USPTO Issues Preliminary Obviousness Examination Instructions

In the wake of KSR v. Teleflec, Deputy Commissioner Peggy Focarino has submitted a memorandum to the technology center directors with preliminary examination guidance.  The memo includes marching orders requiring that examiners continue to provide "reasons" for combining prior art in an obviousness rejection.

[I]n formulating a rejection under 35 U.S.C. 103(a) based upon a combination of prior art elements, it remains necessary to identify the reason why a person of ordinary skill in the art would have combined the prior art elements in the manner claimed.

In submitting the memo, Deputy Commissioner Focarino noted that the Supreme Court’s opinion requires explicit discussion:

To facilitate review, [the apparent reasons for combining prior art] should be made explicit.

In addition, the memo reminds us of the basics of Graham v. John Deere:

  1. determining the scope and contents of the prior art;
  2. ascertaining the differences between the prior art and the claims in issue;
  3. resolving the level of ordinary skill in the pertinent art; and
  4. evaluating evidence of secondary consideration.

63 thoughts on “USPTO Issues Preliminary Obviousness Examination Instructions

  1. “–So, i guess scotus didn’t really get rid of TSM test, they just sort of opened up the channels of information from where it can come.–”

    How about if we call it the “TS-MOOS” test?
    That stands for:
    Teaching,
    Suggestion,
    Motivation,
    Or Other Stuff.

    Maybe that will help people understand how SCOTUS has kind-ah opened up the test. The OOS part includes “common sense” and “common creativity” (ordinary creativity).

  2. Stupid obvious arguments have been around for quite awhile. My favorite:
    226 USPQ 771-In re Sovish, Moisson, and Selleslags

    “Finally, appellants contend that even if it were proper to “combine” the references, whatever they may mean by that, they would “neither meet the terms of the appealed claims nor result in a useful device.” The question here, however, is not meeting the terms of the claims. The rejection is for obviousness of what is claimed, which involves consideration of the ordinary skill of the art. As for resulting in a useful device, appellants are talking about Esher’s plug not being removable and being left in the conduit which, they say, “would prevent effective heat recovery.” They are assuming that one of ordinary skill would not appreciate that Esher’s hollow member 14 could be removed if it is not wanted, as insulation or otherwise, and that it would not be removed by a skilled worker who wished to allow heat recovery of the conduit in which it was placed. This argument presumes stupidity rather than skill.”

  3. I think zaminer, or someone like him, has been examining every one of my applications. I see his 5 step rejection in almost every office action with a 103 rejection.

    I agree with zaminer. KSR will not change initial examination (at least for the many examiners that use the above 5 step program), but may have an affect on appeals and litigation.

  4. The old standard has been to say:
    -Smith reference teaches A, B, and C
    -Smith reference does not teach D
    -Jones reference teaches D
    -it woudl have been obv to PHOSITA at time of invention to modify smith by adding the D as taught by Jones.
    -Such a modification would have allowed for a faster/moreefficient/more robust/more modular system [insert cite to either prior art reference or just make up a reason off top of head; I usually do the latter. However, the case law has said these reasons must either come from the references; be implicit in the references; or be common knowledg. this is how the fed cir had sort of handcuffed examiners]

    So basically PHOSITA is just this dumbass. He has acces to all the information but he needs directions to do stuff with it. He’s like some dumbass that bought a desk at target that rquires assembly. the only way that he can assemble it is (a) he has the directions, (b) the directions are basically clear from the parts (like with arrows point in hte right or (c) assembling it is so easy that anyone can do it (in other words, the only thing that had to be assembled was to plug the power cord in the wall. the rest was already assembled.

    Now PHOSITA is a clever motherfucker. He buys the desk at target, and he can look anywhere for instructions. He can google it. he can pick out on old book of his shelf that tells him how to do it. He can ask his wife for help. Or he can use his own “creativity” to figure out how to solve it

    So basicallly the previous analysis is the same except for the last step. Instead of having to find the motivation in the prior art, or make up some nonsense reason why it is implict, you can just find it anywhere. So, i guess scotus didn’t really get rid of TSM test, they just sort of opened up the channels of information from where it can come.

    For people like me who never looked for motivation anyway and always just made up a reason off hte top of my head, this won’t change things much. But what ti will change is what is done at the board. it will be much easier for the board to affirm when the examiner does a shoddy job.

  5. Examiner #9, if I have offended you please accept my apology. It was unfair to imply that all Examiners make spurious 103 rejections. Just yesterday I received a beautifully crafted rejection with relevant art that was properly used in 102 and 103 rejections. I wish I could cite that Examiner for some bonus.

    That said, in the last 2-3 years, many office actions I have received include wrong rejections. I wish I could send them to hear what you (clearly a good examiner) have to say.

    I don’t believe the Examiners are to blame. I think they are given insufficient time to do good work. Although some Examiners persist in giving good examinations, some have discovered the wonders of spurious 103s. After one or two RCEs most inventors give up. Instead of giving the Examiners more time to examine each case, KSR makes it easier for an unscrupulous Examiner to declare something is obvious just because he or she thinks it is. Theoretically, these Examiners will be more productive, get more bonuses and ultimately will take over the USPTO, don’t you think?

    A question Examiner #9, wouldn’t you prefer the European “problem-solution” approach to KSR?

  6. Forgive my ignorance from my position outside USA, but is Exr #9 being sarcastic, or is he really going to behave like he says he is going to? Might be a dumb question but I can’t tell from this blog what is going to happen next, even after reading Ms Focarino’s guidance note.

  7. In line 3, “their” has been replaced with “there” and “on” has been replaced by “one”. :-)

  8. Erez said: In the US, it seems KSR gives the Examiner leeway to reject a patent with little work

    You’ve convinced me. Why have I been working my butt off for the last 16 years to weigh the evidence and determine whether or not their is a reason on of ordinary skill would combine the references I’ve found? From now on, I will just claim the invention is so obvious a reason to combine the references doesn’t need to be provided, and then take a three-hour smoking break. Thank you, Erez, for being my mentor. I wish you were my trainer 16 years ago.

  9. Here is my point on “teaching away”. If reference B actually shows worse results when moving in the direction of the claimed invention, the reference cannot be used to show obviousness of the invention when combined with reference A.

    Our footnote was that KSR was not applicable to our application because teaching away overrides any other showing of obviousness.

  10. Regarding “teaching away.”

    I agree that citing a refrence that teaches away from an improvement in a certain direction, and proposes instead an improvement in another direction, will rebut any argument of obviousness. How could you say that a person reading the reference will get an idea which is discounted by the reference. Since the inventor of the reference is a PHOSITA and since he did not find it obvious to persue your solution, but rather struck that solution option down, then your solution is per se nonobivous.

    So read the background of the refrence and look for “teaching away” language and do place it in the background.

  11. Max, I used to be a motivational speaker. Life was hard, but I tried my best to persuade examiners to think positively. With this ruling, the boot is indeed on the other foot, bottom rail now on top, and I’m back to living in a van down by the river. Wooptie do!

    Removing PSA discussion in a US application makes one worry about consequences it may have on other national filings. Time to bone upon foreign practice. Make me some coffee!

  12. Dear Erez Gur, the EPO point is not whether or not you mention the closest art. Often the writer of the thing as filed really is unaware of it. Then, in prosecution, you have to adjust from the subjective problem set out by the inventor to the objective problem, fixed by PSA with reference to the “new” closest prior art starting point doc. That’s when you need more “stuff” in the reservoir of disclosure you filed on PCT filing day. As to the USPTO, isn’t the looming issue that, in the minds of many Examiners, it’s now “Pay Back Time”. Up to now, the boot has been on the foot of the prosecuting attorney but now, suddenly, thanks to KSR, it’s on the foot of the Examiner. Whoopie, some of them might be saying??

  13. Adding to hp’s comment above, it seems the biggest differences will be that EP prosecution will be predictable while US prosecution will be arbitrary.

    In Europe you have the problem-solution approach that, with great success, gives the Applicant and the Examiner a common language to discuss whether something is obvious or not.

    In the US, it seems KSR gives the Examiner leeway to reject a patent with little work (despite what Examiner #9 says) and gives the Appeal Board freedom to support such a rejection. It could be (and I hope I am wrong) that post-KSR, a US patent will issue only if you are lucky enough to get an Examiner who wants to spend lots of time doing a good job with no reward from management.

    By the way, I would not worry about a short background crippling you in Europe. EP Examiners are willing to discuss what the closest prior art document is. You can even mention what you believe is the closest prior art document after receiving the first search report but before the Examiner issues an office action.

  14. hp, try reading EPO Decision T570/91, and get yourself a competent EPO prosecutor. What you think is a bonkers prior art starting point from the EPO Examiner is actually a stone cold logical one based on your claim, as you have chosen to write it. I commend to all readers a beautiful little book on patent drafting, recently published, by one Paul Cole. Paul is a scholar of US jurisprudence, but UK-based and an EPO expert too. His book doesn’t cost much, but is pure gold. Paul reads this blog. Whether he thinks he can still write a single spec and claims that will be optimal for BOTH USA and ROW, I should be very interested to learn.

  15. Interests me too. Good question, Fred Quint. The convenient cry “teaches away” has its counterpart in that word “Surprisingly” which one reads so often in specns headed for the USPTO. Ever felt your eyebrow ascending, on reading “Surprisingly…”? I would give any “teaching away” statement about as much weight as one that announces “Surprisingly….”. Common sense, at least between highly educated technical specialists, is hugely more reliable, though of course it is remarkably assisted by hindsight. How to mediate between these difficulties? PSA, I whisper yet again; try PSA.

  16. hp wrote, “PCT initial filing practice seems to be more and more attractive every day.” This approach seems to make sense if you know that the matter will be foreign filed. However, it will significantly increase the cost for those who are unsure whether they want to foreign file until after the US patent application is filed.

    The best advise so far is to NOT put “reason to combine” or “objects of the invention” in the application background. There is a huge difference between the examiner using your reasons to combine vs. using the examiner’s made up reasons to combine. If your application lacks reasons to combine or the reasons are phrased using “solutions” language in the detailed description rather than “problem” language in the background, you may increase your chances of overcoming a “common sense” 103 rejection.

  17. Re Alan McDonald: Examiner PHOSITA’s common sense says the claim is obvious and a prior art PHOSITA teaches away. Your position that if one PHOSITA teaches away (e.g., one prior art teaches away), then the “common sense” rules of TSA does not apply is interesting. Would you mind expanding on this thought. Thanks.

  18. This thread tends to confirm my growing feeling that users of the patent system world-wide would all be better off if efforts to harmonise substantive patent law, as between USA and ROW, were to be called off, forthwith (despite the May 03 announcement to the contrary in the Federal Register). The EPC system put together by Germany (read, continental Europe, Japan and China – same patent law and all civil law countries) and England (read, what was the British Commonwealth – common law) makes altogether a coherent whole, that will only get damaged by compromising with USA. Let USA retain the coherence of its system, and let patent applications for USA be specially written before the end of the Paris Convention year. Let a PCT filing do for the rest. Then we can have a “Background” and a “Summary” section in US style for USA and an altogether different PCT spec and claims for everywhere else. The commentator above is absolutely right to point out that US-style drafting will disadvantage US writers who use it as the basis of filings outside USA. I should know, for I spend most of my time working for US corporations in EPO filing, prosecution, and defending against oppositions. Often, the optimal US spec or claim is disadvantageous for Europe. Other readers will be able to confirm that cases written outside USA are mostly a disaster for USA. Wouldn’t it be better to preserve the integrity of both the world’s present patent law systems, rather than sacrificing them both in the futile pursuit of unattainable “harmony”?

  19. In an appeal brief this week we argued “teaching away” in a reference. We also included a footnote that since the argument was teaching away KSR in no way applied to this appeal.

  20. Re withholding background info from spec: Why would you want to risk your career and reputation doing that? These days, “Could’ve,” “should’ve,” “I’m holier than thou,” and “better than thou” pervades in patent litigation and, unfortunately, among jurists who have never even drafted a claim before, let alone a patent spec under time pressures in a complex art.

  21. Ace, it was the “Summary of the Invention” section was not provided in several applications filed around 1995. Here are a some: 5,496,764; 5,587,342; 5,654,562; 5,707,901; 5,744,869; 6,057,219; 6,113,721; 6,441,449.

    Thanks for pointing out my error, but I still believe the background should be minimized, wherever possible.

  22. Ace W. Rener, you might by right. I reviewed some recent ones and problems/needs are mentioned the backgrounds. I examined many of thier applications and I do remember a period where they had reduced the background sections to very few brief statements. We raised some minor objections concerning missing backgrounds, but it was correctly pointed out that a background section is not actually required.

    It was more than 10 years ago. I am looking for some examples of those patents, and I hope I did not confuse them with another frequent filer. I’ll look into that too.

  23. > how the average examiner reacts to the KSR decision (“It would have been common sense to combine the references”).

    How many Office Actions have you received that were written since KSR was handed down? How about “how I PREDICT the average examiner WILL react”?

    > you better start making explicit analysis concerning motivation to combine

    This is nothing new.

  24. The memorandum is completely misleading. It states that the Court did not totally reject the use of teaching, suggestion or motivation. In fact the Court stated that TSM is the test to be employed. I believe that the Examiner Corps is in for a rude awakening. They were hoping that the TSM test would be thrown out. Surprise! It is now the law of the land. Any ya know what, you better start making explicit analysis concerning motivation to combine . . . simple cut and paste is no more. I feel sorry for the ESL examiners.

  25. “Continuation Reform” = Prematurely forcing the application of the disclosure-dedication rule (a huge benefit for big business copyists).

  26. The new continuation/RCE rules are going to be a double whammy in combination with (no pun intended) how the average examiner reacts to the KSR decision (“It would have been common sense to combine the references”).

    For anybody doubting whether the PTO is actually going to implement the continuation rules, feel free to go to the PTO website and look at the 2007-2012 strategic plan. Page 17 (slide 19 of 40) discusses expanding the Board in response to “continuation reform.”

    People get ready.

  27. One of my first thoughts on reading KSR was that “now EPO patents will be much easier to obtain / broader than US patents”. Not if the background is slashed.

    Some interesting ideas have been posted on how to deal with the background to place yourself in the best position at the BAPI…. problem is most of them lead to an application that will have a very hard time in international prosecution, especially with EPO inventive step.

    In cases where we have offered next to nothing as far as a background, the EPO Examiner more often than not picks something totally crazy as D1 and you then waste the whole EPO prosecution before oral arguments circling around inventive step trying to get him off of the crazy D1 selection back towards the real invention (assuming there is even support somewhere for your arguments elsewhere in the spec).

    Since KSR will enable the US Examiner to dispose of a case / force an appeal with an even worse batch of junk references… PCT initial filing practice seems to be more and more attractive every day. At least that way when you get around to US prosecution, the Examiner will at least just ape the PCT search report instead of muddying the prosecution record with crap references.

  28. I just looked over the background of an application I recently wrote, but have not yet filed. It has a great story, starting from the broad topic leading to the narrow topic. The last background paragraph characterized the problem. I move that last paragraph from the background section to the detailed description section and reworded it as a solution paragraph rather than a problem paragraph. The information still is in the patent application, but in a location (detailed description) and a format (solution wording) that may avoid assisting the examiner in 103 characterizing the problem that my inventor sought to overcome.

  29. Folks, NOTHING in this case suggests or a radical shift in how applications are drafted or prosecuted.

    Rather, it only suggests that you think twice before filing certain applications at all.

  30. I will completely eliminate the “background” section from now on in most applications. This is nothing new, Motorola had been doing it for years. In the past, I liked telling the story, helping the examiner understand the invention. Not any more except when necessary with respect to 112, 1st.”

    The Motorola patents I found have background sections:

    link to patft.uspto.gov

    Does anyone have examples of Motorola patents that eliminate the “background” section?

  31. Suggested approach to KSR. Abstract should be a rewrite of claim 1. The summary should be a copy of the abstract. The background section should be no more than one paragraph (five sentences), only discuss the general area of interest (e.g. “Tennis is a sport that uses tennis rackets. Tennis rackets have strings for which there may be a need for improvement. ” if your invention addresses the composition of tennis strings.), and definitely not contain any characterization of the problem. Any such characterization of the problem should be buried in the detailed description area in a way that shows how it was over come, not what that problem is.

  32. JD, I quickly reviewed In re Chu (thanks for the cite, Dennis). I, at least partly, agree with what you say, though, for a lot of cases that I see (electrical arts, not chem/bio), I think that what you suggest is not necesary (I’ll explain why shortly). I don’t think that anything I posted above is counter to Chu. The examiner does need to determine and establish that the point at issue (such as a threshold) is variable and that it can be chosen for various values for known reasons and still function. I too sometimes have an issue with what some examiners argue as “design choice” as it is not always a matter of “routince design choice”.
    The types of claims I was talking about are, for example, when comparing two items the claims state that they need to match to a certain degree and the dependent claims variously recite what that degree of match is (90% for one claim, 95% in another, etc.). It is very well known in the art that the higher degree of match results in a higher likelyhood of a correct match but a greater chance of incorrectly indicating a mismatch for items that really are the same. Choosing a particular degrree of match really does come down to how the designer wants to balance these 2 criteria. Another example would be a claim that includes a supprt rod & the dependents recite that the rod is round or hex or square, etc. In both of these types of situations, unless the specificaation (or later presented evidence) shows that there is some criticality to these specifics, it would seem that this is a proper time to argue “design choice” and would not be counter to Chu.

    thanks,

    LL

  33. “The real issue is a little more subtle. If they cite the problem from the background as the reason to combine, is that hindsight or not? Anything in the background could always be regarded an admission, in this case an admission that the problem was known. So, it seems we must avoid specifying the problem in the background section, but this is because it is an admission that the problem was known, and hence not impermissible hindsight reconstruction to use it as the reason to combine. If we must rely on long-felt need, then we must file a 132 declaration later.”

    I question how the timing of the admission of long-felt need matters, as it’s still an admission by Applicant that can/will be used against him. If Applicant plans to argue the Graham factors, he has to make this admission anyway. The focus would be on the inability of others to make the combination during that long time span of need, evidencing that the particular combination sought is outside the ken of the PHOSITA and also is “uncommon sense”.

    Personally, I state what conventional articles/compositions are out there and their deficiencies. I don’t identify “needs” or “objects” per se. If the Examiner wants to try to read between the lines and craft his own need from my background, I plan to attack that, too.

  34. I was an examiner for five years.

    I know I hated patents that did not have at least some background. It was like…and so what is special about this. I know businessmen and engineers hate it because they have no reason why the patent may be of value and they really, i mean really have to read it.

  35. This discussion about whether to discuss the “need” for the inventor’s solution in the background relates to the weirdness of some of the Graham factors.

    In some cases, the “insight” which leads to the invention is the recognition of a potential market which could be exploited — with the help of a patent. There is no “long felt” need in the art, per se. Rather, there is a hidden desire in the population waiting to be fanned with the assistance of a good advertising campaign, thereby creating a “need” that did not previously exist.

    In part, this is why the Graham factor re “commercial success” is mostly bogus. It assumes a market which operates according to principles set forth in kindergarten economics classes.

    I think the effect of KSR will be fairly predictable. Here is a typical scenario: Motorcycle Company unveils new “hyperpower” motorcycle with a standard muffler. The next day, Muffler Company reads press release and files an application claiming a “hyperpower motorcycle with a MegaMuffler”. The MegaMuffler was described in a press release a week before filing.

    If Muffler Company lucked out and found an Examiner who could be convinced that strict TSM was applicable, Muffler Company could argue (correctly) that there was no teaching in the art of *hyperpower motorcycles* that a MegaMuffler could be used instead of a standard muffler.

    Under KSR, that argument deserves zero traction and Muffler Company is now going to need to provide evidence showing that one skilled in the art would not have expected the MegaMuffler to work with a hyperpower motorcycle.

  36. IOW, Jim was right except where he said “hindsight is not ruled out”. It is, but using things from the background is not hindsight.

  37. I’ll say it if no-one else will – KSR v Teleflex is an appallingly badly drafted decision. It’s not a question of disagreeing with their reasoning, but actually deciphering what it is. I don’t think the justices know themselves. Also, not surprisingly, it’s difficult to parse out it’s internal conradictions.

    In this context, I can understand why everyone is worried about hindsight reconstruction now, but the KSR decision actually quotes Graham v John Deere where it warns against hindsight, noting that Graham in turn quotes from Monroe v Heckethorn. I think KSR is a little like the bible, but only in the sense that it may be possible to interpret it to say almost anything.

    Some people are still arguing about whether it keeps TSM or not. My view is that it eviscerates TSM to that extent that it might as well have completely removed it for all the difference it makes. Certainly it is already apparent that the PTO have now discarded TSM, whatever they may say about studying KSR further.

    I had already read the PTO memo, forwarded from other sources, and I had already reached essentially the same conclusion that it seems to before I even read it, namely that some reason to combine must be given, albeit my understanding of KSR is that it can be almost any reason, including ‘obvious to try’. OTOH, I have spoken to at least one person who quoted another part of KSR that might be read as not requiring any reason, but fortunately I don’t think that view will hold sway.

    I don’t agree that the Examiners can legitimately use hindsight now. If they try to, then I for one will cite KSR quoting Graham quoting Monroe, which says they can’t.

    The real issue is a little more subtle. If they cite the problem from the background as the reason to combine, is that hindsight or not? Anything in the background could always be regarded an admission, in this case an admission that the problem was known. So, it seems we must avoid specifying the problem in the background section, but this is because it is an admission that the problem was known, and hence not impermissible hindsight reconstruction to use it as the reason to combine. If we must rely on long-felt need, then we must file a 132 declaration later.

  38. “I will completely eliminate the “background” section from now on in most applications. This is nothing new, Motorola had been doing it for years. In the past, I liked telling the story, helping the examiner understand the invention. Not any more except when necessary with respect to 112, 1st. ”

    It just sucks to read patents without proper and sufficiently lengthy background section introducing readers to the subject.
    Patent spec should be readable and understandable to an average person skilled in some partucular art, including patent examiner.
    I don;t thik examiner like too much reading those junk patents form Motorola

  39. LL,

    Read In re Chu. It discusses evidence and arguments presented to rebut the conclusion of obviousness.

    I also assume that when you determine that “the exact choice is a matter of routine experimentation in designing the proper function of the device” you have first properly determined that the particular parameter is a result effective variable, and have pointed out with particularity where the prior art (and not applicant’s disclosure) recognizes that the parameter is in fact a result effective variable.

    Thanks,

    JD

  40. I will completely eliminate the “background” section from now on in most applications. This is nothing new, Motorola had been doing it for years. In the past, I liked telling the story, helping the examiner understand the invention. Not any more except when necessary with respect to 112, 1st.

  41. David:

    Great comments. It seemed to me that the only time that describing a need in the prior art could be beneficial is where there is a long-felt, but unmet need. Otherwise, it would be completely irrelevant under US practice — as you said, 112P1 is what matters.

    I guess that one would have to be extremely confident that he/she headed to “overtime” (that is, heading towards obviousness and secondary considerations — either in litigation or in prosecution) before even considering putting that long-felt, but unmet need in the specification. Even with such confidence, your point is well taken that one can always raise that need later during prosecution (or litigation).

    But isn’t there some value to raising that long felt need in the patent itself to assist in persuading a jury, a judge, a potential licensee or an examiner of the value of an invention before they are tainted with their own preconceived notions of the value of the invention? Of course, if one attempts this approach, he/she will want to explicitly mention that embodiments of the invention need not solve that particular need and may solve other needs in order to minimize/eliminate claim construction issues. Also, he/she will want to avoid discussing particular components of the prior art — so as to avoid any inference that the claims cannot cover such components. Finally, he/she will want to explicitly recite that the feature that solves the need is not required.

  42. So KSR promotes the arts by encouraging applicants to keep secret how their inventions promote the arts.

    KSR denies patent protection to “ordinary inventions” by encouraging applicants to keep silent about why their inventions are extradinary.

    Something just doesn’t seem right about that.

  43. As to Wonderer & the follow-ups by David Boundy & NL, while it is true that evidence like they discuss can be used/added to show non-obviousness in response to a 103 rejection, it is not going to be considered until that evidence is actually properly presented on the record. Until that point, an examiner can resonably argue “no disclosed criticality” of a particular option. E.g., often a dependent claim will recite something like “wherein the threshold is set ot 99%” and a reference will have a threshold of 90%. If the spec. only indicates that such a level is a choice or a preference without any reasons WHY it is prefered, I see no problem is arguing that the exact choice is a matter of routine experimentation in designing the proper function of the device. If the applicant comes in with some evidence that the choice of 99% as opposed to some other % (whether 90 or 95 or 98 or whatever) then that evidence needs to be given weight and consideration.

    But you need to get that evidence into the record 1st. I see a lot of cases where the lawyer will just argue that the spec discloses 99% and the reference does not show 99% but not address the obviousness and critiality issue. Of course the reference doesn’t show 99%. If it did, I would make a 102.

    thansk,

    LL

  44. Al Fansome is a man after my own heart.

    I go to all these AIPLA meetings where the “litigator types” drone on about having a specification that is as dry and non-descriptive as possible, so in litigation you are safe.

    To all those, I have always said….hey, I need a patent before I can worry about litigating it. Furthermore, since just having that patent can be enough to bludgeon or scare someone, I will take a patent over no patent any day.

    Great thinking, Al.

  45. The problem is there is, and alway has been, a disconnect between PTO guidelines and litigation reality. This is why whenever some new case comes out, the litigators keep telling me, see this a a reason why you need to please keep all this discussion out of the disclosure. But before that you have the PTO, who invent their own rules, and basically hose you for not having it in their first place.

    So what I tell the litigator types is this: sure, its not a perfect spec, but there’s no such thing. Moreover, without the content you object to, there would probably be no patent in the first place for you to argue about. So learn to live with it.

  46. Like ‘Wonderer’, we too recently held an interview with an Examiner who rejected our description of the advantages of our invention, as an indication of non-obviousness, because these advantages were not explicitly in the spec as filed.

    Of course, this is contrary to the case law (as discussed by David Boundy) and is also contrary to the MPEP, I believe.

    Now, one can always appeal, if necessary, but would it be better to include some advantages in the original spec to avoid such a situation in the future? Perhaps, as David mentioned, they should be described in a neutral way. However, I guess an Examiner could still use that as a ‘reason to combine’ (KSR) the references, i.e. in order to achieve the stated advantage.

  47. SF:
    Maybe the right patent drafting strategy is to follow Jim’s advice anyhow when DRAFTING. You can ALWAYS bring up advantages of the application in an Office ACtion response AFTER the filing date (i.e. in 3 years after a first OA arrives – at that point the ramifications of KSR may be clearer) – I don’t think that adding ‘advantages of the invention’ later is new matter – as long as the claims are enabled as of the filing date.

    Thoughts?

  48. SF | May 04, 2007 at 08:55 AM writes –

    > While your suggestion may not always be
    > appropriate (for example, where there’s a strong
    > long-felt, but unmet need that actually helps
    > demonstrate non-obviousness), it’s well worth
    > considering where the advantages of a point of
    > novelty are readily known and predictable.

    I concur with “Jim | May 04, 2007 at 07:50 AM ” – it is ESSENTIAL to NOT concede “reason to combine” or “objects of the invention” in your own background. If you don’t feed the examiner a gift of “reason to combine” during regulation play, then she’ll never get a chance to force you into a secondary considerations overtime.

    The cases are replete with instances of an appplicant’s discussion of “long felt need” and “objects” etc. boomeranging into “motivation to combine” or nartrow claim consructions. E.g., “Motivation to combine references,” may come from “the nature of the problem to be solved,” but only if the problem was known, and must be shown by “clear and particular” evidence – or an admission. E.g., Pro-Mold and Tool Co. v. Great Lakes Plastics, Inc., 75 F.3d 1568, 1573, 37 USPQ2d 1626, 1630 (Fed. Cir. 1996); Alloc, Inc. v. Int’l Trade Comm’n, 342 F.3d 1361, 1368-69, 68 USPQ2d 1161, 1166-68 (Fed. Cir. 2003) (reading “play” into claims’ mechanical joint, based at least in part on an “object of the invention”); Gentry Gallery Inc. v. The Berkline Corp., 134 F.3d 1473, 1479, 45 USPQ2d 1498, 1503 (Fed. Cir. 1998) (claim invalidated under § 112 ¶ 1 because not consonant with stated “object”)

    If you need to argue secondary considerations, you always have the right to add that evidence or argument any time. In re Chu, 66 F.3d 292, 298-99, 36 USPQ2d 1089, 1094-95 (Fed. Cir. 1995) (“To require Chu to include evidence and arguments in the specification … would be to require patent applicants to divine the rejections the PTO will proffer when patent applications are filed.”); In re Reynolds, 443 F.2d 384, 170 USPQ 94, 98 (CCPA 1971); MPEP § 716.02(f). In fact, even evidence that only comes into existence after a patent is granted may be used to show non-obviousness. Knoll Pharmaceutical Co. v. Teva Pharmaceuticals USA Inc., 367 F.3d 1381, 1385, 70 USPQ2d 1957, 1960 (Fed. Cir. 2004).

    If you put it in the spec on filing day, you lose control of how and when it will be used. If you keep your cards to your chest until YOU choose to play them, you retain much more control.

    § 112 ¶ 1 says it all – teach “how to make” and “how to use,” and “best mode.” Do those thoroughly. Do them entirely in neutral terms – “The lever may to this, it may do that,” all in white-on-white – nothing better or worse or more important or less important than anything else.

    A patent specification is about § 112 ¶ 1, not § 103, not Madison Ave. Discuss the advantages, but again do it in an absolutely white-on-white way: “In some cases, the heart catheter may be used to prolong life.”

    Do § 112 ¶ 1. Do it well. Then STOP.

  49. “Do not include any limitations or problems of the prior art in the backgorund section of the specification. It may be used against in showing that the invention would have been obvious based on the known problems that would lead one to the dislcosed solution.”

    I got an office action where the examiner said that we had failed to show any advantages of a particular feature that we were claiming in a dependent claim, using that lack of advantages (in the spec.) as part of the rejection. Thoughts?

  50. “I got an Office Action over a month ago prospectively citing KSR. Where’s my nickel?”

    You had an office action citing a prospective decision!!?? I’ll bet the client loved that.

    Google my name to get my contact info and I’ll send the nickel.

  51. Jim:

    Interesting comment. I have also seen examiners cite benefits discussed in the specification. For example, “a person of ordinary skill in the art would be motivated to modify the X of reference 1 by adding the Y of reference 2 because (insert benefit of invention articulated in the specification).”

    This creates an interesting tension. On the one hand, you’d like to demonstrate the value of the invention — especially if you’re planning to later file in the EPO, where they want to hear why a point of novelty matters. On the other hand, playing up deficiencies of the prior art in the background and hyping the benefits of the invention that solve those deficiencies can increase the risk that examiner will use such comments as evidence of a known problem and a known/predictable solution.

    Given this risk, you suggest, “Do not include any limitations or problems of the prior art in the backgorund section of the specification. It may be used against in showing that the invention would have been obvious based on the known problems that would lead one to the dislcosed solution.”

    While your suggestion may not always be appropriate (for example, where there’s a strong long-felt, but unmet need that actually helps demonstrate non-obviousness), it’s well worth considering where the advantages of a point of novelty are readily known and predictable.

  52. I got an Office Action over a month ago prospectively citing KSR. Where’s my nickel?

  53. I think this memo is just trying to maintain some sense of uniformity and control in the office actions that come out post-KSR.

    In the meantime, management is probably trying to figure out the best way to milk this windfall to reduce the backlog. So the actual shock may be coming yet in the future.

  54. I don’t see Office Actions changing much.

    Just add the line, “no TSM needs to be provided by the Examiner (see KSR)” to all Office Actions.

    Other than that, expect the same 1 paragraph rejections over art showing the elements.

    Where I see change is at the Appeal level. I see the affirmed rate going up significantly.

  55. A classical “explicit reasoning” would be as follows:

    “The combination of the cited prior art references would have been obvious to a person skilled in the art for the same reasons Applicant now proposes such combination as is set forth in Applicant’s instant specification”; “Applicant cannot argue that the Examiner is using hindsight bias by utilizing the Applicant’s specification as an explicit reasoning for such combination, because as set forth in KSR, hindsight is not ruled out in an obviousness determination”

    SUGGESTION: Do not include any limitations or problems of the prior art in the backgorund section of the specification. It may be used against in showing that the invention would have been obvious based on the known problems that would lead one to the dislcosed solution.

  56. “A nickel to the first practitioner that gets an action citing KSR!”

    Anyone that argued that “the cited references” did not provide a teaching, suggestion or motivation can expect citation to KSR — since the teaching, suggestion or motivation need not be explicit.

  57. I wonder when the USPTO agent exam will be updated. I’d hate to get a question wrong relying on the new rule if the test expects an answer based on the old rule.

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