a principle of operation” is a question of law and should be reviewed de novo by the court.  In its brief, Plas-Pak argued this particular point – that the appeal is focused on whether the Board applied the correct legal definition of a “principle of operation” — particularly “that a reference’s principle of operation is not equivalent or limited to its alleged contribution to the art.”

The decision here was authored by Judge Lourie and joined by Judges Moore and Reyna. However, because it was non-precedential, the standard operating procedures of the Federal Circuit do not require that it be first distributed to the other appellate judges prior to release.

71 thoughts on “Obviousness: Cannot modify Prior Art a way that Disrupts the Reference’s Contribution to the Art

  1. 10

    Feb 3 2015: Today, in a Rule 36 affirmance, the CAFC upheld the Board’s rejection, following re-exam, of NAS Nalle Automation Systems’ functional claims to a polymer cutting system which used a heated blade that was “adapted” to soften the cut edge of the polymer.

    The main thrust of the applicants’ argument was that one of the cited references (Shanklin) did not teach the softening aspect (the heating was used for sealing). The PTO’s argument was that the reference taught the use of a heated blade (undisputed) and, as a factual matter, the polymer was softened by the heat. The applicant’s support for the narrow and limited “principle of operation” of the prior art reference apparently came from some self-serving “expert” declarations. These declarations were, apparently, all but ignored by the panel. When pressed, the applicant was unable to show where support for the “principle of operation” could be found in Shanklin.

    Newman wondered aloud why the applicant didn’t bother to amend the claims (more narrow claims in the re-exam were allowed over the art).

    The oral arguments were apaprently presented a day prior (Feb 2) to the Rule 36 affirmance of the Board’s decision. You can listen to them online.

  2. 9

    Hey 6 – Lookie, the court thinks the FUNCTIONS are important:

    ““The manner in which the two
    -component mixing apparatus of Fukuta prevents backflow is unique
    in its implementation,” Opinion at *6, and the Board
    correctly limited Fukuta’s “principle of operation” to that
    specific functionality. Therefore, replacing the valves and
    pumps of Fukuta’s system with the cylindrical cartridges
    and mixing gun of Morris, which fail to achieve comparable backflow prevention,see id. (“[The] embodiments of Morris do not disclose the functions of check valves 4a, 4b,the stop valves 51, 5b, or the escape valve 6 disclosed in Fukuta . . . .”), fundamentally alters Fukuta’s “principle of operation.” Such a change in a reference’s “principle of operation” is unlikely to motivate a person of ordinary skill to pursue a combination with that reference.”

  3. 8

    To follow up on what Les says, I find it very interesting that a lot of people here have the surprising double standard that a patent document which describes Embodiment X conveys less teaching than Embodiment X itself, a conclusion which on its face is ridiculous.

    In other words, both the Board and the FC confuse the inventive aspect of Fukuta (i.e. the elimination of backflow) with its “principle of operation.” If the rejection had been made based upon a physical embodiment of Fukuta and the Morris reference there would be no issue, because there would be no record evidence of what the “principle of operation” for Fukuta is, and thus Morris would be unable to frustrate it. Instead, the language of the spec apparently results in some sort of generalized teaching away, as if such a thing could exist.

    Fukuta shows that a working structure is known to the art. Morris suggests you could modify that structure. It appears admitted that modifying Fukuta with Morris would 1) cause more backwash and 2) assist in spraying. To say that the combination could not be made is to adopt the particular opinion of Fukuta (that elimination of backwash is of paramount importance) which is a self-serving statement of utility from a patent applicant and has no impact upon enablement. The art is not limited to the opinions of one inventor.

    To see how backward the CAFC’s viewpoint is, one need only look at their citations, and their order: Where “a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield pre-dictable results.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). However, combinations that change the “basic principles under which the [prior art] was designed to operate,” In re Ratti, 270 F.2d 810, 813 (CCPA 1959), or that render the prior art “inoperable for its intended purpose,” In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984), may fail to support a conclusion of obviousness.

    The Supreme Court took a case to tell you not to have particular tests for obviousness, generated a quote that is precisely on point for this case, and you cite their case and proceed to cite to particular tests for obviousness which predate their case? Why bother to cite them at all if you’re just going to ignore them.

    There is one way to teach away – to say “I have specifically posited combining A and B, I have tried it, and it doesn’t work.” Saying “I/We don’t like backwash” isn’t teaching away from anything that causes backwash. That would require each invention to be strictly better in every fashion from every previous contemplation, which is simply not a requirement to be non-obvious.

    David: The bottom line is that context matters. While the power of obviousness combinations has been vastly extended from the days of TSM, obviousness combinations can’t be nonsensical.

    Context does matter, though I suspect we’re talking about different contexts. But the thing is that nobody here is calling the combination nonsensical. They are just saying that it fails to advance the particular purpose of one of the previous inventors. But I see no support for that requirement following KSR.

    I seems to me that if the references seeks to achieve object A, any reconstruction that frustrates that objective is not something that one of ordinary skill would do.

    That sounds like something the inventor wouldn’t do, but the art isn’t limited to the inventor. If I change a standard engine (configuration A) to make it more fuel-efficient but produce less power (configuration B), are you suggesting that nobody could cite the reference for configuration B unless the reference will be modified to make it even more fuel efficient? What if you’re an inventor and you like B over A, but would like to give B more power by moving it somewhat back toward configuration A? Is that now non-obvious because configuration B can’t be cited against it?

    I would say that the art knows of configuration A, and the art knows of configuration B, and if the art knows technique C to produce effect E, then one can apply C to either A or B to make them more producing of E, and they can do that regardless of why A or B was created.

    1. 8.1

      Good points, RG.

      There is quite a bit of tension between this decision and(1) the well-established precedents describing what “teaching away” means, (2) the well-established precedents that that tell us that the motivations for combining elements in the prior art need not be the same as the motivations that inspired the applicant to combine those elements and (3) KSR. That tensions explains, I think, the majority’s reliance on this reanimated “principle of operation” language.

      Apparatus patents are granted on claims that recite new structures or new combinations of structures. If reference A teaches a doohickey, and reference B teaches that blidgets help to accelerate heat loss when combined with other apparati, a broadly claimed combination of a doohickey and a blidget is obvious. It doesn’t matter if reference A teaches that “one advantage of a doohickey is that it retains heat.” What matter is that (1) B teaches blidgets; (2) B teaches blidgets can be combined with doohickeys (because doohickeys are a type of apparatus) and teaches how to do it; (3) the art does not teach that blidgets can’t be combined with doohickeys; (4) a reasonable motivation for a skilled artisan to combining a doohickey (i.e., to accelerate heat loss) can be articulated.

      1. 8.1.1

        “If reference A teaches a doohickey, and reference B teaches that blidgets help to accelerate heat loss when combined with other apparati, a broadly claimed combination of a doohickey and a blidget is obvious.”

        No it’s not.

        “It doesn’t matter if reference A teaches that ‘one advantage of a doohickey is that it retains heat.'”

        It sure does matter.

        “What matter is that (1) B teaches blidgets; (2) B teaches blidgets can be combined with doohickeys (because doohickeys are a type of apparatus) and teaches how to do it…”

        That’s nice. But the fact that references can be combined doesn’t provide a reason why one of ordinary skill would combine them. There’s an MPEP section that even covers that. You could look it up.

        “…(3) the art does not teach that blidgets can’t be combined with doohickeys…”

        That seems to be an argument that as long as the prior art doesn’t expressly disclose that prior art shouldn’t or can’t be combined, then the combination would have been obvious. I don’t think I need to explain why that’s incorrect.

        “… (4) a reasonable motivation for a skilled artisan to combining a doohickey (i.e., to accelerate heat loss) can be articulated.”

        Is it reasonable to combine the prior art when the combination would result in the loss of what one of the prior art discloses as an “advantage” (i.e. heat retention)? You can make that argument. If your purpose is to reject the claim. Others, being more reasonable, would disagree.

        1. 8.1.1.1

          AAA JJ the fact that references can be combined doesn’t provide a reason why one of ordinary skill would combine them.

          I never said otherwise. In fact I made it quite clear in my hypothetical that there is a reasonable motivation to combine the references. It’s also true that if one skilled in the art at the time of filing would, in fact, recognize that the elements in the references could be combined then you’ve gone a long way towards establishing the obviousness of the combination.

          Is it reasonable to combine the prior art when the combination would result in the loss of what one of the prior art discloses as an “advantage” (i.e. heat retention)?

          Of course. As long as there is a reasonable motivation to combine, it doesn’t matter muchfor obviousness purposes what “one of the prior art” says about any “advantage” of an uncombined element.

          Now, if the art actually taught away from the combination, that’s a different story.

          That seems to be an argument that as long as the prior art doesn’t expressly disclose that prior art shouldn’t or can’t be combined, then the combination would have been obvious.

          It’s not. It’s just one prong of the argument that you’re reading in isolation. I numbered the prongs to make it easier for you to see that there were multiple prongs and yet somehow you still missed that. Regardless, the fact remains that if the art “doesn’t expressly disclose that prior art shouldn’t or can’t be combined” then there is almost certainly no “teaching away” as that term has been defined by the courts.

          “If reference A teaches a doohickey, and reference B teaches that blidgets help to accelerate heat loss when combined with other apparati, a broadly claimed combination of a doohickey and a blidget is obvious.”

          No it’s not.

          So you say. Good luck enforcing your obvious patents against intelligent people who can see right through the sort of game you just played with my comment. There are suckers born every minute. Go get ’em! Make your fellow patent agents proud.

        2. 8.1.1.2

          AAA JJ the fact that references can be combined doesn’t provide a reason why one of ordinary skill would combine them.

          I never said otherwise. In fact I made it quite clear in my hypothetical that there is a reasonable motivation to combine the references. It’s also true that if one skilled in the art at the time of filing would, in fact, recognize that the elements in the references could be combined then you’ve gone a long way towards establishing the obviousness of the combination.

          Is it reasonable to combine the prior art when the combination would result in the loss of what one of the prior art discloses as an “advantage” (i.e. heat retention)?

          Of course. As long as there is a reasonable motivation to combine, it doesn’t matter muchfor obviousness purposes what “one of the prior art” says about any “advantage” of an uncombined element.

          Now, if the art actually taught away from the combination, that’s a different story.

          That seems to be an argument that as long as the prior art doesn’t expressly disclose that prior art shouldn’t or can’t be combined, then the combination would have been obvious.

          It’s not. It’s just one prong of the argument that you’re reading in isolation. I numbered the prongs to make it easier for you to see that there were multiple prongs and yet somehow you still missed that. Regardless, the fact remains that if the art “doesn’t expressly disclose that prior art shouldn’t or can’t be combined” then there is almost certainly no “teaching away” as that term has been defined by the courts.

          “If reference A teaches a doohickey, and reference B teaches that blidgets help to accelerate heat loss when combined with other apparati, a broadly claimed combination of a doohickey and a blidget is obvious.”

          No it’s not.

          So you say. Good luck enforcing your obvious patents against intelligent people who can see right through the sort of game you just played with my comment. There are s*ckers born every minute. Go get ‘em! Make your fellow patent agents proud.

          1. 8.1.1.2.1

            “I never said otherwise.”

            Sure you did. Remember? If not, here it is for you: “If reference A teaches a doohickey, and reference B teaches that blidgets help to accelerate heat loss when combined with other apparati, a broadly claimed combination of a doohickey and a blidget is obvious.”

            “In fact I made it quite clear in my hypothetical that there is a reasonable motivation to combine the references.”

            No you didn’t. You merely declared that it’s “reasonable” to combine reference B that teaches blidgets help to accelerate heat loss when combined with other apparati with reference A that teaches a doohickey that has as one of its advantages the retention of heat. Why is it “reasonable” to combine them? Because you declare it to be so on this blog?

            “It’s also true that if one skilled in the art at the time of filing would, in fact, recognize that the elements in the references could be combined then you’ve gone a long way towards establishing the obviousness of the combination.”

            You might establish a reasonable expectation of success with that, but you still need a reason to combine. And the proposed combination would still have to result in the elements arranged in the fashion claimed. I guess 1/3 of the way there is a “long way” in your mind. Whatever.

            “Now, if the art actually taught away from the combination, that’s a different story.”

            Teaching away is not the only persuasive argument against an allegation of a reason to combine. References can teach away from the claimed invention, and they can teach away from their combination. As the court noted in this case, there’s no reason to combine references when the combination would change the principle of operation of the prior art, or would render the prior art unsatisfactory for its intended purpose. Skepticism of others in the art is another argument against a reason to combine.

            “So you say.

            Yes I do.

            “Good luck enforcing your obvious patents against intelligent people who can see right through the sort of game you just played with my comment.”

            Right. How successful was the requester in this case with your approach?

            1. 8.1.1.2.1.1

              If not, here it is for you: “If reference A teaches a doohickey, and reference B teaches that blidgets help to accelerate heat loss when combined with other apparati, a broadly claimed combination of a doohickey and a blidget is obvious.”

              Sounds like the motivation was right there. It didn’t JUST say that blidgets can be combined with other apparati, which is the bare statement of what you claimed it did (“the fact that references can be combined doesn’t provide a reason why one of ordinary skill would combine them.”). It said that they can be combined and the combination causes an effect .

              Why is it “reasonable” to combine them?

              Because the combination accelerates heat loss.

              there’s no reason to combine references when the combination would change the principle of operation of the prior art,

              The only time I can think of this being true is when the art has only one goal. All invention is a matter of give and take. One may make changes that entirely prevent backwash, and decide that they would have a better total invention if they allowed some backwash in exchange for a much better outcome in any area other than backwashing. That’s not only a reasonable motivation, that’s how most fields progress. Regardless, the logic of the rule is irrelevant because the rule itself is an improper boundary for obviousness after KSR.

                1. A known result of the combination is all you need to show obviousness. Again, you mistake the colloquial use of phrase “motivation” with the legal usage of the phrase.

                2. (s i g h)

                  A known result of the combination is all you need to show obviousness. Again, you mistake the colloquial use of phrase “motivation” with the legal usage of the phrase.

                  This is an incomplete – and thus incorrect – statement of law.

                  The sad thing here is that understanding the law of obviousness is paramount for Random Examiner to do his job as an examiner, and not only that, Random has intimated that he is also an attorney, so he should be doubly aware of what the law is as pertains to obviousness.

                  Let’s take a quick example: Let’s say that something is objectively known, but only known to a handful of advanced PhD level theoretical physicists. Let’s take an invention for which it is objectively (factually) determined that the Person Having Ordinary Skill In The Art only has the capability of a high school student. Will an item of prior art – objectively known only to the physicists – be counted as prior art to the invention for the legal issue of obviousness?

                3. Let’s say that something is objectively known, but only known to a handful of advanced PhD level theoretical physicists.

                  Well yes obviously, it is a PHOSITA standard. That’s not what we’re discussing.

                  AAA JJ thinks that it is not enough for a PHOSITA to know A can be combined with B, and the A/B combination will have a known result. AAA JJ thinks it is further required for one of ordinary skill in the art to be motivated to achieve the result, i.e. there must be a reason the art wants something to happen. That is not a requirement. See the discussion above, where MM provided a given that met the requirements of obviousness, AAA JJ said it wasn’t enough, I reiterated the facts that met the requirement, and his response was “So?”

                  If the art knows a combination can be made, and the art knows what result will come of it, it doesn’t matter if the result has a good utility, a bad utility, or in fact no utility to the art at all. The only thing that is necessary is for the combination to be enabled and the result to be expected. “Motivation” in the patent legal sense is a predictable cause/effect link, not the commonsense “desire to achieve a result.”

                4. That’s not what we’re discussing

                  Actually, it very much is an important part of the discussion.

                  You seem oblivious to the fact that your argument is far far far too broadly stated and ig nores the counterpoints that I put on the table for discussion.

                  Whether or not the legal notion of “motivation” is reached (your latest point), your position disregards key elements of the law of obviousness and fails to support your views here.

                  This is why both you and Malcolm fail this legal discussion.

                  It is very much a symptomatic fault that you need to recognize. You want to brush away (much too quickly) the important distinction that the entire world of prior art may not – in fact – be allowed into the obviousness analysis. Quite simply and quite directly, your statements are legal error – for the explanations that I have provided.

                  Pick up your brain and put it back into your skull – when you do so you may realize that what AAA JJ is telling you is a bit different than what you thought he was telling you, and that your propensity for “anything goes” is not what is meant by being flexible.

                5. “A known result of the combination is all you need to show obviousness.”

                  Wrong. You have to provide an articulated reasoning with rational underpinning why one of ordinary skill in the art would modify the doohickey of reference A to accelerate heat loss. If you can’t, the claim is not obvious.

                  “Again, you mistake the colloquial use of phrase ‘motivation’ with the legal usage of the phrase.”

                  No I don’t. To establish obviousness you have to provide an articulated reasoning with rational underpinning for the modification/combination. Your idea that “Well, one of ordinary skill could do it predictably” doesn’t qualify. You have to provide a reason why one of ordinary skill in the art would do it (i.e. the modification/combination).

                6. “AAA JJ thinks that it is not enough for a PHOSITA to know A can be combined with B, and the A/B combination will have a known result.”

                  It’s not enough. And it’s not just me that thinks that. It’s the Supreme Court too.

                  “AAA JJ thinks it is further required for one of ordinary skill in the art to be motivated to achieve the result, i.e. there must be a reason the art wants something to happen.”

                  I never used the term “motivation.” But yes, there has to be a reason why one of ordinary skill in the art would modify/combine the prior art. Did you miss all that discussion by the Supremes in KSR about meeting design trends and market forces and solving known problems with known solutions? One of ordinary skill in the art doesn’t go about modifying/combining the prior art “because he can.” If that’s what you took away from KSR, you might want to go back and reread it.

                  “That is not a requirement.”

                  It most certainly is a requirement.

                  “See the discussion above, where MM provided a given that met the requirements of obviousness,…”

                  MM didn’t provide anything but a conclusory statement of obviousness. When asked why one of ordinary skill in the art would have accelerated heat loss from the doohickey of reference A, he disappeared.

                  “AAA JJ said it wasn’t enough,…”

                  It’s not enough.

                  “… I reiterated the facts that met the requirement, and his response was ‘So?'”

                  And you still haven’t answered my question.

                  “If the art knows a combination can be made, and the art knows what result will come of it, it doesn’t matter if the result has a good utility, a bad utility, or in fact no utility to the art at all.”

                  Wrong again. One of ordinary skill in the art does not modify/combine the prior art to make it worse, or useless. That’s simply a ridiculous assertion. Did you miss all that discussion of “common sense” in KSR? Is it “common sense” for one of ordinary skill in the art to modify the prior art so that it is worse at achieving its purpose, or is completely useless? I don’t think so. And neither does the Supreme Court.

                  “The only thing that is necessary is for the combination to be enabled and the result to be expected.”

                  Those certainly are requirements to establish obviousness. But they’re not the only ones. An articulated reasoning with rational underpinning as to why one of ordinary skill would make the modification/combination is required.

                  “‘Motivation’ in the patent legal sense is a predictable cause/effect link, not the commonsense ‘desire to achieve a result.'”

                  Again, nobody’s talking about “motivation” except you.

                  If you can’t answer this question: Why would one of ordinary skill in the art modify the doohickey of reference A to acceerate heat loss? then you can’t reject the claim.

                7. It most certainly is a requirement.

                  I’m glad we’re in agreement on the particular issue being discussed. I’m going to respond to you rather than anon.

                  Wrong. You have to provide an articulated reasoning with rational underpinning why one of ordinary skill in the art would modify the doohickey of reference A to accelerate heat loss. If you can’t, the claim is not obvious.

                  Nope, you have to provide an articulated reasoning with rational underpinning as to why the ultimate holding of obviousness is made. i.e. You cannot set the backdrop with the Graham statements (teaches, doesn’t teach, etc) and then have a mere conclusory statement of obviousness. The fact that the art knew the response is that underpinning . You’re trying to impose a further motivation for that underpinning, but KSR explicitly refuted that part of Kahn.

                  Instead, KSR cites with approval Andersons Black Rock. ABR had a heater situated on a street paver. Despite the testimony of two people saying that the art would not be motivated to make the combination because the art didn’t think heat would help, the court found the combination obvious because the two parts were simply doing what the two parts did – they just hung a heater on a street paver. The court distinguished situations where “A combination of elements may result in an effect greater than the sum of the several effects taken separately. No such synergistic result is argued here.” In other words – had the true result been different from the predicted result, there would have been non-obviousness, but because the art already knew radiant heat and the result was radiant heat, the combination was obvious even though there was no motivation by the art to use the combination.

                  Were your view right, ABR would have been wrongly decided, as the very thing you say is necessary was missing. If you look at Section IIA of KSR, you’ll see all of the quotes there are quotes centering around the predictability of functionality –

                  For over a half century, the Court has held that a “patent for a combination which only unites old elements with no change in their respective functions . . . obviously withdraws what is already known into the field of its monopoly and diminishes the resources available to skillful men.” citing Atlantic and Pacific Tea Co

                  When Adams designed his battery, the prior art warned that risks were involved in using the types of electrodes he employed. The fact that the elements worked together in an unexpected and fruitful manner supported the conclusion that Adams’s design was not obvious to those skilled in the art. – United States vs. Adams, finding nonobvious

                  “while the combination of old elements performed a useful function, it added nothing to the nature and quality of the radiant-heat burner already patented,” – ABR

                  the Court derived from the precedents the conclusion that when a patent “simply arranges old elements with each performing the same function it had been known to perform” and yields no more than one would expect from such an arrangement, the combination is obvious. – Sakraida.

                  Finally resulting in the actual holding of KSR:

                  if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.

                  A known technique that produces a result is obvious unless it cannot be performed. Full stop. The question is whether the art would draw the cause/effect relationship – would they recognize that it would function the same.

                  You don’t need a teaching, suggestion or motivation at all, see KSR:

                  When it first established the requirement of demonstrating a teaching, suggestion, or motivation to combine known elements in order to show that the combination is obvious, the Court of Customs and Patent Appeals captured a helpful insight…Helpful insights, however, need not become rigid and mandatory formulas; and when it is so applied, the TSM test is incompatible with our precedents. The obviousness analysis cannot be confined by a formalistic conception of the words teaching, suggestion, and motivation, OR by overemphasis on the importance of published articles and the explicit content of issued patents.

                  Most people’s, and apparently your’s AAA JJ, taking away from KSR is the explicit content part – that the patent need not explicitly provide the motivation. But a motivation is simply a helpful tool, because you’re not confined to the TSM test at all.

                  Again, nobody’s talking about “motivation” except you. If you can’t answer this question: Why would one of ordinary skill in the art modify the doohickey of reference A to acceerate heat loss? then you can’t reject the claim

                  When you say knowledge of the result is insufficient and I need to answer why one would make the modification, that’s a request for a motivation. You don’t need a reason to make the change, the art just needs to correctly know what the result of the combination will be.

                  You mistake the fact that the office doesn’t teach examiners the correct way (i.e. the office teaches you to need a motivation), and therefore applicants key off of that, with the actual legal requirement. The difference is on display both in this case and in this conversation. A motivation, whether implicit or explicit, is a useful tool. It is not a requirement.

                8. One of ordinary skill in the art doesn’t go about modifying/combining the prior art “because he can.”

                  No, but if doing cause C will lead to effect E, one of ordinary skill goes about C because he knows E will result. Why a rational person would want E is irrelevant. Like I said, taking all your clothes off outside in the winter is obvious because the results are known. The fact that a rational person wouldn’t do it is irrelevant.

                  One of ordinary skill in the art does not modify/combine the prior art to make it worse, or useless. That’s simply a ridiculous assertion. Did you miss all that discussion of “common sense” in KSR? Is it “common sense” for one of ordinary skill in the art to modify the prior art so that it is worse at achieving its purpose, or is completely useless?

                  The utility and obviousness requirements are separate and distinct. If I take a sledgehammer to an intricate watch, the resulting structure will be obvious, because common sense will tell you what will happen. The fact that that structure will lack utility is certainly a second problem beyond obviousness for someone wishing to patent the second structure, but it doesn’t make the structure suddenly non-obvious.

                  Let’s do some examples to explain how backwards this thinking is:

                  If someone invents a revolutionary, completely non-obvious processor that can do, let’s say 50 petaflops, and I make a completely conventional change which reduces it to 45 petaflops. My processor is patentable and non-obvious over theirs, despite the fact that I now have a patent on the second most powerful processor in the world (by 50% over conventional processing!) despite having done no work?

                  I had no idea that while I cannot apply conventional techniques to make Google’s latest invention better (as that’s obvious and wouldn’t result in a patent) I can apply conventional techniques to make Google’s latest invention worse and WILL receive a patent. I can essentially freeload on Google’s work by taking a slightly worse, obvious variation of something they spent a ton of time developing?

                  BMW comes out with a new car that gets 600 miles to the gallon and can travel 30k miles without refueling? Well I made the gas tank smaller and put an unmovable bag of sand in the trunk, so I can only get 29k miles before refueling. I can haz patent now?

                  I want YOU as my examiner.

                9. “You don’t need a teaching, suggestion or motivation at all, see KSR”

                  Never said you did. Yet you keep repeating that over and over and over. That’s a very old examiner tactic: misstate the applicant’s argument and then respond to the misstatement.

                  Whether there exists a reason to modify/combine the prior art is a question of fact. And the burden is on the examiner to establish that reason by a preponderance of the evidence. Simply concluding, “Well one of ordinary skill in the art would have done it to get the effect one would get if they did it” is not an articulated reasoning with a rational underpinning. And it’s not supported by a preponderance of the evidence because it’s conclusory, circular reasoning.

                  Why would one of ordinary skill in the art modify the doohickey of reference A to accelerate heat loss as disclosed by reference B’s blidget? Answer the question. Again, keeping in mind that you have to answer it from the perspective of, “Why would somebody who has no inventive inclination make that modification/combination?”

                  You still haven’t answered it. You just keep saying, “Because the effect is known.” That’s not good enough. It wasn’t good enough before KSR and it’s not good enough after KSR.

                10. Why would one of ordinary skill in the art modify the doohickey of reference A to accelerate heat loss as disclosed by reference B’s blidget? Answer the question. Again, keeping in mind that you have to answer it from the perspective of, “Why would somebody who has no inventive inclination make that modification/combination?”

                  As I said, I’m not required to answer that question. The question I’m required to answer is “Is it obvious to put the blidget of B on the doohickey of A?” The answer to that is yes, because by putting the blidget on the doohickey, I accelerate heat loss. That is neither conclusory nor circular.

                  To ask the question “Why would one of ordinary skill in the art want to achieve heat loss?” is a useful question, that has some bearing on the overall question of whether you would put the blidget on the doohickey, but it’s not required to be answered as a matter of law.

                  Whether there exists a reason to modify/combine the prior art is a question of fact. And the burden is on the examiner to establish that reason by a preponderance of the evidence.

                  True and true. However, in the example MM gave, the reason was explicitly stated in the reference, and the examiner could agree with that fact.

                  Simply concluding, “Well one of ordinary skill in the art would have done it to get the effect one would get if they did it” is not an articulated reasoning with a rational underpinning.

                  Calling something a conclusion when it’s a reason doesn’t make it a conclusion. If a switch is known to control a light, the most likely reason one would flip the switch is because one doesn’t like the current state of the light. That’s not a conclusion, that’s reasoning. There may be other reasons for flipping the switch, like when it is in the up position you can hang your necklace on it and store it there. But just because I’m changing a configuration for the most immediate effect doesn’t suddenly turn it into a conclusion.

                  Similarly, the fact that they may have a further larger reason for performing that act (i.e. they wanted to flip the light on to make it easier to read) doesn’t change the fact that the articulated reasoning for the light flipping from one configuration to the other was because of the immediate effect it caused.

                  People routinely perform known causes (flipping a switch that is known to change the state of a light) because they desire the known resultant effect (they want the light state changed).

                  You just keep saying, “Because the effect is known.” That’s not good enough. It wasn’t good enough before KSR and it’s not good enough after KSR.

                  Well I don’t just keep saying it, I cite to the language of KSR where it seems pretty obvious my interpretation of the case is correct. I would think that is what you want to do if you want to win a legal argument. You, on the other hand, haven’t done anything but MISquote Kahn and say that I haven’t met some sort of requirement you can’t show exists anywhere else but in your head.

                  The reason the combination is obvious is because the effect of the combination was known to the art prior to the filing.

                11. Here, I’ll make this easy for you: Point to where in the caselaw it states I must have a reason for desiring the result of a combination before that combination is deemed obvious?

                12. AAA JJ You have to provide an articulated reasoning with rational underpinning why one of ordinary skill in the art would modify the doohickey of reference A to accelerate heat loss. If you can’t, the claim is not obvious.

                  There’s absolutely no such requirement for the prima facie case of obviousness. I need the references teaching the claim elements (I’ve provided them) and I need a rational motivation to combine those elements (I’ve provided that as well).

                  If you want to make a “teaching away” argument in response to the prima facie case, then you need to show that the art actually “teaches away” from the combination. A self-serving statement in one reference that the unmodified element has “an advantage” that is not consistent with the result achieved by the Examiner’s rationally combined elements is hardly “teaching away” from the combination. It’s not even close.

                13. “There’s absolutely no such requirement for the prima facie case of obviousness.”

                  On the examiner’s ultimate burden of persuasion it is absolutely a requirement. Whether there exists a reason to modify/combine the prior art is a question of fact. And the examiner has to establish that fact by a preponderance of the evidence.

                  ” I need the references teaching the claim elements (I’ve provided them) and I need a rational motivation to combine those elements (I’ve provided that as well).”

                  No you didn’t. Here’s what you “provided” (for lack of a better word): “If reference A teaches a doohickey, and reference B teaches that blidgets help to accelerate heat loss when combined with other apparati, a broadly claimed combination of a doohickey and a blidget is obvious. It doesn’t matter if reference A teaches that ‘one advantage of a doohickey is that it retains heat.’ What matter is that (1) B teaches blidgets; (2) B teaches blidgets can be combined with doohickeys (because doohickeys are a type of apparatus) and teaches how to do it; (3) the art does not teach that blidgets can’t be combined with doohickeys; (4) a reasonable motivation for a skilled artisan to combining a doohickey (i.e., to accelerate heat loss) can be articulated.”

                  In response to my question, “Why would one of ordinary skill in the art want to accelerate heat loss from the doohickey of reference A?” you and Random Examiner keep pounding your fist on the table and responding, “To accelerate heat loss from the doohickey of reference A!!!” as if merely restating over and over the result or effect of the combination is the same as providing the reason why one of ordinary skill in the art would make the combination.

                  Whether there exists a reason to modify/combine the prior art and whether there exists a reasonable expectation of success in modifying/combining the prior art to arrive at the claimed invention are two separate factual inquiries that the examiner has the ultimate burden of persuasion on by a preponderance. There’s nothing in KSR, or any pre- or post-KSR case law that collapses those two inquiries into one (i.e. if there is a reasonable expectation of success then there is a reason to modify/combine). They are two separate inquiries. And the examiner has to establish both, as a matter of fact and by a preponderance of the evidence, before the claim can be deemed obvious.

                14. “As I said, I’m not required to answer that question.”

                  And I said, you absolutely are required to answer it.

                  “The question I’m required to answer is ‘Is it obvious to put the blidget of B on the doohickey of A?'”

                  Correct. And in answering that question, you are required to resolve, by a preponderance, the factual inquiries, one of which is: is there a reason to modify/combine the prior art?

                  “The answer to that is yes, because by putting the blidget on the doohickey, I accelerate heat loss. That is neither conclusory nor circular.”

                  It is entirely conclusory and circular. And we know that because every time I ask you, “Why would one of ordinary skill in the art want to accelerate the heat loss from the doohickey of reference A?” you respond with “To accelerate the heat loss from the doohickey of reference A!” That is the definition of circular reasoning.

                  I understand that the result or effect of combining the blidget of reference B with the doohickey of reference A will result in the acceleration of heat loss from the doohickey of reference A, but it doesn’t answer the question of why one of ordinary skill in the would want to accelerate the heat loss from the doohickey of reference A. It merely recites the result or effect of the combination as the reason for the combination. There’s nothing in KSR that permits that.

                  “To ask the question ‘Why would one of ordinary skill in the art want to achieve heat loss?’ is a useful question, that has some bearing on the overall question of whether you would put the blidget on the doohickey, but it’s not required to be answered as a matter of law.”

                  Wrong. Without an answer the claim is not obvious over reference A in view of reference B.

                  “Here, I’ll make this easy for you: Point to where in the caselaw it states I must have a reason for desiring the result of a combination before that combination is deemed obvious?”

                  Well, there’s this from KSR, 550 U.S. at 418, “Often, it will be necessary for a court to look to interrelated teachings of multiple patents; the effects of demands known to the design community or present in the marketplace; and the background knowledge possessed by a person having ordinary skill in the art, all in order to determine whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.”

        3. 8.1.1.3

          Is it reasonable to combine the prior art when the combination would result in the loss of what one of the prior art discloses as an “advantage” (i.e. heat retention)? You can make that argument. If your purpose is to reject the claim. Others, being more reasonable, would disagree.

          Reasonable people would understand that the whole art, or a PHOSITA, is not limited by the motivations of the previous inventor. If the first inventor enjoyed heat, and the second inventor didn’t like heat and showed you a way to dissipate heat, there’s no rule that the first inventor’s view prevails, for at least the reason that you could entirely flip the references (i.e. Add A’s features onto B rather than B’s features onto A) and would come to the exact opposite conclusion.

          Regardless, the motivation is clear – One likes the apparatus of A, but not the heat retention, and thus they would seek out reasons to dissipate heat, and be lead to B. It’s a particular example of Omission of an Element and Its Function is Obvious if the Function of the Element is Not Desired (MPEP 2144.04).

          1. 8.1.1.3.1

            Obviousness is determined from the point of one of ordinary skill in the art, who by definition is not inventive. So all of your “If the first inventor enjoyed heat, and the second inventor didn’t like heat and showed you a way to dissipate heat, there’s no rule that the first inventor’s view prevails” is meaningless blather. We’re not talking about why or how an inventor would view the disclosure of reference A’s doohickey and it advantageous heat retention and reference B’s blidget that accelerates heat loss. We’re talking about how one of ordinary skill in the art views them.

            1. 8.1.1.3.1.1

              who by definition is not inventive.

              Ahhh – therein lies the muck of KSR in which the Supremes attempted to do their whatever ends regardless of the means and “proclaimed” that PHOSITA does have a certain level of “inventiveness” (the ordinary common sense level – whatever that means).

              That they did this in contradiction to the words and intent of Congress (the 1952 Act) – and that such was NOT immediately made a sharp focal point by the innovation community – was a serious mistake. It turns out to be a “g e e, I fed the wolf at the door and now he is back” Chamberlain rather than Churchill, feed the wax nose addiction type of mistake that prompts the Royal Nine to say things like “our own implicit writings will NOT be made into dead letters” (See Prometheus).

              At least with KSR, the inadvertant strengthening of PHOSITA brought with it the trailing edge of that sword in also super-empowering the use of terms of functional language (note explicitly this is NOT claims TOTALLY in the mind or claims COMPLETELY functional, but rather this pertains to claims that safely and fully legally fall into that Vast Middle Ground). So in this instance, the Supremes generated the very outcome that certain posters here so often decry.

              1. 8.1.1.3.1.1.1

                I wouldn’t dispute the Supreme Court’s determination that PHOSITA can apply known solutions to known problems. That is the heart of obviousness, not this “predictability = motivation” nonsense that some are spewing here.

                One of ordinary skill in the art can (could), and will (would), make some modifications/combinations. Which ones remains a matter of debate. In every single application where there is a claim that is at least arguably novel. That’s the way it should be.

    2. 8.2

      There is one way to teach away – to say “I have specifically posited combining A and B, I have tried it, and it doesn’t work.” Saying “I/We don’t like backwash” isn’t teaching away from anything that causes backwash.

      Definitely true. There is an important difference between teaching-away, and a non-preferred but still viable alternative.

      (The textbook example of the latter is In re Gurley, where a primary reference (Yamaguchi) recited a specific epoxy as the preferred embodiment, and polyester-imide resin that was “inferior” but still suitable. I think we can agree that the “inferior” characterization doesn’t disqualify its citation as also covering the resin for this use.)

      Of course, there is also the doctrine of inherency. Let’s say a reference presents a shovel that’s especially good for removing rocks from rocky soil, and leaving the soil behind. That shovel design can be cited not only for that purpose, but for all of the other things one would expect of that type of shovel: digging up other hard objects, like tree roots; for digging in general; for soil tilling; for hitting people; etc.

      But consider a modification of that shovel with a different tine configuration that achieves the opposite result: removing *soil* from rocky soil, and leaving behind the rocks – useful for weeding in a rock garden. Can the basic shovel reference just be “extended” to cover the modification, based on some unspecified knowledge of PHOSITA, to cover the modification? Seems unreasonable to me. Of course, an obviousness rejection could combine this reference with a second reference that describes a tine configuration that selectively removes soil, but it’s not enough on its own.

      As another example – in chemistry, some compositions are known to catalyze a reaction if present within a certain range, but to block the reaction if presented in excess of the range. A reference to the composition as a catalyst for the reaction can’t fairly be cited against a later application using the excessive amount of the composition to block the reaction.

      That, as I see it, is the principle of the Plas-Pak case.

      1. 8.2.1

        As another example – in chemistry, some compositions are known to catalyze a reaction if present within a certain range, but to block the reaction if presented in excess of the range. A reference to the composition as a catalyst for the reaction can’t fairly be cited against a later application using the excessive amount of the composition to block the reaction.

        Yes, this is the heart of non-obviousness.

        But consider a modification of that shovel with a different tine configuration that achieves the opposite result: removing *soil* from rocky soil, and leaving behind the rocks – useful for weeding in a rock garden. Can the basic shovel reference just be “extended” to cover the modification, based on some unspecified knowledge of PHOSITA, to cover the modification?

        But there isn’t “unspecified knowledge of the PHOSITA” in this case. In this case, they knew the shovel for removing rocks from rocky soil and they also had another reference which said (in analogous terms) that “this different tine configuration removes soil from rocky soil.” In that case, it is obvious to combine the tine configuration modification with any shovel, a basic shovel or the especially good for removing rocks from rocky soil shovel, because the art has already uncovered the relationship: a particular tine configuration helps to remove soil from rocky soil. The fact that you can add it to a basic shovel or to a shovel that was on an opposite vector is irrelevant.

        In your example (“based on some unspecified knowledge of PHOSITA”) you’re not really arguing motivation to make the change, you’re saying the art never knew the change to begin with. i.e. the tine configuration to soil removal link was never made before. That’s a straight novelty/obviousness question, not a motivation question.

        In most cases in the mechanical, and virtually always in the software arts, a structure that performs a function in one context will perform that function in other contexts. The tine configuration that achieves something will tend toward achieving it regardless of if it is placed upon a “neutral” base or an “opposite direction” base. The arts are generally predictable, and thus there’s generally motivation.

        Chemistry, on the other hand and completely consistently with your example, can sometimes produce wild swings in different contexts. There is less predictability. Its here that there are motivation to combine issues, because you have to be sure not only that you are citing X, but that X is behaving in the predictable manner in both contexts.

    3. 8.3

      Not so good points after all…

      The Supreme Court took a case to tell you not to have particular tests for obviousness

      That’s not the proper takeaway. They did not actually (in that case) say to do away with all tests and apply some “gut-check” we-feel-that post-hoc hindsight-is-perfectly-OK examination protocol.

      and they can do that regardless of why A or B was created.

      Maybe.

      But – and this is important – maybe not.

      The whole point of being “able” to do so does not exist in a vacuum, and, clearly, cannot wreck why A or B is as they are.

      You seem to want I gloss over a rather important constraining “good point” there.

      1. 8.3.1

        The whole point of being “able” to do so does not exist in a vacuum, and, clearly, cannot wreck why A or B is as they are.

        The only requirements are 1) being able and 2) knowing what the result would be. The court’s attempt to read in some sort of narrative to the situation is misplaced. There is a working device, and a known technique that can be applied to achieve a known result. That is all that is necessary to show obviousness. The second inventor is not limited to the reasoning the first inventor had for making the base reference.

        That’s not the proper takeaway. They did not actually (in that case) say to do away with all tests and apply some “gut-check” we-feel-that post-hoc hindsight-is-perfectly-OK examination protocol.

        They said that they have constantly said to apply flexible reasoning and said that there are not per se tests, and here the court applies a per se test.

        1. 8.3.1.1

          Flexible is not the same as unconstrained.

          Exactly like in BRI the broad is constrained by necessarily being reasonable, you continue to err with some type of unlimited view of obviousness. You display a far reaching and fundamental error. Let me put it this way: there are two different worlds of prior art that can be used for 102 and for 103. The world of prior art for 102 is ALL of the world. The world of prior art for 103 is ONLY a lesser subset. Your repeated statements here just do not reflect this point.

          Your representation of “flexible” is a brains have fallen out representation.

          It is good to have an open mind. But do not have such an open mind that your brains fall out.

          1. 8.3.1.1.1

            Exactly like in BRI the broad is constrained by necessarily being reasonable, you continue to err with some type of unlimited view of obviousness.

            No, what happened here was a per se test.

            There is agreement on all sides that if the combination were made the result was known – more backwash, more spray.

            Plas-Pak argued the working of the prior art as a whole should be considered. The Court adopted the position that only the inventive aspect of the prior art should be considered. By not even considering if the operation of the whole invention, rather than the inventive aspect, would be achievable, the Court introduced a per se requirement: Something will be obvious not only if it can be modified, but if the modification does not corrupt the original inventive aspect. If you’re confused about that, look at the title of this posting.

            According to the Supreme Court, the question must only be if the structure could be modified and if it will produce a known result. It is possible for other tests, such as this test or the TSM to inform on that analysis, but it is improper here, as it was by the Fed Cir in KSR, to make that the ONLY consideration. The use of a per se test in the first instance is wrong.

            What the Fed Cir here is doubly wrong because the inventive aspect has zero to do with the ultimate question. This test doesn’t even logically inform upon the ultimate result, because nobody is considering whether the machine will work, they are considering whether one could so directly about-face the PURPOSE of the creation of Ref A. The art never limits itself to the motivation of a single inventor. It’s wrong to use the test even if it wasn’t framed in a per se matter.

            Flexible is not the same as unconstrained.

            That’s true. Unfortunately for the Fed Cir in this case, the constraints the Supreme Court put on the analysis were not followed here. They applied a per se test from before KSR that doesn’t even inform upon what KSR required – especially terrible because they quoted the controlling language in KSR that does properly dispose of the case.

            1. 8.3.1.1.1.1

              This was not a per se test.

              Scoop up your brains and realize that per se just is not the same as using a test – you are STILL wanting a free-for all anything goes no limitations whatsoever view of obviousness – and that just is legal error.

              As already shown – the blanket objective “known result” is not proper. You do NOT get to use the world of prior art applicable for 102 in a 103 analysis. You keep on glossing over this critical distinction, and you keep on ig noring my telling you that you are glossing over this critical distinction.

              You are blind son – don’t be deaf as well.

  4. 7

    Where the heck did they come up with contribution to the art?

    What if a reference isn’t a patent and there is no “contribution to the art”?

    The issue is whether the claimed invention is obvious. The courts have ruled that if the modification of something in the prior art would change its principle of operation, then the modification is not obvious.

    The references “contribution to the art” is immaterial and any reference to such a contribution is a clear effort to distract from and obscure the issue.

    1. 7.1

      Does anyone else feel like the law of obviousness is needlessly complicated?

      Basically, in most cases I think it should work like this:

      1. Examiner finds the closest prior art.
      2. Examiner identifies differences between the claim and the prior art.
      3. Examiner offers brief explanation of why the differences between the claim and the prior art are known and yield predictable results.

      4. Applicant now has to show why the claimed invention yields unexpected results or is otherwise non obvious.

      All of the arguments about when/whether/how to combine references seems needlessly obtuse, especially given that as far as I know, noone actually combines references to create an invention: so who cares?

      I get that we need an objective standard for obviousness, but this all seems rather silly to me.

      1. 7.1.1

        Go Arthur, but this is an inter partes reexamination. Also consider IPRs. The petitioner has the burden — and if his reconstruction would remove or be inconsistent with an object of the reference (regardless of whether that object was “new”), has he not failed his burden?

        Simply reciting the magic words from KSR without actually demonstrating that the reconstructed device actually achieves the same result, in substantially the same way, should result in a finding of failure of proof. KSR requires that the modified device be essentially the same in all respects.

      2. 7.1.2

        3. Examiner offers brief explanation of why the differences between the claim and the prior art are known and yield predictable results.

        This^ A hangup of practicioners and sometimes even the FC is whether a human being would have a motivation (in the common sense of the word) to do something. But motivation in an obviousness analysis is more of a term of art that is closely related to “predictable.”

        If I walk outside when it is freezing out and I take all my clothes off, I will predictably be cold. A rational person is generally not motivated to be discomforted in such a manner. Based on those two statements, it is obvious to take your clothes off outside to achieve coldness. If a claim limitation is directed toward making someone cold, a reference discussing taking your clothes off when its freezing out is good, combinable prior art regardless of how much that reference says it is a bad idea and will lead to you getting sick or dying.

        Ned: Simply reciting the magic words from KSR without actually demonstrating that the reconstructed device actually achieves the same result, in substantially the same way, should result in a finding of failure of proof. KSR requires that the modified device be essentially the same in all respects.

        I’m not aware of a “substantially the same way” requirement for anything in patent law outside of means-plus. I am certain that KSR does not require the modified device be essentially the same in all respects.

        1. 7.1.2.1

          ” I am certain that KSR does not require the modified device be essentially the same in all respects.”

          KSR “requires” (as that’s the term we’re using) a determination “whether there was an apparent reason to combine the known elements in the fashion claimed.” 550 U.S. at 418. Combining “known elements” in a manner that doesn’t result in a combination of the “known elements in the fashion claimed” does not establish obviousness.

          1. 7.1.2.1.1

            AAA JJ,

            Alas, I think this is what happens when the term “reasonable” is so completely unmoored from any sense of what that term stands for.

            An altogether not uncommon result of a “whatever” means are ok to reach a desired ends mentality.

        2. 7.1.2.2

          But motivation in an obviousness analysis is more of a term of art that is closely related to “predictable.”

          Random, you are once again displaying your unhealthy and ill begotten overweening predicliction with “predictability.”

          Note once more the basics – and the even more basic predictability – of my big box of electrons, protons, and neutrons.

          Using your logic, using any known components eviscerates the entire patent system.

          You do NOT get to piecemeal the prior art teachings as you attempt to portray. To do so does in fact remove the very notion of “in the art” and incorrectly magnifies the smaller circle of pertinent art for obviousness to be the same larger circle of pertinent art for novelty. You exhibit a fundamental lack of understanding by so advocating.

          1. 7.1.2.2.1

            Again, anon, like all things it depends. If the claim is styled as “a combination of P,N and E to perform X” that is a) invalid under 101 and 112 and b) obvious if X has been done before, because all of the things that cause X are made up of PNE. It depends upon the claim language. You pick PNE as an example because you think it’s the most limited, but its only the most limited if the claim further defines the structure of the PNE such that it excludes “any combination.” That’s only not a ridiculous result, but a necessary one.

            Using your logic, using any known components eviscerates the entire patent system.

            If your invention involves using known components in the way they’ve always been used then your patent shouldn’t issue, because you can’t argue that you’ve advanced the art. Writing about what is known does not become non-obvious simply because you do a lot of it.

            The legal requirement of a combination patent is to show that the art wouldn’t have made the combination. There’s only two ways to show that: 1) the art has tried and failed and 2) The art doesn’t recognize that when A is used with B and C, A performs in an unexpected way (which is just a shorthand way of proving 1). But the locus of the investigation is always what the art knew before and what the art knew after your filing, and its improper as here to attempt to place a further limitation upon the usage of already known knowledge.

            The FC already got smacked down for that in KSR, and Les is completely correct in saying that a citation to this patent apparently fails because it contains a specific opinion of the writer. The art is not limited to the opinion of the writer. The art is limited only by what it knows to be achievable.

            1. 7.1.2.2.1.2

              ” Les is completely correct in saying that a citation to this patent apparently fails because it contains a specific opinion of the writer.”

              As much as I enjoy being declared completely correct, in this one instance I have to paraphrase Erkle (sp?) and say: Did I say that?

            2. 7.1.2.2.1.3

              “Again, anon, like all things it depends. If the claim is styled as “a combination of P,N and E to perform X” that is a) invalid under 101 and 112 and b) obvious if X has been done before, because all of the things that cause X are made up of PNE. It depends upon the claim language. You pick PNE as an example because you think it’s the most limited, but its only the most limited if the claim further defines the structure of the PNE such that it excludes “any combination.” That’s only not a ridiculous result, but a necessary one.”

              Huh?

              P = Wood
              N = Cloth
              E = Rope

              X = make a flying machine

              The claim is obvious because birds have flown before?

              Birds are made of wood cloth and rope?

              I don’t follow you.

              1. 7.1.2.2.1.3.1

                PNE is protons, neutrons and electrons, not variables. If the claim is you can combine matter (i.e. PNE) to achieve a result, that is obvious and invalid under 101 and 112.

                Anon likes to use the example of PNE because everything is made of it, and thus if you forced a disclosure to it everything would be obvious over everything else which he views as a ridiculous result.

                It is not a ridiculous result, as a claim that asserts “some combination” (without limiting how the combination occurs) of PNE *is* obvious. It’s not a hard conclusion to come to either – something has performed the function before, and that something was made up of PNE.

                But to use your example, a claim directed to “a flying machine comprising wood, cloth and rope” isn’t valid either. The claim is obvious because the only thing you require is “some combination of wood, cloth and rope” which has existed before. If you shift the functional language into the claim “a machine comprising wood, cloth and rope which performs the function of flying.” Now you might not have an obviousness problem, but you almost certainly have a 101 and 112, 1st problem because your claim is overbroad of what you invented – you made one flying machine, not all of them.

                1. As an examiner, you really should have a handle on this, and yet, you continue to flail in your clumsy attempts to grasp the discussion points, and they continue to slip through your fingers.

                  The big box of electrons, protons, and neutrons merely extends the logic used by others.

                  There is a Vast Middle Ground that you continue to ig nore and attempt to move the goal posts to discussions of claims TOTALLY of functional language (analogous to the goal post moving “TOTALLY in the mind”).

                  You continue to struggle with the ladders of abstraction.

                  You continue to struggle with the interplay between 101/112 and 103.

                  You continue to ig nore Diener and In re Orthokinetics, as well as what Congress did in 1952 in regards to the use of terms sounding in functional language (beyond just what is now 112(f)).

                  And the worst part is that this continued blindness is being purposefully chosen by you.

        3. 7.1.2.3

          “I’m not aware of…”

          We’ll add that to the very long, and ever increasing, list of things you’re not aware of.

          1. 7.1.2.3.1

            His “lack of awareness” is all the more inexcusable given the fact that points leading to the proper awareness have been provided to him countless times on these boards.

            There are none so blind as those that refuse to see.

    2. 7.2

      Les, “The references “contribution to the art” is immaterial and any reference to such a contribution is a clear effort to distract from and obscure the issue.”

      Les, can you tell us what you think the issue is?

  5. 6

    Takeaway: if one has to reconstruct a principle reference, that reconstruction cannot be inconsistent with the reference’s “basic principles of operation,” In re Ratti, 270 F.2d 810, 813 (CCPA 1959), or render it “inoperable for its intended purpose,” In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984).

    The Boards findings regarding principle of operation and intended purposes are questions of fact.

    1. 6.1

      Regarding the “legal” point that a “principle of operation” should not be limited to the references contribution to the art, what else did they have in mind?

      I seems to me that if the references seeks to achieve object A, any reconstruction that frustrates that objective is not something that one of ordinary skill would do.

      1. 6.1.1

        For a nice short 1991 EPO case (much cited in later cases) on “motivation” and how (not) to get from the art to the claim, see T570/91

        link to epo.org

        in particular its page 8 , para 4.4 of the Reasons. When the invention is an improved i c engine piston, it is not obvious to get there starting from a compressor piston.

      2. 6.1.2

        Ned –

        In re Ratti, 270 F.2d 810, 813, 123 USPQ 349, 352 (CCPA 1959) (Claims were directed to an oil seal comprising a bore engaging portion with outwardly biased resilient spring fingers inserted in a resilient sealing member. The primary reference relied upon in a rejection based on a combination of references disclosed an oil seal wherein the bore engaging portion was reinforced by a cylindrical sheet metal casing. Patentee taught the device required rigidity for operation, whereas the claimed invention required resiliency. The court reversed the rejection holding the “suggested combination of references would require a substantial reconstruction and redesign of the elements shown in [the primary reference] as well as a change in the basic principle under which the [primary reference] construction was designed to operate.”).

        MPEP 2143.01 (VI)

        The issue was not whether the cited portion was the “contribution to the art” of the cited reference. The contribution (if there was one) could have been in the material used for the seal, or the longevity of the seal or something else entirely. The issue is was it obvious to make the modification that would get one to the claimed subject matter of the application. The ruling is it is not OBVIOUS to make a change that changes the principle of operation.

        I think it good to remember that obvious does not mean could one in hindsight, go back through all of human history and find documents that use the same words used in a claim. OBVIOUS means one would walk right into it.

  6. 5

    I see some error in the Federal Circuit’s approach … That general question of “how do we define a principle of operation” is a question of law and should be reviewed de novo by the court.

    What indication is there in the decision that the CAFC did not review this de novo?

    1. 5.1

      I take the silence here to be an admission that you called the work of a panel of Federal judges “error” for no reason. Professional stuff.

  7. 4

    ” That general question of ‘how do we define a principle of operation’ is a question of law and should be reviewed de novo by the court.”

    Dennis, do you have a cite for that, or did Plas-Pak’s briefs provide one?

    Thanks.

    1. 4.1

      “Dennis, do you have a cite for that, or did Plas-Pak’s briefs provide one?”

      I know right? That pricked my ears right up. But I figured he’s just presuming that it is a question of law because of how it arises.

  8. 3

    In practice, what’s the difference between reviewing a PTAB finding of fact for “substantial evidence” to support that finding, versus looking for “clear error” in the finding of facts of a district court in order to overrule the DC? Sounds to me like two ways of stating the same thing.

    1. 3.1

      The pto merely has to have more than a mere scintilla of evidence to support its position, and the position must be one a reasonable person could come to.

      In contrast, in the DC instance, the court has to have found that the lower court clearly screwed up.

      It isn’t that often when these standards make all that big of a hill of beans, but it does occasionally happen.

  9. 1

    This case stands for the rather straightforward principle that if references are going to be combined, the combination can’t be nonsensical.

    Too many examiners generate obviousness references by cobbling together references that use some of the same words. The claim recites an encryption technique that relies on “a hashtable of prime numbers indexed by a solution of Euler’s formula for the plaintext message,” and the examiner rejects it citing:

    1) A traditional computer science textbook explaining the concept of a hashtable;
    2) A grade-school math textbook explaining what prime numbers are; and
    3) The Wikipedia page for Euler’s formula.

    Conceptually, the obviousness rejection looks like a ransom note, with text snipped out of various references and glued haphazardly over the words of the claim.

    That’s the story here, too. Plas-Pak wanted an invalidation of Sulzer’s spray-painting device based on Jacobsen, which shows a type of valve, with Fukuta and Morris, which together show the rest of the parts. But the purpose of the valve in Sulzer’s device (to assist spraying) is exactly opposite the purpose of the same component in Jacobsen (to prevent leakage). And the argument that the absence of a spray nozzle from the references, since it is a “predictable variation of prior art elements,” disregards the nonsense of adding a spray nozzle to Jacobsen’s valve that is intended to prevent leakage.

    The bottom line is that context matters. While the power of obviousness combinations has been vastly extended from the days of TSM, obviousness combinations can’t be nonsensical.

    This is a step in the right direction. I’ll look forward to citing this case when facing similarly nonsensical obviousness rejections in the future.

      1. 1.1.1

        Sure, but it’s a good indicator as to how far the PTAB and CAFC are willing to allow 103 to be stretched.

        I rarely dispute the combination of a set of references – I only do so where the combination is extraordinarily implausible. Further clarification that combinations can’t be contextually implausible is helpful.

        I had a case involving a reference teaching Technique (X) for Purpose (Y). Specifically, the reference indicated: “Technique (X) must be utilized proportionally in two dimensions. Doing only in one dimension causes defective, damaged, aberrant, malformed, damaged results.” On and on the reference went, with unequivocally pejorative language about the dangers of not maintaining proportionality. The extent of pejorative language was almost comical.

        The examiner cited the reference in an obviousness rejection of using (X) only in one dimension, for completely different Purpose (Z). The examiner argued that the mere reference to a non-proportional use of (X) in the reference was sufficient. And even though the reference was completely silent about (Z), the examiner argued that if (X) is used in this way despite the warnings, it does achieve (Z). (Exhibit A: Our specification.)

        We won the argument handily, but it wasn’t an argument that we shouldn’t have had to make.

    1. 1.2

      Conceptually, the obviousness rejection looks like a ransom note, with text snipped out of various references and glued haphazardly over the words of the claim.

      LOL. I’ve received that note, too.

    2. 1.3

      Too many examiners generate obviousness references by cobbling together references that use some of the same words.

      Why are you bringing up what examiners (allegedly) do? In this case it appears to be the patent attorney James Cummings at Cantor Colburn who presented these combinations of references. And it took him 47 pages to do so. Examiners wouldn’t waste so much time.

      1. 1.3.1

        Well you know, the answer is probably in a combination of:

        Monkey see, Monkey do and

        When in Rome, do as the Romans do.

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