Federal Circuit Applies KSR – Finding Combination Claims Obvious

PatentLawPic661Ball Aerosol v. Limited Brands, Bath & Body Works, etc. (Fed. Cir. 2009)

Ball’s patent covers a candle tin with a removable lid. The lid is designed to fit under the candle to help avoid scorching the underlying surface. According to the claims, the candle tin also has legs or “protrusions” that rest upon the cover.

On summary judgment, a Northern District of Illinois court found Ball’s patent valid as a matter of law. On appeal the Federal Circuit flipped the decision — finding the asserted claims invalid as a matter of law.

Here, it was undisputed that all of the elements of the claims can be found in the combination of two prior art references. In addition, the problem of candle-tin scorching was well known in the art. Finally, it is undisputed that the technology is “simple and easily understandable.”

This case falls squarely under the rule of law expounded by KSR where the Supreme Court held that “[i]f a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability.” Here, one prior art reference (Marchi) taught the candle with a cover that could be used as a base. The other reference (Wright) taught a candle with “bumps” on the bottom to avoid scorching the surface. In considering these two references, the Federal Circuit determined that the combination was obvious:

“The combination of a cover-stand and feet on the bottom of the candle holder was obvious to try in an effort to minimize scorching, as the combination would further raise the bottom of the candle holder above the supporting surface. The resulting, and desired, decreased heat transfer between the candle holder and the supporting surface from the combination would have been entirely predictable and grounded in common sense.”

Explicit Motivation: In KSR, the Supreme Court indicated that the reasons for combining prior art references “should be made explicit.” Here, the Federal Circuit clarified that statement – holding that the motivation need not be explicit in any prior art. Rather, the Supreme Court is referring “to the court’s analysis.” In other words, a court must explain its motivation in combining two or more references to invalidate a patent for obviousness.

Commercial Success: Even those who believe in objective indicia of nonobviousness admit that commercial success is one of the weakest forms. The problem is the general difficulty in tying the success of the product to the invention itself. Here, the Federal Circuit found that the “minimal indications of commercial success … do not outweigh the clear indication of obviousness apparent from the prior art.”

Holding: Judgment Reversed, Claims are invalid as obvious

Notes: I have pasted figures from the two prior art references. One shows a candle with “protrusions” on the bottom the other shows a candle using the lid as a base. At least one of the references specifically discussed object of creating space between the candle and the surface to avoid scorching problems. Neither reference was cited by the patentee during prosecution.PatentLawPic662

PatentLawPic663

74 thoughts on “Federal Circuit Applies KSR – Finding Combination Claims Obvious

  1. 73

    Case:
    link to ll.georgetown.edu

    Historical Analysis
    link to law.fordham.edu

    See CREATE act for current state of affairs.

    Yes, EPC 54 and 56 seem incompatible with such things, but a contract came across my desk that made my think otherwise. One clasue implied that there were some laws in some eurojurisisdiction that indicated that confidential disclosures might be prior art. Maybe it is just for novelty purposes…

    How about derivation laws within the context of a joint research project that ends and the participating companies file patents on information generated during the joint research or later developments based on information originally produced during the joint project?

  2. 72

    Jonathan, I don’t understand the question. Suggest you read Articles 54 and 56 of the European Patent Convention. They are incompatible with unpublished art contributing to an obviousness attack. Makes sense I think (but then I would think that, wouldn’t I?). Can you for your part tell me how I can read the Oddzon Decision you mention? that would be very kind and helpful. Thanks in advance.

  3. 71

    “The problem is how and when TSM can be applied after KSR. ”

    It can be applied anytime you like and however you like. It is a helpful insight, nothing more, nothing less. Obviousness is a determination that has to be made. Plain and simple. There are things that tend to show obviousness, and things that tend to show nonobviousness in different cases and at different times. TSM is merely one of those things and weighs in other whichever side it falls on for the given case.

    Yes, it isn’t fair that obviousness is a determination and it is unpredictable as heck. Get a new statute if you don’t like it.

    Personally I still use it to more or less definitively kill a claim that I have a solid TSM on. I rarely use the other rationalizations so I rarely see TSM weighing in against obviousness.

  4. 70

    Hey Maxi or other Euros,

    Question: Is there law in Europe analagous to the Oddzon v. Just Toys case and subsequent codification (secret prior art for 103 purposes)?

    If so, can you pleasse point me to any source of information regarding this issue.

  5. 68

    And there’s me, one of the millions with a fond memory of the Monty Python “Dead Parrot” sketch from nearly 40 years ago, totally unaware that the precise creature that had fallen off its perch was a “Norwegian Blue”. Mind you, I never can remember the fine detail from key cases. Paul, great contribution. My compliments.

  6. 67

    When I visit the US for meetings of the AIPLA, I am not allowed to attend the political committee reception. The reason is that if I as an alien were to do so and to give money to the promotion of intellectual property in the US, I would be subverting the US body politic.

    I am therefore glad to see that a thoroughly subversive English comedy show is so well known and popular in the US that it is only necessary to mention a Norwegian Blue to get an instant response.

  7. 66

    “grab a couple of canaries off the shelf for a tenth of the price and get the same satisfaction.”

    Now Mooney is getting cheap thrills using birds.

    No big surprise here…

    I’m sure he selected the appropriate white wine.

  8. 62

    “exactly as I noted”

    You noted no such thing. You are simply a snarky 1diot.

    “doing computer searching using claim terms technically amounts to de facto improper hindsight”

    Is that nuance? LOL”

    Since you can’t understand it, apparently it must be a nuance. Please re-read my parenthetical comment which I will repost for your convenience.

    “(if you don’t understand why, are you listening Mooney, you should immediately leave the profession),”

    There’s the door… please use it.

  9. 61

    “What’s dead is the idea that the Norwegian Blue is the only bird that sings. After KSR, you can grab a couple of canaries off the shelf for a tenth of the price and get the same satisfaction.”

    And if I keep trying really hard with my puppet show I can A) deeply affect the prices for legal services or the direction of the law with my snarky comments… or B) I can become a delusional troll.

    Looks like its gonna have to be B Bob

  10. 60

    I can always tell when I get your goat because you make up cute little names for me.

    But it doesn’t change the fact that no matter how hard you try, you will always be a patent “wannabe.”

  11. 59

    Unfortunately Mooney, you are the only one that thinks you’re funny, except maybe your brother puppets.

  12. 58

    “The Norwegian Blue is still very much alive. It has not ceased to be. It has not yet met its maker. It is not bereft of life. It has not shuffled off its mortal coil. It is not even stunned. Its plumage continues to be beautiful even if not quite as beautiful as before.”

    What’s dead is the idea that the Norwegian Blue is the only bird that sings. After KSR, you can grab a couple of canaries off the shelf for a tenth of the price and get the same satisfaction.

  13. 57

    I should have added that the difference is that the Norwegian Blue should often be taken out of its cage, but not on every occasion.

  14. 56

    Alun, I have made a search on teaching, suggestion and motivation through the opinion in KSR v Teleflex.

    The Court says: “When it first established the requirement of demonstrating a teaching, suggestion, or motivation to combine known elements in order to show that the combination is obvious, the Court of Customs and Patent Appeals captured a helpful insight.”

    It goes on to say: “Helpful insights, however, need not become rigid and mandatory formulas; and when it is so applied, the TSM test is incompatible with our precedents. The obviousness analysis cannot be confined by a formalistic conception of the words teaching, suggestion, and motivation, or by overemphasis on the importance of published articles and the explicit content of issued patents.”

    It then concludes: “In the years since the Court of Customs and Patent Appeals set forth the essence of the TSM test, the Court of Appeals no doubt has applied the test in accord with these principles in many cases. There is no necessary inconsistency between the idea underlying the TSM test and the Graham analysis. But when a court transforms the general principle into a rigid rule that limits the obviousness inquiry, as the Court of Appeals did here, it errs.”

    So what the court is saying is that the CEFC has on most occasions got the TSM test right, that it provides a helpful insight, that it can continue to be used but should not be promoted to an inflexible rule. Not an unreasonable decision or even a radical one.

    The Norwegian Blue is still very much alive. It has not ceased to be. It has not yet met its maker. It is not bereft of life. It has not shuffled off its mortal coil. It is not even stunned. Its plumage continues to be beautiful even if not quite as beautiful as before.

  15. 55

    ASE wrote:

    “. . . . all the examiner did was plug in the claim terms (technically improper) and “combine” the top two or three references without even reading them.”

    So what has changed? Some Examiners do a good job (and I appreciate a good rejection, as do my clients), but others seem to cobble together whatever the keyword search spits out.

    RCE gravy train, toot toot.
    :-(

  16. 54

    “the TSM test is as dead”

    Alun,

    It’s not dead, even SCOTUS in KSR said it wasn’t. The problem is how and when TSM can be applied after KSR. Right now, the Federal Circuit doesn’t have consitent track record on applying TSM post-KSR, and that’s a problem, including having the PTO Examining Corp understand that TSM isn’t dead. TSM requires factual support, be it in the references or otherwise, for why the proposed combination of references should be made. Or if Ball Aerosol says that factual evidence isn’t required, then we have no objective standard for determining obviousness, as the court (or patent examiner) can simply take the justification for combining references out of thin air (aka can be arbitrary and capricious). Again, I would rather read Ball Aerosol as being based on factual support for combining the references; the opposite interpretation leads to chaos and inconsistency.

  17. 53

    Mr Palmer, if TSM is deceased (which I doubt) I predict it will rise again from the dead, in the form of EPO-PSA, which is by now 30 years established at the EPO, unassailable, and a brutally efficient but fair and predictable way to nail down obviousness. We just have to wait till it arrives at Mr Gladwell’s “tipping point”. Then we’ll see something truly remarkable, namely, the end of 100 years of obviousness as the nexus of legal uncertainty.

  18. 52

    That is some serious wanking, Erez. Perhaps the worst I’ve seen here in some time.
    “Could someone explain why this is not “taking”?”
    BWHAHAAHA!!!! Wow, you outdid yourself immediately.
    Posted by: Malcolm Mooney | Feb 10, 2009 at 01:26 PM

    re “BWAHAAHA”:
    It was a serious question, I admit ignorance.
    If you don’t know, don’t answer.
    If you want to be snarky, you could write “Go to law school”.

    re Wanking.
    Funny, I know of a factory where disabled people are employed making something similar to these candles.

  19. 50

    It is rare that I agree with Malcolm Mooney, but IMHO the TSM test is as dead as the proverbial Norwegian Blue parrot. It has shuffled off its mortal coil, it has ceased to be, it has deceased.

  20. 49

    “doing computer searching using claim terms technically amounts to de facto improper hindsight”

    Is that nuance? LOL.

  21. 48

    StallSeekingGuy: “First of all, there is no such thing as “the explicit motivation test”

    Yes, that’s what the Federal Circuit told the District Court judge: “the district court erred in finding a requirement in KSR of an explicit motivation to combine,” exactly as I noted in my comment upthread.

    “Mooney can’t fathom the nuances”

    Yes I can. You can’t fathom irony, however. If you did, your own comments would make your head explode.

  22. 47

    “The so called TSM test (which was invented by the KSR court) is really the requirement based on ample FC precedent that stated that references cannot be arbitrarily combined, ”

    Maybe you didn’t hear, the SC is the CAFC’s superior court. What that means is … wait for it … the FC’s precedent means precisely this much ||.

    “And where none of the reference have the functionality of the method. ”

    While combining 5 refs for a single claim with 5 different steps isn’t exactly what I would call a great rejection, I do have to tell you that none of the refs having the functionality achieved by the claims (but not necessarily claimed) has no bearing on the obviousness determination.

    At all.

    And I’ve seen this precise argument from some apps. Except on a simple 2 ref combo. Ridiculous, but I guess they have to throw something up as a defense for what is likely their last worthwhile claim to draft.

  23. 46

    I’ll explain it again.

    The “TSM test” was (and is) actually a pretty good idea.

    At the time the CAFC was established, the PTO was bringing computer search capability online. Since doing computer searching using claim terms technically amounts to de facto improper hindsight (if you don’t understand why, are you listening Mooney, you should immediately leave the profession), the FC in their wisdom and in exchange for not making a big deal out of the hindsight thing (since computer searching in theory should make an examiner’s job easier) required examiners to at least provide some basis for combining references. At the time, the rejections resulting from computer searches were surprisingly poor since all the examiner did was plug in the claim terms (technically improper) and “combine” the top two or three references without even reading them. If the search results showed that all the claim terms were present, then presto the examiner had a 102 reference.

  24. 45

    First of all, there is no such thing as “the explicit motivation test”

    That’s what you get for listening to idi0ts like Mooney – you get stoopider and stoopider.

    The so called TSM test (which was invented by the KSR court) is really the requirement based on ample FC precedent that stated that references cannot be arbitrarily combined, that “there must be a teaching suggestion or motivation in the references themselves or in the knowledge generally available in the art”

    Its not surprising that idi0ts like Mooney can’t fathom the nuances there.

  25. 44

    “So the idea that there is a bar, a test or a standard is rubbish.”

    Uh, no. Just because you don’t like the test, doesn’t mean it doesn’t exist.

  26. 43

    Dear Malcolm

    Read KSR carefully.

    There IS no bar.

    There cannot be a bar because each case has to be decided according to the evidence. That is written into Graham v John Deere (US) or Windsurfing (UK). The only rule is that there is no rule – the Patent Office or the Court just has to decide the case on the evidence before it.

    There is a statue above most courts. It has the scales of justice on it. A court is just a machine for weighing evidence.

    So the idea that there is a bar, a test or a standard is rubbish. Is here a bar for murder? or negligence? The answer is that the court simply has to sort out the facts and reach a decision. But no bar!

  27. 42

    Yo, NWPA, we’re all waiting for your take on KSR. Was the point of KSR to lower the bar for finding obviousness such that strict TSM was no longer required? Let us know.

    /everybody

  28. 41

    >>Is anyone else seeing such increases in number >>of combined references?

    Yes. I see the examiner combining many references. They take a method claim, for example a method with 5 steps. They match a reference to each step without any tie in between the references and with no real reason to combine the references. And where none of the reference have the functionality of the method. I’ve appealed some of them. One was brought back to prosecution and allowed. The others are awaiting the board for what I am sure will be years.

    MM said:
    >>>Please do not address the troll

    You have sunk pretty low on this board MM.

  29. 40

    bsn “Eye, are you seriously suggesting that KSR did not remove the explicit motivation test?”

    Please do not address the troll.

  30. 39

    Erez “Manufacturer has two choices, either produce candle-tins in a third-world sweat shop or produce candle-tins in the US, in a plant which employs, for example, five disabled Americans. Without a patent, the manufacturer has only one choice. The sweat-shop owner thanks you”

    That is some serious wanking, Erez. Perhaps the worst I’ve seen here in some time.

    “Could someone explain why this is not “taking”?”

    BWHAHAAHA!!!! Wow, you outdid yourself immediately.

  31. 38

    MLB, I’m getting into that kind of number of references combined, even with claims in the 10-15 line range.

    I’m also getting references that are clearly just text searched for keywords. For example, in a case about fingerprinting digital audio, I got a reference about identifying and notifying a machine operator about dead pixels in a linescan camera of the machine during normal operation of the machine. The Examiner’s stated reason for combination was that because the limitation/method was not taught in the cited art, one skilled in the art would have to look elsewhere for such teaching.

  32. 36

    I have to agree with the the statement above:
    103 = 102 but with as many references as you like

    I just received a rejection that combines 5 references to reject the independent claims (and more to reject dependents).

    Is anyone else seeing such increases in number of combined references?

  33. 35

    1. If it is “obvious to try” then it is 103 obvious is redundant. How can you argue against someone saying the sun is hot therefore it is hot?

    2. If it is “common sense” then it is 103 obvious is redundant. If it is common sense it is obvious can be stated if it is 103 obvious it is common sense. This is the same as saying 1=1 and switching around the equation so that it reads 1=1.

    3. So now it is the Examiner’s motivation to combine that needs be taken into account: “The Federal Circuit clarified that statement – holding that the motivation need not be explicit in any prior art” but merely “a court must explain its motivation in combining two or more references to invalidate a patent for obviousness.” If you read over a patent application prepared under a duty to teach others to make etc. and you find each claim element some where in the 6,000,000+ US patents, of course you can make the invention. An examiner’s motivation for making the combination is hindsight coupled with getting paid to make a 103 rejection.

  34. 34

    Mad at 2.58pm – you don’t have to even find the element in the prior art. The prior art only has to suggest the invention, not teach it. (Don’t conflate the TSM test with the prior art combination “teaching or suggesting” the invention)

  35. 33

    Jaoi, good point. Indeed, I surmise that it would have been the decisive detail, had the sister app ever been examined at the EPO. The PCT search was done by the USPTO, and didn’t find Wright or Marchi, but the EPO would have topped it up, soon after entry into the regional phase.

  36. 32

    What worries me about this case is that the discussion of “analysis should be made explicit” could be misconstrued that no evidence need be provided to support the “analysis.” But that’s not what the panel (I hope) did by stating that: (1) all limitations were in the prior art; (2) the claimed configuration was known; and (3) the problem was known (i.e., the “motivation”). Unfortunately, this Federal Circuit panel should have been more careful to point out that evidence to support this “explicit” analysis, be it the art teachings or otherwise, is still required, even under KSR. I’m afraid the PTO may misread this case as allowing them to make any analysis they wish, and not have to support it with any evidence. That’s an invitation to chaos and inconsistent determinations under 103.

  37. 31

    I haven’t read the comments, but, it seem to me that the reference Professor Crouch discussed in the Notes that “specifically discussed object of creating space between the candle and the surface to avoid scorching problems” provides “motivation” under the prior “Teaching Suggestion Motivation” test. In this case, KSR is besides the point.

  38. 30

    Nothing to see here really as regards obviousness/KSR.

    More interesting point is that the Federal Circuit agreed that “the [lower] court erred in reading the claims to cover any product “reasonably capable” of being configured in the same manner.”

    The claim language is horrible, conflating article features and usage features:

    1. A candle tin comprising:
    a hollow candle holder closed at one end in which a candle is disposed, the candle having a wick for the candle to burn when the wick is lit, the lit candle producing heat a portion of which is transferred through the holder to a surface upon which the candle tin is placed;
    a cover sized to fit over the holder and removably placed over an open end of the holder to cover the candle when the candle is not lit, THE COVER, WHEN REMOVED, BEING PLACED UPON THE SURFACE WITH THE HOLDER BEING SET UPON THE COVER FOR THE COVER TO SUPPORT THE HOLDER ABOVE THE SURFACE WHEREBY THE HEAT GENERATED BY THE BURNING CANDLE DOES NOT DAMAGE THE SURFACE, the holder and cover being cup shaped WITH THE COVER PLACED UPON THE SURFACE OPEN END DOWN SO A CLOSED END OF THE COVER SUPPORTS THE HOLDER ABOVE THE SURFACE, A CLOSED END OF THE HOLDER BEING ADJACENT THE CLOSED END OF THE COVER; and,
    protrusions formed on the closed end of the holder and extending therefrom, THE PROTRUSIONS RESTING UPON THE CLOSED END OF THE COVER TO SEAT THE HOLDER ON THE COVER.

    So even if the claim had been valid, it wouldn’t have been infringed by selling a candle that just had bottom bumps and a lid.

    How hard would it have been to draft a claim that said that the holder has got protrusions on its bottom and a cover that fits on its top, the cover being configured so that the holder can sit on it, resting on the protrusions??

    That’s a much more salutary lesson for drafters/prosecutors, whether or not they be parakletophiliacs or parakletophobics.

    [Hmmm – suppose you put the bumps on the lid….]

  39. 29

    “It is impossible to imagine how this could happen without the patentee misleading the district court”

    The district court does not seem to have made the statement of law attributed to it here.

    According to the quote in the appellate opinion, the district court docket entry stated that KSR required “that the analysis of a motivation to combine “should be made explicit.'”

  40. 28

    Malcom said at 4:20 PM:
    “It’s cases like this that guarantee America will never lead the world in candle tin innovation”

    Sarcasm is great fun, but in real life even candle-tins are important.

    Manufacturer has two choices, either produce candle-tins in a third-world sweat shop or produce candle-tins in the US, in a plant which employs, for example, five disabled Americans.

    Without a patent, the manufacturer has only one choice. The sweat-shop owner thanks you.

  41. 27

    What would have been interesting, Paul, is to see how the EPO’s 30 year old, long-established, hindsight-free TSM methodology would have tackled the claims of patent family sister app WO 02/12789. But, for some reason, Applicant chose not to enter the EPO regional phase. Shame.

  42. 26

    The Applicant drafted and prosecuted the application in 2000, and a patent was granted in 2002. The infringement suit was brought in 2004.

    Thus the Applicant made significants investments in product-development, marketing and pricing in addition to legal costs (from drafting, prosecution through the CAFC) in good faith, because the patent was assumed valid and enforceable.

    Suddenly, the patent became invalid because of KSR which came out in 2007.

    Could someone explain why this is not “taking”?

  43. 25

    It is interesting that the need for the word became apparent once the word had been created. Hindsight is always 100%

  44. 24

    Paul, it is astonishing (surprising?) that your word has never been coined before, given the long felt want for it, now that that this particular phobia has got close to epidemic proportions. So, secondary considerations suggest that your new word is also not obvious. Further, it’s not predictable, and there is no hint or suggestion of it in the state of the art. Mind you, it is just a collocation of old elements. Interesting how some collocations of old elements are prima facie not obvious. And I like your inventive selection of old elements. I thought at first that one of them was KLEPTO- but that’s something completely different, right?

  45. 23

    whew,

    I thought I had parakeetophobia, an abnormal or undue fear of small house birds.

    To me, those small birds are more scary than the trial advocates.

  46. 22

    It occurs to me that I have made up a word which so far as I have been able to tell is new to the English language but which I hope will catch on, at least in the patent community.

    The word is PARAKLETOPHOBIA, being an abnormal or undue fear of trial advocates or lawyers, often leading to unwise or irrational behaviour.

    There is a fine line between avoidance of patent profanity and parakletophobia.

  47. 21

    In UK the courts can and sometimes do hold patents invalid for lack of inventive step having regard to the common general knowledge. This patent, if it had been litigated in the UK, could well have been held invalid on such grounds. The cover acts as a base and lifts the candle holder above the support surface. Protrusions on the base of the holder act as legs and reduce contact and hence conductive heat transfer from the base of the can to the cover which is now acting as a base.

    Nothing unusual or surprising happening – just routine means to deal with known problems.

    I agree with Max (but as another European I would). If you want a good chance of a patent being held valid look for unexpected advantages, spell out in the specification what they are and what features give rise to them, and tell a good story. If the story is true, then the advantages of telling it should overcome perceived parakletophobic (trial lawyer-fearing) concerns.

  48. 20

    “This one looked pretty obvious to me” now seems to be the standard US test of patent validity, from SCOTUS down to bsn. Also in the PTO, in the FAOM, if I understand it right. So, the cavalry coming over the hill, to save the claim, is affidavits and secondary considerations, right?

    So,why all the distress? In thin times, when a poor patent lawyer starts to wonder where the next billable hour might come from, this is great news, isn’t it?

    Or will it cause a gradual return to old drafting habits, drafters once again telling a winning story, about a problem in the field, and how the solution was found, in the combination of features that constitutes claim 1, so that readers are helped into a mindset other than “This one looked pretty obvious to me”.

  49. 19

    Let’s try not to go over the top here, people. KSR clarified that the the TSM test was not the be-all and end-all. It doesn’t stop an argument that a combination of known features is non-obvious. It’s just that your combination does, you know, need to be non-obvious. This one looked pretty obvious to me.
    And Eye, are you seriously suggesting that KSR did not remove the explicit motivation test?

  50. 18

    “It’s cases like this that guarantee America will never lead the world in candle tin innovation.”

    Its comments like the above that virtually guarantee that no one will EVER see Mooney as anything but an annoying troll.

  51. 17

    “The entire point of KSR was to remove the explict motivation test. KSR can not be credibly read to stand for anything less.”

    The above is NOT the entire point of KSR.

    Are you pretending to be a patent attorney again Mooney?

  52. 15

    “In A.D. 2009
    War was beginning.
    Patent Owner: What happen ?
    Patent Attorney: Somebody set up us the bomb.
    Patent Owner: We get signal.
    Inventor: What !
    Patent Owner: Main screen turn on.
    Inventor: It’s you !!
    SCOTUS: How are you gentlemen !!
    SCOTUS: All your base are quite obvious.
    SCOTUS: You are on the way to destruction.
    Inventor: What you say !!
    SCOTUS: You have no chance to survive make your time.
    SCOTUS: Ha ha ha ha ….

    [begin techno beat]

    All your base, your base, your base
    All your base, are quite obvious

    Posted by: AYBABTU | Feb 09, 2009 at

    I loled even though I thought of similar years ago. I might have pubed it here as a matter of fact.

    My fav: Somebody set up us the bomb.

    It should be Somebody set up us the U.S.C 103 though.

  53. 14

    Beginning next week, the CAFC will begin to daily publish a list of 1000 “obvious” extensions of what already is.

    Obvious means easy.

    So this should be no great burden on the CAFC.
    They will simply look at 1000 existing patents and tell us what the obvious to try next variations are.

    This will help avoid the evil, submarine invalidations.

    We all despise submarines, don’t we?

  54. 10

    In A.D. 2009
    War was beginning.
    Patent Owner: What happen ?
    Patent Attorney: Somebody set up us the bomb.
    Patent Owner: We get signal.
    Inventor: What !
    Patent Owner: Main screen turn on.
    Inventor: It’s you !!
    SCOTUS: How are you gentlemen !!
    SCOTUS: All your base are quite obvious.
    SCOTUS: You are on the way to destruction.
    Inventor: What you say !!
    SCOTUS: You have no chance to survive make your time.
    SCOTUS: Ha ha ha ha ….

    [begin techno beat]

    All your base, your base, your base
    All your base, are quite obvious

  55. 9

    From the decision: “In addition, the district court erred in finding a requirement in KSR of an explicit motivation to combine.”

    It is impossible to imagine how this could happen without the patentee misleading the district court.

    The entire point of KSR was to remove the explict motivation test. KSR can not be credibly read to stand for anything less.

  56. 8

    It’s cases like this that guarantee America will never lead the world in candle tin innovation.

  57. 7

    “Has anyone recognized that, post KSR, the de-facto standard for patentability in the USA is absolute novelty? That is, at least one feature of the claim has to be novel, in that it can be found in NO reference. ”

    Very nearly. And that’s closer to the intent of the statutes.

    As to jk’s assertions about the “new use” clause being rendered meaningless I have to remind him that we’re talking about a “new use” not “an obvious combination” when we read 101. As he is well aware, there are relatively few “new use” patents since it was held that if the prior art was capable of performing the new use then it anticipates/renders obvious.

  58. 6

    “103 = 102 but with as many references as you like.”

    That is exactly what it has become, both at the USPTO and at the CAFC.

  59. 4

    Uh, sorry guys. But if you’re looking for a poster child case that 103 doctrine has run amok, this is not your case.

  60. 2

    Mad:

    I believe you are 100% right.
    Post KSR sets standards for patentability virually render 35 U.S.C. § 100(b), “The term ‘process’ means process, art or method, and includes a NEW USE of a KNOWN PROCESS, machine,manufacture, composition of matter, or material.”
    meaningless.

  61. 1

    Has anyone recognized that, post KSR, the de-facto standard for patentability in the USA is absolute novelty? That is, at least one feature of the claim has to be novel, in that it can be found in NO reference.

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