Bits and Bytes No. 127: Patentability shall not be negatived by the manner in which the invention was made.

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Federal Circuit En Banc:

  • On September 18, the Court of Appeals for the Federal Circuit will sit en banc to hear two non-patent cases.
  • Nebraska Public Power v. US:
    • The Nebraska case is one of several dozen Federal Claims actions against the US Government for breach of contract and takings for the Government’s failure to begin removing spent nuclear fuel.
    • Question: Does the mandamus order issued by the United States Court of Appeals for the District of Columbia Circuit in Northern States Power Co. v. United States Dep’t of Energy, 128 F.3d 754 (D.C. Cir. 1997) preclude the United States from pleading the “unavoidable delay” defense to the breach of contract claim pending in the United States Court of Federal Claims, and if so, does the order exceed the jurisdiction of the District of Columbia Circuit?
  • Henderson v. Dep’t of Veteran Affairs:
    • Equitable tolling of claims for veteran’s benefits
    • Question: Does the Supreme Court’s decision in Bowles v. Russell, 127 S. Ct. 2360 (2007), require or suggest that this court should overrule its decisions in Bailey v. West, 160 F.3d 1360 (Fed. Cir. 1998) (en banc), and Jaquay v. Principi, 304 F.3d 1276 (Fed. Cir. 2002) (en banc), holding that 38 U.S.C. § 7266 is subject to equitable tolling?.

Relevance of the “manner in which the invention was made:”

  • 35 U.S.C. 103(a) makes clear that “[p]atentability shall not be negatived by the manner in which the invention was made.” That final sentence of the paragraph was apparently intended to contrast the 1952 law from the Supreme Court’s loose statement in Cuno that a patentable invention must “reveal the flash of creative genius.” 314 U.S. 84 (1941).
  • Should this statement be interpreted to mean that the inventor’s actual process has no relevance to the questions of novelty and nonobviousness? Or, is there still room for a jury to consider the actual creativity and genius of the inventor and the process used. (This question was suggested by a comment on the blog).

79 thoughts on “Bits and Bytes No. 127: Patentability shall not be negatived by the manner in which the invention was made.

  1. 79

    Fair enough Eurodisnae. Agreed. I look forward to further debates between us, and with others (Lionel), in these illustrious (mostly) pages.

  2. 78

    Fair enough Max.

    We can disagree on the quality of the tool, while agreeing that the workmen sometimes fail to make the best use of it…

  3. 77

    Disnae, in short (for I shouldn’t be doing this time-consuming blogging during working hours) it looks to me as if I blame the workmen, and you blame the tool. I think we can agree to differ. Neither of us can prove the other wrong. We’ve had a good argument. Readers are free to decide for themselves. I don’t want to bore readers with repetition.

    Do you therefore mind if I choose not to accept your invitation (or is it an instruction) to “remind”?

  4. 76

    “I suspect that it kills inventive contributions as often as it lets obvious stuff through”

    We certainly are on point. If used as a coarse filter in primary examination, PSA should err on the side of the applicant, with no presumption of validity. Now remind us all why PSA is a hot knife through the hard butter of obviousness…

  5. 75

    Lionel, I wanted to say, on defining the “market”, that the caselaw (presumably) gives guidance (rules?) about how to go about the task of defining it. We don’t have to make up the methodology with each new case.

    Disnae, now we really are on point. Common general knowledge (the mantle). It is not as if PSA forbids us to adduce evidence. In England, it is indispensible, to get your case on foot. In the EPO it’s not wanted and not given weight because the Rapporteur fancies himself already, as the definitive PHOSITA. (My view is that this distinction is inherent to the difference between common law and civil law) Question is: what does the Problem and Solution Approach dictate, about how to take account of cgk? I think that establishing the cgk is essential to doing PSA “properly”. As you say, PSA done EPO style is imperfect, and only a coarse filter.

    I’m not sure though that EPO-PSA always favours the inventor. I suspect that it kills inventive contributions as often as it lets obvious stuff through. but, if it were to be operated under English litigation rules, with top class litigators on each side, both with an unlimited budget, it would get it right, every time. And its example would show DG3 how to do it better.

    Then we would have the satisfaction of seeing EPO jurisprudence and English High Court jurisprudence nudging each other and mutually reinforcing each other, instead of fighting each other. For anybody who wants to see clear English thinking dominating patent litigation in Europe, here’s one way to further that aim.

    For legal certainty, it is an advantage if obviousness is handled in the Patent office, pre-issue, according to the same methodology as the Supreme Court will do it later, in blockbuster litigation.

  6. 74

    Max

    I guess I’m saying that PSA does not – in fact – add that much to Pozzoli. Pozzoli looks at the differences between the state of the art and the claim and asks whether the differences are obvious. If there is a clear “hint or suggestion” in the prior art to get from the closest prior art to the claim then the chances are that the claim will be found obvious in either case (Pozzoli or PSA). Failing the PSA test creates a strong case that the claim is not inventive. Passing the test does not necessarily mean that it is inventive. That’s what caused all the trouble with strict TSM in the USA. You can think of PSA as a first stage filter that can usefully be applied within the context of the Pozzoli analysis.

    A significant proportion of cases – I would go so far as to say most – are not clearly and neatly resolved by PSA, but the EPO has a tendency to shoehorn them into it anyway.

    Further, PSA does not give enough weight to the particular characteristics of the skilled person and her common general knowledge, in the way that is central to the Pozzoli approach, and EPO tribunals are much too fond of believing that they understand the mind of the Phosita without reference to other evidence.

    There’s a strong argument that primary examination of inventive step by a Patent Office should be used only to screen out claims that are manifestly undeserving of a patent, and let interested parties argue the toss for those that get through and that anyone actually cares about. In that context, PSA can serve a very useful function (the equivalent use of TSM by the USPTO perhaps fails because of the strong presumption of validity). But once you get to oppositions and appeals, the EPO needs to be a lot more willing to look at the question of obviousness in the round and to be more willing to entertain evidence of the real world background – which basically takes you to Pozzoli or something very like it.

  7. 73

    Max,

    Let me try another tact. You have written some thoughtful and intelligent comments, which is why I am surprised by your comments here.

    You do understand that two different people can look at the exact same facts and apply the same test and arrive at different conclusions, don’t you? This isn’t objective reality. It involves a level of interpretaion and the fact that different people view facts from different frames of reference.

    Your comment in response to me that you believe there would be a degree of legal certainty in defining the market comes across as naive. What’s the market for satellite radio. Is it radio? Is it satellite radio? Is it broadcasting media, generally? I know what I believe is right, but others would argue differently.

    I realize the antitrust stuff is off-point, but you seem to think the people rationally applying the PSA to the same references will reach the same conclusion. That is naive in my opinion.

  8. 72

    OK Disnae. But in that case, I’m having difficulty seeing why you’re not as much of a fan of it as I am. Look at the English Pozzoli “test”. It and the US “test” (Deere, Graham or something) just march you up to the starting line and then give you no more help with the decisive question “Well then, now we all prepared, tell me. Is it or is it not obvious?”.

    At least with EPO-PSA, we never have to ask that impossible question.

    Instead, we have a much more black and white factual question “Does the prior art universe give the PHOSITA a hint or suggestion, to modify D1, by incorporation in it of technical feature X, in order to achieve technical effect Y”.

    That is something opposing sides can usefully debate before a finder of fact, to leave the fact-finder well furnished with the evidence and the argumentation that will serve as the indisputable basis (minimising the prospects for a successful appeal) of a fair Decision.

  9. 71

    Max, you should know by now that I don’t consider the PSA to be fundamentally flawed. It is, or at least can be, very useful. But it still leaves plenty of room for slips twixt cup and lip.

  10. 70

    Disnae thanks but it’s a bit hard to debate on that basis. The case is etched deep in you but for me all I have to go on is what you write. I gather that you are using it as a means to reveal that EPO-PSA, as such, is fundamentally flawed, in that for specific fact patterns it inevitably leads to results that are troubling. Forgive me but I haven’t yet grasped the story enough to be convinced that your premise has merit.

    At the EPO, we should factor in two things:

    1. A residual “benefit of the doubt” accruing to the inventor. Otherwise put, Opponent carries the burden.

    2. A natural human instinct, in any EPO oral proceedings, to give each hard-working dog a bone to take home.

    Had you been Opponent, with all the time in the world to assemble your evidence, would the patent still be subsisting?

    More times than I care to mention, I receive the EPO Decision at oral proceedings convinced that the tribunal got it wrong (sometimes when it decides in my favour). I think that the tribunal screwed up, or one or other advocate, but I never think that EPO-PSA, as such, is to blame.

    Having said that, I am also a fan of patent litigation the way it is done in England. Now if they could just try EPO-PSA in the English courts, the quality of English barristers and English judges would reveal EPO-PSA as a rapid, predictable and fair way to do obviousness, which the rest of the world could then adopt.

  11. 69

    Max

    My favourite “war story” involving PSA came from an opposition. It was about gear mechanisms. Claim 1 as opposed required the use of a particular type of one-way clutch at a certain point in the transmission path. The closest prior art, D1, used a completely different type of clutch at the same location in a similar transmission in exactly the same context.

    The opponent cited a mechanical engineering text book, D2, that disclosed a plethora of types of one-way clutch for all kinds of purposes, including a type much the same as the first clutch of the claim. There was nothing in the prior art to suggest that such a clutch was likely to be useful in the specific context recited in the claim. The reason for using this particular type of clutch was to reduce idling noise and to enable smoother gear changes. The opposition division decided that it was well known that these kinds of clutches were quieter and smoother than other types and that was enough to render the use of such a clutch an obvious solution to the problem addressed; i.e. it would be obvious to replace the first clutch of D1 with the clutch that was known from D2.

    The auxiliary request required a second clutch, identical to the first, at another point in the transmission path. D1 also had a clutch at the corresponding point. It was a similar type of clutch to that of the claim and as taught by D2, except that it lacked a particular feature. I argued that the skilled person would have no motivation to replace or modify the existing second clutch of D1 to be the same as the first clutch. The opponent’s rep couldn’t point to any problem that would obviously be solved by such a modification to D1. The opposition division agreed with me and the patent was maintained on that basis. Unfortunately, the official minutes did not record the audible sound of disgust that emanated from the opponent’s rep when this was announced.

    I had mixed feelings about that one. I thought the rejection of the main request was poorly founded – there was no real pointer in the prior art, which spanned decades and included all manner of generally similar transmissions with various clutches, to the selection of this very particular type of clutch for use in this very specific context. On the other hand, in my own heart I felt that if it really was obvious to use that type of clutch in place of the first clutch of D1, it couldn’t really be inventive to use the same type for the second clutch. But I knew the logic of the PSA couldn’t take you there, and I played the game like the pro that I’m supposed to be. And I really didn’t think the patent deserved to be revoked.

    As far as I’m concerned, in that case the PSA was used to reach the wrong conclusion twice, in opposite directions.

    The facts of this case have been modified to protect the innocent, but the flavour is true to the original…

  12. 68

    Thanks again Lionel. My fervour in these pages is indeed driven by the feeling that nobody else can see it. So, I suppose it is in a way “religious”. What is obvious to me isn’t obvious to anybody else.

    But I don’t have that feeling when I’m arguing PSA at the EPO.

    First off, the Opponent can pick as “closest” art anything she likes. If it isn’t the best “starting point” under EPO-PSA, then I have better chances, as patentee, to see off the attack.

    Second off, I have problems with obviousness being decided on the evidential record of facts established by testimony created after the event, with knowledge of the invention. MM in these pages has pointed out the ease with which “unexpected technical effects” (facts, no?) can be conjured up out of thin air, long after the app was filed. Under EPO-PSA, they had better be flagged up, in the app as filed. Otherwise patentee, pressing the defence, is going to be invoking them in vain. They simply don’t “count”. Most evidence of secondary indications is tainted in this way. It is given short shrift by anybody who has caught the EPO-PSA bug, because EPO-PSA exposes how little it helps, on the core question.

    Third, you make it sound as if the judge defines “the market” like a conjuror pulls a rabbit out of a hat. There’s caselaw, isn’t there, about how to define the market. There must be a degree of legal certainty, by now.

    Fourth, there are hundreds of rubbish decisions from the EPO. Not even the perfect obviousness framework can neutralise poor judges. But let’s keep the debate on point, arguing about the merits of EPO-PSA as such, rather than the de-merits of particular practitioners of it.

    But let me end on a conciliatory note. TBA Decisions at the EPO are full of subjective judgement. Absolutely. My fervour hasn’t got rid of it just yet. But my best chance to squeeze it down to the irreducible minimum is EPO-PSA. Compare Japan. What the f…am I supposed to do, when the Exr writes that it’s all obvious for the PHOSITA because he could “easily” get to the claim by combining the references. That’s the legal test. Unassailable. How does one react to that? EPO-PSA doesn’t work like that, thank goodness.

    You should try being an EPO representative sometime. It is enormously satisfying. And it will turn you into a fan of EPO-PSA.

  13. 67

    BTW Max,

    I happen to think the PSA as you have presented it is better than the US obviousness system. I just don’t have the religious fervor you seem to have.

  14. 66

    I get dyslexic when I type sometimes.

    The last word of the first sentence of the second paragraph should be law not wall.

  15. 65

    Max,

    Let me try a different tact, In competitive law analysis, at least in the US, the first thing you do is establish the relevant market. This is ostensibly objective, but is prone to the same subjective interpretaions that I believe the EPO-PSA is. How the market is defined greatly influences the outcome of any American antitrust analysis.

    In fact all appellate decisions are based upon the facts as enteredinto the record. Are courts just objectively applying the wall? If so, if there is no subjectivity, why not replace all appellate judges with computers and enter the record and let it decide?

    What you are basically arguing is that there will be no dispute about the interpretation of the disclosures or what the gap between the disclosure of the application and the reference is. Hell, you’re assuming there will be no argument over what the closest reference is.

    If you want to come back and say that you are arguing no such thing, if anything I said in the previous paragraph is wrong, then you are admitting the process is subjective. You cannot have it both ways Max.

  16. 64

    Lionel, thanks and I see that I’m still failing to get across to readers how different it really is, to argue obviousness under EPO-PSA as opposed to “conventionally”. I am curious: how often have you presented Opponent’s position, that a claim embraces something obvious, to a Technical Board of Appeal at the EPO, then withstood the counter-attack from the patent owner, then explained to the Board why your attack ought to succeed despite the arguments of the patent owner? Have you any idea how soon the whole cool, objective rational process is over and done with?

    Readers, send in your instances of injustice at EPO TBA level. There are thousands of such Decisions by now, all available from the EPO as pdf and all on files you can read online, cover to cover. Which are your favourites that reveal how crap EPO-PSA is?

    EPO-PSA measures a “gap” between two fixed points, the claim and D1. Then we argue about that defined gap. I think the argument is more focussed than one in which the gap is between the claim and the immense prior art universe, as such. Some say that, as a consequence, EPO-PSA is “artificial” but when was that ever an objection to the novelty issue?

    As to “hindsight”, I must repeat what I wrote to 6, but I’ll do it in other words. We can’t avoid doing the analysis years after the claim was written, looking backwards, with all the knowledge we have accrued in the meantime. To say that is just trite. What we need is an approach to the analysis that allows a protagonist to call out the other fellow, as soon as the other fellow invokes any of that belated knowledge when presenting argument or evidence. We need an approach that makes it easy for the tribunal, immediately to see when belated knowledge is being relied upon. EPO-PSA is that approach. If you were made a TBA member for 3 months, you’d soon see.

    Disnae, I sometimes think UK patent attorneys are spoiled. They have never had the experience of our colleagues in other jurisdictions with frustrating Office Actions such as “The skilled person would have found it easy to combine the references: claim obvious”. We had no examination of obviousness up to 1978. Then we had EPO-PSA, from then until now.

  17. 63

    Max,

    I was temptd to simply reply to your rabid assertion with an “I’ll show you how hindsight comes in, when you show me how it does not.” Which you haven’t done. You seem to want arguments, but fail to present any of your own.

    However, in your words,

    “Look, in EPO-PSA, you derive obviousness from the content of two docs written before the filing date of the claim, namely what the inventor wrote in the app and what D1 wrote in her prior publication.”

    However, you are comparing these documents after the invention has been created. The magnitude and the quality of the differences do not appear to be any less subject to hindsight than in the US obviousness system.

    I don’t see how any rational person could conclude that the outcome is objective.

    Like I said, it’s one thing to argue that it simplifies analysis, or even that it is more objective than the obviousness analysis but when you say the “EPO-PSA substitutes an emotional, subjective, irrational argument with cool, objective, rational argument.” you cross the line from rational objective argument to irrational zealotry yourself.

  18. 62

    Max
    I’ve always agreed that PSA provides a useful framework, particularly in the multinational hurly-burly of the EPO, I just don’t think its hit-rate in resolving genuine controversy is as good as you do.
    No harm in that.

  19. 61

    Disnae, I agree that formulation of the objective technical problem (OTP) is the crux. I agree that the Examiner must don the mantle, and that is also a key issue.

    But my point is that these issues can be debated rationally and objectively. This is much better than “It is obvious because I say it is obvious”.

    Instead, there is a debate about what is the OTP, and it’s based exclusively on the real words of two real documents both created before the day on which the claim was filed at the PTO. Nearly always, the OTP emerges without much argument (although I concede there are not a few cases where it’s a real scrap).

    I don’t say that EPO-PSA renders argument redundant. Heaven forfend. I would be out of a job. I just say that EPO-PSA substitutes an emotional, subjective, irrational argument with cool, objective, rational argument, and that this is valuable.

    Sometimes one loses an argument, despite having right on your side. Solution: next time know the Rules of Play better than the other guy, and argue your case in a way that’s more persuasive to the tribunal. That’s our job, right?

    We could discuss the problems of written proceedings, annexes to Summonses, and oral proceedings, but not here I think.

  20. 60

    Max, the devil is in the formulation of the technical problem after the closest prior art has been identified. Few are the cases in which the problem is spelled out in neon in the prior art. The trouble comes as soon as the examiner dons the mantle of the skilled person.

    This is a brief expression of a complex situation, but I think it reasonably distills the nub of the issue as I see it.

  21. 59

    Thanks for that thoughtful offering Lionel. But nevertheless I see it as one more example of prejudice against EPO-PSA. You say that with EPO-PSA:

    “it’s still easy to see that hindsight can affect the result.”

    but you don’t say how. I suppose you think it’s so obvious that it doesn’t need to be said. But for me, it does.

    Look, in EPO-PSA, you derive obviousness from the content of two docs written before the filing date of the claim, namely what the inventor wrote in the app and what D1 wrote in her prior publication. The words are what they are, whether you are reading them on the filing date or 10 years later. The outcome is the same. The intervening 10 years, and the hindsight benefits that brings, avails the attacker nothing. So, for me, it ain’t “easy” to see how hindsight can affect the result.

    May I have a reasoned response? It doesn’t have to be from you. I will take on all comers. That would be really great.

    I get passionate about this because I do think that PSA squeezes out hindsight, and frustrated because nobody here grasps that valuable point.

  22. 58

    Max, your last point also demonstrates a perception problem on your part. I haven’t seen anyone on here denigrate the EPO-PSA system. Not saying they haven’t, just saying I haven’t seen it. You appear to be the one upset that everyone doesn’t simply accept how great and wonderful it is.

    You remind me of Americans who who don’t like the French, primarily (it appears~) because the French don’t accept that the USA is the best country in the world. I get annoyed with those people too.

    However, the EPO-PSA is a simple enough concept and certainly may provide some more structure to your analysis, but it’s still easy to see that hindsight can affect the result.

  23. 57

    Nice to hear from you Disnae. And nice to read your helpful and thoughtful contribution.

    When you write of EPO-PSA that it is:

    “…no more than a sometimes useful tool for establishing a strong argument that a claim is not inventive,”

    I think that too is helpful, in that you make my point, above, that EPO-PSA is not an easy sell.

    But then I would think that, wouldn’t I? See, I’m the one who just won’t be told, that EPO-PSA is useless. I’m the one who finds useless all the attempts to rubbish it. Remind me Disnae, what was it about EPO-PSA that gets your goat? Not hindsight, it seems. Maybe it was “artificial” and “not realistic” (even though I had thought I had squashed that one).

  24. 56

    @6 re “An invention shall be considered as involving an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the art.”

    6, as Max well knows, I’m not the biggest fan of PSA, regarding it as no more than a sometimes useful tool for establishing a strong argument that a claim is not inventive, so I’m not here to take his side.

    Sure, there is room for argument that “non-obvious = inventive” is not necessarily the same as “obvious = non-inventive”, which is what I think you’re saying, but you’re really flogging a dead horse there. For all practical purposes, under the EPC, it is in fact true that obvious = non-inventive, therefore not patentable, ever.

    103 itself refers to “non-obvious subject matter” and “subject matter [that] as a whole would have been obvious at the time the invention was made”. Non-obvious = patentable, subject to all other criteria being satisfied. Obvious = non-patentable, period.

    There certainly are many big differences in practice between the US and EP, but I would hope that the quest for a sensible approach to obviousness/inventive step can be seen as a common cause.

    The assessment of patent claims necessarily involves after-the-event fact finding, based on the wording of the claims. Hindsight is unavoidable, which is where the notion of “impermissible hindsight” comes from. Here’s the claim and over here’s the most relevant prior art – is there an obvious line of reasoning that would take the skilled person from the prior art to the subject matter of the claim? That’s what PSA seeks to analyse. How is that fundamentally different from US practice?

  25. 55

    Once more, dear readers, (but 6, this is NOT for you, of course). Under EPO-PSA, whether a claim embraces obvious subject matter emerges, automatically, from one specific step, unique to the EPO approach. That unique step is to compare what two people wrote in their respective documents that were written BEFORE the date of the claim and to discover from those two documents what technical features in the claim in view deliver what technical effects.

    The 6 “take” on “hindsight” irritates me too. Short of deciding on patentability BEFORE the invention is made, we are all doomed to be looking backwards in time, when trying to decide whether a claim is or is not valid. But there is more than one way to ponder what PHOSITA would or would not have done, at the decisive date, years earlier. One way is to let into the analysis of validity documents in which people have written, AFTER the claim was filed, about the technical effects achieved by the claimed subject matter. Another way ( the way the EPO does it) is to decide the issue exclusively on what people wrote about technical effects, BEFORE the claim was filed.

    I assure readers that what I write is not nonsense. I don’t want to discuss it with a Senator until patent specialists in the USA have begun to understand EPO-PSA. As I have explained for two years now on this blog, most academics and attorneys in private practice have vested interests which prompt them to rubbish the PSA that was invented not by a Professor or a patents judge but by an upstart Patent Office. However, EPO-PSA is by now unassailable in Europe and, increasingly (and perhaps grudgingly), the patent litigation communities in England and Germany are coming round to accepting it as offering an approach better than anything they have ever been able to come up with. Sigh.

  26. 54

    Max stop playing like you’re a re tard.

    “An invention shall be considered as involving an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the art.”

    That is what it says. It does NOT say that an invention will be considered to lack an inventive step if it is obvious. Perhaps there is an inventive step despite it being obvious. I can’t say, and neither can your pathetic excuse for an “article”.

    “As to “hindsight” I am driven to comment that there is none so blind as he that will not see. I think you’re not trying, 6. And it’s very evident that, on EPO-PSA, you are like a great many others: you are sure you understand it already, so can’t be faffed to try to understand it properly. You make very eloquently the boring old point I have been making in these threads all through these last two years, that PSA is like learning to ride a bike. Nobody (but nobody) cracks it until they have put in the hard graft, of learning how to balance and steer. But once you’ve “got it”, you will wonder why you ever had a difficulty with it.”

    Go d you’re dmb.

    “It’s therefore objective and free from hindsight.”

    O rely? Next time you’d like to take two references to invalidate a claim, try not ever reading the claim first. Without hindsight you don’t even know what references to pick up. In about a zillion years you can get back to me after having achieved success.

    Good job redefining hindsight to exclude all the hindsight your method encompasses.

    “You say that selection of D1 is the hindsight step”

    And you have yet to refute that with anything meaningful though you dance and prance around the issue like a fo ol. And you never will refute it, because it is irrefutable.

    By the by, selection of D1 isn’t the only hindsight step. Deciding to run a search in a specific location of your classification is a hindsight step. And so is the selection of D2. And so is the selection of a problem. And so is… etc. on forever.

    I’m tired of talking about your bs system. And that’s the end of my discussing it. It has no relevance to our system what so ever.

    “Wouldn’t you, as an Examiner, rather have an objective, hindsight-free test”

    I’ll tell you what I would prefer. I would prefer if you peddled your nonsense to a senator instead of me.

  27. 53

    Then we must agree to differ 6.

    Art 56 EPC defines “obvious” as the antonym of “inventive” and then proceeds to exclude patentability for obvious subject matter. Tell me again: how is that the “opposite” to 35 USC 103.

    As to “hindsight” I am driven to comment that there is none so blind as he that will not see. I think you’re not trying, 6. And it’s very evident that, on EPO-PSA, you are like a great many others: you are sure you understand it already, so can’t be faffed to try to understand it properly. You make very eloquently the boring old point I have been making in these threads all through these last two years, that PSA is like learning to ride a bike. Nobody (but nobody) cracks it until they have put in the hard graft, of learning how to balance and steer. But once you’ve “got it”, you will wonder why you ever had a difficulty with it.

    Under PSA, one takes two documentary disclosures, both written before the date of the claim. You subtract one from the other. The rest follows, like night follows day. It’s therefore objective and free from hindsight. You say that selection of D1 is the hindsight step but even that step is controlled by what the inventor defined, prior to the filing date, as the technical field and the pre-existing problem to be solved. If perception of the problem was the non-obvious contribution to the art, that’s enough, under EPO-PSA, to qualify the inventor for a 20 year monopoly for making that perception. OK?

    What the named inventor subjectively “thought”, and whether she went through a valley of toil or a flash of inspiration, is as irrelevant to EPO PSA as whether the inventor “thought” that planet Earth was flat or round. Come on 6. Think about it. Wouldn’t you, as an Examiner, rather have an objective, hindsight-free test, based exclusively on documents written before the legal date, than a slew of BS ex post facto affidavits written yeaers later, and for no other reason than to bamboozle you?

    I hope you are not going to be assessing arguments for patentability from my clients, when they petition the USPTO for the issue of a patent. I get the feeling that you’re hopelessly prejudiced. Sad really.

  28. 52

    Stay. on. target.

    Art 56 says the opposite of what you suggest.

    I don’t want to hear about your bsing in Europe about how you’ve eradicated hindsight. All you did was redefine hindsight to what we call “improper hindsight” here, and then claim to have annihilated it. Whoopie. We did that too. You still have actual hindsight in all analysis of claims. It is a built in feature of analyzing a claim.

  29. 51

    NAL,I’m glad you’re moved to express your appreciation. I’ve thought hard about how to reply to your questions above but, sorry, I’ve drawn a blank.

    Meanwhile, I see no further contribution from Lionel or 6. Is that because it is the week-end? I hope for something from them, tomorrow.

  30. 50

    “…for more readers than the sub-set of my vociferous detractors.”
    – Am I included in that subset? Do you realize why I am vociferous? Do you realize that my comments are meant to enable your objective by improving your credibility?

    “…devote more of their time to active prosecution and other services to real clients.”
    – Which crowd are you including yourself in? I think that the answer may mirror the answer to the question about the King, his clothiers and the boy. Your self-perception has been known to be more than a bit off.

    “I hope to reach them.”
    – You are reaching them, but the message you are leaving is not effective for the various reasons that I assail you with.

    With that said, I have noticed and very much appreciate the improvements in your posts of late. Thank you.

  31. 49

    Lionel, do me a favour, will you? Point me to where I write that, in a court of law, PSA “always” produces the correct result. Come to think of it, can you point me to any court of law on earth that decides obviousness under EPO-PSA? I don’t know of any.

    On the “hindsight” issue, it all depends what you and I mean by hindsight. You write that EPO-PSA fails to deal with the hindsight problem but, forgive me, I am sceptical that you have a proper understanding how EPO-PSA works. There are an awful lot of patent attorneys who think they know, but don’t. You’re not one of those, are you Lionel?

    I write in this blog for more readers than the sub-set of my vociferous detractors. I fondly suppose that there are many readers who don’t do much active contributing. I guess they devote more of their time to active prosecution and other services to real clients. I hope to reach them. Thanks for giving me another opportunity.

  32. 48

    Max,

    My problem with your passionate proselytizing of the PSA are you claims that (1) it eliminates hindsight issues, and (2) when used by a court of law always produces the “correct” result (which is a dubious phrase in itself). It has neither of those properties and once you admit that to yourself, you will feel a lot better.

    It’s one thing to argue it’s better, cleaner, and more accurate. It’s another to say the PSA is void of subjectivity. That’s just self-delusion and a sign of your piety with respect to the European system.

  33. 47

    I’m obliged to you, 6, for the forthright comment. (I imagine it made you feel good too). Art 56 EPC just says you can’t have a patent for something that’s obvious. So does 35 USC 103. Where’s the difference? What’s obvious is a factual enquiry. Facts are facts, anywhere in the world, whenever scientists or engineers debate natural philosophical questions. EPO-PSA is simply a framework within which to have that debate. It is as alien to the courts of member States of the EPC as it is to you. But it is as useful to you as it is to any EPO Examiner. And I still think it is a relevant response to Hagbard’s absolute assertion. He didn’t tell me I was off message. But then, he’s not under the stresses faced these days by actual Exrs in the USPTO.

    Hagbard, thanks. It all depends what you mean by “hypothetical” . I agree that the “actual” path walked by the named inventor ought to be irrelevant. I say only that the hypothetical paths that are persuasive of obviousness must be confined to those that exist without resort to hindsight. Those that emerge only with the application of hindsight ought not to be persuasive of obviousness. Making exactly this distinction is what EPO-PSA forces you to do, and so is what goes on, in the EPO, with most every FAOM (EESR) and most every response.

    And 6 my point is that it could also go on, in the USPTO, if and when the USPTO adopts EPO-PSA.

    I’m sure David Kappos “gets it” even if you don’t (yet).

  34. 46

    “I don’t accept that it is impossible to formulate 103 objections without resort to hindsight reconstruction. EPO-PSA (correctly applied)”

    Max did I just see you attempt to address 103 and then go off on a tangent about EPO PSA? EPO PSA is NOT 103.

    Do you not understand why Noise constantly harasses you? FIN STAY ON THE SUBJECT AT HAND.

    Why this is so fing hard for you I don’t fing know.

  35. 45

    Max, by using COULD I was just trying to distinguish between a hypothetical path to the invention and the actual path taken by the inventor. If the hypothetical path is obvious the claim is bad, and the actual path is beside the point.

  36. 44

    “Are Examiners in the USPTO being given an easy time by patent attorneys, when they formulate “could” type rejections?”

    Not by me they aren’t.

    Posted by: JohnDarling
    ———————————

    [[[[swoons]]]]]

    /sexy potential client off

  37. 43

    “Are Examiners in the USPTO being given an easy time by patent attorneys, when they formulate “could” type rejections?”

    Not by me they aren’t.

  38. 42

    Hagbard Celine reports at 11.41am that:

    “If there’s an obvious path by which the PHOSITA COULD have got to it, then it ain’t patentable.”

    which interests me because:

    1) It pre-judges the question. What is “obvious” is already obvious”.

    2) Supposing “obvious” is removed from the test question, “could” ain’t enough, at least in Europe. To destroy a claim as “obvious”, one has to show that PHOSITA at the decisive date (and ignorant of the invention) “would” (not “could”) have created something inside the ambit of the claim.

    Are Examiners in the USPTO being given an easy time by patent attorneys, when they formulate “could” type rejections? Does it not do any good to cry “hindsight”, when such objections materialise?

    6: I don’t accept that it is impossible to formulate 103 objections without resort to hindsight reconstruction. EPO-PSA (correctly applied) inherently formulates obviousness objections without ex post facto analysis. That’s the essence of it. It relies exclusively on the prior art and the app as written, and all of these writings were complete, BEFORE the legally decisive date of the claim under examination. EPO-PSA shuts out hindsight, automatically, by the simple device of confining the substance of obviousness objections to what arguments the Examiner can find in docs written before the app was filed at the PTO.

  39. 41

    You guys are forgetting something about Kubin however. In Kubin they were arguing that the method of making was relevant to the nonobviousness and whether or not it satisfied 112. It was like Rader said, you can’t just sit there and argue process process process your own purposes and then argue product product product when it comes time for 103. And the fact that in the particular art at hand the method of making a substance was of the utmost importance.

    I think it fairly well established that if Kubin had a counsel worth a dmn instead of relying on a ninny like you they would have prevailed. You take Kev for instance, he at least eventually grasped what issues the court was taking with the claims, and had some reasonable responses, even if they weren’t technically complex.

    And noise, as has already been explained to you by the courts time and again, hindsight reconstruction is proper in so far as it relies, in the end, solely upon the prior art. One must always engage in a degree of hindsight reconstruction to make any 103.

    Perhaps what it will come down to is them spelling it out for you in your very own appeal. So go ahead, file a few. Until they hammer it through your thick skull.

  40. 40

    a typical jigsaw puzzle… for 6 year olds.

    Malcolm, real puzzles often have many ways of putting the puzzle together, but only one way of “doing it right”.

    The “doing it right” by way of looking to the picture in order to select and place the pieces is hindsight reconstruciton, with or without a POWERFUL COMPUTER BRAIN.

  41. 39

    “Much, much more than anyone will EVER say about you sleazebag.”

    This message paid for by Blimpy’s masters.

  42. 38

    “at least my personal troll is honest”

    Much, much more than anyone will EVER say about you sleazebag.

  43. 37

    ” A truly horrible analogy, because by its nature a person putting together a puzzle aims for the picture on the box. That picture, being the invention disclosed, is a pure outline for hindsight reconstruction.”

    Actually you don’t need the picture to put a typical jigsaw puzzle together. In a well-made puzzle, the pieces only fit together one way. That’s known as a finite set of solutions. It’s even easier to achieve if you have a POWERFUL COMPUTER BRAIN helping you.

  44. 36

    Elf,

    Let’s suppose that you are correct.

    Do you think that the judiciary ruling in Kubin should stand if it does in fact violate the Law as outlined by Congress, or is there more than what only appears on the surface?

    breadcrumbs,

    If the congressional mandate is as you indicate, then does PHOSITA only care about the result (the invention) in a vacuum, and that the definition of PHOSITA is not (or should not be)as broad as we have come to expect?

    **See, for example, the Supreme’s KSR ruling 550 U.S. 398 (2007), page 16: “In determining whether the subject matter of a patent claim is obvious, neither the particular motivation nor the avowed purpose of the patentee controls. What matters is the objective reach of the claim.”

    **See also ibid, page 10: “That it might have been obvious to try the combination of Asano and a sensor was likewise irrelevant, in the court’s view, because “‘“[o]bvious to try” has long been held not to constitute obviousness.’” Id., at 289 (quoting In re Deuel, 51 F. 3d 1552, 1559 (CA Fed. 1995)).”

    This may indicate that not only is “obvious to try” a completely dead avenue (per Congressional intent), but that the dicta in KSR, or at least the application of that dicta, may be seriously flawed.

    Remember, the focus of the decision in KSR was a fine tuning of the TSM test and on eliminating the rigidity of a Bright Line rule of the TSM test as that test had existed at a snapshot in time. Indeed, the TSM test had evolved after the KSR litigation had started and the Supremes did not rule on the evolved TSM test.

    **See, for example ibid page 15: “But a court errs where, as here, it transforms general principle into a rigid rule limiting the obviousness inquiry.”

    **as well as ibid pages 17-18: “We note the Court of Appeals has since elaborated a broader conception of the TSM test than was applied in the instant matter. See, e.g., DyStar Textilfarben GmbH & Co. Deutschland KG v. C. H. Patrick Co., 464 F. 3d 1356, 1367 (2006) (“Our suggestion test is in actuality quite flexible and not only permits, but requires, consideration of common knowledge and common sense”); Alza Corp. v. Mylan Labs., Inc., 464 F. 3d 1286, 1291 (2006)…
    …Those decisions, of course, are not now before us and do not correct the errors of law made by the Court of Appeals in this case.”

    The correct analysis is a bit tricky in that while that analysis does not care how that particular end invention was arrived at (meeting Congressional intent as Hagbard points out), the test for obviousness baselines the objective invention against a PHOSITA who has it her disposal at the time of the invention, ALL known methods and knowledge, not only of that particular art but of any art related to the problem being solved, which is to say, possibly ANY art. The problem lies in that by granting PHOSITA this power, they provided TOO much power and methods of the inventive process are re-introduced, even after Congress explicitly ruled them out.

    A further issue with the dicta of KSR happens with the analogy of puzzle pieces, which broadens the reach of obviousness. A truly horrible analogy, because by its nature a person putting together a puzzle aims for the picture on the box. That picture, being the invention disclosed, is a pure outline for hindsight reconstruction.

    Perhaps it will come down to Congress realizing that, like in 1952, the Supreme Court has made a decision with consequences that violates its intent, and as Gene Quinn has said, add yet another sentence to 103(a): “And we really mean it.”

  45. 35

    It’s really not that difficult. It doesn’t matter how the invention was ACTUALLY made. If there’s an obvious path by which the PHOSITA COULD have got to it, then it ain’t patentable. If that’s the same path by which the actual inventor got there, then that’s just a happy coincidence.

  46. 34

    “So, if obvious to try is now legit, then the procedure by which you arrive at the invention is also a legit point of attack.”

    good point

  47. 33

    Don’t you think Kubin indicates that, actually, it does very much matter the manner in which the invention was made? People knew how to do this, people knew how to do that, if said people went and did this and that, why, they’d have your sequence. So, if obvious to try is now legit, then the procedure by which you arrive at the invention is also a legit point of attack.

  48. 32

    “…and experimentation…”

    How much experimentation is done without a pre-set (and possibly anti-KSR market driven) purpose in mind? How much common sense is involved with setting up experimentation?

    Did the Supremes miss this intent with KSR? Has KSR been misapplied (over applied)?

  49. 31

    From the Federico Commentary on the 52 Act:

    The last sentence of section 103 states that “Patentability shall not be negatived by the manner in which the invention was made.” The Revision Note adds in explanation that it is immaterial whether it resulted from long toil and experimentation or from a flash of genius. This sentence in the section further indicates the attitude of Congress in enacting the new patent act and should have a bearing on the interpretation of section 103 as a whole.

    link to ipmall.info

    Also, a link to the entire legislative history of the 52 Act:

    link to ipmall.info

  50. 29

    I’ve got nothing against “conflate,” I just have something against just about everything that comes from Mooney, especially when it’s trying to pass as knowledgeable ~ since most the time it isn’t.

  51. 28

    “evidence of the manner in which the invention was made (toiling for years) …should be useable to support nonobviousness”

    Thus, if you are inefficient and unlucky in your research, you have a better chance at overcoming non-obviousness than if you are efficient and smart and/or lucky because you will be able to present evidence of “toiling.”

    That’s exactly what bugged me about Newman’s opinion in the Sanofi case.

  52. 27

    Despite stating that were not making this mistake, the panel in In re Kubin determined the obviousness of a product by the obviousness of the process that leads to that product. That line of argument seems to be directly in conflict with the last sentence of 103(a).

  53. 26

    I agree that the historical interpretation of the “shall not be negatived” clause was to respond to the “flash of genius” test of invention from Cuno. What is interesting is that the statutory clause is clearly a one-way clause. Rephrasing: patentability will not be DENIED based on the manner in which the invention was made. Thus, evidence of the manner in which the invention was made (toiling for years or the presence of a “flash of genius”, for example) should be useable to support nonobviousness. The absence of these or any other aspect of how the invention was made should not be useable to deny a patent. This is how it should be. What the courts and examiners have done with it is another matter.

  54. 25

    CORRECTED

    I don’t mind you itching for a flame war with Mooney. I have strongly disagreed with a number of his assertions, but what have you go against the word “conflate”?

    The words/phrases I dislike are the unnecessary and long ones such as “utilize”, “subsequent to”, etc. Is there another way to express the meaning of the word “conflate” that is more concise? Because I would like to hear it.

  55. 24

    Practitioner,

    I don’t mind you itching for a flame war with Mooney. I have strongly disagreed with anumber of his assertions, but what have you go against “conflate”?

    The words/phrases I dislike are the unnecessary and long ones, utilize, subsequent to, etc. Is there another way to express the meaning of the word conflate that is more concise? Because I would to hear it.

  56. 23

    FC “the process by which the person arrived at the invention can help”

    FC “someone whose kid came up with an idea over dinner is no less entitled to a patent than someone who toiled for years”

    As I said in the other thread that initiated this discussion, all the clause says is that you can’t deny a claim *solely* on the basis of a per se test relating to the facts of its conception, e.g., “a kid invented it at a dinner table so it’s per se obvious.” But beyond that, courts and everyone else appear to take such facts into account when determining obviousness. Depending on the field and nature of the invention, the labor put into the invention (or absence thereof) can make a difference.

  57. 22

    “It means that someone whose kid came up with an idea over dinner is no less entitled to a patent than someone who toiled for years”

    I would think that any patent issuing to such an individual would be invalid for improperly named inventorship.

  58. 21

    Patentability shall not be negatived (gotta love that Congress-speak) by the manner in which the invention was made. It means that someone whose kid came up with an idea over dinner is no less entitled to a patent than someone who toiled for years. That toiling per se may be evidence of non-obviousness, or it might not. So yeah, the process by which the person arrived at the invention can help, but it’s not supposed to count against the inventor.

  59. 20

    “So the large degree of work, statements as to his own failures, and statements as to the failures of others were given substantial weight in my withdrawal of obviousness rejection.”

    I can see how “failure of others” is relevant, but I am not sure that I agree with the other reasons.

  60. 19

    Curious: Yes, I do give it *some* weight. My guess would be this is technology-specific. But in biotech (my area) we give that some weight. I had a case where an applicant filed a declaration stating how it was arduous to find the specific conditions where the claimed method worked (frankly at this point i don’t recall the details, it was several years ago), and *also* related that through personal communications with others in the field (inventor was a university professor) he found out that those others had tried and failed. So the large degree of work, statements as to his own failures, and statements as to the failures of others were given substantial weight in my withdrawal of obviousness rejection.

    But it is always a case-by-case basis. Just because it takes a long time doesn’t mean it is non-obvious. The specifics of the case and the declaration matter.

  61. 18

    “Tell you what though, for free, terriers make lovely fish. I mean I could do that for you straight away. Legs off, fins on, stick a little pipe through the back of its neck so it can breathe, bit of gold paint, make good …” Monty Python’s Pet Conversions sketch

    Most 103 rejections I encounter are analogous to the terrier-to-fish conversion.

    How is the actual inventive process relevant to why one of ordinary skill in the art, having a terrier, would remove its legs, attach fins, stick a pipe through its neck, etc.?

  62. 17

    So examiners, claims which you are examining are borderline obvious-nonobvious, and the Applicant submits a declaration from the inventor which provides details of a long arduous, expensive, frustrating inventing process. Do you give the declaration any weight?

  63. 16

    Wow, two post that fail to use the word “conflate” or “crap” or “garbage” …

    How cute.

  64. 15

    Before KSR, I would have said that the “manner in which the invention was made” is not relevant. If one person toils away for years in his lab he is no more entitled to a patent than another person who “toils” for an hour in his lab. After KSR, and the destruction of obvious to try, I don’t know.

    Sounds like a good paper for one of your students, Dennis, or even for a law professor, or maybe Malcolm Mooney :-)

  65. 14

    “as a practical matter, contrast the likely jury reactions”

    The hardline position on the clause would require that any testimony relating to either scenario should be excluded as irrelevant and prejudicial, no?

  66. 13

    Notwithstanding 35 U.S.C. 103(a)’s “[p]atentability shall not be negatived by the manner in which the invention was made”, as a practical matter, contrast the likely jury reactions to the following two different scenarios in two different trials: [In both cases, assume the invention is novel and unobvious.] In the first case, the inventor testifies he struggled for 10 years in his basement to make the invention while living in poverty. In the second case, the inventor admits on cross-examination that the invention was discoverd by using a software robot that he programmed.

  67. 12

    broje “I don’t think that it is the inventor’s actual process that comes up in the obviousness argument.”

    But the actual process manages to come up quite regularly, as in the Sanofi opinion and others.

    The phrase “shall not be negatived” is an odd one. Surely it does not mean that the manner in which an invention was made can only be used to *support* patentability …

  68. 11

    My recollection from law school is that the final sentence of 103 was added to “overrule” Cuno Engineering.

    If the question of what that sentence means is important in a particular case, I would reread Cuno and then I would look at PJ Federico’s Commentaries on the 1952 Patent Act (good old legislative history since I believe I was once told that Federico was the main scrivener of the 1952 Act).

  69. 10

    How do we reconcile “[p]atentability shall not be negatived by the manner in which the invention was made” with “routine experiemtation” and “optimization” as grounds for obviousness?

    I don’t think that it is the inventor’s actual process that comes up in the obviousness argument. Rather, it is the process that would have proven successful for a PHOSITA in view of the references.

    In other words, it does not matter whether the inventor, unaware of the prior art, discovered the invention by accident and did not expect the results. Rather, if the prior art would have led a PHOSITA to arrive at the invention through routine experimentation or optimization, it is obvious regardless of the inventor’s actual process.

    Am I correct in understanding others to say that the sentence changed “flash of creative genius” to “at least one of: (a) flash of creative genius; or (b) unexpected results?”

  70. 9

    I thought I was on the applicant’s dime. Wait just a minute here, are you telling me that I’m on the taxpayer’s dime?

    His blog is kind of boring and behind the times. All of his topics presented in his initial post are old and worn out. For instance, he wants suggestions on how to reach his 10 mo pendency goal. I probably won’t post to his blog until I can do so anon from home.

    I have to agree with you guys that the question of the whether or not the manner in which the applicant made the invention is sometimes relevant is an interesting one. But, I think that there is no definitive answer. The answer to the question is subjective. You can consider it or not with regards to 102/112 etc. with the exception of 103.

  71. 8

    Secondary considerations of obviousness are not to be “conflated” with the manner in which the invention is made. They might seem like the manner in which the invention is made but they aren’t. Unexpected results can occur whether the invention was stumbled on or not. They are a product of the inventive process, whatever that process might be, which according to the law is irrelevant.

    Remember, Mooney’s job is to confuse everyone.

  72. 7

    Wow, I really get impressed when people use the word “conflate.” I remember conflate to be one of those words that first year law students would use to sound impressive.

    What I am also impressed about is that there was a Mooney post that did not contain the word “sleazebag” “clutching pearls” “crap” or “garbage.”

  73. 6

    “Should this statement be interpreted to mean that the inventor’s actual process has no relevance to the questions of novelty and nonobviousness? Or, is there still room for a jury to consider the actual creativity and genius of the inventor and the process used.”

    First of all, there is no need to conflate “actual creativity and genius” with “the process.” And I don’t think anybody doubts that novelty is immune to such considerations.

    The issue is: can the manner by which an invention was made be considered in the context of an obviousness analysis? As a practical matter, the answer is unambiguously “yes” because the processes *are* considered, analyzed and discussed in the obviousness case law routinely as part of the “reasonable expectation of success” or “unexpected results” prong of the analysis. For example, just off the top of my head, consider Judge Newman’s decision in Sanofi v. Apotex. There was quite a bit of discussion about the process and strategy (and cost!) leading to the isolation of that stereoisomer by the patentee.

    The problem with that particular clause is that it was enacted, as Dennis notes, to curtail a very silly test for patentability. Who knows what a “flash of genius” is? It’s something that you can’t require for patentability. Beyond that, it’s anybody’s guess.

  74. 5

    ” (This question was suggested by a comment on the blog).”

    I’ll take at least partial credit.

  75. 4

    “omg omg omg…”

    Hey 6, now you can waste time blogging on the taxpayer dime with complete confidence.

  76. 3

    “Inspiring Inventor Confidence in the Patent System by Combating the Secondary Effects of Patent Trolls”

    I’m guessing Samuel Korte of Garmin may not have read about the enhanced damages against Microsoft based on unfair allegations regarding “trolls”

  77. 1

    “Or, is there still room for a jury to consider the actual creativity and genius of the inventor and the process used”

    Unless you’re Mooney (g-d help you if you are), the answer is no.

    The reason is because it is impossible to quantify something like “actual creativity” and, as anyone who has been in the engineering field for any amount of time realizes, sometimes you just stumble on stuff. An accidental invention is an invention nonetheless.

Comments are closed.