Isn’t forum-shopping wonderful, and isn’t Europe a worthwhile place to study, when contemplating what directions US patent law should take?

This is a large part of the problem with obviousness in the US. Elsewhere, obviousness is clearly considered to be a question of fact, and is even routinely described as a “jury question” despite not being determined in front of a jury…

An admission that this is so, as some of the CAFC judges are clearly desirous, might go some way to helping the SCOTUS craft an appropriate test.

Luke Ueda-Sarson

The more obfuscated things are, the more difficult it will be to use hindsight and invalidate a patent. Thus, there will be a trend to use more techno-jargon and legalese.
If things are laid out clearly, then any non-scientist/non-engineer, even the Chief Justice of the Supreme Court, will get a good understanding of the invention, and conclude that it is obvious.

This is a continuation of a trend that began about 5-10 years ago – with newer patents, someone who wants to learn the teachings of the patent can not just look up the “object of the invention” and figure out, within 90 seconds, what the patent is about (like you can with many older issued patents).

Of course, everybody would agree this is bad trend – i.e. the public gets denied a clear disclosure.

Personally, as a prosecutor, I am bound to protect the interests of my client. If writing an obfuscated spec reduces the chances of some judge deciding that my client’s invention is obvious, then so be it.

GENERAL OBSERVATION (law of unintended consequences) – much of the weakening of patents – due to (A) past and current events, such as court decisions where the court reads limitations and inventor observations of the spec into the claims (today, when we write specs, anything we say can and will be used against us) as well as (B) possible future events (for example, proposals to eliminating the best mode requirement, to raise the bar on obviousness) has lead, and will lead, to worse disclosures for the public.

Another example is the intentional obfuscation that will become common if the courts decide that business methods are not patentable subject- matter (or if they “raise the bar” for patentability of business methods). Then, prosecutors like me, will be forced to rephrase business method claims as “technical” computer (or other) claims (and, concomitantly, to write the spec differently). The result will also be a disclosure that is more difficult to comprehend.

Thus, the spec will technically be “enabling” but will be a much less useful disclosure.

ANOTHER MUSING – if the dreaded “proposed rules” are implemented, it will be interesting how the “overlapping specifications filed at the same time” issue plays out. I foresee a scenario where an Applicant can write duplicate specs, where each spec is obfuscated differently. This would allow the Applicant to claim that the specs do not overlap to get a shot at more “continuations” and/or a chance to have more claims examined. I admit this scenario is a little far-fetched and crazy, but so are the proposed rules.

ANOTHER DETRIMENTAL EFFECT – only the rich corporations will have the budget to pay for patent practitioners (like me) to obfuscate their patent application.

Why are all of submitted documents in support of the petitioner, or neutral? None of the documents with links listed above is in opposition to the petition.

The SC needs to hear both sides of the story. As noted, the SC has little knowledge of patents and zero knowledge of engineering or science.

A plea: would some of the experienced clear thinkers who posted comments above do so in a way that those comments come to the attention of the SC? If it is too late to participate in the court filings, then send a (jointly authored) op-ed piece to BOTH the Wall Street Journal and the New York Times.

POINT 2: Tom stated:
“The deep difficulty here is that the very framing of the problem may indeed be the most significant leap of creative intuition in the invention.”

The inventive step is indeed often identification of a problem, or defining a problem in a new way. Once the problem is identified, a solution may be evident. But if the inventor had not identified the problem, no solution would ever be suggested by anyone.

This “identification of the problem” type of invention is common and important, and this type may be the most threatened by abandonment of the TSM test. It will become extremely difficult to obtain patents for things that truly seem non-O.

So if we apply the Pauli approach to sets of features brought together in a claim, we might classify them as:

(a) An inventive combination;
(b) An obvious combination; and
(c) Not even a combination.

I wasn’t saying that we should remove all tests, only that a single test shouldn’t be applied slavishly to every situation.

A device for removing the “privates” of those “intellectuals” who proffer opinions ad nauseum on the construction of the patent laws, said device consisting of….

It is difficult, if not impossible, to demonstrate utility under 101 for an invention that has no possible use…..

I think you get my drift.

As a native of New London, I must sadly agree with Gideon. The assault on individual property, both real and intellectual, continues unabated. I guess many won’t be too upset by that. Until it’s their property under attack.

To one of the previous posters, obviousness is not a question of fact. It is a question of law determined by analyzing findings of fact. The vast majority of examiners do not perform even a semblance of analyis, let alone fact finding, and simply conclude that an invention is obvious because they have found a plurality of references that include all the claim limitations (if they even manage that). Without some objective requirement for combining the references, what you have is the prevailing standard of obviousness in the examining corps: it’s obvious because I say so.

Reading arguments about obviousness by law professors is a nice break from prosecuting patent applications, but I really should get back to getting my clients’ applications allowed before their views actually become binding precedent.