KSR v. Teleflex, 550 U. S. ____ (2007): In a unanimous opinion authored by Justice Kennedy, the Supreme Court held that the Federal Circuit's "narrow" & "rigid" TSM test is not the proper application of the nonobviousness doctrine of Section 103(a) of the Patent Act.
"To facilitate review, [the obviousness] analysis should be made explicit. But it need not seek out precise teachings directed to the challenged claim's specific subject matter, for a court can consider the inferences and creative steps a person of ordinary skill in the art would employ."
"A patent composed of several elements is not proved obvious merely by demonstrating that each element was, independently, known in the prior art."
"There is no necessary inconsistency between the [TSM] test and the Graham analysis. But a court errs where, as here, it transforms general principle into a rigid rule limiting the obviousness inquiry."
Microsoft v. AT&T: With a 7-1 majority, the Supreme Court has ruled in favor of Microsoft in its extended fight againt extraterritorial application of US Patent Law -- holding that Section 271(f) of the Patent Act does not extend to cover foreign duplication of software. Justice Stevens dissented.
Opinions:
I am particularly concerned with the summary judgment aspect of this case. Not only did the Court loosen up the obviousness standard but it did so while affirming a holding on summary judgment. What does this mean for patent owners? What defendant does not go in with a motion for summary judgment for obviousness in this environment. District court judges who hate time consuming patent cases are going to jump at the chance to get rid of those cases on summary judgment. What will be interesting to see is how the Federal Circuit deals with these cases on appeal. If all the facts have been considered in a light most favorable to the non-movant, what does the Federal Circuit do?
“So, what happens to a case that was allowed solely in light of a formalistic TSM argument?”
One of my first thoughts when reading the opinion was the amendments I’ve drafted or reviewed that made TSM arguments (successfully, it turned out), lacking arguments as to analogous art, teaching-away, and the other saving grounds.
“…so, as a matter of law, is there now no presumption of validity for those cases?”
My dear friend,
there is no presumption of anything after recent SCOTUS decisions…
In other words, “American justice is the best justice in the world money can buy”
So, what happens to a case that was allowed solely in light of a formalistic TSM argument? This case suggests that would be clear unrebuttable error — so, as a matter of law, is there now no presumption of validity for those cases?
“This is the most chilling passage in the Supreme’s KSR opinion:
‘As a result our decision, most (if not all) patents are now very likely to be obvious and invalid. We urge businesses to file lawsuits and quickly rid the nation of these patents in due course. Rather than innovate, we believe that the United States economy is best served by imitation, as exemplified by our friends in Asia.’
That’s probably dicta, but it is worth noting.”
I might not agree with your view of obviousness, but I actually thought this was pretty funny.
However, given that the Court said “inventions in most, if not all,instances rely upon building blocks long since uncovered, and claimed discoveries almost of necessity will be combinations of what, in some sense, is already known,” and given the remainder of the opinion, your first sentence has a ring of truth to it.
It’s premature to start agent-bashing. Wait until the caseload dwindles, and then start clubbing away.
Malcolm,
I think I did mistake you for somebody else. I was responding to the 2:21 post, which appears to be posted by you, but may be incorrect.
I’m not worried about being out on the street. I’m just fine.
I agree with your insights.
Thanks for the newsflash. Don’t have to be an attorney to prosecute, but it helps. Particularly if your clients want patents that are worth the time and effort.
“P.S. I’m curious to know why you think KSR is going to put me, or any other career patent prosecutor, out of work.”
John, you have me mistaken for someone else.
“Are you one of those patent “litigators” who doesnt’think patent prosecutors are “real” lawyers?”
News flash: you don’t need to be a lawyer to prosecute patents. That’s not what I think. That’s what I know. I enjoy both practices.
John Darling wrote
“when all of us patent attorneys are out of a job, what are you going to be doing for a living?”
I dunno, John. Seems like you lost it momentarily with your scary stories about being out on the street.
My “insight” is that KSR will have little effect on filing in the short term and zero noticeable effect on the employment of patent attorneys. But it will affect the rate of issuance and the validity of crap patents. That will take some time to trickle down to the folks who presently file applications on whatever they think they “need” to have pending.
Malcolm,
P.S. I’m curious to know why you think KSR is going to put me, or any other career patent prosecutor, out of work. Are you one of those patent “litigators” who doesnt’think patent prosecutors are “real” lawyers?
Malcolm,
P.S. I’m curious to know why you think KSR is going to put me, or any other career patent prosecutor, out of work. Are you one of those patent “litigators” who doesnt’think patent prosecutors are “real” lawyers?
Malcolm,
I’m not flipping out. Or crapping my pants. Just can’t understand the mindset of the examiners who want to see less patent applications filed. If I was an examiner, and I was for awhile, I’d want people to file as many applications as they could possibly afford. More job security. But as I haven’t yet been able to figure out the thought process of PTO lifers, I guess I never will understand. Not that I need to understand it to get my clients’ applications allowed. I understand the PTO production system, and as far as I’m concerned, that’s pretty much all one needs to know.
As a career patent prosecutor, I’d love to hear your theory. Just keep in mind that I’m one of those who doesn’t think the decision is all that impactful. My mascara’s not running, and my supply of Kleenex is still pretty full. Feel free to enlighten me, and everybody else, with your keen insights.
Not true Nathanael. The fundamental and underlying purpose of our patent system is to encourage innovation by granting to inventors a limited exclusive right. While disclosure is an obvious benefit of our patent system, it is not the fundamental purpose set forth in the Constitution. Indeed, there is nothing in the Constitution which even requires disclosure as part of a patenting system enacted by Congress. Nevertheless, “the means adopted by Congress of promoting the progress of science and the arts is the limited grant of the patent monopoly in return for the full disclosure of the patented invention and its dedication to the public on the expiration of the patent.” Scott Paper v. Marcalus Mfg. Co. “The patent system, which is rooted in the United States Constitution, serves a very positive function in our system of competition, i.e., the encouragement of investment based risk.” Loctite Corp. v. Ultraseal Ltd. (Fed. Cir. 1985).
Disclosure has also been characterized as the “consideration” which an inventor “pays” in order to receive the benefit of patent protection. And let’s not forget that disclosure itself serves two purposes: making advancements known to the public and informing others what your patent actually covers.
Perhaps one of the best commentaries on the goal of promoting progress by ensuring a strong, pro-inventor patent system is from Justice Story:
“The Constitution of the United States, in giving authority to Congress to grant such patents for a limited period, declares the object to be to promote the progress of science and useful arts, an object as truly national, and meritorious, and well founded in public policy, as any which can possibly be within the scope of national protection. Hence it has always been the course of the American courts, (and it has latterly become that of the English courts also,) to construe these patents fairly and liberally, and not to subject them to any over-nice and critical refinements. The object is to ascertain, what, from the fair sense of the words of the specification, is the nature and extent of the invention claimed by the party; and when the nature and extent of that claim are apparent, not to fritter away his rights upon formal or subtle objections of a purely technical character.” Ames v. Howard (1833)
By no means am I discounting the disclosure benefit implicit in our patent system (albeit, a benefit which is of far less import today than in the past). But, it is incorrect to suggest that the Constitutional goal of promoting progress was largely based on promoting disclosure of inventions.
“I’m not quite ready to start looking for another job though. Question for you, genius: when all of us patent attorneys are out of a job”
Correction: when *you* are out of a job. KSR isn’t going to cause me to lose my job.
It’s rather bizarre that people flip out like this. I saw the same thing with Festo. It’s mostly career prosecutor types who crap their pants. I have a theory for why that is but I have learned from experience that very few people here are interested in that theory. They’d rather soak their kleenexes and imagine that every other case represents the “death” of their livelihoods.
Pretty sad.
Alun Palmer wrote:
“Silly me, I always thought the purpose of patents was to protect innovation, but apparently not.”
Um, it never was. Read the U.S. Constitution. The purpose was to “promote the progress of [science and] the useful arts”. Largely by promoting public disclosure of inventions.
I think that arguments based on TSM are history. It wasn’t something I used in the majority of applications, but it was a test designed to ensure that rejections were based on evidence. It does seem likely that arguments based directly on the substantial evidence standard will become more common. When I have used such arguments in the past they have not fared well, perhaps because the PTO doesn’t see itself as bound by the AAPA for some reason?
Declarations will certainly become more common, but often prosecution is too early a stage to prove up secondary considerations.
It also seems that obvious to try has been given the green light.
It was not a surprise that the Supreme Court made TSM optional, and hence completely redundant and useless, but is a great dissapointment that they failed to replace it with anything workable. If we are not quite thrown back to 1950, we have fared little better. Apparently ‘ordinary innovation’ is not enough. Silly me, I always thought the purpose of patents was to protect innovation, but apparently not.
Someone wrote:
“You’re just a special interest group, that’s all, and you just want to jigger the system so your personal needs are being served and nevermind anything about what’s good or right for the county or innovation or anything else. You want yours. You got yours. Now those damn Supremes are going to make it harder for you to get yours!”
Actually, the SC just made me a lot of money. More cases that will need to be appealed. More Reexams to be filed. More litigation challenges.
Once they kill the continuation rules and introduce an opposition system, it’ll be even more work for me.
Geez, I’ll probably be up to 50 or 60k a month when they’re done. And that’s profit, not just receipts.
But I don’t support most of the changes. I am concerned with the little guy most.
Oh, in terms of who’s worth what – I turn away clients, because I’m that good and I’m that much of a bargain. I’m worth more than I charge, but I keep my rates relatively low because it makes for an extremely loyal clientelle and zero hassles.
But think what you want about what I’m worth. If the clients could go down the street and get the same or better service for a better price, they would. But they can’t.
Here’s one of my rules – no clients with newbs in house – only grey hairs.
Why? Because the newbs have no idea what things cost, so they don’t recognize good value. I give em at least 10 years to get raped by Big Law and then I consider them.
“I really don’t think that position prevailing on the Bush Court is surprising to anybody.”
Well, I’m not so sure about the SCOTUS, but the Congress is now controlled by the democrats.
In the previous 2 Congresses controlled by republicans Patent “deform” was a no-go, not because of their sympathy for a little guy, of course, but because their close affilication with big pharma. We, small inventors, just happen to be on the same side of the fence with big pharma, as far as patents are concerned…
Now, democrats come to power and here we go: patent deform of 2007…
We already have EBay, now they want damage apportionement to finish us all..
(damage apportionement = no contingency litigation)
And I used to think that democrats have a little more compassion for us, little guys…
Now I see that they are all the same… I am not voting for either of them in any upcoming elections
What’s really going on with the recent decisions is just this: a transfer of wealth from the have-not’s to the haves.
A patent is one way for a small player to protect himself or herself from immediately being knocked off and eventually run out of the market by a bigger player that has more name recognition, established shelf space, etc.
By removing the threat of injunction, making patents easier to overturn, etc., the Court has basically said, “We want that wealth to stay in the pockets of the wealthy rather than give challengers an opportunity.”
I really don’t think that position prevailing on the Bush Court is surprising to anybody.
Let’s not forget the facts of KSR. Based on the perception of the SCt regarding positioning of the sensor, the “rigid formalism” of the TSM test appeared to obfuscate the obviousness of mere placement taught by several references. As a patent prosecutor, I do not think things really change at all with this decision. The sky is not falling.
Most claims will still face the same types of rejections, and the same arguments which were reliably successful will continue to be so. I have never had an Examiner give much weight to a TSM argument anyway. They are always more impressed with teaching away, missing elements, incompatible references, expert opinion, etc. Sure, litigation will sometimes end up with dualing experts – but is this really anything new? We should just calm down and realize that we are lawyers and are perfectly capable of tweaking are arguments to fit the “new” standards. Obviousness always was, and always will be, an amorphous concept. “Inventive step” is really no different – just different nomenclature. The particular facts of each case are always controlling here – “common sense” really does solve the question in the vast majority of cases.
THE Examiner wrote, “You try your deplorable tactics of overloading us and we will now respond accordingly. Give us 100 claims of the most insignificant variation, we will limit you. Prolonging the prosecution over insignificant limitations, we will give you one more chance.”
Given that continuing applications and hundreds of claims are expensive, why do you think applicants file those claims and applications? The deplorable purpose of overloading you?
Try reading a few Federal Circuit cases.
After you’ve read infringement decisions turning on the meaning of innocuous limitations (such as “or,” “at,” “above” and the like), you realize that limitations and variations that appear “insignficant” today can make the difference between infringement and non-infringement in litigation. After you’ve read decisions discussing direct infringement, contributory infringement and inducement, you realize that you’ll want a variety of different claim sets to cover each type of infringer. After you’ve read decisions discussing damages, you realize that you’ll want a variety of claims to increase damages. Whining about the volume of claims merely demonstrates ignorance of (or indifference towards) the issues that patentees will face when they seek to enforce their patents.
Why not let market forces determine whether additional applications and claims are filed? For more important inventions, more applications and fees will be filed. For less important inventions, fewer will be filed. Either way, the applicants (who are in the best situation to judge the value of their inventions) can weigh the costs and benefits of continuing prosecution.
Well gideon, you put your finger on the problem.
A system has been created that rewards some players far in excess of any real contribution they make.
We all know what happens under those systems- those sucking at the nation’s teat will scream fight hiss and spit to not be separated from their manna. They’re like addicts; they don’t CARE about the good of society or the country or any other godd*mn abstraction- they want to go on getting theirs and their addicted brains will generate ANY thought pattern they need to, deny any reality, and tell you the sky is green if it means that they’re not disturbed from their positions.
You’re just a special interest group, that’s all, and you just want to jigger the system so your personal needs are being served and nevermind anything about what’s good or right for the county or innovation or anything else. You want yours. You got yours. Now those damn Supremes are going to make it harder for you to get yours! They’re all idiots, that’s the REAL problem! It’s an outrage ! It’s the End Of Everything !!!
Special interest group…. who can afford to fund lawyers… OOPS! I forgot! You ARE lawyers.
my God, am I going ad hominem? I have to review the state of my soul….
Phew! The Supreme Court ruled that only a court can consider the inferences and creative steps a person of ordinary skill in the art would employ, not a patent examiner. Otherwise, a patent examiner need only demonstrate that each element of a claim was, independently, known in the prior art and then “consider” the creative steps that examiner would have employed to combine those elements. With 6,000,000+ US patents, every element of a claim can be found. Combine that with an examiner’s unchecked “considerastion” and you got a 103 for just about all claims at the examiner level.
THE examiner sounds a bit like Adolf Hitler.
The Examiner wrote: “It’s interesting to see all the spins being generated by the attorneys to console themselves about this ruling. Sooner or later, we will all have to face the fact that the pendulum has shifted — for the better.”
Console myself about this ruling?
I know that many practitioners get satisfaction out of allowances.
I, on the other hand, recognize that the whole prosecution system is rigged by arbitrary “count” requirements and limits on the number of allowable applications that can be produced by each Examiner.
So I get my satisfaction out of doing the best I can with what I got.
Oh yeah. And I also get my satisfaction by knowing that I made 40 grand last month doing the best I can.
How about you Examiner? How’d you do?
Pretty funny post from THE examiner. I’m not quite ready to start looking for another job though. Question for you, genius: when all of us patent attorneys are out of a job, what are you going to be doing for a living? You’ve probably given that about as much thought as you did your last “A in view of B” combination.
It’s interesting to see all the spins being generated by the attorneys to console themselves about this ruling. Sooner or later, we will all have to face the fact that the pendulum has shifted — for the better.
But this is only the start. With the rules change expected to be implemented around July, we will have the classical pincer movement almost completed. You try your deplorable tactics of overloading us and we will now respond accordingly. Give us 100 claims of the most insignificant variation, we will limit you. Prolonging the prosecution over insignificant limitations, we will give you one more chance. Argue about motivation because you just don’t understand the technology, time for you to look for another line of work.
Well, I am sure that many examiners think that KSR gives them the upper hand.
BUT – examiners had the upper hand for the last few years, with their general disregard of TSM. In general, I see fabricated statements from examiners about the purported TSM in the references.
So If I now receive 103 rejections with fabrications of\
“common sense”
“the ordinary course without real innovation”
“ordinary innovation”
“obvious to try”
“predictable variation”
How will that change the result of the application process? Not much in my estimation. Examiners have had the last word now for quite some time, and they will continue to have the last word.
Michael Smith
“Smart people in America actually finished dinner long ago – now we are having a beer.”
Enjoy! 😉
The sun hasn’t yet set on the left coast …
Malcolm, I must once again disagree with you. Smart people in America actually finished dinner long ago – now we are having a beer.
“My ancestors fled Europe for America because they couldn’t take oppression in the name of the state. Guess what smart people in America are doing now…”
Eating dinner?
this a woo-hoo! for me ! Screw the American market.. EU here I come !!”
Why do you say that?
I said that because that means I don’t have to jaunt up to Canada every time I want to write a line of code to avoid prosecution of the sort that befell Vonage.
link to blog.biginternetmall.com
I can write code here, ship it to the EU and sell it there without reprisal. That way, it will be easier to move there, where developers are still free to develop software.
Of course, I can’t safely sell code here, since the US patents ideas and concepts, but that’s OK. I figure in 15 or 20 years time, after the IP-everywhere true believers and fanatics have turned the US into a monopoly-issued, crap-ware desert of non-innovation, the stark difference between software choices and quality between the US and the EU, you can’t patents mere ideas, will have driven everyone with an original idea or vision or creative talent overseas anyway to escape Microsoft et. al. and I’ll have a jump on the process.
link to networkworld.com
Face it America, your special interests will reduce you to the land of the slave-holders , er I mean patent wielding multinational CEOs and the enslaved, er, I mean H1Bs who come here to escape the lawlessness of whatever 3rd world shithole they’re from and don’t care if the best they can hope to aspire to is perpetual servitude.
link to blogs.zdnet.com
Don’t worry. You’ll enjoy living in the Soviet-style Corptocracy with Microsoft rolling out another year’s version of their overpriced crashware enforced by government-backed monopolies. It will be a slave-holder’s paradise- no competition, no dissenters.
link to gizmodo.com
link to slashdot.org
My ancestors fled Europe for America because they couldn’t take oppression in the name of the state. Guess what smart people in America are doing now…
“Under the correct analysis, any need or problem known in the field of endeavor at the time of the invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.”
What kind of idiot wrote this ?
That’s precisely why vast majority of patents are filed – to protect an innovative solution to address some known need at the time of invention, to solve some existing problem…
As far as I remember the EPO has a very reasonable approach to patentability, something like “problem-solution” analysis
Why don’t those idiots try to learn from EPO practices, instead of turning the whole field upside down ?
Malcolm, I don’t think you need to brush up on “… insults before I dare compete with this veritable Don Rickles of the Internets.” You seem to excell in that area, is that is your long suit?
The decision is not as bad as I thought it was going to be. It certainly provides accused infringers, and examiners, with more ammunition, but it’s not an Alamo situation for patent prosecutors and plaintiff’s counsel. Unfortunately, J. Kennedy’s multiple uses of “can” and “could” only serve to confirm what I already knew: judges don’t actually read the statutes they are interpreting. 103(a) clearly requires that the differences between the claimed subject and the prior art would have been obvious.
I must say examineranon’s glee is downright amusing. I get the sense from his/her posts that he/she simply doesn’t understand the decision. Examiners, and accused infringers, still have to provide a convincing line of reasoning to combine references. (I don’t think that section of the MPEP is getting edited out.) So it’s not called motivation anymore, you still have to put something in the OA that convinces the applicant, and the Board, and the court, that one of ordinary skill in the art would have combined the references.
To answer examineranon’s question, no, I won’t be arguing no motivation to combine. It was never my favorite, or most useful, argument anyway. I only had to use it occasionally. Most of the time (90+%) the examiner hasn’t even found all of the claim elements. Usually what I see from examiners is along the lines of “Ref. A discloses a whatchamacallit substantially/essentially as claimed.” After reading the (entire) reference (which no examiner actually does), my suspicions are usually confirmed: Ref. A doesn’t disclose any such thing. So no my response will be: The examiner has failed to correctly determine the scope and content of the prior art, and by implication, has also failed to correctly determine the differences between the claimed invention and the prior art. That way, I don’t even have to respond to the “reason” for combining that’s (at least hopefully) supplied. (Examineranon, please do supply it, we patent attorneys do have senses of humor and need a laugh once in a while.)
I must say I am looking forward to the seeing some of the reasons for combining that J. Kennedy is now requiring examiners to provide. Somehow, though, I don’t think that the old tried and true “design choice” is going to walk off into the sunset.
I’ve always been a fan of the non-analogous art argument. I think it’s going to make a big comeback in response to this decision. Of course, the typical examiner response will be “Applicant’s field of endeavor is inventing, therefore the reference is analogous.” You have to admire their “creativity.”
“Just doing a public service. you deserve to know how you come across.”
Sounds more like a personal service than a public service. Is it a two-way street? Do let me know. I’ll need to brush up on the latest trends in personal insults before I dare compete with this veritable Don Rickles of the Internets.
Its unlikely that the examiners will follow this. They will know that most of them have to be fired if this judgement is correct.
Just wonder if any one likes it? The patent prosecuters, the examiners, the companies which file for patent?
Cannot say any one of them!
I believe that it is not good for anyone when innovation is not encouraged and such an high standard is applied to be inventive (Einstein?).
“Under the correct analysis, any need or problem known in the field of endeavor at the time of the invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.”
Why would even file a patent unless you were addressing a need? If noone wanted (or you percieved they did not) you would never file!!!! This could make all patents invalid if applied broadly. The only thing patentable is something that includes something noone ever thought of before!!! Wow, we might be back to the light bulb over the head test!
Good thing is, that interpretation disagrees with other statemnts in KSR and In Re Kahn.
PDS-
Great point, and this is why the framers behind this just made billions while complaining to Congress and PTO about others making millions. Patents are not worthless, but alot less valuable.
“Under the correct analysis, any need or problem known in the field of endeavor at the time of the invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.”
The problem with this standard is the 99% of inventions address a known need, thus with this standard the Examiner can say anything and reject the claim. This is exactly why the Fed Cir went with a strict standard and led to this whole thing. This is an inventation to uneven examination.
Just doing a public service. you deserve to know how you come across.
Back on point – I still think the Supremes followed the recent Fed Cir decisions and didn’t completely overturn the apple cart. If the new rules leave RCE’s (but more expenive ones) and don’t make you file all divisionals at the same time they might be something we can deal with. This of course assumes that 10 claim limitation and the “similar filing” limitation leaves.
Dennis – if they only submitted part of the rules would they need to place it in the Fed Register again? Not my area of law, but I don’t think so. If they only submitted half the rules they posted originally we might be OK.
We survived KSR, IMO.
Malcolm said: “So called “factfinders” do this in the context of determining the motivation to combine elements found in disparate prior art references. KSR is about the motivation prong and how explicit the description of the motivation in the art needs to be, as a per se matter. The answer is: “not very.” The rigid TSM test — used occasionally to uphold the validity of a patent — is no more. It has ceased to be. This is a good thing.”
I respectfully disagree, at least if we follow the KSR Court’s mantra of remaining faithful to Graham. In Graham, the Court said:
“While the ultimate question of patent validity is one of law, A. & P. Tea Co. v. Supermarket Corp., supra, at 155, the 103 condition, which is but one of three conditions, each of which must be satisfied, lends itself to several basic factual inquiries. Under 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background, the obviousness or nonobviousness of the subject matter is determined. Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances [383 U.S. 1, 18] surrounding the origin of the subject matter sought to be patented. As indicia of obviousness or nonobviousness, these inquiries may have relevancy. See Note, Subtests of “Nonobviousness”: A Nontechnical Approach to Patent Validity, 112 U. Pa. L. Rev. 1169 (1964).”
I remain unconvinced that the concept of a “motivation” to combine references is properly placed in the realm of the factfinder. As for whether or not KSR still relies on the concept of a motivation to combine references, I think Malcolm is correct – although “motivation” might be too strong of a term. In KSR, for example, the Court said:
“Under the correct analysis, any need or problem known in the field of endeavor at the time of the invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.”
Thus, the Court is still requiring some reason why one skilled in the art would have combined the teachings of two or more references. KSR does not permit the invalidation of a claim simply by finding each and every limitation in the prior art – but the rational basis for the combination is clearly less than it was under a strict application of TSM.
Question for the board.
Any estimates/guesstimates on the value of US issued patents world-wide prior to this decision?
Any estimates/guesstimates on the reduction in value of those patents on the basis of this decision? For example, a patent owner may not have their patent invalidated, but they may not take as much in licensing fees if they think their patent is vulnerable as a result of KSR.
MM free
“You must be a bachelor’s degree holder in over you head.”
“your head is even bigger than it comes across online.”
You forgot to mention my mom’s combat boots.
“conflate chem and bio” You must be a bachelor’s degree holder in over you head.
As to you other point Malcolm – if you think Examiner’s trust you, your head is even bigger than it comes across online.
“The SC in KSR made very clear that the the standard for obviousness is NOT dependent on motivation. PERIOD.”
Really? I missed that. Can you cite the passage?
“Presto, you get out of representing the client and there is no-malpractice liability.”
Hmmm. Is that your legal opinion? 😉
Mr. Examineranon:
I wouldn’t count my blessings just yet. According to this opinion you have to articulate the reasoning behind the combination. That means you better start boning-up on the undue experimentation analysis, because it won’t do to simply state that a person of ordinary skill in the art can do so and so. You will say something akin to common sense dictates and WHAM! you are snared. As soon as you say that I respond that I cannot figure out how to combine the art and make a request purusant to MPEP 2144 that you must satsify the explanation of combining by satisfying the enablement criteria for purposes of a person of less than ordinary skill in the art. In other words I will force you to enable the combined disclosures or your combination is no good. Mind you that you won’t be able to rely on the mythical person of ordinary skill in the art. He he he he
L Hurtz wrote:
“This decision does not eliminate the necessity of a motivation to combine at all…. The Examiner still cannot simply state that that Reference A teaches X and Reference B teaches Y and therefore it would be obvious to combine them to get XY.”
I think you’re entirely wrong. The SC in KSR made very clear that the the standard for obviousness is NOT dependent on motivation. PERIOD.
So I don’t know how anybody could reasonably conclude that “no motivation to combine” is a winning argument.
The response from the Examiner will be, “no motivation required – see KSR”. And s/he will be right.
So, again, it’s really very clear where we’re at.
The Examiner must to the “Graham” analysis. That’s it. If he/she has done that and concluded “obvious”, your choices are amend or appeal. Arguing “no motivation to combine” is about as useful as arguing “blue jays don’t live in China”.
And to state it again, the Graham analysis is:
1. Review art scope.
2. Check for differences in claims compared to art.
3. Determine level of skill of POSITA.
Implied is – “determine if it’s obvious”.
That’s it. It’s really chilling in a way. It’s all just a judgement call now.
Oh well.
More money for me.
Yawn:
Let’s just look at the numbers. The Federal Circuit can ram their law down the USPTO throat 1,000 times for every time the Supreme Court can reverse the Federal Circuit. Let’s face it, the Federal Circuit is, and always will be, the defacto Supreme Court of patents. Look at how they handled the substantial evidence rule when reviewing of Appeal Board opinions. They said, you’re right, it is a substantial evidence test that must be used. So now they use the words “substantial evidence” and then go about the same analysis as always. Same thing here. In fact, the Supremes already cited with approval the new bag of language used by the Federal Circuit. So will the over all anaylsis change-No! It is just another set of lexicography that the Federal Circuit will recite and come about the same result in each case. We will be back to the same old analysis. The only real change is that patent attorneys can now say to a client. hey, the law changed, it’s not my fault they won’t allow the patent now. Blame the Supreme Court. Presto, you get out of representing the client and there is no-malpractice liability. It really is a cool situation in that regard.
“There are good examiners that will listen and you can work with, but far too many seem to have dealt with you and hate all attorneys.”
I’m sorry to hear that you are having these difficulties. The Examiners I deal with are very helpful.
“What planet do you live on? Biotech examiners are no better then chem examiners”
I apologize for the vagueness. I tend to conflate chem and biotech and was mainly thinking about examination in those groups versus, say, the board game art unit.
Malcolm –
What planet do you live on? Biotech examiners are no better then chem examiners…and probably worse. Malcolm, please call when you get your bar number.
I am a Ph.D (in genetics), inventor, agent and now attorney – you certainly are not dealing with the 1600 I deal with. There are good examiners that will listen and you can work with, but far too many seem to have dealt with you and hate all attorneys.
Malcolm Monney – the first guy to get IP banned from PatentlyO. Come on Dennis, he does deserve it!
“Examiner’s better supply some reason for the combination other than they can.”
In biotech, most (but not all) Examiners provide very good reasons for the combinations. I’m sure it is different in different art groups. We can ask whether this is due to the prevalence of Ph.D.s in the biotech group versus other disciplines. Or we can pretend that such differences do not exist. I would hate to offend any of the sensibilities around here by probing into such delicate areas.
“The KSR Court clearly states that the factfinder should be permitted to use their common sense, but where do factfinders do this within the framework of the obviousness analysis?”
So called “factfinders” do this in the context of determining the motivation to combine elements found in disparate prior art references. KSR is about the motivation prong and how explicit the description of the motivation in the art needs to be, as a per se matter. The answer is: “not very.” The rigid TSM test — used occasionally to uphold the validity of a patent — is no more. It has ceased to be. This is a good thing.
Let’s consider that population of “innovators” who monitor the news for signficant developing trends and events. On day zero, the news reports that a newly identified virus which afflicts some people may be transmitted by pet geckos. Our inventors excitedly begin typing up their applications for using [insert method] for identifying the virus in geckos, making a database of the location of infected geckos, testing imported geckos in pet stores, exterminating infected geckos, and treating infected geckos.
Does the “prior” art teach any of these gecko-related claims? Nope — not expressly. Our population of “innovators” would argue strenuously in the pre-KSR world that any attempt to render such claims invalid by reference to the express teaching of NON-gecko methods would be “hindsight.” And sometimes — not often, but sometimes — a patent would squeak through. And if the gecko virus turns out to be a major problem, one of these dice-tossing “innovators” will have struck patent gold!!! God Bless America, etc.
The Supremes wisely endeavored to put a stop to this nonsense. A patentable innovation is more than something that nobody else had taken the time to explicitly write down. In reality, we assume that our patent examiners are rational human beings. In the absence of evidence to the contrary, a **rational argument** that a novel “solution” is in fact simply doing what any skilled artisan would do under the circumstances will suffice to tank a patent drawn to that solution, unless the applicant can demonstrate why the argument is, in FACT, false.
Again: nothing revolutionary here and, as has been pointed out, it is in fact a tried and true method of tanking patents. In its KSR decision, the Federal Circuit appeared to close the door on that method. Nine boots just kicked the door down.
So how does this change your day Examiners? I mean, seriously (i’m only half trolling, half truly curious) – are you going to use that “I don’t have to show a motivation to combine argument” in your next office action, picking and choosing among unrelated prior art? I’m guessing that you will, but only for lack of a better rejection.
Lionel says:
“To make a prima facie case, the Examiner could state, for example, that Reference A teaches X and Reference B teaches Y and that the two references are from analagous art groups and that the combination of X and Y produce results entirely predictable to one skilled in the art.
The Examiner still cannot simply state that that Reference A teaches X and Reference B teaches Y and therefore it would be obvious to combine them to get XY.”
Let me be honest. (As if you didn’t already know.) In my art of communications, most applications are (or had been up to this point) allowable. It always comes down to the point where I have a dozen references that solve the same problem of the inventor’s application (yes, I do search invention), but there is nothing in reference B that says, “the use of this particular type of filter is great because…”
IMO, the Graham factors are easy street. Analogous art, even strictly analogous art, is a dime a dozen. It’s that darn “reason to combine” that keeps me from meeting my production goals. Examiner’s are torn between what seems like it should not be a patentable difference among a combination of so many strictly analogous references, and the fact that there is no explicit teaching.
Heck, I’ll take just the Graham factors any day…
So, how does this change the remainder of your day, fellas. I mean, seriously, (i’m only half trolling, half truly curious) – Are you going to use that “no motivation to combine argument” in your next response or not? I’m guessing that you’ll still use it, but only for lack of a better argument.
examineranon wrote, “I’m starting a list of reasons that motivation is not required and why my reasons to combine are legally sufficient. Let the fun begin!! Time to hit up the water cooler and spread the joy!!”
It’s good to see your approval of this Court’s KSR decision. Given the Court’s reaffirmation of the Graham decision, are you going to provide a detailed analysis of each of the Graham factors in your office actions? … I didn’t think so.
examineranon wrote “Right, except that a prima facie case of obviousness no longer includes a rigid teaching, suggestion, or motivation”
Examiner’s better supply some reason for the combination other than they can. This decision does not eliminate the necessity of a motivation to combine at all. You do understand that?
It simply overruled the rigid TSM test applied by the CAFC.
To make a prima facie case, the Examiner could state, for example, that Reference A teaches X and Reference B teaches Y and that the two references are from analagous art groups and that the combination of X and Y produce results entirely predictable to one skilled in the art.
The Examiner still cannot simply state that that Reference A teaches X and Reference B teaches Y and therefore it would be obvious to combine them to get XY.
You little imp, examineranon! I will get you one way or another! Maybe Exlax in your cooler tomorrow!
Chris McGeehan wrote “However, Examiners are subject to the Administrative Procedure Act, which requires that agency decisions be supported by substantial evidence. In order to meet this burden, continued reference to objective evidence for each element of a prima facie case of obviousness will probably still be required.”
This presumes they do that now, which they often don’t.
“In order to meet this burden, continued reference to objective evidence for each element of a prima facie case of obviousness will probably still be required.”
What prima facie case? There’s no mention of that in the SC case. Given that they just upended the FedCir rule, why do you think that the Examiner still has a burden of doing anything more than what Graham says?
i.e. . . . Review art. Find differences between art and your claims. Note skill of ordinary artisan. Issue 103a rejection.
pds, thanks for the response and good comments, but one thing, the phrase is “couldn’t agree more,” not “could agree more.” I see it somewhat commonly and it is a pet peeve of mine.
Joe
Right, except that a prima facie case of obviousness no longer includes a rigid teaching, suggestion, or motivation….
I think that it will be easier for an accused infringer to prove obviousness in the district court than for an examiner in the USPTO. As I understand it, as long as an argument in favor of obviousness can survive a Daubert/Rule 702 challenge, it will be admitted in district court and can be considered.
However, Examiners are subject to the Administrative Procedure Act, which requires that agency decisions be supported by substantial evidence. In order to meet this burden, continued reference to objective evidence for each element of a prima facie case of obviousness will probably still be required.
“The Court of Appeals, finally, drew the wrong conclusion from the risk of courts and patent examiners falling prey to hindsight bias. A factfinder should be aware, of course, of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning. … Rigid preventative rules that deny factfinders recourse to common sense, however, are neither necessary under our case law nor consistent with it.” p. 17
The above passage is curious. The mantra of avoiding “hindsight bias” has, in general, been directed to the analysis of the ultimate question of obviousness – which as everyone knows is a question of law, not fact. The KSR Court noted that Graham itself warned against a “temptation to read into the prior art the teachings of the invention in issue.” And the TSM test was intended to prevent the use of “hindsight bias.” But, there seems to be a disconnect here.
On the one hand, Graham talks about how the so-called “secondary considerations” of nonobviousness help to avoid the use of hindsight, and “to resist the temptation to read into the prior art the teachings of the invention in issue.” But, it seems to me that there are two different issues involved here. When the Graham court refers to avoiding the use of hindsight, it seems to me that they were referring to the use of hindsight in deciding the ultimate legal question of obviousness. The part about not reading the teachings of the invention into the prior art goes to an earlier step in the process – determining the scope and content of the prior art (which is a factual, not legal, undertaking). The improper use of hindsight is usually not an issue during that step of the analysis.
As for the TSM test, its purpose was to prevent the use of hindsight bias during the final step of the obviousness analysis – determining, as a matter of law, the ultimate question of obviousness based upon the earlier factual determinations. But, the question of what a particular reference taught or suggested was still viewed by the Federal Circuit (at least so they said) as a factual determination to be made by the factfinder.
So, if a strict application of TSM is no longer permitted, where is the line drawn between the obligations of the factfinder and those of the court? The KSR Court talks about how rigid application of TSM will “deny factfinders recourse to common sense.” But, how does the factfinder exercise their “common sense” on the issue of obviousness without crossing the line into the realm of determining the ultimate LEGAL issue of obviousness? The KSR Court clearly states that the factfinder should be permitted to use their common sense, but where do factfinders do this within the framework of the obviousness analysis?
FOr more info, go to:
link to videonewswire.com
This is a 30 minute audio of prestigious litigators (remember, I’m just an agent) pontificating about KSR/Teleflex.
But I warn you … that’s 30 minutes of unbillable time.
DENNIS – please post this link to the ‘home page’ of patently O.
Lionel:
You write: “My biggest concern is how the PTO will interpret this and if Examiners try to make crazy 103 rejections because they miss the point.”
Good point. The application of the law, as it is written, doesn’t concern me so much. Personally, I think that KSR could have been overturned based upon strict application of TSM and a better factual inquiry. Someone wrote earlier that “bad facts lead to bad law,” and I could agree more.
The problem I have is the application of KSR by examiners. Although the Supremes required that an “analysis” be provided, I doubt that will stop many examiners from writing something to the effect:
Ref A has feature X (X performs such-and-such function), but doesn’t disclose feature Y.
Ref B has feature Y (Y performs this-and-that function).
Thus, since Y could be readily incorporated into X as part of the normal design process, then common sense leads to the conclusion that the claimed invention is obvious in view of A and B.
Basically, “obvious to try” will be the defacto standard that will be employed by all examiners although the smarter ones will couch it in different terms.
An anecdote: today I had yet another bogus 101 rejection. What was particularly frustrating was that one of the independent claims specifically recited a processor and a memory storage device. If I’m continuing to get 101 rejections on straight-forward device claims, I am really not looking forward to see what I will get with the new/old 103 standard.
MM free
I was so sick, btw, of saying that such and such “teaches”; phew!
As an examiner, this just made my job SOOO much more interesting. Can’t wait to reply to your “no motivation to combine” arguments.
I’m starting a list of reasons that motivation is not required and why my reasons to combine are legally sufficient. Let the fun begin!! Time to hit up the water cooler and spread the joy!!
The KSR reaction I’m reading here is surprising. The case is a pretty light touch, by my reading. No one thought there was any chance whatsoever that SCOTUS was going to uphold the patent at issue… could they possibly have done less to disturb the law and still invalidate the patent? I think they did a decent job. They barely strayed outside the corners of Anderson’s Blackrock and Sakraida!
Sorry MM. I won’t play your games anymore. I’ve asked you dozens of questions in the past and have gotten very few answers, so don’t ever expect me to answer your questions or respond to your requests, no matter how benign.
Go take your snark and annoy somebody else.
At the time of my posting, it is my conclusion, based upon common sense analysis of the facts presented over the past year on this board, that the concept of MM obviously being the most annoying member of this message board is well within the grasp of an ordinary person.
Henceforth, I will declare that any and all future posts of mine will be “MM free” as an indication that I am not engaging in useless banter with a message board troll.
MM free
I can’t believe all the strong reactions here. I have not read the MS case yet. Maybe that’s the one causing problems. However, it seems like people are reacting to KSR.
Removal of the bright line aspects of TSM is great news for everyone. The SC did not trash TSM, just its rigid application. I (and I am sure plenty of others) have said for years that the CAFC’s primary goal appears to be eliminating judgment from their job duties.
Ultimately, KSR is not that significant. My biggest concern is how the PTO will interpret this and if Examiners try to make crazy 103 rejections because they miss the point.
Wow, KSR Int’l Co. v. Teleflex Inc. (unanimous court) :
(page 11) the need for caution in granting a patent based on the combination of elements found in the prior art
(page 13) When a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one. If a person of ordinary kill can implement a predictable variation, section 103 likely bars its patentability. For the same reason, 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.
(page 15) In many fields it may be that there is little discussion of obvious techniques or combinations, and it often may be the case that market demand, rather than scienfitic literature, will drive design trends. Granting patent protection to advances that would occur in the ordinary course without real innovation retards progress and may, in the case of patents combining previously known elements, deprive prior inventions of their value or utility.
(page 17) A person of ordinary skill in the art is also a person of ordinary creativity, not an automaton.
(page 24) And as progress beginning from higher levels of achievement is expected in the normal course, the results of ordinary innovation are not the subject of exclusive rights under the patent laws. Were it otherwise patents might stifle, rather than promote, the progress of useful arts.
Head shot!
Corprotocracies abhor a patent.
MS and other big companies don’t get a net benefit from patents. Ergo, they are inclined to move the law toward a system that disfavors patents.
With all due respect, baloney.
As the counsel for a small (less than four years ago.
I’m not saying the decision is perfect – still reading the meat of it myself – but to anybody who thinks it’s big-corporate-ocentric, I say, “Nuh-UH.”
M
AnonExaminer:
“(I) – This ruling is directly solely at combinations of known elements where those elements perform a known function and the combination does not lead to any unexpected results.”
You are correct as to the direct holding, but there is dicta going much farther than this (e.g., relating to “real innovation”).
“MM — you are who you are, and you know exactly who you are. You are a message board troll … plain and simple. ”
Oh, pds, please grab a kleenex. Your mascara is running.
“If someone says “up,” you say “down.” If some says “right,” you say “left.””
Care to back this up with some of your beloved “facts,” pds? To the best of my recollection, I’ve posted scores of comments here agreeing with other commenters, including you. What would compel you to claim otherwise, I wonder?
“To me, it just isn’t worth it trying to decipher your comments, and I skip over much of what you have to write already.”
That’s nice.
I’m still waiting for you tell me where I was “trying not to make sense,” pds. Seems the cat got your tongue. What’s up with that?
Well the posts in here are rather humorous, primarily because I’m more insulated from negative effects of this ruling perhaps.
I’m happy to be proved wrong, but by my interpretation:
(I) – This ruling is directly solely at combinations of known elements where those elements perform a known function and the combination does not lead to any unexpected results.
(II) – After showing that the claims fall under the condition of part I, the subsequent combination requires a lower burden of examination. Specifically, that known elements both could have been combined and that such a combination would be obvious to try. The former being overcome by “teaching away” while the latter requiring only a minimal statement of factual inference to establish reasoning.
(III) – For evidence to establish the factual inference of combination or motivation to combine, examiners may turn to all available sources as well as their own knowledge of the art, general understanding of market movement, and the market desire to combine old elements.
(IV) – Examiners are free, although I thought we already were, to examine the structure independent of the applicant’s claimed problem to be solved. Instead, all possible problems recognized in the art (or common sense) that might be addressed by the combination are open to serve as reasoning for their combination. (Again, I don’t think this is anything new).
I’m actually not opposed to this ruling. I think the distinction of part I above is important. I think, when known parts are combined and do not yield a combination that is unique from the known advantageous of the subcomponents, the bar should be high for patentability. There seems to be a belief that all useful combinations should be patentable. I don’t agree. Combinations of known items that perform only those known functions, do not sufficiently enhance the knowledge of the public to warrant monopoly ownership. These modifications will still be sufficiently encouraged by the market place and their worth as a disclosure is likely outweighed by their burden as a patent.
That does nothing to diminish innovation. We certainly would still have patents for the Cotton Gin, Light bulb, Blue LED, and Indigo Watch Face. The function of these combined elements far exceeded the sum of their parts. What this change might actually affect is to encourage inventors to describe and focus their inventions on areas where some additional good exceeds the sum of the known prior art parts. That, I certainly welcome.
-M
“How are examiners supposed to intelligently apply a general subjective “obviousness” rule?”
My sense is that the PTO will consider every invention obvious where each of the limitations can be found somewhere in the prior art, no matter how silly the combination of references. And they will find such a combination of references for practically every invention. It will be up to the applicant to positively demonstrate non-obviousness by declarations, etc. The problem is, apart from the standard secondary indicia or teaching-away, there are no guidelines as to what to declare. For example, how do I have a declarant state that a particular combination was not, contrary to the Examiner’s assertion, “common sense” or “common knowledge” at the time of filing?
MM — you are who you are, and you know exactly who you are. You are a message board troll … plain and simple. I’ve been on countless boards over countless years, and I have seen dozens of the likes of you. If someone says “up,” you say “down.” If some says “right,” you say “left.” You are very predictable.
BTW: Don’t cry us a river about “ad hominem attacks” because you are likely the biggest offender on this board.
If this message board had an ignore function … I would put you on ignore as quickly as possible (and would have done so many months ago if I had a chance). I find you add very little of value (unless you are talking about biotech issues, which appears to be your area of technical expertise) to the discussions on this board. In fact, I have made this very suggestion (i.e., to add an ignore feature) to Dennis when he asked for suggestions as to how to improve this board. Unfortunately, the host Dennis uses doesn’t have that capability.
Anyway … go ahead and snark all you want. Nobody is going to stop you.
Truthfully, I would put up with the snarkiness if you your “analysis” provided some useful insight. However, if there is any insight in your comments, it is so slathered with snarkiness that it is impossible to see. To me, it just isn’t worth it trying to decipher your comments, and I skip over much of what you have to write already. The only reason I responded to your earlier posts is that you specifically referred to me.
Regardless … have wonderful day!!!!!!!!!!!