Reasonable Pertinence may be Sufficient to Combine References in Obviousness Rejection

ScreenShot003In re Icon Health and Fitness (Fed. Cir. 2007).

ICON has been a party in more than 50 patent infringement lawsuits and has asserted its treadmill patent (5,676,624) against at least six defendants.  In the midst of litigation, ICON also filed for reexamination, and now appeals the PTO’s final rejection of its patent to the CAFC.

ICON admits that all but one of the claimed elements are disclosed in a Danmark International advertisement.  The remaining element, a gas stabilizing spring, is found in Teague where it is used to assist in opening and closing of a Murphy style bed.

Reasonably Pertinent Art: To be used in an obviousness rejection, prior art must be “reasonably pertinent to the problem addressed” by the patent applicant. Usually this is satisfied by references in the same field of technology or that address the same problem. Here, the CAFC saw enough similarity to find the bed art pertinent:

“Nothing about Icon’s folding mechanism requires any particular focus on treadmills; it generally addresses problems of supporting the weight of such a mechanism and providing a stable resting position. Analogous art to Icon’s application, when considering the folding mechanism and gas spring limitation, may come from any area describing hinges, springs, latches, counterweights, or other similar mechanisms—such as the folding bed in Teague.”

Although the patent applicant lost this argument, this portion of the case is good news for applicants – because of what the opinion did not say. Specifically, the court could have begun with the announcement that “In KSR, the Supreme Court expanded the notion of pertinent obviousness-type prior art when it announced that ‘patent examiners should look [beyond] the problem the patentee was trying to solve.’ . . .”  Instead, the CAFC decided to stick to its narrower jurisprudence.

All elements = Obvious: Under KSR, once the elements are shown in reasonably pertinent art, then an obviousness determination is as simple as connecting the dots. The court says as much:

[W]hile perhaps not dispositive of the issue, the finding that Teague, by addressing a similar problem, provides analogous art to Icon’s application goes a long way towards demonstrating a reason to combine the two references.

Here, the Court explained a connection be tween Teague and the claimed invention by showing that both used the spring in similar ways.

Notes:

  • A report from Steve Sereboff indicates that the PTO has already taken this decision to heart in its new examiner training: “Basically, the examiners can make a prima facie case of obviousness simply by showing that all of the elements in the claim were known.”

50 thoughts on “Reasonable Pertinence may be Sufficient to Combine References in Obviousness Rejection

  1. 50

    “Please consult with Malcolm Mooney, who should be able to provide you with a much better zinger.”

    My rates just went up.

  2. 49

    “Are you suggesting that you would be more swayed that something is obvious if the examiner stated that the motivation to combine is to make things worse?”

    Please consult with Malcolm Mooney, who should be able to provide you with a much better zinger.

  3. 48

    “Can you cite for me one specific instance where the examiner merely stated that the motivation to modify something is ‘to make things better’?”

    (sigh) It’s called hyperbole.

    Instead of a general motivation is to make the prior art better, many examiners cite a specific benefit of the invention (as articulated by the application itself) and then argue that the benefit renders a modification obvious because persons of ordinary skill would want the prior art to have that specific benefit.

    What is typically absent from their analysis is also tellingly absent from your quote of the MPEP. The full quote reads, “The strongest rationale for combining references is a recognition, EXPRESSLY OR IMPLIEDLY IN THE PRIOR ART OR DRAWN FROM A CONVINCING LINE OF REASONING BASED ON ESTABLISHED SCIENTIFIC PRINCIPLES OR LEGAL PRECEDENT, that some advantage or expected beneficial result would have been produced by their combination.” (emphasis added)

    Instead, the examiners write rejections that, in essence, amount to nothing more than pointing to the invention’s advantanges and saying that such would motivate one of ordinary skill to make the proposed modification or combination.

    In sum, the examiners too often ignore the emphasized portion of the MPEP quote above, just like you did. (It makes me think you might be an examiner.)

  4. 47

    “it would be better to make slower less efficient software for Microsoft and Intel and the U.S. government. Microsoft would not need to invest extra time to make the software efficient and this would provide a reason to purchase the lastest and greatest faster chip from Intel.”

    But that’s … diabolical!!!!!!

  5. 46

    Well that depends upon what the definition of better is. For example, it would be better to make slower less efficient software for Microsoft and Intel and the U.S. government. Microsoft would not need to invest extra time to make the software efficient and this would provide a reason to purchase the lastest and greatest faster chip from Intel. The government would win by the increased taxes garnered from all transactions. The consumer, as usual would not see a positive benefit.

  6. 45

    >… this, of course, may not be that helpful because most examiners say there is a general motivation to make things better and, since the invention is better, voila! obviousness exists.

    Can you cite for me one specific instance where the examiner merely stated that the motivation to modify something is “to make things better”? By the way, MPEP 2144: “The strongest rationale for combining references is a recognition, …, that some advantage or expected beneficial result would have been produced by their combination.”

    Are you suggesting that you would be more swayed that something is obvious if the examiner stated that the motivation to combine is to make things worse?

  7. 44

    … this, of course, may not be that helpful because most examiners say there is a general motivation to make things better and, since the invention is better, voila! obviousness exists.

  8. 43

    “No offense to SF, but since there such evidence WAS PRESENTED in the Patent Case That Started This Thread, perhaps SF’s complaint about what Examiner’s should not be able to do is the ‘real’ straw man.”

    None taken. I was talking about obviousness in generally, especially KSR’s discussion of how a problem to be solved may be provide a motivation to combine/modify. I should have noted that I was not particuarly discussing the facts of this case.

    That said, I still don’t see how it’s a terrible rule that, before one asserts that one of ordinary skill in the art would find a modification an obvious solution to a problem, one must provide evidence that one of ordinary skill was aware of the problem in the first place.

  9. 42

    “If there is no evidence a particular problem or deficiency was known, then an Examiner should not be able to rely on that problem or deficiency as the reason a PHOSITA would modify the prior art.”

    I stand by my assertion that, as articuled above, it’s a terrible rule.

    It’s hardly attacking a “straw man” to address a statement for what it says.

    No offense to SF, but since there such evidence WAS PRESENTED in the Patent Case That Started This Thread, perhaps SF’s complaint about what Examiner’s should not be able to do is the “real” straw man.

    [reaches for a cold Tecate — remember, it’s Friday]

  10. 41

    SF,

    I see your point. When you put it that way – when the Examiner relies on the idea that a problem was known in the art for a reason to combine/modify – then I can agree with you.

    My point was, the reason to combine/modify should not have to rely upon a problem present in the art.

  11. 40

    … of course, other evidence may be used to show obviousness. My point was that, if you’re going to rely on an alleged problem to demonstrate that one would be motivated to solve that problem, you should have to provide evidence that such problem was known. You’re always free to use other ways of showing obviousness that are unrelated to the “motivation to solve a known problem” approach.

  12. 39

    “Evidence that a problem is known should NOT be the standard because (and OMG, I am agreeing with Mooney again) in part, you can essentially turn the lack of whatever added or modified element into a “problem” to justify a nonobviousness argument for any modification.”

    I’m not talking about whether the applicant can use the invention’s advantages to show nonobviousness.

    I’m talking about whether the examiner can use the invention’s advantages in hindsight to show the prior art had problems and then use those problems as a motivation to combine or modify the prior art. I say examiners should not be allowed to do that. Instead, they must provide evidence that a problem was known independent of the applicant’s disclosure. (see above)

  13. 38

    In the case of a “bogus” deficiency, doesn’t the problem arise where there *aren’t* any other deficiencies for the examiner to rely upon? For instance, in Mooney’s example, a formulation has a 10% relative increase of a particular component for the sole purpose of providing better coloring. In the case where there is no other use for that 10% increase, the only apparent “deficiency” is the “bogus” one. How then, could the examiner be called upon to find some other phantom deficiency that this “solution” resolves?

    One instance I find interesting is where the Applicant’s invention differs from the prior art in that Applicant’s invention is actually inferior to the prior art. You have a hard time coming up with motivation in that case, because all of the references teach away, and there is no other rationale for obviousness – because in fact, what’s obvious is to *not* do it that way.

  14. 37

    “I would render a guess that if the examiner was able to factually show that problems/deficiencies were identified with the prior art via some source other than applicant’s disclsoure, then SF would not have a problem with the Examiner using it as a reason to modify the prior art.”

    Exactly.

  15. 36

    I see that straw men are becoming endangered species again.

    SF wrote: “If there is no evidence a particular problem or deficiency was known, then an Examiner should not be able to rely on that problem or deficiency as the reason a PHOSITA would modify the prior art.”

    As I read this statement (or perhaps proposed rule), its plain language seems to suggest that a problem or deficiency was not established a being previously known, then one could not rely on this problem/deficiency as a reason to modify the prior art. Absent from my reading of this rule, however, is a discussion of what happens if a problem/deficiency can be established without the benefit of applicant’s disclosure and is applied as the reason to modify the prior art. I would render a guess that if the examiner was able to factually show that problems/deficiencies were identified with the prior art via some source other than applicant’s disclsoure, then SF would not have a problem with the Examiner using it as a reason to modify the prior art. Instead, as SF articulated in the sentence immediately after the “rule,” the problem/deficiency in the prior art should not be recognized in hindsight.

    However, a well-known killer of straw men recently opined as to that particular “rule,” as follows:

    That’s a terrible rule. This is what leads to applicants coming up with bogus “problems” and “features” that nobody really cares about to shoehorn their alleged “invention” into patentability. In biotech, you see this formulation patents, where a new formulation differing by a 10% increase in some component relative to an old formulation is allegedly “non-obvious” because it “interacts in a superior fashion with orange dyes used to color some medicaments.” And nobody had ever discussed this “problem” with the old formulation before.

    I am not sure how this statement applies to the proposed rule. Nothing prevents an examiner from independently discovering a reference that discloses a different problem/deficiency with the prior art (and using that problem/deficiency as a reason to modify the prior art) regardless of “bogus” problem stated by applicants. The “bogus” problem stated by applicants has nothing to do with whether or not a problem/deficiency was previously identified or whether the problem/deficiency was identified only in hindsight. By my reading, there is no requirement that the examiner has to use the same problem/deficiency identified by Applicant, only that a problem/deficiency have been identified. Thus, one more straw man has been needlessly slaughtered.

    Write your local congressman/congresswoman, let’s introduce a bill into Congress to save the straw men!!!!

  16. 35

    Evidence that a problem is known should NOT be the standard because (and OMG, I am agreeing with Mooney again) in part, you can essentially turn the lack of whatever added or modified element into a “problem” to justify a nonobviousness argument for any modification.

  17. 34

    Wow. In a single comment, stepback both personally insults Luke AND suggests that the failure to appreciate what sort of trivial modifications can be patented at the USPTO is an indicia that the modifications are non-obvious.

    Must be Friday.

  18. 33

    SF writes

    “If there is no evidence a particular problem or deficiency was known, then an Examiner should not be able to rely on that problem or deficiency as the reason a PHOSITA would modify the prior art.”

    That’s a terrible rule. This is what leads to applicants coming up with bogus “problems” and “features” that nobody really cares about to shoehorn their alleged “invention” into patentability. In biotech, you see this formulation patents, where a new formulation differing by a 10% increase in some component relative to an old formulation is allegedly “non-obvious” because it “interacts in a superior fashion with orange dyes used to color some medicaments.” And nobody had ever discussed this “problem” with the old formulation before.

    In any event, there surely was evidence that the particular “problem” in this case was generically appreciated in the field of “reversibly folding objects.” That should be enough.

  19. 32

    Luke–

    It is highly recommended that you work some more on the “logic” part of your LSAT study guide before applying for law school.

    “–and even if they did [copy], they probable never thought such a thing could be the basis for awarding a patent.”???

    Sorry friend.
    That is what is called an indicia of nonobviousness.

    In layperson’s terms: Imitation is the sincerest form of flattery. They thought so highly of this novel thing that they immediately had to run out and copy it.

    Now in so far as making right and wrong a popularity contest, I see you cast your vote for Mooney. Good for you. Let’s cast some more votes:
    If Mooney is right, then …
    Paris Hilton is more right, … and
    Ann Coulter is most right.

    There you go. All the pigeons are now in their proper holes.

    🙂

  20. 31

    “Mooney is right. Most people/engineers/inventors do not describe and publish obvious solutions to problems they identify.”

    Documentation of a solution isn’t the issue. Evidence that a problem was known is the issue. If there is no evidence a particular problem or deficiency was known, then an Examiner should not be able to rely on that problem or deficiency as the reason a PHOSITA would modify the prior art. In other words, if the prior art only becomes deficient or problematic when compared with the invention in hindsight, then the Examiner should not be able to say “It would be obvious to make this modification because it would solve the deficient prior art.”

    If, as you suggest, fifty parties independently adopted the same solution, submit evidence of that — it should be really easy to find if it had been that common.

  21. 30

    Luke-

    As I recall, there is a biotech case that is close to what you are saying. There was an interference that had several parties involved, and the court said that if so many people came up with it at the same time, it was likely within the skill of one of ordinary skill in the art and the patentability of the invention was questionable.

  22. 29

    Mooney is right. Most people/engineers/inventors do not describe and publish obvious solutions to problems they identify.

    “where is the evidence then”

    Well it is a safe bet that the 50 or so “infringers” did not all copy the “great solution” and even if they did, they probable never thought such a thing could be the basis for awarding a patent.

    When an invention is arrived upon by multiple parties within a small span of time maybe we should be rethinking whether the invention merits protection for 20 years. Maybe a simple novelty standard patent or “utility model” can be implemented to provide short term protection, i.e 2-5 years.

  23. 28

    What you seem to be proposing is that the Examiner write:

    “I could not find anything.

    No, I’m proposing that the PTO keep doing exactly what they did during the reexam of this cruddy patent.

  24. 27

    “I mean, would anyone be surprised if my assertion turned out to be correct? I suppose I could be wrong.”

    Mooney,

    Well there you go again, doing your usual shape-shifter’s dance.

    (Although don’t get me wrong. I do appreciate it as an art form.)

    However, under the current “legal” system, the initial burden falls on the USPTO to provide evidence supporting their prima facie case of obviousness.

    What you seem to be proposing is that the Examiner write:

    “I could not find anything. That in and of itself constitutes evidence that absolutely no one cared enough to publish absolutely anything about this absolutely well known problem. Therefore the void in my profferred evidence constitutes a rational proof of my position. It’s obvious. Nil Res Ipsa Loquitor –the absence of the thing speaks for itself.”

  25. 26

    “how do you propose to prove that “nobody” (meaning you have interviewed ALL players) cared “enough” to publish “anything” (meaning you have looked at all documents and found absolutely nothing in any of them) about the unarticulated problem?”

    Already done. Surely with respect to my assertion that nobody cared enough to publish anything about this problem, the burden of proof is rather low. I mean, would anyone be surprised if my assertion turned out to be correct? I suppose I could be wrong. Treadmill manufacturers may be the world’s most notoriously effusive and neurotic documentarians of the status of their art. If that were true, my claim would be somewhat dubious.

  26. 25

    “more likely that nobody cared enough to publish anything expressly discussing this horrifying XYZ “problem.” ”

    So ooo, Mooney,

    Within the confines of a legal system –where disputes are resolved with use of “evidence” rather than name calling– how do you propose to prove that “nobody” (meaning you have interviewed ALL players) cared “enough” to publish “anything” (meaning you have looked at all documents and found absolutely nothing in any of them) about the unarticulated problem?

  27. 24

    Malcolm wrote, “But this is exactly the sort of obstacle that a bulldog applicant would have a fair chance of surmounting in the dark, old days by arguing “No explicit teaching! No explicit teaching! Impermissible hindsight!!!””

    Yes, but I would argue that any attorney/agent who did not make those arguments were not doing their job pre-KSR.

  28. 23

    From In re Kahn: “Rejections on obviousness cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”

    KSR provides 7 rationales (the list is not supposed to exhaustive, but since these are the ones explicitly mentioned they will be the ones used over and over by the examiners):

    1. Combining prior art elements according to known methods to yield predictable results.

    2. Simple substitution of one known element for another to obtain predictable results.

    3. Use of known technique to improve similar devices (methods or products) in the same way.

    4. Applying a known technique to a known device (methods or products) ready for improvement to yield predictable results.

    5. (I predict this one will be examiner’s favorite) Obvious to try – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success.

    6. Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations would have been predictable to one of ordinary skill in the art.

    7. TSM – Some teaching, suggestion or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or the combine prior art reference teachings to arrive at the claimed invention.

  29. 22

    “It is “appreciation of” the problem and appreciation of how to best solve it that often do not exist among ordinary practitioners prior to the critical date.”

    In this case, it’s probably more likely that nobody cared enough to publish anything expressly discussing this horrifying treadmill “problem.”

    I think that’s typical of most obvious but non-anticipated “inventions.” The real “insight” of the “inventor” is that “this might actually merit filing a patent application.”

    Oh well. They can “always” file a continuation and write “patent pending” on their marketing materials …

  30. 21

    Lionel

    “I have not read through the sources, but using springs for a collapsible bed on a collapsible treadmill appears obvious.”

    It sure does! But this is exactly the sort of obstacle that a bulldog applicant would have a fair chance of surmounting in the dark, old days by arguing “No explicit teaching! No explicit teaching! Impermissible hindsight!!!” The cries of those applicants still echo against the sharp rocks of KSR where their bones lie, shattered into millions of pieces.

  31. 20

    “The impression I got from the training session was that yes it will be easier in light of KSR to make a prima facie case of obviousness since we don’t have to apply a strict TSM test, however, just showing the prior art teaches all claimed elements is not enough. ”

    Yes. For what it’s worth, this is exactly many of us understood KSR from the beginning. It’s gratifying to see evidence that we knew what we were talking about.

    The sky did not fall.

  32. 18

    “Imagine if the USPTO had to prove with ‘evidence’ that ordinary artisans appreciated the problem and appreciated how to best solve it. Hmmm.”

    That’s precisely what I think the trend will be. Applicants will avoid admitting problems in the background section of the application and force the examiner to provide evidence (other than a comparison with the invention) that a problem was known and would know how to solve it.

  33. 17

    SF:

    Exactly.
    It is a game of semantics.

    “The problem” (if you want to call the deficiency or the prexisting suboptimum approach as being a “problem”) always existed in the prior art.

    It is “appreciation of” the problem and appreciation of how to best solve it that often do not exist among ordinary practitioners prior to the critical date.

    Imagine if the USPTO had to prove with “evidence” that ordinary artisans appreciated the problem and appreciated how to best solve it. Hmmm.

    Dorothy on the Yellow Brick Road to Crystal City: “Teaching, suggestion, motivation or appreciation (TSMA), oh my. Teaching, suggestion, motivation or appreciation, oh my.”

  34. 16

    In hindsight comparison with an invention, the prior art often seems to have a problem or deficiency. This does not mean that one of ordinary skill would recognize that problem or deficiency existed at the time the invention was made. After all, if the invention wasn’t known, the problem or deficiency (if it relies on hindsight comparison with the invention) cannot exist. The courts need to be careful not to see a prior art “problems” or “deficiencies” where there aren’t any. Otherwise, they may erroneously conclude that such “problems” or “deficiencies” created a need that would motivate one of ordinary skill to make the proposed combination or modification.

  35. 15

    Here is a query that I posed earlier, but with a twist.
    Can a patent examiner be sued in a Bivens stylized action pursuant to a section 1983 cause of action for implementing rejections that fail to follow the mandates of KSR. I am a firm believer in extracting money from the government when government malfeasance causes monetary harm to a taxpayer.
    I see the situation something like this. Assuming Mr. Sereboff is correct and the Examiner Corps fail to articulate an explicit analysis in a rejection following the guidlines of the PTO management. Let’s say one wins on Appeal and overcomes the rejection based upon the same. Is it possible to extract money from the USPTO for the costs incurred by the Examiner’s implementation of USPTO policy that ignored established Sumpreme Court precedent?
    It might only be me who believes this. However, when the public purse is subject to levy’s, it seems to me that a government is more responsible in its actions.

  36. 14

    I think that Lionel Hutz has got matters just right – if the elements are known the onus is on the applicant to show an advantage or a surprising and unusual result.

    In the days of my youth, when dinosaurs were still common, and the USPTO was regarded as the first and key examining Patent Office, the rule of thumb was that if you could show an examiner that a combination produced something new and unexpected, your client would get a patent, otherwise not. If you could not show something surprising, you could argue forever about fitting the bits of the prior art together, but more likely than not your efforts would fail and the application would be refused. Like the EPO nowadays, the USPTO had its rules and if you knew what they were and followed them then more likely than not you would get patents for your clients.

    As in all these cases, it pays to look at the patent specification. On the whole, it is a boring document. In masterly fashion it says in claim 2 “…wherein said feet means includes a left foot positioned proximate said left side, and a right foot proximate said right side, wherein said left foot and said right foot each have a forward end.” A bit comparable to a fragment of a King Arthur sketch talking about the his famous Round Table and which appeared in the memorable 1960’s radio programme “I’m sorry I’ll read that again!” (a predecessor to Monty Python and on the whole more consistently funny) The extract went: “Above the table were King Arthur’s arms [pause] and below the table were King Arthur’s legs.”

    The Summary of the Invention is a pedestrian recitation of commonplace-seeming mechanical elements without any indication that they do anything new or anything surprising has been produced. The words “it has been surprisingly found that…” or “these features produce the unexpected advantage that …” are difficult to find.

    It is not the stuff of Nobel prizes that known structures may be required in folding form nor that gas springs may be used to control their movement.

    Nobody should express surprise or indignation about this decision – simply learn the need to look for new function or result.

  37. 13

    If the rejections are a little easier to make, then they will probably be that much harder to allow. I hope QA doens’t give examiners a hard time about this.

  38. 12

    Thank you, someguy. It is refreshing to read a post with well-presented, supporting information.

  39. 11

    >I’ve spoken to a cross-section of examiners this week and got the same story from all of them about the training. I understand that there were multiple sessions.

    >If someone has better info about the training, please post it. Barring that, gentle readers, please don’t shoot the messenger.

    If it’s true that these examiners you’ve talked to are tell you this misinformation, then they’re the ones high on crack. All sarcasm aside, examiners were in no way shape or form (at least at the training session I attended) told what you seem to have been told. The slides I have seem to be the same ones used in all the sessions, so I assume all the sessions taught the same thing. Some highlights from the slides to illustrate what we were told:

    -Due to KSR the TSM is one of a number of valid rationale that could be used to determine obviousness. Not finding TSM does not necessarily mean non-obviousness. See MPEP 2144 for examples of other various rationale that may be used to support obviousness.

    -Examiners act as fact finders when resolving Graham inquiries and must articulate the findings to support the obviousness rejection being made.

    -Examiners must articulate a reason or rationale to support obviousness rejections under 103.

    -Examiners must explain how the rationale leads to conclusion of obviousness.

    -All claimed limitations must be accounted for.

    -We may see evidence of secondary consideration being submitted more often to overcome obviousness.

    The impression I got from the training session was that yes it will be easier in light of KSR to make a prima facie case of obviousness since we don’t have to apply a strict TSM test, however, just showing the prior art teaches all claimed elements is not enough.

  40. 10

    > I’ve spoken to a cross-section of examiners this week and got the same story from all of them about the training.

    But is that the story you are espousing here?

    The training stated/implied no such thing.

  41. 9

    I’ve spoken to a cross-section of examiners this week and got the same story from all of them about the training. I understand that there were multiple sessions.

    If someone has better info about the training, please post it. Barring that, gentle readers, please don’t shoot the messenger.

  42. 8

    >>A report from Steve Sereboff indicates that the PTO has already taken this decision to heart in its new examiner training: “Basically, the examiners can make a prima facie case of obviousness simply by showing that all of the elements in the claim were known.”

    >That’s just plain inaccurate.

    Exaggeration from an attorney? Say it ain’t so. Maybe Steve attended the training session that was taught by the insane instructor who was high on crack. Lucky for me, I attended a different session. I’ll have to ask my fellow good for nothing, dumber than dirt, examiner-colleges tomorrow if any of them attended this session Steve apparently sat through. I hope some of them could stop long enough from in between purposely writing shitty rejections and milking the RCE gravy train to help me figure out which slide it was that stated examiners could make a prima facie case of obviousness just by merely showing all the claimed elements were known.

  43. 7

    > A report from Steve Sereboff indicates that the PTO has already taken this decision to heart in its new examiner training: “Basically, the examiners can make a prima facie case of obviousness simply by showing that all of the elements in the claim were known.”

    That’s just plain inaccurate.

  44. 6

    Does anyone ere dispute that the claim at issue was obvious?

    I think the jurisprudence going forward is that if the individual elements of a combination are being used in their already known capacity, then the Applicant is going to be required to offer some reason why the combination is patentable. For example, unexpected results, teaching away, etc. I have not read through the sources, but using springs for a collapsible bed on a collapsible treadmill appears obvious.

  45. 5

    In the opinion, the court states that “[o]ne skilled in the art would naturally look to prior art addressing the same problem as the invention at hand, and in this case would find an appropriate solution.”

    By saying so the court is presuming that there is a particular need in the art to provide support for the weight of a folding mechanism and to provide a stable resting position such that a PHOSITA in view of Danmark would have looked into prior art for solution and found Teague.

    This in effect shifts the burden to Applicants to show the presumption is false, i.e. there’s no particular need, and therefore no motivation to combine prior art.

  46. 4

    I would like to view this document. Does one know where it can be found? I suspect that there must be an explicit analysis, as well.

  47. 3

    A report from Steve Sereboff indicates that the PTO has already taken this decision to heart in its new examiner training: “Basically, the examiners can make a prima facie case of obviousness simply by showing that all of the elements in the claim were known.”
    <<< Since every invention is basically a combination of old elements, then everything is obvious.

  48. 2

    Just like Batman and Robin form a “dynamic duo” in the comic books to battle against evil nemeses, KSR can join forces in a tag-team wrestling style with an older Supreme Court case, Dickenson v. Zurko to do battle against “evidently” obvious inventions.

    The key word is “evidence”.

    In the case of Icon Health, the patent applicant (Icon) failed to submit “record evidence” that shows the secondary reference is non-analogous. The applicant failed to submit “record evidence” that shows the secondary reference “teaches away”.

    All these things are questions of “fact-finding”. Under the substantial evidence standard as enunciated in Zurko (and reaffirmed in Gartside), the Fed. Cir has no choice but to affirm the findings of the BOPAI when the “substantial evidence” supports findings of fact by the BOPAI. In other words, the Fed. Cir. must give deference to BOPAI findings of fact.

    The BOPAI found that the folding bed reference was “analogous art”. The Fed. Cir. had no choice but to agree.

    The BOPAI found that the folding bed reference did not “teach away”. The Fed. Cir. had no choice but to agree.

    Welcome to the world of KSR & Zurko –the dynamic patent killing duo.

  49. 1

    Me again . . . always with an opinion. I think that is the way examiner’s always behaved. All they have to do is show that all the elements in a claim were known. Nothing new there. Ancient practice. KSR, however, maintained, if not amplified, the burden that once all the elements are known obviousness must be supported by an explicit analysis. Please don’t tell me that the USPTO is ignoring the explicit analysis requirements in its guidelines.

    I would suspect that the explicit analysis would go far in assisting the examiners. I have one case on its fourth rejection without RCE, because I simply keep arguing around the art. Had the examiner taken the time to provide an explicit analysis, he would recognized the fallacy in his combination.

    You know it’s not rocket science. All the PTO has to do is follow the law and make sure the Examing Corps has sufficient command of the English language to satisfy the explicit analysis requirement. I, personally, believe that some of the problems with certain cases I am handling is attributable to the cut-and-paste function available is text editors. If the PTO can force us to use 14pt font then we should be able to preclude them from using form paragraphs. I mean it’s one thing to use form paragraphs to advance efficiency, it is quite another to use it to mask deficiencies in the English language.

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