In re Klein: Analogous Art Test as the New Structure for Non-Obviousness Determinations

In re Klein, ___ F.3d ___ (Fed. Cir. 2011) (Judges Newman, Schall, and Linn)

by Dennis Crouch

In an important nonobviousness decision the Federal Circuit has sided with the patent applicant, Arnold Klein and rejected the USPTO’s obviousness conclusions.  In its opinion, the court held that none of the five cited prior art references could be considered “analogous art.”  Under the Federal Circuit’s exclusionary test, as non-analogous art the references were then entirely excluded from consideration in the nonobviousness analysis. 

A prior references is considered analogous if it is either (1) in the same field of endeavor as the invention or (2) “reasonably pertinent” to the problem with which the inventor is involved.  In turn, a reference is reasonably pertinent if it logically would have commended itself to an inventor’s attention in considering his problem.

Simple Invention; Powerful Opinion: The power of the opinion is amplified by the fact that Klein’s invention is an extremely simple mechanical device. 

Klein’s patent application is directed toward a device for measuring and mixing sugar and water for bird feeders.  Ornithologists have discovered that different species of birds prefer different sugar-water ratios. One embodiment of Klein’s device looks like a measuring cup with a movable divider that separates the space into an area for sugar and another area for water.  The placement of the divider is set according to the bird species being fed. With the divider in place, sugar and water can then be added to their respective areas.  The proper ratio is guaranteed so long as water and sugar are added to the same level or “line of sight.”

The figures below show the invention fairly well. The basic embodiment has three slots for Hummingbirds, Orioles, and Butterflies. (Hummingbirds prefer more sugar).  The divider can be inserted and held in place by the chosen slot. Sugar & water would then be added to same level or line of sight.  Once the ingredients are added, the divider can be removed and the solution mixed together.

PatentLawImage130

Of importance to this case, Klein’s broadest independent claim is fairly narrow in terms of both the claim elements and in reciting a purpose of the invention. 

21.    A convenience nectar mixing device for use in preparation of sugar-water nectar for feeding hummingbirds, orioles or butterflies, said device comprising:

a container that is adapted to receive water,

receiving means fixed to said container, and

a divider movably held by said receiving means for forming a compartment within said container, wherein said compartment has a volume that is proportionately less than a volume of said container, by a ratio established for the formulation of sugar-water nectar for hummingbirds, orioles or butterflies, wherein said compartment is adapted to receive sugar, and wherein removal of said divider from said receiving means allows mixing of said sugar and water to occur to provide said sugar-water nectar.

Rejecting the Five Rejections: In the application, Klein admitted that the ratios for the various species were known in the prior art. Based on that admission, the USPTO issued five separate obviousness rejections of Claim 21 — each using a different prior art reference in combination with the admitted ratios. 

PatentLawImage131Three of the references were directed toward containers with movable dividers used to separate solid items such as screws or bolts. (See figure).  In determining that those references were non-analogous, the court first considered the problem being solved by Klein and arrived upon a somewhat narrowly defined single problem of: “making a nectar feeder with a movable divider to prepare different ratios of sugar and water for different animals.”  The court then quickly concluded that the three solid item separators were not pertinent to Klein’s problem “since none of these three references shows a partitioned container that is adapted to receive water or contain it long enough to be able to prepare different
ratios in the different compartments.”

The two remaining references were directed at dividing liquids that would be later mixed.  The court found neither of these pertinent to Klein’s invention because they did not address the multiple ratio problem and did not have movable dividers.

Because none of the references were pertinent the obviousness conclusion had no basis.

(As a note, the Federal Circuit did not address whether any of the references were in the same field of endeavor because the USPTO had based its rejection only on the reasonably pertinent test for analogous art.)

Singular Narrow Purpose of the Invention: One explanation for Klein’s success on appeal is the singular narrow purpose of his invention.  The narrow purpose then allowed him to argue that the cited references were well outside of that purpose.  On appeal, the USPTO Solicitor had argued that the problem being solved was really a broader “compartment separation problem.”  However, the Federal Circuit rejected that argument as untimely because it had not been raised before the Board of Patent Appeals, citing Sec. & Exch. Comm’n v. Chenery Corp., 318 U.S. 80, 94 (1943) (“[A]n administrative order cannot be upheld unless the grounds upon which the agency acted in exercising its powers were those upon which its action can be sustained.”). Going forward, a savvy Board of Patent Appeals may alter its approach and more broadly define the problem being solved.

Prior Art Addressing only Portions of Purpose: The most important aspect of the decision is likely the implicit holding that a prior art reference in a separate field of endeavor will not be analogous unless it is pertinent to the entire problem being solved.  Here, all of the references were pertinent to some aspect of the stated problem, but they failed the test because none was related to the problem as a whole.  

Duck, Duck, Goose: The force of the opinion is severely limited by the fact that the court did not cite or consider how the Supreme Court’s decision in KSR v. Teleflex altered the scope of analogous art. Although KSR did not directly discuss the analogous art test per se, the USPTO has previously interpreted that as expanding the scope of analogous art.  See M.P.E.P. 2141.01(a)

The New Structure for Non-Obviousness Determinations: A criticism of KSR has been that it removed almost all structural methodology from the nonobviousness analysis and left the test too loose and open to subjectivity in decision making.  If it sticks, the Klein approach to the consideration analogous art has the potential reinvigorate a more rule-based analysis.

Notes:

  • As mentioned above, Mr. Klein’s case is interesting because he has been largely representing himself pro se during the patent prosecution process.  After Klein filed his own opening brief to the Federal Circuit, Louis Tompros of WilmerHale stepped in and likely transformed the case from a Rule 36 affirmance to a major win.
  • Klein’s narrow “purpose” of the invention goes against common patent attorney practice because the narrow purpose can also lead courts to narrow the claim scope during claim construction and in their analysis of infringement under the doctrine of equivalents.  Attorneys may want to rethink that approach in light of this case.

117 thoughts on “In re Klein: Analogous Art Test as the New Structure for Non-Obviousness Determinations

  1. 117

    Hopefully I’m missing something. Would a sliding tongue/groove interface count as a “movable connection structure”? (US 6460841) Or maybe a dovetail interface? (US 6460699) How about a hinge? (JP 8-206022A, figs. 5+6). ‘841 even has the polyethylene. Sorry, no photo albums though.

  2. 115

    My old spe?

    I do not have an old spe. I never had any spe.

    Once again, you assume that I am someone I am not.

    I notice that you make such errant assumptions quite often.

  3. 114

    A better question, in fact, is why wasn’t Klein’s application cited as 102(e) art against the 6736536 claims? Did it publish too late? Claim 1 of the ‘536 patent, at least, appears to be obvious in view of Klein.

    1. A fluid mixing apparatus, comprising: a portable container having a first chamber having a bottom; and a second chamber adjacent to the first chamber, the first and secondchambers each having a bottom at a common elevation, the first and second chambers each having a cross-sectional area defined by a horizontal plane passing through the chambers, the cross-sectional area of the first chamber and the cross-sectional areaof the second chamber defining a ratio that is substantially constant in a range of different vertical locations in the container; and a divider between the first and second chambers, the divider being movable to open and close fluid communication between the first and second chambers.

  4. 113

    Cool. And Klein’s provisional is pretty good.

    I’m rooting for Klein at this point. Although I do think he should get a patent attorney to clean up that claim language a little.

  5. 111

    That ‘536 patent has a filing date after Klein’s earliest priority application (a provisional filed in 2001).

    Nevertheless, probably a good lead for other relevant art.

  6. 110

    If he is responsible for your training, then evidently not.

  7. 109

    I do not understand the point of your comment.

  8. 108

    B-b-b-ut there’s nothing about orioles in that patent!!!!!!!!!!!

    Another pukeworthy moment in the history of USPTO incompetence.

  9. 107

    This, then, should be the poster child for patent reform

    Maybe the Supreme Court can revise their i4i decision now.

  10. 105

    “The whole point here is that the attitude of “Who cares? That’s the boring part!” IS the problem.”

    So my making a factual finding that a certain part of a brief is a boring part is somehow a “problem”? Oh, come off it. You should utilize this factual knowledge to your advantage and put more emphasis on the boring parts in your brief (and maybe even throw in some wit if you had some) to make it a better brief.

    Who said I was an examiner? I don’t believe I’ve ever made any such claim!

    “the judiciary will reach out to smack the examiners.”

    So now the board is the judiciary?

    Oh NAL, you’re a barrel of lolz.

  11. 104

    Wow. And classified in “Special Receptacles for Mixing.” Who’da thought?

    That’s a real shame. Klein apparently should have received a nice simple first office action, instead of being jerked around for 4+ years.

  12. 103

    Ha 6 – pay attention to the post below by whatsup.

    I said that the search did not return the results in the time alloted.

    Time is not the critical factor. Resources are not the critical factor.

    Examiner (in)competence is the critical factor. Board (in)competence is the critical factor.

  13. 102

    6,

    The whole point here is that the attitude of “Who cares? That’s the boring part!IS the problem.

    You, as an examiner, should care deeply. The tool of KSR was handed to you to use with common sense. If examiners refuse to, or unable to, use common sense, the judiciary will reach out to smack the examiners.

  14. 101

    Whatsup,

    Thank you for proving my point, and I agree with you 100%.

    This, then, should be the poster child for patent reform – let’s make sure that the Office has all the money and training they need to be able to google search.

    Last I checked, google searching was free.

    So what’s the hang-up here? (My guess would be that examienrs are key-word searching and not actually reading and understanding the applications prior to search as they are directed (and yes, the SPE of 6 should be castigated for what he spawns).

  15. 100

    If an examiner’s supervisor, the board, and the solicitors are willing to defend a rejection that defies common sense, what incentive does the examiner have to actually look for relevant art.

    A five minute search on google patents turned up US patent 6736536

  16. 99

    Although this could come under 2), how about 8) homeless person with access to the public library

  17. 97

    It appears that this examiner is now a patent attorney, with a reg. # in the mid 60ks. He wrote this in 2004, so he must have been dreaming about law school, or even just beginning it.

    At least he could write clearly. Hopefully he’s learned that it’s not OK to simply skip the law, so long as your brief sounds like a closing argument from Law and Order. Although I know quite a few lawyers who never learned that…

  18. 96

    Holy carp.

    Before it got to the Board, did anyone simply say: “A page in a photo album is not a chopping board. If you try to chop stuff on a page in your photo album, you will make a real mess of things. Therefore, no one skilled in the art of culinary equipment would ever understood the term ‘chopping board’ to apply to a page in a photo album.”?

  19. 95

    Alun Palmer on a 102b he’s facing:

    Further, for the photograph album of Frank et al. to be analogous to the combined chopping board of the invention, it would either have to be “from the same field of endeavor”, or failing that it would have to be “reasonably pertinent to the problem with which the inventor is involved” (In Re Clay, 966 F2d. 656, CAFC 1992

    Appellant respectfully submits that the photograph album of Frank et al. is neither “from the same field of endeavor” as the invention, nor the “reasonably pertinent to the problem with which the inventor is involved”. The field of photograph albums is very remote from the field of chopping boards, and they are not concerned with the same problem.

    Blah blah blah… Appellant therefore respectufully submits that Frank et al. is non-analogous art.

    ^See that is the kind of sht we have to put up with.

    Alun, I love you man, and everyone has a bad day sometimes, but come on dude you could have at least told him that non-analogous art arguments are inapplicable to rejections under 102b, just to be neighborly.

    I just asked a coworker to review that brief and asked him some questions about it. According to him, the non-analogous art part would have been the most persuasive thing to his primary. After I explained to him what was going on he understood it a bit better.

  20. 94

    You successfully argued that a reference applied as anticipatory under 102(b) was non-analogous under 103(a). A unique approach, to be sure.

    Sounds like the reverse doctrine of equivalents. We haven’t heard that dog bark in a long time.

  21. 92

    See, I didn’t even get to read the actual arguments yet. I was going to skip them, but since they look so full of lulz I might have to pull them up.

  22. 91

    Hmmm, actually it takes the entire pantry. From what they said, the Board didn’t even understand you to be arguing about the non-analogous nature of the art but about something different. Or at least they didn’t mention it. It appears that they simply thought that the material of one of the references was not suitable to be used as the item in the other reference was being used. That is, the references are uncombinable because you effectively destroy the function of the one reference when the combination is made. Note that such a holding may or may not be legal error. But they shore up their opinion with a more reasonble sounding “At the very least” reason for their reversal later.

    Chalk one up for the board not understanding the applicant’s arguments but probably getting the right result anyway! So it appears the board managed to get the correct decision and help out your client regardless of whatever shty arguments you submitted in order to sabotage the process. Although, it appears you may have had a colorable non-analogous art argument as well, even though the board chose to ignore it.

    And, I note that “the Board” did not allow your application.

  23. 90

    Congratulations. You successfully argued that a reference applied as anticipatory under 102(b) was non-analogous under 103(a). A unique approach, to be sure.

    The “response to arguments” section of the examiner’s answer is the poster child of sh!tty examination. Laughably bad. An examiner trying to play lawyer.

  24. 88

    Ned,

    Your actual point is wrong – for all the reasons I previously stated.

  25. 86

    Ned: I fail to see anything in the claim that actually requires mixing anything in precisely defined ratios.

    That’s because it’s a properly claimed article, not a method.

  26. 85

    Volume, yes.  So a compteting mixer with the claimed volumes would infringe regardless of of whether there was an aperture in the divider.  One could handle the leakage problem by pouring water into the water chamber at such a rate that the leakage was deminis.  There are many other ways to compensate for leakage.  But since leakage or the prevention of leakage is not part of the claim, having an aperture in the divider will not remove the competing device from infringement.
     
    If you agree with this, then you will see that the claim literally reads on the prior art.

  27. 84

    My actual point is that the competing device with an aperture would literally infringe the claim for all the reasons I previously stated.

  28. 82

    Ned,

    See below.

    As for here, then, you do agree that the language does exist, correct? You were able to locate the language that you could not find previously, correct?

    I am assuming the answer is “yes,” as you now recognize that that language is indeed a limitation modifying the volume of the compartments.

  29. 81

    Not to blow my own trumpet (much), but take a look at the non-precedential BPAI decision in Ex Parte Albert Mok:-

    link to des.uspto.gov

    Here the Board accepted my argument based on non-analogous art and allowed the application. I haven’t compared the list of APJs on the panel, but my guess would be that they are different. And this was after KSR.

  30. 80

    Ned,

    Once again, you show critical fallibility in your analysis.

    They require compartments of defined volumes, barriers, and the ability to mix when the barriers are removed

    Do you realize that pouring a liquid into a vessel that has holes prevents you from having a defined volume?

    It’s in the claim.

    Do you realize that the ability to mix after the barrier is removed means that mixing does not occur prior to the barrier being removed?

    It’s in the claim.

    Do you realize that by having separate and fixed volumes of the two itesm, that you have indeed allowed only mixing in certain precise ratios?

    It’s in the claim.

    I could build a competing mixer with a small aperture between the two compartments and avoid infringement. But, you say, that would be wrong. But, in reality, that is what the prior art shows.

    This is especially poignant – your attempt at building a competing mixer would avoid infringement because,
    a) the “prior art’ was just found to be not prior art, and
    b) your device would not work as the presently claimed invention.

    I suggest you review some of Archimedes’ works about the level that a liquid seeks when poured into a vessel (the hole between the two separate volume portions will indeed cause you problems).

    I do not mean to sound condescending, but Ned, my 10 year old daughter knows this. You should too.

  31. 79

    A hole, that limitation modifies the volume of the compartments.

    Now to you: If I have the same mixer as Klein’s, but add a small aperture in the divider, would I infringe?

  32. 78

    Ned,

    I am not certain how you missed:

    by a ratio established for the formulation of sugar-water nectar for humming-birds, orioles or butterflies

    This is certainly in the claim. At least claim 21, the one recited in the case at hand.

    So I am going to have to disagree with you. The language does exist.

  33. 77

    A hole, but you are reading limitations into the claim both from left and right fields. The claim does not require that the compartments be watertight, that they prevent mixing prior to removal of the dividers, or that they allow only mixing in certain precise ratios.

    They require compartments of defined volumes, barriers, and the ability to mix when the barriers are removed. Pricise mixing ratios or water tighness is not there.

    If they were, I could build a competing mixer with a small aperture between the two compartments and avoid infringement. But, you say, that would be wrong. But, in reality, that is what the prior art shows.

    It will be easy on remand to add these limitations that you say are there already. I suggest they should be added.

  34. 75

    A hole,

    Claimed precise mixing ratios”

    I went back and reread the claim. I fail to see anything in the claim that actually requires mixing anything in precisely defined ratios. The claim calls for the varios compartments to have certain volumes, be adapted to receive water, and to allow mixing when the dividers are removed.

    I think again you are reading “precise mixing ratios” into the claim. That language does not exist.

    Surely, in court, the construction you advocate would probably be the construction given the claim. But not in the PTO.

  35. 74

    You’ve never spilled your coffee into the desk? I’ll admit – not for the purpose of mixing – but you do hope any dividers contain the liquid ;)

  36. 73

    So how should an Applicant provide this sort of feedback? Is there a defined mechanism?

    How are “errors” defined? Can Applicant’s impact this definition of “errors”?

  37. 72

    I also wondered “what if” the Examiner had combined a movable divider ref with a liquid divider ref (and with the known ratios if needed). I guess we will never know — but perhaps some would like to kindly & respectfully pontificate? Any cases fit this fact pattern?

  38. 71

    Lulz, I know that I’ve been through search training. And I even paid attention! N guess wut? Wut my spe says pretty much beats “references” every time. Same thing goes for examiners in general no doubt.

  39. 70

    As I see it, only 6 categories of person could post with the frequency with which Mooney posts:

    1) student
    2) unemployed
    3) retired
    4) public-sector
    5) paid for posting
    6) involved in the daily operation of the site.

    The choice is yours.

  40. 69

    It’s like when Malcolm talked about the dynamics at an examiner interview in a reexam with a firm that hires former PTO commissioners. Either he is an examiner who had such an interview, or he works for one of those dxuche bag firms that hires former PTO commissioners. My vote is for the former. But I guess the latter is possible too.

  41. 68

    Going back to Dennis original comments, it seems if you have your patent with a sort of broad claim and you have your infringer identified … and you have some time … you might want to consider a narrowing reissue (assuming you have written description support) which amends the preamble or throws in a dependent claim directed to a “purpose” of the invention (specifically, the purpose that the infringer markets their product for).

  42. 66

    TINLA,

    and actually everyone…

    Note the extremely limited application of this ruling in that each of the rejections was a 103 with one prior art reference and the applicant’s own admissions of what was prior art.

    There were no rejections combining different prior art citations from different art fields – as would be permissible under KSR – the old jigsaw puzzle if some motivation to combine is provided in the examiner’s choise to combine. When a proper examination with a proper rejection is written, then we can celebrate/pan (depending on your proclivities) the outcome here.

    As noted, this decision decidely lacks any reference whatsoever to KSR. How very telling.

    Mark my words, Klein will not receive a patent on this application.

  43. 65

    I did think that odd, perhaps he works for the office as an attorney somewhere? Or perhaps he has worked for the office in the past or worked outside the office in the past and now works there?

  44. 64

    I know that you have been told many times, and shown explicit references that say otherwise.

    Stop Trolling.

  45. 63

    “I guess that’s what happens when you search on claim key words without following proper examination rules.”

    Maybe you didn’t hear, those are the “proper examination rules”.

  46. 62

    I’m assuming your comment was tongue-in-cheek? Mr. Klein doesn’t need VC funding. He needs a well-to-do uncle with an extra $20K, and some connections to a Chinese manufacturer of cheap plastic gadgets. Then he needs to work his tail off to get Wal-Mart or some hardware store chain to put his product on the shelf.

    Had he come to me, I would have told Mr. Klein that it is a nifty product, but that it doesn’t make economic sense to patent it, not least because it would probably never make sense to attempt to enforce it. Who’s going to take your infringement suit on contingency to take down an infringer with $10K in sales?

    With this kind of product you need to beat the other guy to market, make your money while you can, and then move on to the next thing. Unless the objective is really to get a nice-looking certificate to hang on your wall.

  47. 61

    Dennis, when you say:

    “Here, all of the references were pertinent to some aspect of the stated problem, but they failed the test because none was related to the problem as a whole.”

    Do you mean tio imply that if one reference had been related to the problem as a whole (e.g., a mixing container with a single removable divider) then the other references could have been considered reasonably pertinent (e.g., the toolbox with movable dividers)?

    Does it also matter, in your view, that the movbale dividers in the toolbox patents were for a different purpose (i.e., to persistently divide, rather than purposefully mix)? In my view, Courts tend to rule that the different purpose of the element in the other reference usually evidences hindsight reasoning.

  48. 60

    But as I understand it, Cy, getting the application to issue is vital precisely for “marketing”. To prospective investors at least. Mr Klein is still not in a position to approach VC funders. How many new jobs lie uncreated because of this hiatus?

  49. 59

    …(and whether it even matters, if you put the sugar in before you run in any water).

    I can tell you from recent experience, Max, that it is important that the accounting drawer be watertight…

  50. 58

    Agreed Paul. Best to read the Decision, the patent, and the art applied in the Decision. I, for example, still don’t know whether the Klain patent stipulates explicitly that the dividing wall has to be water-tight (and whether it even matters, if you put the sugar in before you run in any water).

  51. 57

    @Max

    I always find that it is good to read a decision before commenting on it. Sometimes I read the patent specification too.

  52. 56

    D@mn, Ned. After reading your comment I decided to mix my hummingbird solution in my top desk drawer. That sugary water just poured right into the bottom drawer, where I keep all those material references that I didn’t disclose.

    “adapted to receive water,” my butt.

    I’m going to order one of Mr. Klein’s thingies.

  53. 55

    With Malcolm’s constant anti-patent rhetoric and now with “But we go to litigation with the BPAI arguments that we have,” – slipping into the first person when discussing the Office activities, there can be no doubt that Malcolm does not represent applicants.

  54. 54

    Plurality,

    You are confusing the opening of a fixed divider with a movable divider. The movable divider means that different ratios can be obtained when the divider is stationary – not when the divider is in the act of moving (being removed).

    Your interpretation is broad, but unreasonable.

  55. 53

    Ned,

    Disagree with you here too – on basically the same premise. BRI must not be applied to each claim term in isolation – that is what creates BUI.

  56. 52

    Ned,

    Disagree with “nothing in the claim that actually requires the compartments to be watertight.”

    Without the water portion being water tight, the claim as a (w)hole cannot be met. What is claimed are precise mixture ratios. If the water compartment is not water tight, then the claimed precise mixture ratios cannot be met.

  57. 51

    I guess that’s what happens when you search on claim key words without following proper examination rules.

    The lowlight here is that for such an invention of relatively simple complexity, this went through an examiner, a SPE, and the BPAI when common sense indicates that the rejections – as written – are simply insufficient for the claims as a whole.

  58. 50

    Max, we also have the issue of BRI. It seems the Feds on appeal gave the term “adapted to receive water” a very narrow construction specifically designed to distinguish over the prior art. Such is not the way broadest reasonable interpretation, and I agree that the PTO should have made an issue of this – and perhaps they will on rehearing.

  59. 49

    Better yet, try to create the varying mixtures when you will NEVER get the proper water level to that line of sight.

  60. 48

    I like it. That argument is sweet enough for me, Red Monkey.

    Perhaps we have here a reader with enough time and interest to read the PTO file wrapper. Not me though.

  61. 47

    Well I would change the Art…if it is possible. If Lips were installed at the bottom of the measure cup where the sugar was poured in, and was a tight fit for each shield, the leaking problem would end. GEESH

  62. 46

    It sure is odd that the claim recites specific animal species instead of “first, second, and third animal species”.

    As Ned and Max point out, the prior art shown is awfully close. Maybe it’s because the “receiving means” (i.e. the grooves for receiving the divider) didn’t go all the way to the end, so the resulting sugar water mixture would always be way too sweet for any of the three species.

  63. 45

    Max, I agree. There is nothing in the claim that actually requires the compartments to be watertight. As such, the partitioned drawer is equally adapted to receive water.

    Perhaps a small limitation directed to how the compartment of the invention is made watertight would actually define over the partitioned drawer. Otherwise, the claim literally covers the prior art.

  64. 44

    In Dennis above, prior published Fig 1 is from Kirkman. Note the “notch” in the cente of the length of the lower edge of its internal partition 9. The Decision at page 12 notes this notch as establishing that the container in which the divider is retained, the container I say, is not “adapted to receive water”.

    How did this nonsense argument survive unchallenged? Did the PTO have nothing to say in reply to it?

  65. 43

    Tell me, does the “non-analogous art” get-out also apply to novelty objections?

    I ask because for the life of me I cannot understand how the claim is novel over Fig 1 of the prior art shown in Dennis’s article above.

    I know from Dennis that Newman says the Fig 1 drawer is incapable of holding water but I’m looking at it and remembering such clear plastic drawers, and I’m surprised by her assessment.

    As Malcolm Mooney writes above, there are echoes here of the EPO-PSA approach to obviousness. Insidious, isn’t it?

    Oh well, better read the Decision now.

  66. 42

    Wow, I think you are missing something. “The proper ratio is guaranteed so long as water and sugar are added to the same level or “line of sight.”” So, the device can produce varying amounts of nectar, but always at the proper ratio. Try to do that with horizontal markings.

  67. 41

    I didn’t say it was hard to do MM, I said that the search did not return the results in the time alloted.

  68. 39

    Mooney’s tiresome complaints that he loves to trot out about perfectly good patents have each, in thier own special way, become obvious pieces of crxp.

  69. 38

    Footnote one is interesting.

    Does this apply to appeals before the Board of Appeals? If so, that might finally put to rest the Super-Examiner hats and allow the Board to play Judges full time.

  70. 37

    but the issue is whether or not the search returned such results as would be needed to accomplish such in a timely enough fashion

    Yes, searching for something that can hold water with holes in the bottom is soooooo tough to do.

  71. 36

    Those errors won’t effect this years rating because the PTO is moving to a more complex and completely incomprehensible electronic quality error system with three categories of errors (and many different types of errors in each category). Moreover, the new error system will really only affect examiners who are GS-11 and above.

  72. 35

    Let’s see … one divider placed at one location yields one mixture.

    How could I possibly modify such a device so I can obtain, say, two mixtures?

    The easiest way would be to simply put horizontal markings in the sugar side and corresponding horizontal marks in the water side. But there must be a more complicated way that nobody has thought of before …

  73. 34

    Applicant got a good draw with this panel. If Dyk, Mayer, and Prost had been waiting for Mr. Tompros in the courtroom, it would have been a 5-star beatdown.

  74. 33

    “In yet another embodiment, multiple cups can be given to participants in a game to see who can most accurately measure the sugar in a pre-determined time period.”

    Don’t put a claim in to that or the whole thing is going to “gaming devices”.

  75. 32

    The American Association for Species-Appropriate Nectar Concentrations just tweeted their approval of this decision.

  76. 31

    To be fair, his device means that you don’t have to remember the ratio anymore – you only have to remember where to place the divider.

    But you still have to remember where you put the device. ;)

    Another approach would be to simply figure out how much sugar you need to add to, say, two cups of water to make the appropriate solution for hummingbirds, orioles and/or butterflies. Then make a minimum size measuring cup (say 1/2 cup max volume) with the appropriate level markings/indicator for each animal. This invention (thank you, thank you!) has the advantage of being completely adapted for multiple uses! You could even throw away that old 1/2 cup measuring cup without the useful markings.

    In another embodiment, my Multi-Use Nectar Meausing Cup has a POWERFUL COMPUTER BRAIN that emits your choice of warning noise, human voice, or appropriate bird call when the level of sugar is reached. Thus, an element of fun and entertainment is introducted, and blind users are also accomodated. In yet another embodiment, multiple cups can be given to participants in a game to see who can most accurately measure the sugar in a pre-determined time period.

  77. 30

    Louis Tompros of WilmerHale stepped in and likely transformed the case from a Rule 36 affirmance to a major win.

    It doesn’t matter if you’re right or wrong, it’s who you have for your attorney.

  78. 29

    To be fair, his device means that you don’t have to remember the ratio anymore – you only have to remember where to place the divider.

    One concern about the CAFC ruling is that they imported a “multiple ratio” limitation into the claim when determining what counts as analogous art, specifically concerning the fluid-mixing references Greenspan and DeSanto. The claim doesn’t require multiple ratios: a BRI of “receiving means” would mean the slot at any one of the positions on the device, rather than the entire set of slots.

    Also, the prior art devices in Greenspan and DeSanto clearly do have a “movable divider” (in Greenspan, for instance, it’s the threaded stopper). Now, if they want to say that the screw thread that the stopper fits into is not equivalent (for 112 6th paragraph) to the receiving means in the application, that’s fine, but it doesn’t mean that Greenspan is non-analogous art.

  79. 28

    Not clear to me why the claimed way is “better” than the way I’ve been doing it for years which is to take a defined amount of sugar (e.g., “1/3 cup”) and mixing it with a defined amount of water (e.g., “2 cups”).

    It’s not clear to me that being “better” than your way is a requirement. That said, I’m not rushing out to buy one. I agree completely that the inventor’s resources would have been better focused on marketing. That’s what I tell most of the solo inventors that come in for a consultation.

  80. 27

    I read the case a day or so ago, but I recall that the fact that the claimed device could handle multiple different ratios, selectable by moving a divider, was key to the decision. I agree with you that the claim isn’t particularly clear on that, but I think that’s what the inventor means by “hummingbirds, orioles or butterflies.” If you credit that then the problem is how to conveniently produce one of several desired mixtures of a solute and liquid with a single apparatus. Desk drawer dividers aren’t particularly relevant to that problem.

  81. 26

    “I’m actually surprised the CAFC didn’t affirm on those alternative grounds itself”

    Look at the references and you might not be anymore.

  82. 25

    Cy someone looking for a better way to mix fluids in one of several desired proportions

    Not clear to me why the claimed way is “better” than the way I’ve been doing it for years which is to take a defined amount of sugar (e.g., “1/3 cup”) and mixing it with a defined amount of water (e.g., “2 cups”).

    What’s great about my way is that you don’t need to buy anything you don’t already have. And you don’t need a license.

    Of course, what would be really awesome is a sugar and water mixing robot with a POWERFUL COMPUTER BRAIN that knows the preferences of a wide variety of nectar-loving bird species. But that would require some serious programming and know-how to make it work!!! Whoever comes up with that first will surely deserve and get a nice broad patent.

    And please don’t tell me that books and human hands are analogous art. We’re talking about a robot with an unfallible memory here. You don’t have to turn a single page.

  83. 24

    It says remanded. I think this means the BPAI can come back and say that the Greenspan and DeSanto references satisfy the other prong of the AA test, because they are in the “same field of endeavor” of containers for mixing and dispensing fluids. Affirmed.

    I’m actually surprised the CAFC didn’t affirm on those alternative grounds itself. Chenery still permits reviewing courts to affirm when when the lower decision “relied upon a wrong ground or gave a wrong reason” as long as the reviewing court doesn’t disturb or make new findings of fact that require the expertise of the agency. The CAFC could have just looked at the references and said the later two references are in teh same field of endeavor. Affirmed on those grounds.

  84. 23

    Is this an outright reverse? Or a remand for the BPAI to re-do its analysis?

  85. 22

    And despite the fact that a review of his work found errors in 16 out of 18 cases, do you think he’ll get an outstanding rating this year?

    Let me guess: Idk, probably.

  86. 21

    “As noted by the Solicitor, the problem being solved is how to conveniently produce a desired mixture of a solute and a liquid. Period.”

    So how did any of the cited references solve this problem? The answer is: none of them did.

    This is yet another example of the examining corps and the BPAI handing the Solicitor a heaping steaming pile of crxp to defend. I would have sympathy for the Solicitor, but as he chose to try to spin the heaping steaming pile into gold, rather than tell the BPAI and the examiner to re-open and find something better, he/she/they got what they deserve.

  87. 20

    “is taught by any of ten million containers comprising a solvent and solute (or second solvent) that are mixed upon removal of a divider between the two compostions.”

    I have no doubt that the claim could probably be rejected, but the issue is whether or not the search returned such results as would be needed to accomplish such in a timely enough fashion. And it doesn’t appear that it did.

  88. 18

    Cy There’s no reason in the world someone looking for a better way to mix fluids in one of several desired proportions would look to desk drawer art

    There is no mixing of fluids. We’re dissolving one substance (sugar) into another.

    And I’m not sure what makes this way of mixing a solute and a solvent better than any other ancient method where the amounts of solute and solvent needed to achieve a particular concentration of dissolved solute are indicated on the mixing container. It seems like a very obvious variation.

    Note that this “limitation”:

    a divider movably held by said receiving means for forming a compartment within said container, wherein said compartment has a volume that is proportionately less than a volume of said container, by a [pre-determined, old, known and desired ratio], wherein said compartment is adapted to [hold a solute], and wherein removal of said divider from said receiving means allows mixing of [said solute and solvent].

    is taught by any of ten million containers comprising a solvent and solute (or second solvent) that are mixed upon removal of a divider between the two compostions.

    The other two limitations “a container that is adapted to receive water” and “a receiving means fixed to said container” seem unlikely to represent non-obvious combinations.

    the court first considered the problem being solved by Klein and arrived upon a somewhat narrowly defined single problem of: “making a nectar feeder with a movable divider to prepare different ratios of sugar and water for different animals.”

    I’d say “extremely narrowly defined” rather than “somewhat narrowly defined.” The panel here simply didn’t want to invalidate this patent. The body of the claim recites ratios and mixing one composition with another. The purpose of a generally taught ratios (the specific values of which are not recited) and the utility of the final mixture can not give patentable weight to the invention because the utility of those compositions was known. As noted by the Solicitor, the problem being solved is how to conveniently produce a desired mixture of a solute and a liquid. Period.

    I suggest the PTO take a look at some old cookbooks and cooking magazines.

  89. 17

    One of the APJ’s is retired. The rest, and the examiner, are still there.

    Think any of them are embarrassed by their roles in this debacle?

    My guess is none of them are.

  90. 16

    “In any event, maybe you guys should btch more to Kappos about getting people who can make a decent rejection more outstanding ratings and people who send out 80 shty rejections in the time alloted for 20 a less oustanding rating.”

    You know that quantity, not quality, rules over there. Adjust your behavior accordingly.

    “I note that a friend of mine just went on the program. Submitted his actions for review. Hey, only 16 out of 18 had an error!”

    Did he get an outstanding rating last year?

  91. 14

    In any event, maybe you guys should btch more to Kappos about getting people who can make a decent rejection more outstanding ratings and people who send out 80 shty rejections in the time alloted for 20 a less oustanding rating. Maybe just fully successful, as a start.

    I note that a friend of mine just went on the program. Submitted his actions for review. Hey, only 16 out of 18 had an error! He’s not too sure he’s ready to be a primary. But in the mean time he’ll be sending out 16/18 of his outstandingly produced actions and be a 12.

  92. 13

    Before we get to obviousness. What gives this claim novelty?

    Paul Cole, are you there? Is this case one to include in the next edition of your book. If I remember right, you have in the first edition a nifty little plot of patentability against narrowness of the claim preamble.

  93. 12

    I’d be willing to put money on your side of that bet if we can find any takers. I can also probably arrange for us to get the answer, for a small fee of course.

  94. 11

    “Uhm, maybe because their typical PTO dxuche bags who think they can get away with doing a shxtty job because they’re not gonna get called out on it. ”

    Looks to me like they did. The guys that did it may not even work at the PTO anymore lulz.

  95. 10

    How much you wanna bet that the examiner, APJ’s and associate solicitors who all screwed this pooch got “outstanding” ratings last year?

  96. 9

    “The only question at hand is why the PTO would care to not issue such a patent.”

    Uhm, maybe because their typical PTO dxuche bags who think they can get away with doing a shxtty job because they’re not gonna get called out on it. Or because they don’t want to issue a patent to a “simple” invention, even though they don’t have even a halfway decent reference or combination.

    Probably because they’re just dxuche bags. PTO’s full of them.

  97. 8

    Let’s wait and see if the dxuche bags at the PTO do the right thing and issue Mr. Klein his patent.

    I’ll be watching you, dxuche bags.

  98. 7

    In this case:

    Someone made a retar ded rejection and the CAFC said it was retar ded.

    Amazing.

    Oh, and just btw, the BPAI is not going to expand the problem solved.

    The only question at hand is why the PTO would care to not issue such a patent. Like 10 people in the whole world will be affected by it. If you really want a fancy shmancy bird feeder then you can buy it from this guy (if you don’t want to make your own and use in secrit).

  99. 6

    “•As mentioned above, Mr. Klein’s case is interesting because he has been largely representing himself pro se during the patent prosecution process. After Klein filed his own opening brief to the Federal Circuit, Louis Trompos of WilmerHale stepped in and likely transformed the case from a Rule 36 affirmance to a major win.”

    Typical of the dxuche bags at the PTO. Try to frustrate a pro se inventor into going away. Sad that even the APJ’s engage in such dxuche baggery.

    Mr. Klein and Mr. Trompos, thank you and congratulations.

  100. 4

    I agree that it’s an interesting and potentially important decision. I’m pondering a blog entry of my own on how this decision, coupled with that in Innovention Toys, maps the contours of analogous art. It strikes me that one could probably define a purpose in the latter case narrow enough to have otherwise invalidating art found not analogous. Similarly, in this case, I suspect it’s entirely possible to define the purpose broadly enough to bring in the art.

    In other words, the Federal Circuit knows analogous art when it sees it and will define the purpose accordingly. But perhaps that’s just the cynic in me.

  101. 3

    So I guess Klein can’t sell his patent to a “non-practicing entity” to assert against manufacturers of desk drawers? What a shame.

    I think the court is right, and the Solicitor’s arguments are wrong. There’s no reason in the world someone looking for a better way to mix fluids in one of several desired proportions would look to desk drawer art. If that’s really the best art available, then Mr. Klein deserves his patent. I congratulate him.

  102. 2

    “In its opinion, the court held that none of the five cited prior art references could be considered ‘analogous art.'”

    Great job examiner and panel of APJ’s!!!!!!!

    “…for the reasons given by the Solicitor and ignored by the CAFC as untimely raised”

    Great job solicitors!!!!!!!!

  103. 1

    In determining that those references were non-analogous, the court first considered the problem being solved by Klein and arrived upon a somewhat narrowly defined single problem of: “making a nectar feeder with a movable divider to prepare different ratios of sugar and water for different animals.”

    Hmm. Sounds vaguely … European.

    Klein’s narrow “purpose” of the invention goes against common patent attorney practice because the narrow purpose can also lead courts to narrow the claim scope during claim construction and in their analysis of infringement under the doctrine of equivalents. Attorneys may want to rethink that approach in light of this case.

    It depends on what you intend to do with your claim. It has always been the case that if you characterize your claimed invention as broadly applicable, then you strengthen arguments that the claims are invalid. This latter issue is “commonly” ignored by some attorneys because, in certain instances, narrower claims are deemed “worthless” by the applicant.

    My view is that this invention is really an obvious piece of cxrxp (for the reasons given by the Solicitor and ignored by the CAFC as untimely raised) and all the money spent on prosecution and appeals should have been spent on marketing. But we go to litigation with the BPAI arguments that we have, not the ones that should have been made.

Comments are closed.