Guest Post by Paul Cole, Visiting Professor, Intellectual Property Law, Bournemouth University, UK
On Tuesday 24 November, David Kappos made a posting on the Director’s Forum including the following statement:
Some have suggested that the Office is determining obviousness in a way that stifles innovation by refusing patents for truly inventive subject matter. They’ve asked us to provide examples of non-obvious claims in view of KSR. Such examples would serve as a complement to the examples of obvious claims already in the guidelines.
David Kappos gave a presentation at the AIPLA Annual Meeting in Washington on October, and in a question and answer session that followed there were three questions which concerned KSR, more than any other topic. The two questioners who preceded me expressed dissatisfaction with seemingly unjust and arbitrary rejections for lack of inventive step. I asked whether the US examination guidelines on inventive step could be brought into line with those of the EPO, where positive and negative examples are carefully balanced, and the suggestion created a burst of applause from the audience.
More detained comments on the suggestion are found in a paper on KSR that was published in the John Marshall Review of Intellectual Property Law in 2008[1]. For convenience of reference, the final section is set out here:
The USPTO has been accused of having become significantly less applicant-friendly following the KSR decision. This may reflect concerns about “patent quality” and is reflected in the Guidelines given to examiners. A big difference is noticeable between the EPO Examination Guidelines and those of the USPTO.
The EPO Examination Guidelines at Part C Chapter IV give examples relating to the requirement of inventive step. Considerable care has been taken to balance these examples. Examples illustrating the application of known measures in an obvious way and in which inventive step can be ruled out are balanced by further examples showing the application of known measures in a non–obvious way and in which an inventive step is therefore to be recognized. An example of an obvious and consequently non-inventive combination of features is balanced by an example of a non-obvious and consequently inventive combination of features. Examples of obvious and consequently non-inventive selection are balanced by examples of non-obvious and consequently inventive selection. The single example relating to overcoming a technical prejudice shows a situation where the application should be allowed, not refused. A reader of these Guidelines is made aware that although many applications are open to objection, there are many others that cover meritorious inventions and should be allowed.
When the USPTO issued its post-KSR Guidelines, from the standpoint of a prosecution attorney they made depressing reading. For example, the first heading which refers to combining prior art elements according to known methods to yield predictable results gives two examples, one of which is Andersons-Black Rock, Inc. v. Pavement Salvage Co. and the other of which is Ruiz v SAB Chance Co. in both of which obviousness was established. There is no balancing example in which inventive character was established. There follow five other headings illustrated by examples, each and every one of which shows the claimed subject matter to be obvious. The final heading concerns the TSM test which is not illustrated by any example. Under the heading “Consideration of Applicants Rebuttal Evidence” there are cursory indications that an applicant might have something relevant to say in reply, and that, for example, they might argue that the claimed elements in combination do not merely perform the function that each element performs separately. Might it not have been a good idea to inform the Examining Corps that if an applicant can demonstrate a new and unexpected result, this is strong prima facie evidence of inventive step, that this fact is supported by several opinions of the U.S. Supreme Court and that where such evidence is available an applicant should unless there are compelling reasons to the contrary expect a grant decision to follow? Experience in the EPO is that where an applicant can demonstrate a credible technical problem that he has solved, he will almost always be granted a patent and that although other objections, e.g. “one–way-street” or “bonus effect” are available, circumstances where such objections succeed are rare, as acknowledged by the U.K. High Court in Haberman.
Instructions to examiners are of general importance to the public because they are the main tool used during examination and the important event for most applicants is grant or refusal by the patent office, litigation of patents (even in the U.S.) being uncommon. Instructions are even more important for examiners who are trainees and those who have only recently acquired signatory authority because they are likely to rely chiefly on those instructions and to take some time to achieve a deep understanding of case law. It is important to teach examiners when to make objections and the appropriate grounds for doing so, but is it not equally important to teach them when applications should be allowed and to show them examples of patents whose validity has been upheld, as the EPO does? Quality patent examination is not just a matter of ensuring that applications lacking merit are reliably refused but also of ensuring that meritorious applications are reliably granted.
It now seems that there is at least a chance that the suggestion that I and apparently others have made will be acted on, and that the possibility is under active consideration in the USPTO. Examples of decisions on new function or result which are contained in my paper include the nineteenth century Supreme Court cases Winans v Denmead and Washburn & Moen Manufacturing, Co. v. Beat’Em All Barbed-Wire Co, these decisions being selected on the basis of their instructive character and accessibility to the widest possible range of readers.
For the most to be made of this opportunity, we as students and users of the patent system can help by suggesting additional positive decisions which it would be good for the USPTO to include in the revised inventive step Guidelines. Hopefully readers will respond with references to good Board of Appeals, District Court and CAFC cases, and I look forward to reviewing a large number of hopefully constructive suggestions posted here in response.
[1] Paul Cole, KSR and Standards of Inventive Step: A European View, 8 J. MARSHALL REV. INTELL. PROP. L. 14 (2008)., downloadable from /media/docs/2011/06/Cole.pdf.
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Lionel, you’ve got me beat there. We are arguing about text in documents, right, rather than the universal symbols of mathematics. So, there will always be an irreducible minimum of variation in meaning perceived, reader by reader. Thank goodness, I say, otherwise we would all be out of a job.
How to get to that irreducible minimum?
One way might be to impose the same test (of what a document “discloses”) both when you want the disclosure maximised (eg when you want to rely on its priority filing date) and when you want to minimise its disclosure content (like when it’s a novelty attack on your claim).
Then,the aggregate number of decisions on all these different legal issues, as to what a document “discloses” is enormous, and all of them are applicable, whatever your instant individual legal issue. Darwinian selection of the best line of legal logic then delivers the cleanest, purest, simplest definition of “disclosure”.
Beat that, mathematics aside, for clarity and objectivity.
Isn’t it well-known, that the more complexity you build in to a system, the more potential there is, for unintended consequences?
Max
“the question what is the disclosure content of a document is always the very same test,”
An interpretive and therefore subjective test. You do not have a formulaic process where anyone following it will arrive at the same result.
Also, I am not, nor have I ever argued the US system is objective.
Breadcrumbs: If you simply Google Supreme Court + the case name you should be able to down-load a text of the decision. I have tried this and it works very simply. The reason why I no longer give full citations are because these cases are so simple to find online. Usually you get a short abstract, but near the heading there is a link to the full text.
Recent depends on you time scale – the cases I have studied go back to about 1820 and by 1949 technology is starting to get to a more modern state of development. Since Graham says the intention of 35 USC 103 was simply to codify previous judicial precedent, pre-1952 decisions still have much to teach us.
Paul,
Can you really include as recent a 1949 case that obviously predates the 1952 changes in Law?
For the other cases you list by name, do you have proper cites? I have a trip coming up and think those would make for good reading.
Thanks,
Arguably the most important decisions to include are those of the Supreme Court because these are the decisions of the highest authority.
Any discussion of Supreme Court Cases should include the Adams Battery case because that was the last case that came before the Supreme Court where obviousness was alleged and the objection of obviousness failed.
Other important Supreme Court decisions where objections of obviousness failed include Winans v Denmead and Wasburn & Moen v Beat ’em All Barbed Wire which might well be included because of their simplicity and accessibility to readers in all fields of technology, in addition to their instructive character.
Also of significance are Loom v Higgins and Carnegie Steel v Cambria, especially for the dictum on evidence of invention, and Expanded Metal v Bradford where the court said:
“It is suggested that Golding’s improvement, while a step forward, is nevertheless only such as a mechanic skilled in the art, with the previous inventions before him, would readily take; and that the invention is devoid of patentable novelty. It is often difficult to determine whether a given improvement is a mere mechanical advance, or the result of the exercise of the creative faculty amounting to a meritorious invention. The fact that the invention seems simple after it is made does not determine the question; if this were the rule, many of the most beneficial patents would be stricken down. It may be safely said that if those skilled in the mechanical arts are working in a given field, and have failed, after repeated efforts, to discover a certain new and useful improvement, that he who first makes the discovery has done more than make the obvious improvement which would suggest itself to a mechanic skilled in the art, and is entitled to protection as an inventor. There is nothing in the prior art that suggests the combined operation of the Golding patent in suit. It is perfectly well settled that a new combination of elements, old in themselves, but which produce a new and useful result, entitles the inventor to the protection of a patent.”
More recent instances are Goodyear Tire and Rubber v Ray-O-Vac and Graver Tank v Linde (1949).
There are other positive decisions of the Supreme Court, but I have not found others so instructive.
Lionel, I’m sorry you are sad. You suppose it to be self-evident why it is less than objective to allocate to a document the same power of disclosure, regardless whether that document is in view in the context of obviousness, enablement, Paris priority, or whatever. I simply don’t understand why that unbeatable degree of consistency (and legal simplicity) is anything other than objective. I had thought that reducing matters to the irreducible minimum of complexity was something to be welcomed (although, I concede, perhaps not by some lawyers thinking that their scope for billing hours ought not to fall to an irreducible minimum).
As to your system, please tell me what’s so objective about “It’s obvious because I say it’s no more than common sense and ordinary creativity”?
I’ll not reply to Big (even though I did much enjoy his tart riposte). First, he’s stopped reading. Second, it would only bore him.
Lionel,
+5 stars.
All legal systems are based on human beings making decisions.
Humans are emotional, irrational and inconsistent.
Therefore the results of the legal system end up being so.
Then again, I’m not sure I would happy with giving power to a dispassionate machine to decide my fate.
“Me, I prefer our substantive law in Europe, under which the question what is the disclosure content of a document is always the very same test, regardless whether that disclosure is being looked at, by the PHOSITA, from the point of view of novelty, obviousness, sufficiency, enablement, written description, domestic priority or Paris Convention priority.”
I find it a little sad that Max truly believes this is somehow more objective than our system.
“Don’t you ever get bored of reading this stuff, over and over again? I certainly do, writing it over and over again.”
There’s an obvious solution to either of those problems. I’ve already adopted a solution to the first one.
I am seeing comments regarding the “consistency” of examination at PTO. There are over 6000 patent examiners.
Thus:
1) Can you really expect every examiner to be a “machine” and apply patent law, rules and policy consistently?
2) Exactly how do you define “consistency” in the context of examining patent applications?
Comments:
As a patent examiner in the computer software arts, I don’t see much “consistency” in:
1) terminology;
2) level of quality; and
3) writing style,
for the patent applications that I examine. Therefore, all of you “patent attorneys” should dust off your tiny brains and put them to work whenever you get an “inconsistent” Office Action.
“The need for a result flowing from…” is not the same as what punches points out that you are doing mr. cole.
as someone corrected m, you may not be an academic, but you are pursuing something like an academic – wiht an agenda and with eyes so entrained that you are only seeing what you want to see and are completely missing substantive differences in legal environments.
the windmills are a thata way —>
Step, I sympathise. Your KSR test: not very objective, is it? I suppose SCOTUS didn’t do you the courtesy of defining “ordinary” or “common”?
Me, I prefer our substantive law in Europe, under which the question what is the disclosure content of a document is always the very same test, regardless whether that disclosure is being looked at, by the PHOSITA, from the point of view of novelty, obviousness, sufficiency, enablement, written description, domestic priority or Paris Convention priority.
Whatever happened to the maxim “KISS”? Does anybody at SCOTUS level quote that, these days?
Max;
In the USA, the definition of PHOSITA has been drastically changed by the KSR ruling.
PHOSITA is no longer an automaton. He is a “person” having “ordinary creativity” and “common sense”.
Body and Step, thanks for playing.
An EPO Examiner has to grant a patent as soon as the app complies with the EPC. Art 56 is the obviousness section. What is inventive is defined as “not obvious”. So, the Examiner’s task, if he wants to refuse, is to prove that the claim is obvious.
Not subjectively, to the named inventor, but objectively, for the PHOSITA.
The PHOSITA is an artificial construct. devoid of an inventive faculty, but knowing all that has been published.
Does the PHOSITA derive from one of those publications the technical feature combination claimed? If yes, the claim lacks novelty.
Having regard to the universe of publications, all known to the notional PHOSITA, was the claimed subject matter obvious to that PHOSITA on that date?
Now you tell me: what’s your objective obviousness bright line test?
And then tell me why the results actually delivered by the EPO’s deadly simple test over the last 30 years are systemically unfair, to the inventor or anybody else.
Don’t you ever get bored of reading this stuff, over and over again? I certainly do, writing it over and over again.
Punches and Step Back: The need for a result flowing from a claimed combination of features is supported by the decisions of the US Supreme Court in Hotchkiss, Loom, A & P, Graham, Adams Battery, Anderson’s Black Rock, Sakraida and KSR. I am content to rest my case on those authorities, with thanks for those who have contributed to this interesting discussion.
“I’ll say it again: THE U.S. HAS NO INVENTIVE STEP GUIDELINES.”
That is absolutely correct because USA law requires the invention to considered “in whole” and patentability cannot be negatived by manner of invention.
By contrast it appears that EPO law hypothicates the manner in which the invention was made by assuming without basis in fact that the inventor started at the “closest” prior art (usually one he/she had no awareness of) and then takes the additional step (inventive or not) to complete the invention.
Did we get that part right Max?
6–
Compliance with 101 cannot be assessed until a specification and oath are written, executed, submitted, and accepted. Obviously.
6: “We read the claims first. Or maybe the spec. Whichever suits your style. Doing claims first allows you to get a feel for a possible need to restrict faster.”
Exactly!
Paul: “The message which this posting hoped to develop is positive decisions which might be included in the inventive step guidelines…”
I’ll say it again: THE U.S. HAS NO INVENTIVE STEP GUIDELINES.
Obvious is NOT a necessary antonym of INVENTIVE, as MaxDrei or Wikipedia would have one believe. It is a question of usage, and to first state the assumption that they are antonyms, then mis-characterize the existing system as a positive rather than a negative one, and then substitute “inventive” for the fictitious “non-obvious” does not serve to prove that they are antonyms. It is merely tautology.
It does nothing to help the existing system–it is an argument to CHANGE the existing system. Yes, the system needs change, but NOT IN THE DIRECTION OF HARMONIZATION as suggested by Mr. Cole.
I practice in both the U.S. and in the E.U., and yes, the systems are different. Although that sometimes creates confusion, it is a reflection of the differing public policies in the different societies. Many have already expounded articulately on the dangers of harmonization in favo(u)r of a european model, I will not repeat their warnings.
What we first need is a genuine understanding by all parties involved of the nature of the system in which they operate, especially examiners. Examiners need to receive education, at public expense, on how the system operates, and what sources of law and regulation govern and control that system. If that amounts to a specific legal education, so be it–all the better.
If they are not armed with this sort of knowledge, they will not be able to successfully assimilate, interpret, and incorporate any information into their daily activities, let alone new information such as “positive decisions”. They have a hard enough time keeping up with the case law that changes things weekly, and in deciphering guidelines that are developed by their higher-ups at the PTO.
I feel for them–they get the shaft. They are sent to the front lines ill-equipped, and expected to perform to a high standard. Because they are insufficiently trained by the PTO and the public service, that is basically an impossible task–so, the institutional culture shifts to one of developing survival strategies, notably reject, reject, reject. Totally understandable, I would probably do the same thing in their position.
To give them the new concept of unobviousness and expect them to understand and apply it lawfully, when largely through no fault of their own they can’t even understand and apply lawfully the concept of obviousness, is to invite yet greater patent mayhem.
Why don’t you just say it Paul? Let’s scrap our obviousness paradigm and jurisprudence in favor of inventive step, and change the PTO and examination protocol to conform to that of the EPO.
I personally prefer the U.S. system, in theory, for many reasons. However, in practice, the EU system may be better in some ways for applicants.
Paul, why don’t you focus these efforts instead onto developing an enhanced understanding of, and guidelines for, secondary indicia of unobviousness, used to rebut a prima facie case? THAT is where your method and construction may have some validity and utility.
I’m puzzled by that last comment. I thought we had agreed that SCOTUS is using KSR to tell the community that it doesn’t want to set a rigid bright line rule on obviousness. So, as Paul Cole pleads, every Decision since the dawn of time is still potentially helpful, to reveal to rookie Examiners in the PTO what sort of thing can be seen as not proper for rejection under 35 USC 103. The EPO Guidelines uses examples from caselaw that goes back 100 years, even though the EPO has been operating only since 1978.
Paul–I very much admire and appreciate what you’re trying to do here. However, as far as cases finding nonobviousness, it’s only been about 2 1/2 years since KSR, and under the new KSR standard the majority of claims in litigation have failed. Also, most Board decisions are still non-precedential and in my experience Examiners disregard them (or say they are disregarding them), so are they really worth including? Maybe the list you already have is essentially complete.
I hope it is not too late to draw the attention of readers to the Message to Garcia point here. I am indebted to a friend of mine who is an ex-marine and patent attorney for drawing my attention to that excellent short publication, downloadable from the web.
The message which this posting hoped to develop is positive decisions which might be included in the inventive step guidelines, or if we broaden the scope suggestions for improvement of the guidelines.
However, like one of the characters in Garcia, although we have a message to deliver which in this instance we can create from our own collective experience and knowledge, we have been side-tracked into various saloons on the way, including general discussions of the law which while very interesting are not fully on point.
The onerous task which needs to be done is (a) to go through all recent CAFC and Board of Appeal decisions and especially those post-KSR to identify examples where the objection of obviousness did not succeed (b) to identify which of them would be good teaching examples to include in the potentially revised guidelines, and possibly (c) to do the same for the cases cited in the many KSR briefs which fortunately are accessible online through the Patently Obvious blog, and possibly other general past cases including, I submit, ALL cases which have ever reached the Supreme Court where inventive step has been considered including the many 19th and early 20th century cases. It would be an immense help to have a list of ALL the patent cases which have ever gone to the Supreme Court. Does anyone have such a list?
I suspect that the USPTO will be doing this investigation. But it is also worth doing by prosecution attorneys because inevitably prosecution attorneys and USPTO examiners have different experiences, viewpoints and concerns. Some of the large US law firms undoubtedly have the resources to do the necessary work and to offer comments to the USPTO. But Patently Obvious has a very large readership and collectively great knowledge of US law.
This posting has found some possibly useful cases, but so far not very many. Can we do better?
Body Punches:
I have no problem with a formulation of examples where on the one hand an objection of lack of inventive step succeeded and on the other hand the objection did not succeed. If such a formulation is adopted in the new guidelines they will be better balanced, and that is an advantage.
On the issue of onus, there is a question whether there is an objection of lack of inventive step on the face of the document. If we take Justice Bradley’s observation in Loom v Higgins, if claim 1 defines a set of features and there is no express or implicit indication from the specification itself that those features in combination produce a new and beneficial result (or an old result better or faster, etc) then on the face of the application as filed there is no evidence of invention. Not necessarily fatal, but the applicant has, and deserves to have, an uphill battle. The cases which anger judges are those where there is on the face of the document no indication of inventive step, see the judicial rant by Judge Douglas in the A & P case and the very hostile line of questioning in Bilski.
Sorry, Tazis, but it has been in the law since at least 1803 (yours and ours) that a new and beneficial result is an indicator of patentability. It has been known to look for it since that time. If the inventors of the Hotchkiss v Greenwood door knob had troubled to say why it was difficult to make a dovetail fixing in a knob in a knob of ceramic material, and what they had done to overcome the difficulty, their arguments might have carried conviction and the split decision of the Supreme Court might have gone otherwise. But their specification was very brief and gave no indication of these difficulties.
If you are looking at legal results, you cannot just concentrate on the judicial dicta. They are relevant in the fact pattern of the case that was before the court. If you look at, for example, the inventions in Graham, Anderson’s Black Rock and Sakraida, you find that the alleged inventions in issue were self-evidetly of no merit. In Graham the patentee’s own expert said that the alleged invention made no difference to the working of the device. In Sakraida the issued patent was utterly silent as to the significance of the famous wall of water which “astute trial lawyers” spent so much effort arguing was inventive. By way of contrast in the Adams Battery case there was evidence of new result from the outset, the Supreme Court approved the patent and in KSR the judges spoke of the Adams Battery decision in approving terms. Good legal writing, in my submission, should not be entirely abstract but should take account of the fact patterns underlying decisions because courts make decisions by applying the law to the facts.
Punches, help me will you. I still don’t get it.
In Europe, everybody is entitled to a patent unless the EPO can find a reason to refuse the application. That’s our system. Just like yours then, isn’t it?
Those reasons are set out in our Articles 52 (your 101) 54 (your 102) 56 (your 103) and 83, 84 (your 112).
Art 56 says that what’s obvious isn’t patentable. Thus, the Exr who cites 56 has to make out a case that the claim embraces something that was obvious. Until that happens you don’t have a 103 problem in Europe.
Now, what’s the best way of relying to the charge “Obvious, because dah dah dah”.
Some people in Europe try the approach “Wrong. Inventive, and here’s why”. They do that because it’s often effective.
Perhaps you want a debate about how evidence is handled in a civil law jurisdiction, as opposed to how it’s handled in a common law jurisdiction? That would be moderately interesting, I think, but it will do nothing to displace the reality, that both the EPO and the USPTO are to issue patents to all who apply, with the burden on them to come up with a case, if they want to refuse the app.
Inventive and obvious are antonyms, as in Wikipedia. Nothing more to it than that. Anybody who thinks otherwise is deluding themselves, and needs to get over it. Now who’s adversarial?
“what would be his/her starting point for analysis? In the existing system, they know exactly what they are to do, and how to begin to go about doing it.”
We read the claims first. Or maybe the spec. Whichever suits your style. Doing claims first allows you to get a feel for a possible need to restrict faster.
/body punch
“In the US patent examination paradigm, the public policy of promoting the progress is expressed through the default position that everyone shall be entitled to a patent unless”
There is a reason that 101 precedes 102. Sorry.
You’re right though, someone does have to get the ball rolling. The applicant does by submitting a claim within the 4 statutory categories for examination. If he does not, he fails at the threshold.
Sorry.
This is all very old law, nothing “new” need be added.
Follow the analysis in In re Nuijten for guidance.
Paul–
With all due respect, I find it difficult to believe that you cannot apprehend the difference between examining for lack of patentability versus examining for patentability, and the significance of this distinction.
What you are arguing for amounts to a new examination paradigm, not just the addition of caselaw to assist examiners in their current task.
Look at it this way: in U.S. adversarial legal proceedings, the starting point for any inquiry requires a burden to be placed onto a particular party–i.e. one party has to do something affirmative in order to get the ball rolling. That burden comes with an associated standard of proof which, if met, serves to shift the burden to the opposing party.
This is a very effective way to order activities and relations among and between the parties and the adjudicator. In particular, it allows public policy to be effected by choice of which party bears the initial burden, and how high that burden is. Public policy is reflected in the basic rights and, especially, duties, that exist in these relationships.
Although the submission and examination of a patent application are not necessarily adversarial procedures, they nevertheless must conform to specific laws, rules, and regulations, both substantive and procedural.
The mandatory observance of, compliance with, and adherence to those laws, rules, and regulations imposes duties on the actors in the system–applicants, attorneys, examiners, etc., and it is because of those duties that the system is practically ordered according to burdens, in much the same way as adversarial legal relationships with their equivalent duties.
Being a government action, those laws, rules, and regulations can be any of at least contract, equity, patent-specific, administrative, and constitutional, and apply to both the applicant and to the patent office and its staff.
In the US patent examination paradigm, the public policy of promoting the progress is expressed through the default position that everyone shall be entitled to a patent unless….
Other policies are expressed through the initial requirement for an applicant to submit a complete application and oath/declaration.
Initial burden: applicant to submit a complete application & declaration/oath. Once that is done to the appropriate standard, applicant is entitled to a patent unless…
Burden then switches to PTO. But to do what? To examine the application. Examine for what? NOT for patentability or allowability, because applicant is already entitled to a patent. Burden is to examine for LACK of patentability or LACK of allowability.
The PTO, and the examiner, therefore knows exactly where they stand, and exactly what their duty is. To positively examine for patentability or allowability is a non-sequitur, and would tread upon the rights of the applicant as granted by 35 USC. THAT is why examining FOR patentability could be reasonably construed as SUBSTANTIVE.
Not to mention the practical utility of the burden system. If an examiner was just looking at an application and thinking about it, both positively and negatively, what would be his/her starting point for analysis? In the existing system, they know exactly what they are to do, and how to begin to go about doing it.
Double negatives may be unsavory in ordinary usage, as you have indicated–but THIS IS NOT ORDINARY USAGE. It is a highly specific usage that requires the basic concept to be framed in the negative for the reasons already mentioned.
And finally, I don’t know why you’re importing “inventive step” into US patent law. You seem to be conflating the european “inventive step” with US “unobviousness”, as misleadingly suggested possible by Wikipedia.
Again, THERE IS NO SUCH POSITIVE CONCEPT IN US PATENT LAW AS UNOBVIOUSNESS. There is only a lack of obviousness.
THERE IS NO FRAMEWORK FOR ANALYSIS OF UNOBVIOUSNESS. THIS IS NOT THE EUROPEAN SYSTEM, although I do not at all disparage that system.
Once again, I do not dispute the utility of providing examiners with any and all material that will allow them to successfully perform their duties, but you argue for more than that. Even if you develop a list of decisions and successfully have it considered by the PTO, that list will be incorporated into the manuals in the way I have described, not in the way you hope.
Unless the PTO wants another procedural/substantive mess on its hands.
Good luck.
“its not an undisputed point because i disputed it.”
You didn’t make any worthwhile dispute ya dumas. You’ll need to come up with something that makes sense first.
I have to tell lawyers this all the time, day in day out. It costs them a few grand to respond. Seriously, they could save themselves easily a hundred thousand dollars a year by posting a post-it on their wall that says:
Hey dumas, you have to come up with something that makes sense in order to properly argue (traverse) a point. Don’t send in anything that doesn’t make sense.
*******They could have at least done the respectable thing and made the response blank, even though that would make the amendment non-responsive. But instead they preferred to pollute the intellectual world with their drivel! *********
Why not just send a Notice of Non-Compliant Amendment on the grounds that the amendment is non-responsive because the Applicant has not made an earnest attempt to overcome the rejections?
*******That’s like saying sausage quality really means sausage grinder machine quality.*********
But the invention is the sausage. Patent practitioners and Examiners are both but cogs in the sausage machine.
Hey, everyone, I see that at today’s PTO-BCP meeting, the (seriously) delightful and informative Jean Witz is scheduled to discuss updates to KSR case law from 12:15 to 1. Link to the webcast is available at link to cabic.com, although sometimes preregistration is required–but it might work anyway. Unfortunately I have to miss it, but I will definitely look at the slides if I can.
its not an undisputed point because i disputed it.
you are as dense as some of the other posters here say. you have no room to call anyone else “intellectually poor”.
as far as the imperfect and some portion of input dictating the portion of output – we know that. we complain about that. this is also because you – the royal you as an examiner – are not doing your job. examining means both allowing and rejecting as appropriate. stop your whining and simply do your job. examine the meat. grade the meat. and i am definitely not insinuating as you say what could and should happen. quite the opposite. i am part of the group demanding that you do the job you are paid to do and examine.stop whining and serve.
if you dont think that you are in a service industry, what industry do you think that you are in?
“its a matter of what the office controls and the policy of not shutting out joe schmoe who may unfortunately know only how to write your so called game application.”
If he was pro se then I’d cut him slack. If it was an agent I’d cut him slack. Since it is an attorney who is probably prosecuting outside his field, far outside his field, I’m rather offended. And I was being rather theatrical above.
“the office is a service industry. ”
Maybe in your dreams.
“the office is supposed to invite as wide as possible a net of people and their submissions -look to the mission about promoting.”
Again, this application is not from someone who is simply too stu pid or ignorant to know how to draft a proper claim.
“i aint buying.”
I know, you’re too intellectually poor to afford it.
“grade D meat is easy to handle.”
It might be easy to “handle”, but if you can never THROW GRADE D MEAT AWAY then it will eventually contaminate/fill up the factory unless you let it out in the output. That is precisely the problem, and it as the problem that the new rules were intended to curb.
“no one is asking you to make grade A sausage out of grade D meat. “”
No, but that’s exactly what you’re insinuating could, and should, be done, by insinuating that only grade A meat should be produced. Perhaps in a perfect world my friend, perhaps in a perfect world. Here on this planet the process is imperfect, so some portion of the input necessarily dictates some portion of the output. So sorry to break that news to you.
“if grade A meat is there with grade D meat, you dont get to be lazt and lable the whole pile grad D.”
Nobody ever said that you do… What they (I?) said said was that patent quality stems both from the examination quality and the application quality. And that’s still the point, an undisputed point at this particular juncture.
its a matter of what the office controls and the policy of not shutting out joe schmoe who may unfortunately know only how to write your so called game application.
the office is a service industry. i know you have been lectured about service – i wont bother since you obviously dont or ever will get it. i doubt even some military time would do you any good.
the office is supposed to invite as wide as possible a net of people and their submissions -look to the mission about promoting.
what the office can and should control is the examination quality. i hear your whining. i really do. but thats not really the point here. the point is crap rejections based on key word searches of the claims often made without even reading the specifications and submitted reference materials. the crap applications are easy for examiners to handle. dont give me crap about how hard they are to handle or how they bog the system. i aint buying.
grade D meat is easy to handle. no one is asking you to make grade A sausage out of grade D meat. we are demanding that you do not make grade D sausage out of grade A, B or even C meat. if grade A meat is there with grade D meat, you dont get to be lazt and lable the whole pile grad D. perhaps if you stopped whining long enough to listen, you would get the point.
“patent quality really means patent examination quality.”
That’s like saying sausage quality really means sausage grinder machine quality. You can’t put grade D sausage meat into the best grinder in the world and come out with grade A sausage.
Sorry, your statement is about as true as the above analogous statement.
What is actually true is that patent quality equal patent examination and patent submission quality.
“6 – tell me about games when examiners are only interested in their self-preserving games.”
Ok, let me tell you about a very recent game I discovered. I recently found an application (which is in the public domain btw and you can see the pros. history on pair) where the applicant went from a halfway decent manufacturing method to nothing but an abstract pile of nonsense (literally, I’m not just yanking your chain) in the most recent amendment.
Not only did the applicant have the audacity (foolhardiness?) to submit such a claim for review by myself, but they also went so far as to argue for the patentability of such a claim! Outrageous! Can you imagine? Have they no decency? They could have at least done the respectable thing and made the response blank, even though that would make the amendment non-responsive. But instead they preferred to pollute the intellectual world with their drivel! There should be laws against such outrageous disregard for the published word! We have litter laws and we have laws against certain types of defamation and yet congress has been silent on the matter of such blatantly harmful activities? Such a thing is offensive to the very core of my person! I AM BESIDE MYSELF!!!!!!1!!!
The above situation details applicants playing a game sir. And I’m telling you about it right now regardless of whether or not examiners are only interested in their self-preserving games.
“Anyway neither of you put forward in your last posting an instructive positive decision which is what this is about.”
im pretty sure that punches nailed it as to what this is about.
not much interest in playing your game until you come clean with what your game really is.
speaking about games – looks like the resident buffoons are picking on mr parker. 6 – tell me about games when examiners are only interested in their self-preserving games. patent quality really means patent examination quality. the junk you like to preach about are the easiest things to reject, yet the whining is nonstop. good thing mr. banner hasnt posted. you wouldnt want to make him angry.
“was forsaken by those who consider the patent world “gobblygook”.”
Perhaps had you and your comrades not labored for so long to attempt to make it gobbeldygook then you wouldn’t have had it forsaken.
Everytime you write another bad application, or worse, assert one in court, you’re kicking your whole profession, and the system as a whole, in the arse.
Everytime you let one of your buddies (or associates if you are a partner) write a bad application, or assert one in court, you’re kicking your whole profession, and the system as a whole, in the arse.
In short, you and your fellows treating the system as a game is coming back to haunt you. Cry me a river. Hope to je sus you don’t get bitten by congress. I’ll hope that your ridiculousness doesn’t come back to haunt me when I’m in your shoes.
It is too bad that the Supremes are more interesting in winning a p_ssing match over who sets the Judicial Patent course (them or the CAFC), and less interested in living up to the great responsibility that comes with winning the p_ssing match.
Meet Peter Parker, a young man who was unfortunately bitten by a radioactive junk patent.
My uncle always told me “With great power comes great responsibility”.
When KSR was decided by the Supreme Court, the great responsibility for articulating a clear path was forsaken by those who consider the patent world “gobblygook”.
It is too bad that the Supremes are more interesting in winning a p_ssing match over who sets the Judicial Patent course (them or the CAFC), and less interested in living up to the great responsibility that comes with winning the p_ssing match.
I haven’t seen anyone mention from MPEP 2144.04:
“Note that the omission of an element and retention of its function is an indicia of unobviousness. In re Edge, 359 F.2d 896, 149 USPQ 556 (CCPA 1966).”
Not that the fact pattern comes up often.
Hindsight,
Paul Cole isn’t simply an “academic.” He’s a “real life” UK and European patent attorney and partner in the firm of Lucas & Co. He also happens to be a “visiting professor of IP law.” Believe me, I’m sensitive about what academics say, but Paul isn’t one.
******Broje 11.28 am. I think you have to distinguish between the ratio decidendi, the decision reached on the particular facts, and the obiter dicta. I have read the KSR decision a number of times, and in my view it was intended to be deeply conservative, coming from judges not involved in IP on a day to day basis and manifestly not intending to do more than institute a little flexibility and common sense into an approach that they considered have become over-rigid.*********
Well, the holding of KSR is two-fold: (1) that teaching, suggestion, or motivation to combine the teachings of the references is no longer a separate requirement that an Examiner must meet to sustaint he rejection; and (2) that the Exmianer can look to the applicant’s specification to find the teaching, suggestion, or motivation to combine the teachings of the references.
However, in writing up the various categories in the MPEP, the USPTO summarized the TSM category utilizing langauge that is at least imprecise and has led Exmainers to misconstrue the requirement. If you look at the category G, and read it, and then go though the KSR decision, you will see the problem very clearly. The USPTO has said that the Exmainer only needs to express some suggestion or motivation to modify a reference to arrive at the claimed invention. But suggestion or motivation always went to suggestion or motivation to combine teachings of references. It is quite clear form the discussion in KSR that the requirement to identify a teaching of each of the claimed elements in the prior art is still present, and must be completed in order to turn to suggestion or motivation to combine those teachings to arrive at the claimed invention.
If however, the the Examiner cannot find one fo the claim limitations in the art, then the Exmianer can turn to one of the other categories, such as a known option within a finite range of known options, as in the case of which location to connect one thing, such as a sensor, to another, such as a stationary pivot point of a brake assembly.
But what I see happening, time and again, is that Examiners read option G and think all they have to do is express a motivation to modify the teachings of a reference to arrive at the claimed invention, without having to find all of the claim limitations in the prior art. It looks like a get out of work early free card, and they play it at every peceived opportunity. The PTO needs to change the MPEP to fix this problem.
Punches and Hindsight: Please advise the difference between finding (a) that claimed subject matter has not been shown to lack inventive step having regard to disclosures X and Y and the evidence and arguments before the court and (b) that on the evidence and arguments before the court it has inventive step over references X and Y. Neither finding creates res judicata barring a different party from challenging the same claim with the same citations and on different evidence and/or arguments.
Judges exercise understandable caution in the decisions that they give and the language that they use. But double negatives are duckspeak, and should be avoided in ordinary usage. A distinguished English judge of a literary rather than scientific background once defined the infringement test with a quadruple negative (an extraordinary effort of circumlocution in and of itself), and the resulting language took decades of judicial interpretation to achieve clarification.
I do not submit that my amended claim is not lacking in inventive step novelty or inventive step. I submit that amended claim overcomes the previous objections, and that its subject matter is clearly novel and inventive. Sometimes the examiners (in the EPO they hunt in packs of three) agree with me and grant my client a patent.
Anyway neither of you put forward in your last posting an instructive positive decision which is what this is about.
I’m with broje – saying that unless there are unexpected results it isn’t an invention seems wrong. This is akin to a form of hindsight: “now that I have seen your invention, it seems obvious to me – because I now know how to do it.”
Just because once you see how the invention is put together, you know what it will do doesn’t mean it is obvious.
inviting body punches
what else do you expect from an academic?
Paul–
Nice try.
YOU ARE NOT IMPRECISE, YOU ARE INCORRECT.
As already explained, there is a substantive difference between the two.
PUNCHES: I don’t have any problem with the overturned rejection language, and have used the positive language of held valid rather than the negative language of not held invalid because I find double negatives less pleasing. If that has created lack of precision I can only say mea culpa.
MALCOLM: I was agreeing with that analysis and simply pointing out that there was UK case law pointing in the same direction and dating from 1909. It has been cited in some of the computer program and business method decisions considered in the UK.
ANY MORE CASES THAT MIGHT BE INCLUDED?
Paul Malcolm Mooney 01:50 p.m. In UK law it has ben an objection since at least 1909 that a patent covers all ways of automating a known operation, see British United Shoe v Simon Collier (1909) 26 RPC 21 at 49 and 51.
I have no idea what this is supposed to mean.
Sorry, potentially unlawful.
Paul: ” If you have examiners who are fairly new to the job and exposed to possible reprimand if they make a wrong decision about allowance that is not an institutional set up where the right incentives are in place.”
How exactly is this addressed by your proposal?
Paul, your analogy of a patent examiner to a journal referee is flawed for obvious reasons, which is probably why you have not developed that analogy in any helpful fashion. You make the initial analogy, but have not indicated in any way how it could inform our understanding of the examiner and his/her environment.
FURTHER, AN ANALOGY IS TOTALLY UNNECESSARY.
Let’s stick to the point, the examiner and the institution, about both of which plenty of information is available.
I have already agreed with you that an examiner’s job could be, and is, assisted by having a wide variety of decisions provided as examples–but you still don’t seem to grasp my basic point, and its implications. Again:
Paul: “…patents which have been held valid by the courts…”
Patents are NOT HELD VALID by the courts. A court can determine that a rejection was wrongful, and thus that a patent cannot be deemed invalid on the basis of that wrongful rejection.
You mischaracterize the entire exercise, and in effect are arguing for a huge expansion in the scope of examiner activity and authority, which is both unwieldy and probably unconstitutional.
Unwieldy–you would be asking an examiner to not only know and understand the negative side of the coin, but the positive side also. Which framework is then preferred for analysis? What is the starting point?
Unconstitutional–they have no business assessing what is patentable, only that which is NOT patentable. That is why 35USC is framed in the negative–shall be entitled to a patent unless.
With comments like this: “… an examiner’s job is to decide whether an invention meets the unobviousness standard or not…”, you reveal the full depth of your misunderstanding. You are mistaking your preferred outcome for fact.
Although it appears that you would like there to be, there is no unobviousness standard. I’m going to assume that you’re not so dense as to actually misunderstand all of this, so will you please clarify for us the purpose of your inquiry?
And again, providing to examiners cases of overturned rejections can be helpful, but it must be done correctly. I believe that to do it within your paradigm would be incorrect, unhelpful, counter-productive, and unlawful.
Paul,
Add Atofina v. Great Lakes Chemical (Fed. Cir. 2006). While this is an anticipation case under 35 USC 102, it explains when art disclosing a range which encompasses the claimed range does not disclose the claimed range
Another case to add is Fresenius USA v. Baxter International (Fed. Cir. 2009) which explains why certain patent claims were obvious while other patent claims weren’t. Also, makes clear that the TSM test is still alive and well after KSR International
The Sullivan, Takeda, P&G and Eisai cases are definitely important to obviousness jurisprudence since KSR International.
Hope this all is helpful.
Paul Cole: “So what we should be looking at closely is early training and the incentives and pressures to which examiners are exposed.”
Paul, you will find very close to 100% agreement with that sentiment on this blog. But you don’t seem to see that the sentiment undermines your initial premise.
You can put counterexamples of obviousness decisions in front of examiners until the cows come home and it will have no effect.
Examiners are like everyone else, they are motivated mostly by a desire to keep their job and make as much money as possible, which means promotion. As long as the “stick” part of the “carrot and stick” equation is directed only at erroneous allowances, examiners are going to bend over backwards to reject, reject, reject. (My suspicion is this lop-sided sanctions for errant allowances only situation is the brain-child more of the examiner’s union than management.)
But this nonsense suits all levels of the PTO just fine because rejections generate more money due to RCEs, continuations, and petitions than does a quick Quayle properly entered on a first office action.
As long as the deck is stacked against allowance, your well intentioned and entirely reasonable plan will be about as effective as an en banc Newman dissent.
MaxDrei,
Jurisdictional differences exist – don’t be daft.
Step back – you are right. In a disaster attention always focuses on the whistle-blowers, although the significance of what they were saying seemed far less significant in foresight. The same sort of thing can happen in inventive step determination – the act of selecting references for consideration creates its own distortion.
ANY MORE DECISIONS, PLEASE!
Paul,
I think your quote out of the Challenger episode begins a recognition of something but does not fully flesh it out.
The phrase, “structured problem” obfuscates rather than elucidates some underlying details. Can you provide a more in depth analysis of what you are getting at?
Example: At the time *before* the Challenger explosion, highly skilled artisans in the NASA organization (PHOSITAs) had their attentions focused on other things (on other attention grabbers) and did not recognize or connect the dots of the O-ring problem so as to make those dots the important ones deserving of more attention (more focus) and did not recognize the consequences of not dealing with all the dots in a more methodical way.
Is that sort of it?
Thanks
I have for several years wanted to bring the Diane Vaughan quote to the attention of the IP community, and this seems a good opportunity. It is a bit long, and I apologize in advance. Nobody who read or saw the news on 28 January 1986 will ever forget the exploding Challenger shuttle and the grief that followed. We will also remember the O-ring seals in the booster rockets and Richard Feynman’s experiment on prime time TV Here is what Ms Vaughn said:
“Turner in Man-Made Disasters notes the tendency for a problem that was ill-structured in an organization to become a well-structured problem after a disaster, as people look back and reinterpret information ignored or minimized at the time, that afterward takes on new significance as signals of danger. After the Challenger incident, the SRB joint problem became a well-structured problem as the tragedy made salient and selectively focused attention on the NASA decisions that seemed to lead inexorably to it. The information then was strung together in posttradgedy accounts that presented a coherent set of signals of potential danger that was not characteristic of the situation as it existed for NASA and Thoikol managers and engineeers in the work group prior to the tragedy. Furthermore, even the most detailed of these postdisaster accounts extracted actions form their historical and organizational context in a stream of actions, the sequence of events and structures of which they were a part. Robbed of the social and cultural context that gave them meaning, many became hard to understand, controversial and some cases incriminating. The result was a systematic distortion of history that obscured the meaning of events and actions as it existed and changed for the participants in the ituation at the time the events and actions occurred.
None of this was intentional. Each account reconstructed the Challenger accident or some aspect of it to inform others. Each analyst was faced with overwhelming detail about technical issues, NASA organizational structure and procedures, and organizational and human history. Each published account had to be abbreviated because, first and obviously the full account could never be known. Second limits on the time available to gather, understand and absorb information, on the time and space available in which to tell the story, and on the audience’s ability to wade through the details made it imperative that each analyst shorten and simplify. So facts were presented, individual actions were described, but of necessity excised from the stream of actions that gave them their essential meaning…
Another important distortion resulted from the selection of witnesses to testify…”
It should never be forgotten that after an invention has been made a previous ill-structured problem becomes well structured, that the signals derived by skilled people from publications found after a search may be different from the signals given by those publications in the course of on-going scientific research and the same distortion can often occur.
Noise, whatever are you driving at? Does the Nature of the Law (in the context of a thread on obviousness) “change tremendously” on the flight from Logan to Heathrow? Or are you perhaps under the misapprehension that the tremendous change occurs on the short ongoing leg of the journey, from London to Munich?
Paul,
The nature of the Law does in fact change tremendously.
This is just to respond to the debate thus far:
Cases found:
Sanofi v Apotex
In re Gordon (already in MPEP)
In re Ratti (already in MPEP)
In re Sullivan
Procter & Gamble v. Teva Pharms.
Eisai v. Dr. Reddy
Takeda v. Alphapharm
Ex parte HO- JEONG MOON and KYU-JIN LEE
Ex Parte Whalen (several votes)
Ex parte Williams, Appeal 2009-000497
Ex parte Tian, Appeal 2007-3374
Comments:
Malcolm Mooney 01:50 p.m. In UK law it has ben an objection since at least 1909 that a patent covers all ways of automating a known operation, see British United Shoe v Simon Collier (1909) 26 RPC 21 at 49 and 51.
T. Anagnos 11.40 p.m. I have used the argument that combining references would make the primary reference unsatisfactory for its intended purpose or would change its principle of operation, but infrequently.
EG: 10.23 a.m. Please e-mail me Federalist Paper No 43 or a link to it. I am well aware that Jefferson could not attend the Constitutional Convention because he was in Paris. I am not suggesting that his views should be given “omnipotent” weight, just concerned to find what his true views were. On the whole, they seem to have been reasonable and in accordance with subsequent practice. And the link to the unjustly forgotten inventor Oliver Evans is fascinating.
Broje 11.28 am. I think you have to distinguish between the ratio decidendi, the decision reached on the particular facts, and the obiter dicta. I have read the KSR decision a number of times, and in my view it was intended to be deeply conservative, coming from judges not involved in IP on a day to day basis and manifestly not intending to do more than institute a little flexibility and common sense into an approach that they considered have become over-rigid. In Europe we tend to prefer technical analysis based on the most promising starting point prior art and to give little weight to circumstantial evidence. In Graham, if you read the decision closely, you will find that although the Supremes said you could take circumstantial evidence into account, they decided the case on the basis of the direct technical evidence. To say that circumstantial evidence is admissible is not the same as saying it should be given much weight (though in an evenly balanced case it may be decisive). So the US and Europe are not really so far apart.
Babel Boy and Body Punches, about 11.30 a.m: If examiners are going wrong (and as a non-US citizen I would be hesitant to express any view) it is best to look at the institution rather than the individuals. There is a book by Diane Vaughan on The Challenger Launch Decision where she makes that point (at great length). So what we should be looking at closely is early training and the incentives and pressures to which examiners are exposed. The individuals are much like prosecution attorneys or litigators – on the whole decent people trying to do a difficult job to the best of their ability. If you have examiners who are fairly new to the job and exposed to possible reprimand if they make a wrong decision about allowance that is not an institutional set up where the right incentives are in place. Incidentally if you look at the Vaughan book at pages 69 and 70 you will find the best description I have ever seen of the dangers of hindsight.
Body Punches 12.33: I do not see the examiner’s job in quite the way that you do. In the broader scientific community, peer reviewed papers go to referees who do (or ought to do) much the same job as a patent examiner. Because of the legal implications, the referees for patents are government employees on a full time salary. But an examiner’s job is to decide whether an invention meets the unobviousness standard or not, in the same way that a referee has to decide whether a paper makes an original contribution or not. His or her task is assisted by having examples both of patents which have been held valid by the courts and patents which have been held invalid. And I am not trying to change the job or examiner personality, merely improve the balance of the instructional material.
Broje 01:01 The very first decision of the EPO Appeal Boards was an affirmation of selection patents. And you would find the EPO Enlarged Appeal Board decision in Mobil Oil an instructive read.
Noise above the law 01.18 pm Yes we have different legal systems. But mostly the fundamental nature of an invention and its relationship to the prior art does not change much when you fly from San Francisco to Munich or Tokyo.
broj, if one of your clients reads your post are you not their lawyer?
*****Hmmm. Examples?*******
See MPEP 2131.03 Anticipation of Ranges [R-6] – 2100 Patentability and MPEP 2144.05 Obviousness of Ranges [R-5] – 2100 Patentability
Some relevant excerpts:
If the claims are directed to a narrow range, and the reference teaches a broad range, depending on the other facts of the case, it may be reasonable to conclude that the narrow range is not disclosed with “sufficient specificity” to constitute an anticipation of the claims. See, e.g., Atofina v. Great Lakes Chem. Corp, 441 F.3d 991, 999, 78 USPQ2d 1417, 1423 (Fed. Cir. 2006) wherein the court held that a reference temperature range of 100-500 degrees C did not describe the claimed range of 330-450 degrees C with sufficient specificity to be anticipatory.
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (The prior art taught carbon monoxide concentrations of “about 1-5%” while the claim was limited to “more than 5%.” The court held that “about 1-5%” allowed for concentrations slightly above 5% thus the ranges overlapped.); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) (Claim reciting thickness of a protective layer as falling within a range of “50 to 100 Angstroms” considered prima facie obvious in view of prior art reference teaching that “for suitable protection, the thickness of the protective layer should be not less than about 10 nm [i.e., 100 Angstroms].” The court stated that “by stating that ‘suitable protection’ is provided if the protective layer is ‘about’ 100 Angstroms thick, [the prior art reference] directly teaches the use of a thickness within [applicant’s] claimed range.”).
Applicants can rebut a prima facie case of obviousness based on overlapping ranges by showing the criticality of the claimed range. “The law is replete with cases in which the difference between the claimed invention and the prior art is some range or other variable within the claims. . . . In such a situation, the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range.” In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP § 716.02 – § 716.02(g) for a discussion of criticality and unexpected results.
“If an examiner is correct and has done their work, no amount of an applicant’s entreaties will bring any type of pressure to bear.”
Except for the whole “you only get 1.5 counts for 2nd+ RCE’s now har har har!!!!!”
“wearing down the examiner” will explode. Just file your 2nd RCE, make the claims as convoluted as possible, substantially change them every amendment to read on a vastly different boundary than you did in the previous amendments, and you’re all set. Mark my words.
I was worn down just the other week. I just don’t care, let em have something semi-reasonable and put the case to bed. The appeals PROCESS is such a nightmare of delays and other bs I cannot afford the workflow etc. to deal with it. That said, I just sent up several more cases to the board.
“As I have elected NOT to participate in MaxDrei’s strawman competition, BigGuy – you are not qualified to judge me.”
That’s something of a non sequitur, Noise, but I gave you an incomplete precisely because you didn’t try to answer the question. Relax – it’s not going on your transcript.
Two non-precedential cases:
Ex parte Williams, Appeal 2009-000497: reversed on obviousness. Catheter positioning system. Appellants demonstrated that the Examiner erred in concluding that the combination of Walker, Whalen, and Killion teaches or suggests another sealing element capable of sealing engagement with the vascular catheter as required by independent claim 1. The Examiner only asserts, but has not explained or provided evidence…
Ex parte Tian, Appeal 2007-3374: reversed on obviousness. Surface coverings, such as floor coverings and wallpaper, “having difference in gloss in selected regions or zones . . . ” The Examiner failed to identify a reason that would have prompted one of ordinary skill in the art to employ a flatting agent in an inner ink layer underneath of a photo-curable top coat having desired differential gloss within the meaning of 35 U.S.C. § 103(a).
I was also going to raise ex parte Whalen, but was beaten to it. While Whalen provides a nice example of the BPAI reversing an examiner on 103, it is a composition of matter case, not a mechanical/electrical case. Nor did the Examiner use one of the rationales provided by KSR and enumerated in MPEP 2143. I like this case more for its determination on double patenting, and secondarily for revalidating that a variable must still be first recognized in the art as results-affective before an Examiner can allege routine optimization.
The new function or result is not really an advancement in the analysis, because that is the key to obtaining claims directed to indicia. They courts could easily borrow from indicia case law and apply the test there as being suitable for argument in support of patentability in non-indicia case. The problem, however, is that KSR may have wiped-out indica case law, because functionality is very closely tied to overcoming a problem known in the prior art by discovering its source (In re Sponnoble) or my recognizing a problem not previously recognized (In re Nomiya).
As I have elected NOT to participate in MaxDrei’s strawman competition, BigGuy – you are not qualified to judge me.
It’s like answering one of Malcolm’s poorly constructed piles of crap – why would anyone willingly walk into such?
Broje–
“Nevertheless, my understanding is that people have been able to get claims allowed that recite a narrow range of values within a known range of values, purely because of “criticality” of those values and their ability to produce results an order of magnitude greater than other values in the known range.”
Hmmm. Examples?
“… readers can give us points out of ten using the rule set out at the top of the exam papers you have to pass if you want to be a Chartered Patent Attorney.”
You get a 4, Max.
The middle prong of your argument – “Which was fine back in the days when every Applicant was a domestic, and every infringer Johnny Foreigner. A Laissez Faire “allow, allow, allow” policy (somebody here calls it a “lazy Examiner” regime)could develop easily.” – is speculative, and most likely incorrect.
Noise gets an incomplete.
Another Fan,
Thanks for citing to Ex parte Whalen, which makes clear that rejection for obviousness needs to be based on facts, not examiner speculation.
Paul: Whalen is good case for the MPEP on what is unobvious.
Ex Parte Whalen, Appeal 2007-4423, page 9 et seq. (link to uspto.gov). BPAI reversed obviousness rejections for composition embolizing an aneurysm.
“While “the discovery of an optimum value of a variable in a known process is normally obvious,” In re Antonie, 559 F.2d 618, 620 (CCPA 1977), this is not always the case. One exception to the rule is where the parameter optimized was not recognized in the prior art as one that would affect the results. Id.”
It seems to me one could have asked a law clerk to go through all of the BPAI precedential or informative opinions, identify those which reverse the examiner on obviousness, and thumbnail the technology for further review as to whether they would be helpful to the examiners. (I wouldn’t bother doing it now because I just went through them in the last hour. I posted the two I found.) I would get said hypothetical clerk to now go through the non-precedential BPAI opinions for newer cases and see what that gets us. (link to des.uspto.gov)
“allow the application being prosecuted. It’s called “wearing down” the Examiner, isn’t it?”
No. Such. Thing.
If an examiner is correct and has done their work, no amount of an applicant’s entreaties will bring any type of pressure to bear.
Stop drinking the Kool-aid MaxDrei. You get points deducted for such.
Also – you need to review my posts on reject-reject-reject and allow-alow-allow. You should be informed that I think BOTH are equally incorrect. You can give such strawmen back to Malcolm.
Finally, a refresher warning – stop conflating Europe practice with U.S. practice. In your ever-vigilant quest you need to be reminded ocasionally that the two are different for some fnudamental reasons, and your constant clarion calls only serve to raise a shield of persistent ignorance (pleas give that back to Malcolm as well – you are smarter than that).
Mooney–
I agree that the “long-felt need” test should incorporate a “failure of others” requirement, and should be specific.
However, I do not believe that the “failure of others” test should necessarily incorporate a “long-felt need” requirement.
I do believe that the “failure of others” test could be sufficiently significant to be applied on a stand-alone basis.
******Would you make patentable a new use of an existing article based upon the discovery of previously unknown properties or effects thereof?i.e. if it’s all about predictability, then your argument should apply equally to some 102 rejections*****
Well, 100(b) specifically defines a new use of a known device as a patent eligible process under 101. For that process to pass 102, it must not have been previously known. So if it is a new use, then there should not be a 102 rejection anyway. For it to pass 103, then it should have either unexpected results, a new step that is not evidenced in any permissibly combinable analogous art reference, or both.
But if it is a known use of that device, then I don’t think that you can ordinarily get a patent for teaching that the known use has previously unappreciated advantages that are unexpected.
102 is still an obstacle.
Nevertheless, my understanding is that people have been able to get claims allowed that recite a narrow range of values within a known range of values, purely because of “criticality” of those values and their ability to produce results an order of magnitude greater than other values in the known range. Here, if the prior art reference really teaches all of those values, and there is not just some overlap between two ranges, then it is difficult to objectively reason why the unpredictability should be a factor, as it only arises during an obviousness analysis. The only way I can appreciate it as being a proper result is by viewing the discovery of the criticality of those values as a new discovery not taught by the prior art reference at all. I think of this case as a special exception to 102. The requirement of an order of magnitude (10 times greater) is also special to this case in my view, and should not be applicable to the “unexpected results” analysis under 103.
Tell you what, Noise. I’ll tell you why I think “clear and convincing” is so destructive, you tell me where my logic is wrong, and readers can give us points out of ten using the rule set out at the top of the exam papers you have to pass if you want to be a Chartered Patent Attorney: “Marks are given, not for the conclusion reached, but for the reasoning used to get to those conclusions”.
At the USPTO, whether something is obvious or not depends on the preponderance of evidence. After issue, however, when the validity of the duly issued claim is put in issue, the claim stays untouched, unless the jury is clearly convinced that it is not valid. I can’t think of a better way to encourage attorneys and their inventor clients to try every trick in the book to pressure PTO Examiners into crying Uncle, and allow the application being prosecuted. It’s called “wearing down” the Examiner, isn’t it?
Which was fine back in the days when every Applicant was a domestic, and every infringer Johnny Foreigner. A Laissez Faire “allow, allow, allow” policy (somebody here calls it a “lazy Examiner” regime)could develop easily.
Then along came the trolls, and the outcry about “trivial patents”. Important people exclaimed “Something must be done”.
So it was that “reject, reject, reject” emerged.
Why no such pendulum swings in Europe? I say it’s because there is no corresponding prize for getting bogus claims to issue. They are more trouble than they are worth. They encourage infringers to try it on.
Now to your alternative theory. It (“c+c”, “strong”, or “reject”, cause or effect). Whatever you like, it is all the fault of Mr Dudas I suppose.
let’s not forget 35 USC 103(a) in all this talk about discoveries or non-discoveries or flash of genius or mere application of known tools
Patentability shall not be negatived by the manner in which the invention was made.
It’s also possible for that scenario to occur in the so-called unpredictable arts.
The two tests, however, should be merged.
Just to be clear, the “two tests” I was referring to are the “long felt need” test and the “failure of others” test.
Broje–
I do not pick a side in your dispute with Mooney, but here’s a question:
Would you make patentable a new use of an existing article based upon the discovery of previously unknown properties or effects thereof?
i.e. if it’s all about predictability, then your argument should apply equally to some 102 rejections
The 2nd case on the BPAI site “informative opinions” seems spot-on. Haven’t read it all, but here is an excerpt. Ex parte HO- JEONG MOON and KYU-JIN LEE
Appeal 2008-005829
link to uspto.gov
Have Appellants shown reversible error in the Examiner’s determination that Kunii teaches a multi-chip package having the feature “the heat dissipater is not mechanically coupled to an entire portion of said first and second surfaces” recited in claims 1 and 19 within the meaning of 35 U.S.C. 5 103(a)? We decide this issue in the affirmative.
Paul–
I don’t believe there was any need for your previous post.
I agree that examples of patentability should be presented, I just believe that they should be characterized not as ALLOWANCES, but as FAILED REJECTIONS.
Patent applications are not examined for allowability, but rather for lack of allowability.
A basic concept such as “all applications are allowable unless lawfully rejected” is easily understood.
An examiner’s job, theoretically, is not primarily to reject, but to examine, with rejection being only an outcome of that examination.
The problem is not either the institutional or personal culture of negativity, but is rather one of survival, as described by Babel Boy, the solution of which was described by Nate.
Examiners should of course be presented with known limits on the rejections that they may make. But to permit them to positively assess allowability is the thin edge of the wedge–they have no business being in that province. They cannot assess allowability, they can only infer allowability after concluding a failure of rejection.
Statements in a NOA like “examiner has found allowable subject-matter” should likewise be stricken. No such thing has happened–what has happened is that the examiner has either determined that there is unallowable subject-matter, or not.
I don’t much care if there is either a culture of negativity at the PTO, or a surfeit of personally-negative examiners. Their job, for which they are handsomely remunerated and in which they are fairly secure, is a negative one. That should be recognized, and appropriate safeguards put in place to prevent abuse or non-performance, such as the second pair of eyes on rejections. The solution to prevent abuse or non-performance is NOT to change their job description, which is what you are basically arguing for.
It is more than just a question of style. We seem to agree on the basic problem–poor rejections. Your solution will not achieve success as long as only allowances are reviewed, as Babel Boy pointed out.
A real solution would be to characterize the patentables as limits on rejections, and to review both allowances and rejections in a random fashion.
*******It’s also possible for that scenario to occur in the so-called unpredictable arts.
The two tests, however, should be merged.********
Still, I would say that a “long felt need” for a successful combination of known features is different than a “long felt need” for a discovery. In chemical and biotech arts, I think that the vast majority of progress there can accurately be characterized as discoveries. In that case, “unexpected results” is the only option of the two options, the other of which is “flash of genius.” But patents can be granted for inventions or discoveries, not just discoveries.
As an apparent biotech practitioner, it’s no wonder you see “unexpected results” as the necessary element for a patent. To a hammer, everything looks like a nail.
But in the predictable arts, where people are not necessarily making discoveries, it is possible for people to invent things that are predictable, and yet worthy of patent protection. That’s all.
The attempt to oversimplify the requirement to “unexpected results” leads down the wrong path.
> But, in the predictable arts, like electrical and mechanical, it is possible for there to be a longfelt need and a failure of others without unexpected results.
It’s also possible for that scenario to occur in the so-called unpredictable arts.
The two tests, however, should be merged. For some, the “long felt need” is apparently evidenced by the mere fact that the United States is over 200 years old and yet nobody described Applicants’ invention before, as claimed. That’s not a “long felt need.” That’s anticipation. Without a requirement for clear evidence of the failure of others (emphasis on the plural) or widespread teaching in the art stating that some machine or method is “at present, an impossibility,” the concept of a “long felt need” is too easily abused.