Obviousness Decisions at the BPAI

Everyone understands that KSR v. Teleflex changed the way that obviousness is treated at the US Patent Office. In that case, the Supreme Court encouraged examiners to rely upon common sense when determining whether a claimed invention is obvious and also eliminated some of the rules against combining various elements of the prior art to into a composite that renders the claimed invention obvious.

I wanted to take a look at how the BPAI is using the KSR decision in its obviousness cases. Using my set of 10,000 recent ex parte BPAI decisions (2009–2011), I looked at the set of decisions involving the question of obviousness and compared the decisions that cited KSR with those that did not cite the case. The results are not surprising. Decisions that cite to KSR are much more likely to affirm examiner rejections as compared with those that do not cite KSR. Namely, in obviousness cases that cite KSR, the examiner rejections are reversed only 15% of cases. In obviousness cases that do not cite KSR, the examiner rejections are reversed in 39% of cases.


Appeal Outcome 



Affirmed in Part 


KSR Cite 




No KSR Cite 




The 10,000 case sample size makes these results easily statistically significant.

My take is that the BPAI is not selectively citing KSR but rather that applicants are less likely to win obviousness issues that relate to KSR issues. Thus, in Ex parte Ramchandani the BPAI cited KSR in rejecting the applicant’s argument “that the Examiner has not established a proper motivation to combine” the two cited references. And, in Ex parte Pickering the BPAI felt no need to cite KSR as it agreed with the applicant that the sintered silicon carbide found in the prior art was different from Pickering’s claimed chemical vapor deposited silicon carbide.


77 thoughts on “Obviousness Decisions at the BPAI

  1. 77

    Here’s a monkey wrench to throw into the gears.
    In 10/124,891, the decision by the BPAI stated that the Examiner was affirmed. However, if you read the opinion, the Examiner was actually reversed by the BPAI on all claims involving prior art rejections. The Applicants did not challenge some judicially created obviousness-type double patenting rejections so the BPAI affirmed these rejections. However, the decision merely said AFFIRMED rather than Affirmed in part, reversed in part.
    Moral: You’ve got to read the entire decision to decide the true nature of the decision.

  2. 76

    I would just like to express my appreciation to those who have contributed to this thread for an interesting and informative discussion.

    Notably to Ned Heller for an exceptionally interesting discussion of disc drives.

    So indeed thanks, everyone!

  3. 75

    I posted prior to seeing your post below, but wanted to take the opportunity to clarify my comment on capacity – I should have said capacity per size (density).

    And yes – that section in 1793 is the direct precursor of obviousness that I referenced above in the 1952 statute.

  4. 74


    I misunderstood your comment.

    I had taken it that you thought your efforts at the Office created a new legal theory of denying patentability of form factors where no such legal theory had existed before.

    I now understand that you had merely educated the Office that obviousness (since at least the 1952 law) covered attempts at claiming mere form factor changes (that is changes in size without more). Of course, mere changes in size are understood not to provide an ability to overcome prior art.

    But increasing capacity and the like are not the same as form factor, nor is the notion of mere size change indicative of patent ineligibility – it is a function of obviousness. Again – a 103 issue, not a 101 issue.

    What threw me was your comment of “both of which were on the trend line, meaning that as technology advanced, the size of the disc drive could be reduced to generate the required capacity. As well, track density was a artifact of independent invention and was not an invention itself.” It seemed to me that you were claiming that actual advances somehow became non-patent eligible because they were merely on a trend line – as if actual real advances somehow lost the ability to become patented based solely on advancement rate of other patentable inventions. It seems I misunderstood your comment on mere size to apply to all manner of engineering tasks that are undoubtedly inventive – and one may even say takes “a flash of genius” to advance technology after all the low hanging fruit has been plucked (since we all know that innovation is seldom linear or predictable).

    My humble apologies for misunderstanding your comment.

  5. 73

    Hard, the courts never really addressed the issue of validity based on size or capacity.

    As to the statements in the blog post, whether or not there were prior disc drives of a particular size is hardly the issue. Even if there were no other prior disc drive of that size, the disc drive of a particular size is not an invention. Rather, it takes invention to make a disc drive of a particular size. The first to achieve that size cannot block all others who achieve that size without using whatever means or inventions the first disclosed.

    I would remind you that the issue here is fundamental. Form factor patents block the progress in the useful arts and cannot be tolerated. They are invalid under any number of legal theories, but all we have to do is hearken back to the Patent Act of 1793 which declared the machine of a different size was not patentable. See, the last sentence of section 2.

  6. 72

    Hard, they published guidelines shortly after our visit directing the examining corps to determine whether there was an art establish record of reduction in size, increasing capacity, or the like. If so, the selection of a particular size, etc., was to be rejected as obvious.

    Now, if this is not based on the law, let me know.

  7. 71

    EG, I agree that it is all dicta until the resolution of the question requires an answer based on the constitution. Until then, the Supreme Court interprets the statutes, and they do so in a way to keep them within the constitutional grant of power to the extent they can.

    As described by Curtis, IIRC, the drafters of the constitution wrote with the meaning of invention and discovery well understood based on prior legislation and cases from the states and from England. While England would allow patents of importation, the first congress did not permit them. The records indicate they thought that such patents were beyond their power. Was this clearly wrong? Is there a difference between invention and importation?

    The second question we might ask is whether there was a clear understanding that invention and discovery required more than simple novelty over that which was known or in public use.

    We know that Jefferson had strong views on this topic and coined the term “obvious.” But he also used the term “frivolous.”

    Now, even though the discussion of this topic in Grahm is dicta, it is entitled to more than disdain unless one can demonstrate that it is clearly wrong.

    But, so long as the court construes 103 to be consistent with its prior case law, we shall never know, shall we?

  8. 70


    I enjoyed your link, but feel compelled to quote from that link in relation to the current discussion on “form factor” patents:

    It is an urban legend that Rodime invented and patented the 3.5″ form factor. The first products to use the 3½” form factor were 3½” Floppy Disk Drives announced by Tandon and Shugart Associates at Fall Joint Computer Conference, Nov 1982 and first shipped in 1983, neither company was ever issued a patent on the form factor and it is not clear that the set of dimensions that are a part of a form factor definition could or should be patentable.

    I also note that your link also interestingly validates my previous comment, although the court choose a different path to take for invalidation, nonetheless, invalidity was due to performance claims – not form factor claims:

    Since “600 tpi” means “approximately 600 tpi” to one of skill in the art, it necessarily follows, Rodime argues, that one of skill in the art would interpret “at least 600 tpi” to mean “at least approximately 600 tpi.” Accordingly, Rodime concludes that the district court erred in not granting summary judgment in their favor, or, at a minimum, concluding that this evidence created a genuine issue of material fact to be resolved at trial.

    We disagree. The major flaw in Rodime’s argument is that it focuses solely on the term “600 tpi” instead of the claim limitation as a whole, in context… Even if “600 tpi” means “approximately 600 tpi,” as Rodime argues, it is unnecessary to read in an implicit range when interpreting “at least 600 tpi” because this limitation as a whole already expressly represents an open-ended range, i.e. 600 tpi and up.

    And, specifically,

    The claim limitation at issue in this appeal relates to the storage capability of the hard-disk”.

  9. 69

    If you all seem to be telling me that the CIP was not necessary, and that is why they added something.. but then decided to just take it like the DOD did.. then let me ask you,why was there Kent if not for INTENT?
    Why was there a Search that took 38 days. And then stolen and replaced with one dated 2 weeks earlier. why was I told I could only have three Drawings? Why was it abandoned and I wasn’t told? Why didn’t he step up to the Plate? Why was I told to sign but not date it? 250,000.00 Question.. oops I made a mistake tear it up.
    Why should I have seen it any other way. Remember the Trademark he wouldn’t file? Funny how you all see things in shades of Gray!
    Why was the Trademark abandoned? Why was I visited by oh you know.. And then my Copyrights sent to me a year later? Why the H@ll was I charged 5,000.00 to steal all the evidence? Why didn’t you just do the right thing?
    Why would I close my mind? LET ME THINK? Oh I remember… I don’t know how to think!

  10. 68

    I think that the claim limitation “having at least 600 tracks per inch density” does have issues with enablement and description as it is an unbounded structural claim (covering as it were a drive having one million tracks per inch density).

    But this is quite a different matter than one of patent eligibility.

    The courts never addressed the issue of patentability of form factor limitations. As I said, the industry took the issue to the PTO. We were successful there.

    Does this mean Ned, that the success is not one based in law, either through Congress (legislatively) or through the courts (judicially)? I am pretty sure that even back then the Office was not allowed to create substantive law.

  11. 67

    I really like this except from the government discussing TSM in the KSR oral argument:

    Mr. Hungar [for US Gov’t]: “Construed as the sole means of proving obviousness the teaching suggestion motivation test is contrary to the Patent Act, irreconcilable with this Court’s precedents and bad policy. It asks the wrong question and in cases like this one, it produces the wrong answer. It should be rejected and the judgment of the Court of Appeals should be reversed. . . . It’s just foreign to this Court’s precedents as a mandatory prerequisite for obviousness.”

  12. 66

    “Giles Rich said that an obviousness standard had by 35 USC 103 replaced the invetiveness standard, and he was in a good position to know as he helped write the statute. But it seems that we cannot do without the concept of inventiveness and perhaps the infamous “scintilla”. The idea that an invention represents some kind of human achievement goes right back to the Venetian patent law.”

    Yeah, Rich said this again and again and again and again and again.

    Then the Supreme Court in 1966 decided Graham v. John Deere. They had a different view, holding that only Cuno Engineering had been overturned, and that its prior case law had been adopted by Congress.

    Rich’s interpretation of the 1952 Act turns out in many respects to reflect his personal agendas. He had just such an agenda with Section 112, p. 6. He was of the view that it applied in the PTO. Frederico strongly disagreed. But Rich was on the court when it decided In re Donaldson.

    Rich was also of the view that Section 112, p. 6, ended the whole doctrine of functional-at-the-point of novelty test for indefiniteness. Federico disagreed, saying that Section 112 “modified or rendered obsolete” Halliburton, but that is all. Nothing about all the functional-at-a-point-of-novelty whatsoever.

    The more we get cases to the Supreme Court, the more we find that Rich was full of it. He was and is wrong on a lot, but most of all, on his ideas concerning Section 103.

  13. 65

    I might add, that claiming a disc drive having at least 600 tracks per inch density essentially claims all disc drives now and in the future with that track density regardless of the independent inventions necessary to achieve that track density.

    Such a claim claims a result, a result of invention or inventions not described or enabled. Such a claim offends the very essence of a patent system based on invention and the progress of the useful Arts.

  14. 64

    Clayton, smaller form factors permit finer tracking. Drives suspend heads at the end of (rotating) arms and/or flexures. The longer the arms, the greater their mass and greater their movement in response to vibrations. Both have to be reduced to track finer.

    Hope this helps.

  15. 63

    Paul, see link to chmhdd.wetpaint.com for a discussion of the most famous of the form factor patents. From Quantum v. Rodime,

      On November 19, 1985, James G. McGinley and Roderick M. Urquhart, two engineers at Rodime, filed a patent application for the invention described above. Claim 1 of this application recited, inter alia, a track density of “approximately 600” tpi. The examiner, in a first office action, rejected all the claims as obvious under 35 U.S.C. § 103. With respect to the track density limitation in Claim 1, the examiner stated:

      The art described in the preceding paragraph [regarding 5.25 inch disks] demonstrates that such a density is within the state of the art. Such a density would seemingly be achievable on a [3.5 inch] disk in the same manner by which it was achieved on a larger disk. Consequently it would seem that the subject matter of claim 1 – which is seemingly quite general – should not be considered patentable.

      In a response dated May 23, 1986, applicants cancelled the original claims and inserted new claims some of which recited a track density of “at least 600” tpi. Although applicants had replaced “approximately” with “at least” in the track density limitation of these new claims, they made no reference to this in their response, but instead focused on the difference between the size of their disks (3.5 inch) and those in the prior art (5.25 inch) as a basis for overcoming the examiner’s rejection. The examiner subsequently allowed these new claims, and the patent issued on January 20, 1987, as U.S. Patent No. 4,638,383 (the original ‘383 patent). Claims 4, 6, 7, 9, and 14 of the original ‘383 patent all recited a track density of “at least 600 concentric tracks per inch.”

    It should be noted that the claims, see the linked case, also recited a number of standard disc drive elements. Each of these were old in the art. That is why the prosecution focused on the disc diameter and track density, both of which were on the trend line, meaning that as technology advanced, the size of the disc drive could be reduced to generate the required capacity. As well, track density was a artifact of independent invention and was not an invention itself.

    Rodime, as described, asserted the patents broadly against the disc drive industry focusing their infringement contentions on the disc diameter size and track density.

    In the end, they lost only a technicality involving broadening in a reissue. The courts never addressed the issue of patentability of form factor limitations.

    As I said, the industry took the issue to the PTO. We were successful there.

    But, as you would expect, Rodime made a major issue of the whole process of petitioning the goverment. In litigation, they accused me of lying and of organizing a group boycott in violation of the antitrust laws. That had to be expected, but was a very ugly experience, let me tell you.

  16. 62

    A brand new case from the CAFC addresses the question of ranges in the prior art. Not quite the dinner plate case, but interesting, nonetheless.

    link to cafc.uscourts.gov

    Here’s a footnote that I particularly enjoyed – I don’t think you need the context to understand that the “expert” is testifying that the range 5-15 doesn’t include 7.5:

    At oral argument, Tyco’s counsel argued that Dr. Orr’s declaration should be interpreted to mean that the reference to “5-15 mg” did not disclose all dosages between 5 and 15 mg. Counsel argued that the BNF reference, “while it has 5 dash 15, a person of ordinary skill in the art would know that it cannot refer to 7.5 specifically. It refers to 5 arguably, perhaps a 10, perhaps a 15 . . . .” That argument is silly. Not only is it contrary to the ordinary understanding that a dash joining two numbers signifies the end points of an inclusive range, but it also is at odds with Dr. Orr’s own reference to “5-15 mg” as constituting a “range.”

  17. 61

    OK Ned, if you view the term “advance” as meaning that the invention must be more than barely novel, (or as now codified in 35 USC 103, must be more than “obvious to one of ordinary skill art,” then we’re on the same page. But to say that an “advance” is a constitutional requirement for a patentable invention, or that the standard for patentability approved in Hotchkiss is somehow constitutionally mandated is sheer fiction. To use Justice Sotomayor’s expression from Microsoft v. i4i, “squint as I may,” nothing in Hotchkiss says that the standard for patentability it approved is constitutionally based. In fact, as far as I can tell, the standard for patentability approved in Hotchkiss came out of “thin air,” i.e., is based on federal patent common law, and is not derived from the Constitution or any patent statute (other than the vague concept of what “invention” means).

    That “Jefferson did want to pass onto the court system the judgment call as to what constituted an invention” does not make it the basis for a constitutional standard for patentability. As Professor Mossoff has correctly pointed out, SCOTUS has myopically (and unpersuasively in my view and Mossoff’s view) elevated the “Jeffersonian story of patent law” in Graham to dogma. Again, that SCOTUS dogma is built on historical “house of cards” that won’t stand up under scrutiny. And contrary to what SCOTUS said (in dicta) in Graham, Congress, as constitutionally permitted by Congress’ power under the Patent Clause, “called the shots” as to what the standard for patentability should be in enacting 35 USC 103 in 1952. And while Congress may have codified the federal common patent law standard for patentability of Hotchkiss in 35 USC 103, for SCOTUS to even suggest in Graham that the Patent Clause imposes limits on Congress (based squarely on the historical fiction of the “Jeffersonian story of patent law”) to determine what the standard for patentability is (other than at least bare novelty) is disingenuous sophistry.

  18. 60

    It would be a very great service to our profession if you could identify some of the form factor patents by number.

    That would then show that the “dinner plate” arguments have more relation to real life than previously thought.

  19. 59

    Advances in disc drive techonology generally required a reduction in physical size for finer tracking. It was a necessary artificate entirely independed of the change in size.

    And what were these “advances” that required size reduction, Ned?

  20. 57

    Paul, you tell us that Giles Rich in 1952 equated obviousness and inventiveness and I note that Art 56 of the 1973 EPC duly presents “inventive” and “obvious” as antonyms. While a requirement for “invention” might be traceable back to Venice, it is striking that the “obvious” tool for refusing a patent application was not invented until quite recently. End of the 19th century, wasn’t it?

    I wonder how the EPO would have dealt with Ned’s “Form Factor” patents under its Problem and Solution Approach.

    Then again, I wonder how differently the Form Factor patent applications would have been written, in anticipation of scrutiny under the Problem and Solution Approach. The EPC forbids patenting business methods but huge numbers of those drafted by problem and solution merchants nevertheless get through to issue. That is when they solve a technical problem, of course, but the problem of how to win this week’s Lottery is not very technical is it Paul?

    Striking is how prominent the words “Problem-Solution” are in Ron Slusky’s recent tome on claim drafting. Is anybody reading it? I must have a look, to see how he treats “technical”.

  21. 56

    The UK High Court said recently that a 5.25 inch dinner plate (it seems to have lost 0.25 inch in the intervening period) is not inventive because the change is merely arbitrary.

    The set of numbers which are the solution to this week’s National Lottery are not inventive. Any fool can select them which is the whole point of the lottery – it equates every fool with every other. But it is not obvious. Nobody knowns now what numbers thay will be and there is no way of predicting them. Nobody knows which horse will win the 18.20 race at Kempton Park today, but it is doubtful that selecting the winner amounts to ingenuity (though with horses some would deny that). Here is a significant paradox. Our House of Lords said in the 1950’s that obviousness and inventiveness related to the same concept and that there was no distinction between them, but the above example shows that this cannot be true.

    Giles Rich said that an obviousness standard had by 35 USC 103 replaced the invetiveness standard, and he was in a good position to know as he helped write the statute. But it seems that we cannot do without the concept of inventiveness and perhaps the infamous “scintilla”. The idea that an invention represents some kind of human achievement goes right back to the Venetian patent law.

  22. 55

    Advances in disc drive techonology generally required a reduction in physical size for finer tracking. It was a necessary artificate entirely independed of the change in size.

    We have the same requirement with integrated circuits. Reduction in feature size is required for greater speed and density. The particular size itself, divorced from the means and methods, is an artifact of technological advance.

    To throw a roadblock in the avenue of progess represented by form factor patents is the height if irresponsiblity by the PTO.

    But once upon a time, they did issue such patents until yours truly had a chance to address them.

    They are now educated.

    We need the Federal Circuit to get on board as well.

  23. 54

    There was no specific advantage attributable to the change in size? Then why was there a trend towards smaller disk drives?

  24. 53

    Once upon a time, a long time ago, I was lead counsel for the disc drive industry in a mission to the PTO to complain about so-called “form factor” patents. I represented 30+ companies.

    The patent office had been issuing patents on the disc drive of a specific size. The problem was, once a company came out with a the first disc drive of a specific size, the computer industry standardized on that size, giving form factor patents tremendous value.

    We convinced the PTO to stop issuing such patents. Our basic argument was that while the size might be new, and there may be no prior examples of drives of that size, nevertheless that claimed subject matter was per se unpatentable.

    We won. The PTO was convinced. Even so, they had to frame the argument in terms of obviousness. What they did was ask examiners to determine whether there was a trend towards decreasing size. If so, the smaller size was obvious.

    However, my basic argument was that chaning the size of a machine with no specific advantage attributable to the change in size was not patentable subject matter. It was per se obvious.

    I think all agreed. And that is why we won.

  25. 52

    Well Ned, since you are on this line, I will throw into the ring Thomas Blanco-White’s five and a half inch (before the UK went metric) fine china dinner service plate.

    The state of the art features five inch diameter plates and six inch diameter plates. Now, I claim a 5 1/2 inch plate. I say there is no TSM. The EPO would say Yes there is. But is there really?

  26. 50

    Paul, but you are still looking for “obviousness.”

    Whether something is obvious does not provide the entire answer. As I suggested, choosing a particular color of a ball may not be obvious because there is no suggestion to do so in the prior art, no motivation to pick just that color, no rational reason to do so at all. In that sense, it is non obvious. Given the lack of teaching and suggestion, I could get a patent on the ball of a different color using TSM.

    But, like the clay knob in Hotchkiss, or the heater in Black Rock, the choice of color does nothing to make the ball better or to make the use of the ball easier. It is within the skill of the art, a design choice. Call this obvious you might, but truly this is the wrong term. Obviousness implies that one presented with a problem would know of a solution. When there is no problem, the term obvious does not truly apply.

    I think the inquiry into obviousness diverts attention and at times asks the wrong questions. As the Supreme Court has so often described, there must be some new technical advance to support patentability. That is a critical and essential requirement that cannot be ignored.

  27. 49

    If Judge Bradley did not elevate his statement into a universal rule, who are we to do so?

    But, Paul, as I understand Ned Heller and Hal Milton (whose article seems to depend heavily onhis understanding of your position), it is precisely a universal rule that overrides the actual legislated law.

    Can Ned and Hal be that off?

  28. 48

    See my post above: I have never said that is is a requirement, simply a piece of evidence which if you have got is very helpful and without which you are in difficulty. That is essentially what Mr Justice Bradley said, and who are we to differ?

    When evaluating obviousness, I do not think that there is any requirement or standard, simply categories of evidential weights that you can put into one pan or the other of the judicial scales. Amongst these weights, those tagged “new result” are big. The EPO insists that a “new result” weight should be present in the patentee’s pan otherwise it will hold that there is no invention. In other respects it carries out much the same evidence weighing exercise as in the UK or the US.

    After 40 years trying to understand obviousness I realize that trying to define standards or tests creates bedlam. If you realize that this is just judicial balancing exercise and that all you have is a set of evidential weights, some of which are intrinsically more important than others, it becomes possible to organize the weights and work systematically. Interestingly the latest edition of Terrell, one of the leading UK works on patent law, treats the subject in this way.

    If you use the “weights” model it explains why constructing a “standard” of inventive step should be so difficult. Each pan of the balance has a number of weights which collectively make the case for or against inventive step. Inevitably one of the weights, and it may be a small one, causes the balance to swing one way or another. If you concentrate on the “tipping weight” you will note that its identity fluctuates wildly. If you try to follow each fluctuation, you will find commercial success vital one day, the parties’ discovered documents vital the next day, “one-way street” a ruling test the day after, “right to work” or insignificant improvements the key to the whole topic the day after that and so on. If you realize that it is merely a set of weights whose relative value is more or less settled but whose availability to each side of the obviousness/nonobviousness dispute changes from case to case then you will find that there is order underlying the apparent chaos.

  29. 47

    “I am TOTALLY opposed under both UK and US law to there being any “standard” of patentability.”

    –Paul Cole, 06/21/11

  30. 46

    I am TOTALLY opposed under both UK and US law to there being any “standard” of patentability.

    The Graham case in the US requires some preliminary enquiries and then requires obviousness to be evaluated according to the evidence. The UK test in Windsurfing is similar. Even in the EPO, although there has to be some new result in order to provide basis for defining a technical problem according to PSA, there is no STANDARD providing erfindungshoche or anything like that. The EPO simply looks for a difference, looks for a result associated with the difference, looks at the surrounding circumstances and makes its decision within the framework of PSA.

    And even if you have new technical effect/technical problem, it would be wrong to say that this is a universal answer because cases may come along where different reasoning is apt. Often appropriate is not the same as always appropriate.

    As soon as you have judicial preconceptions, you deny due process.

    The word “discoveries” in the patent clause has troubled me. On the whole, however, I now think it means no more than “disclosures” and does not mandate any underlying discovery. If that is the case there is no constitutional standard.

    And I don’t think you can get there in terms of a requirement for technical advance. It is the patent system as a whole which advances science and the useful arts: I am not sure that you can read this as a requirement for every individual invention to advance the useful arts.

    So in my submission, it is simply a balancing exercise according to the evidence. If there is a new result and if the new result has found its way into the specification, these are mighty big weights in the patentee’s scale. If you have not got these weights, then tht is a Bad Fact. But there may also be big weights in the opposite scale also.

    So what should the USPTO do? Every time I think about the problem I come back to the wise words of Mr Justice Bradley in Webster Loom v Higgins: “It may be laid down as a general rule, though perhaps not an invariable one, that if a new combination and arrangement of known elements produce a new and beneficial result, never attained before, it is evidence of invention.” If a Supreme Court judge tells me that if there is a new result than that is evidence of invention I am going to go looking for such results and put them in the specifications that I draft. I would really like these specifications to contain such evidence because I know it may well be useful. Especially wheh the EPO appeal boards agree. But universal rule or panacea? If Judge Bradley did not elevate his statement into a universal rule, who are we to do so?

  31. 45

    Following these threads” does not make out of touch – teasing and not learning makes out of touch.

    Experience” does not fog the brain – relying on being old and set in one’s ways, not being able to adapt and recognize change is a symptom that the brain is fogged.

    The lack of intelligence and critical thinking in your posts and the surfeit of shilling is, well, BORING.

  32. 44

    Excuse me? Those following these threads are “out of touch”? Dennis, you will want to note that.

    I get it, Shill. In your law firm, hourly rates would be set in inverse proportion to number of years of experience. You have found out that experience fogs the brain. Well done.

  33. 43

    Two Brits and two oldtimers…

    Four very out of touch reconstructionists

  34. 42

    Paul, you, Max and Hal Milton have convinced me. I now believe the requirement to show a new result has always been a requirement to show “invention.” If there is no new result, KSR illustrates dramatically the difference between Supreme Court jurisprudence and the TSM test as administered by the Federal Circuit. Dramatically and emphatically. Hats off big time to Hal Milton.

    Any patent attorney who continues to draft “flat” specifications without discussing a technical advance is probably not fully understanding KSR.

  35. 41

    There is no universal rule for invention, and if you follow Graham there cannot be one. Same with Windsurfing the the UK

    But of your patent does not disclose a new result flowing from the claimed combination of integers, you are likely to prove unlucky in prosecution and certainly in enforcement.

    As KSR was a case where, apparently, there was no new result and the patent was held unenforceable, it is not wholly suprrising that it is cited in cases of this kind.

  36. 40

    If it was known and unsolved by others who tried, the patentee’s solution sounds non-obvious.

    If it was not a known problem, then the solution must be non-obvious, since how can it be obvious to solve a problem you don’t know about?

    Only if the problem was known but nobody previously tried to solve it before is that fact pertinent.

  37. 39

    Well, EG, it is clear that Jefferson did want to pass onto the court system the judgment call as to what constituted an invention. The Supreme Court has taken up the task for 200 years, and their collective decisions are not dicta. Section 103 was intended to overturn Cuno, but the Supremes held in Graham that otherwise its prior case law, particularly Hotchkiss v. Greenwood, was intact.

    All of this is not dicta.

    So regardless of whether the source of the requirement for an advance is in the Constitution or in the Patent Act of 1790, it has remainded in our law for 200 years — and it is not dicta.

    If you have a disagreement with Graham it is with its holding that the Supreme Court’s prior jurisprudence was not displaced except for Cuno.

  38. 38

    If the passage you’re referring to is the same dicta I’ve noted in Graham about the Patent Clause somehow “limiting” Congress’ power here, then SCOTUS’ suggestion that there’s an absolute “constitutional” requirement for an “advance” is utter rhetorical nonsense. I’ve read this passage in Graham repeatedly and its built on a nonsensical house of cards (usually buttressed with quotes from what Thomas Jefferson said about patents which Professor Mossoff and I refer to as the historical fiction called the “Jeffersonian story of patent law”) having no factual support in the literal wording of the Patent Clause or in Federalist Paper No. 43 (written by James Madison) which is the only document written contemporaneously with the passage of the Consitution that interprets the Patent Clause. What SCOTUS says in Graham about “limitations” on Congress’ power relative to the Patent Clause in Graham is not only dicta, but as far as I’m concerned, utter BS, having no support in the literal wording of the Clause or any relevant historical evidence (whatever Jefferson said about the patent law as it relates to the consitutional basis for the Clause has no evidentiary value in my book).

  39. 36

    Well, yes, there is that risk. If Mr. Justice Douglas was still around, he would say that. But, I really don’t see that happening, at least in my lifetime. Let the patent attorneys of 2061 deal with that quagmire, while they pay 26% FICA so I can have my social security COLA.

  40. 35

    I see a lot of opinions here criticizing SCOTUS for the lack of direction given in determining obviousness. I do think that TSM can be too rigid at times, particularly for the most obvious variations. I also think that just because a reference concentrates on a specific embodiment without discussing alternatives those alternatives are not necessarily non-obvious. This is particularly true of non-patent literature, because researches hardly waste their time on the practical issues any competent engineer or scientist can solve in traditional ways. That said there is a big problem with how obviousness is dealt with at the office.

    The last formal training on the subject emphasized putting the KSR rationales into paper. That leads to absurd attitudes, like a statement by some higher ups that now there is no need to show any motivation for the combination, only predictable results. I do not think that is what was in that decision, but the SCOTUS justices were so vague that this is what can be read there. Just like when somebody shows you the solution to a riddle the solution is obvious, when somebody shows you a technical solution to a problem that works, and is almost certainly by using something already known, telling examiners not to find motivations known in the art invites hindsight reasoning.

  41. 34

    No one else has ever called me an @ss.

    Congratulations. I’m very happy for you.

    Contrary to what you may believe, there are more than four people that post comments on blogs.

    Sure, and several of them are @sses. I’m not particularly concerned with keeping track of who is who, though.

    As for consistency, that would be a “you” item, as in the choice of commenting on new posters while at the same time those posters who are more than abundant seem to get a free pass …

    Once again, I’ve never claimed to be consistent. I’ve only claimed that you are. So what exactly is the problem again?

  42. 33

    Not the only one here

    No one else has ever called me an @ss.

    Contrary to what you may believe, there are more than four people that post comments on blogs.

    As for consistency, that would be a “you” item, as in the choice of commenting on new posters while at the same time those posters who are more than abundant seem to get a free pass fromthose who are quick to judge and chastise. It is an application issue – and one that is rather stark.

  43. 32

    OK, but did you read my excepts from Graham on this very topic in another recent thread.* The Supremes emphazied the absolute requirement for an advance as a constitutional requirement that could not be ignored — either by Congress or by the courts.

    *link to patentlyo.com

  44. 31

    I don’t believe I’ve ever claimed to be a policeman, and I’ve certainly not claimed to be consistent. Keep on posting as much as you like, and I will (occasionally and certainly not consistently) point out that you’re an @ss. Not the only one here, by any means, but one of the most consistent.

  45. 30


    Your penchant for teasing would make sense if the horse would actually drink from the waters of wisdom and learn something.

    As the same answers keep on being given time after time after time after time after time after time, the credibility of your statement has already approached zero.

    The thin veneer has been worn off.

  46. 29

    Ah, brilliant comment from Hard about ROW “heading in the wrong direction”. Sorry but it reminds me powerfully of the self-convinced old codger driving the German Autobahn and taking on his cell a call from his wife, who (having been listening to the radio) is in some distress, begging him to watch out for the myopic Geisterfahrer, reported to be driving hard in the wrong direction.

    He replies “There is not just one of them dear. There are hundreds of them”.

    Hard, I’m not suggesting offering a c-i-t claim to the USPTO. I appreciate they are alien there, and in the US courts. I merely suggest framing one, as an exercise, at home in the privacy of your own office, as a revelation to you, where your novelty lies.

  47. 28

    Yet another case of a “policeman” being inconsistent.

    It is plainly obvious that Shilling is a responsive-type post to positions posted in excess on this blog. Your response and choice of name “enough already” is aimed at the wrong party and ignores what really should be the focal point of your post and what really has been posted enough already.

  48. 27

    You and I are of like mind. That assumes SCOTUS doesn’t get it in its arrogant head to hold such a provision unconstitutional based on the dicta (and utter drivel at that) in its Graham decision about the Patent Clause being a limitation on what Congress could choose the standard for patentability to be.

  49. 26

    I for one am not a big fan of advocating for a system that so easily endorses changing claims (for the obvious estoppel reasons).

    To me, MaxDrei’s suggestion is just not workable.

  50. 25

    Sorry Ned, but Markey was on point about how nonsensical it was to treat combinations of old elements differently for obviousness purposes (notwithstandng that it also violates the “invention shall not be negatived by the manner in which it is made” provision in 35 USC 103). Anytime I hear SCOTUS repeat (as it did in KSR) this oxymoronic statement from Anderson’s-Black Rock and Sakaraida about the implausibility of combinations of old elements being patentable, I simply roll my eyes, and remain disgusted with the arrogant ignorance of SCOTUS. That and the equally inane statement SCOTUS made in these cases about the need for “synergy.”

    There is also no requirement (nor should there be one) that the invention represent a “technical advance” to satisfy 35 USC 103. What you propose is also in conflict with 35 USC 101 which simply says that the invention be “new and useful.” There’s nothiing in that patent statutes that requires a “technical advance,” although that might be evidence of unobviousness under 35 USC 103

    I thinks we’re going to simply have to agree to disagree.

  51. 24

    This is just a hunch, but a chart of 2-part claim usage would show an even more precipitous drop to even lower levels than the “whereby” claiming at the thread of link to patentlyo.com

    I do not know if you are guilty of reading too much Hal Milton, but is the claim form is the best way you know, then either you or the rest of the world is heading in the wrong direction.

  52. 23

    There must be a real technical advance

    Harken back to what “advance” really means, and while at it, recall that in the US, “technical” has been explicitly ruled out of the patent equation.

    Other than those two things, your statement is a good one.

  53. 22

    I persist precisely to tease such illuminating answers out of my fellow readers. Thank you for giving so generously of your time. Appreciated.

  54. 21

    EG, well, I for one disagree with you about Graham, Anderson’s Black Rock, etc. Markey clearly did not understand the point of the Supreme Court or its analysis. KSR was an attempt to get the law back on track.

    It turns out that the Europeans on this issue are way ahead of us. They have figure out that simple difference is not enough, and simple lack of suggestion or motivation is not enough to support a valid patent. There must be a real technical advance and it must be described. The issue really is this:

    Is this advance sufficient enough to support a patent? If it is not, it is deemed obvious.

    Focusing on obviousness without regard to technical advance is the real problem with the TSM. Sure, that test guards against hindsight, but the answer to that question does not answer the other necessary question of whether there has been a bona fide advance in the useful arts.

    Take Max’s ball example. The prior art discloses balls of many different colors. Choosing one is simply a matter of choice. Choosing a particular color may not be obvious, but so what?

    Now along come a real inventor. He finds that a particular color has unexpected real advantages. He describes these in the spec and can get a valid patent.

    See the difference between choosing and inventing?

  55. 19

    Good point Shall. But the “primary reference” is either the closest art already known to Applicant at the time of filing, or it isn’t. If it isn’t, then brushing off the objection should be less of a problem than overcoming the closest art.

    In my experience, working for American corporate applicants, the closest art is typically one of their own earlier filings and, if not, it is some device from a competitor, also already known to the Applicant. In such cases, a 2-part form of claim is the best way I know, to dispel rampant self-delusion on the part of the American drafter of the claim in view.

    I expect you to tell me now that I’ve been reading too much Hal Milton for my own good.

  56. 18

    Nice – but the claim is written prior to the examiner providing the primary reference, and there is absolutely no way of knowing how an examienr is going to read the claims to come up with their idea of what the primary reference is.

    Which is why he said try RE-writing your claim, in the context of an obviousness analysis, i.e., after the examiner has given you a primary reference.

    Just for a change, try not being such an @ss.

  57. 17

    Max — why do you persist? or perhaps, a better question is why do you exist?

    I have personally seen thousands (i.e., the number starts with a 2 and has at least 4 digits) of Actions issued by the USPTO. Each Action can include multiple 103 rejections. In fact, when you think about it, even a single 103 rejection can include multiple issues of obviousness because you are dealing with different claims with different features, each of which requiring a separate analysis. As such, I can safely say that I’ve seen over ten thousand applications of 103 — a data set that includes a substantial number of rejections both before and after KSR.

    Do you know what the biggest change is?

    Before, an Examiner would write:

    “It would have obvious to modify X in view of Y because one skilled in the art would have been motivated to [insert some reasoning].”

    Now, an Examiner writes:
    “It would have obvious to modify X in view of Y to [insert some reasoning].”

    In case you didn’t notice, the “biggest change” is little more than a slight rewording of standard language used by Examiners.

    Few Examiners use the catch phrases of “simple substitution,” “common sense,” “predictable results,” etc. These are mostly used by the BPAI to affirm rejections without actually making the necessary factual findings required by the case law.

    Getting to Lionel Hutz’s point, both before and after KSR, the “[insert some reasoning]” proffered by the Examiner has rarely been sound. Even when a good reasoning exist, this reasoning isn’t used. Instead, the reasoning actually provided by the Examiner is based upon a formulaic approach to obviousness that eschews reality. Really, you cannot expect much more out of an overworked, undertrained government employee.

  58. 16

    I think he means

    No, I meant what I said – BORING.

    You being undeterred is just one reason why your shilling remains BORING.

    try re-writing your much-loved independent claim in good old EPO 2-part c-i-t form relative to the primary reference

    Nice – but the claim is written prior to the examiner providing the primary reference, and there is absolutely no way of knowing how an examienr is going to read the claims to come up with their idea of what the primary reference is.

    Just for a change, try not shilling.

  59. 15


    What’s your point Sometimes Dennis does good data mining, other times he doesn’t. This is one of those times where his data mining yields an ‘obvious’ and predictable result. Nobody gets a pass on this blog, even its creator.

    Oh, and to echo “A Log in the Eye,” if you think my response was uncivil, I don’t see you acting as the civility police for the hundreds of other posts on this blog that are magnitudes worse than mine.

  60. 14

    Readers, I think he means “boring” in the sense of “getting up his nose”.

    So, undeterred, here I am, with one for the other nostril.

    Just for a change, try re-writing your much-loved independent claim in good old EPO 2-part c-i-t form relative to the primary reference. It’s a good discipline and it might surprise you. In particular, if all you have left for the characterizing problem is something lame like “flexible” or “straight” or “200 per inch” then you are going to struggle with obviousness.

  61. 13

    You could be a little more civil

    And you could be a little more consistent, as you seem to draw offense at the rather mild posting of unimpressed and yet day after day are quiet when it comes to the much more uncivil postings of the main players here.

  62. 12

    Is there anything more than anecdotal evidence for that proposition of yours, Mr Hutz? This survey, perhaps?

  63. 11

    Because the USPTO is rejecting cases based upon crazy combinations without any plausible TSM.

  64. 9

    The reason for the “reaction” (not “over-reaction”) is that SCOTUS in KSR provides no more guidance on objectively applying the obviousness standard of 35 USC 103 than did Graham. That’s especially true if we’re talking about the ~6200 non-legally trained examiners in the USPTO which KSR basically ignores. The TSM standard was at least objective; the “common sense” standard proposed by KSR is not.

    Also, KSR dredges up the nonsensical view of Anderson’s-Black Rock and Sakraida of the implausibility of finding a combination of old elements to be unobvious. As the late Chief Judge Markey correctly noted, that view is illogical as every invention is a combination of old elements. In particular, how can a mechanical invention ever be considered unobvious under that view? Also, how would Edison’s incadescent light bulb patent fare under this view?

    The fact is what SCOTUS says KSR is not simply unhelpful in applying 35 USC 103 objectively, but a step backwards. We don’t need to go back to the silliness expoused by them in Anderson’s-Black Rock and Sakraida.

  65. 7

    Max, the requirement for an “advance” clearly is in the Supreme Court case law. Unless the specification discloses some advance, more than petty, the simple rejection ought to be that the “selection” is a design choice.

    However, this thinking is not well established in the case law outside the Supreme Court.

  66. 6

    If you read KSR without preconceptions you will see that it was a deeply conservative decision reversing the CAFC on the facts but little more, urging flexibility and common sense and putting forward a number of propositions that were black letter law decades before KSR itself.

    It mentioned the TSM test as being useful, but perhaps not universal, but the whole profession knew that Graham was the leading test and so continues to this day.

    So why the hysterical over-reaction?

  67. 5

    Here I cite my favourite example, the one in which claim 1 reads:

    1. Blue squash ball

    The prior art is black squash balls (some with a green hue).

    In their application, the brothers Winkle tell how they stumbled on the invention by accident. They play squash every Sunday morning. One such day, they found that their kids had mischievously painted all their balls blue. But they played anyway, and (they found out) that with blue balls they could take their game to a performance level they had never before reached.

    On researching the matter, they found an obscure research paper from the Annals of Animal Psychology, reporting on research on chimps, and their reactions to objects displayed on screen. The Paper included a footnote, that a blue colour was chosen for the on-screen objects because it seemed to the researcher that this colour was of most interest to the chimpanzee under test. Winkles acknowledged this art in their app.

    Meanwhile, another inventor, Pinkel, also filed at the USPTO (his kids attend the same school, but let’s not go in to that aspect here). His professionally drafted app had no Background section and no acknowledgement of any art except the conventional black ball. His claim (although ten times as long) was (in substance) identical. He was silent as to any technical effect delivered by the blue ball.

    Years later, it turned out that, indeed, against a white background, humans can acquire a blue target faster than a black one.

    I just happen to think that Winkle Brothers deserve to get their patent, and Pinkel not. Winkle Brothers report in their app a technical effect that their characterizing feature (blue) delivers, and Pinkel doesn’t.

    In EPO terms, Pinkel’s objective technical problem is to find a colour alternative to black, while Winkle’s objective problem is to design a squash ball that allows players to perform at a higher level than they can with a conventional black ball. Where oh where in the prior art is the TSM to switch from black to blue, if the objective is to play squash to a higher standard?

    Matt, you speak of TSM. I just want to be more specific and focussed about it. Hence my invocation of EPO-PSA.

  68. 4

    For me, and not only me (I have in mind the Technical Boards of Appeal at the EPO) there is a gulf betweeen the arts of mechanical engineering, EE and physics, on the one hand, and chem/bio on the other, the former being “predictable” and the latter not.

    You get over the obviousness hurdle in chem/bio using comparative data.

    You get over obviousness in mech/physics by drafting from a starting point of the most relevant art, and telling the PTO, in your app, a plausible story of overcoming a technical problem ie delivering useful technical effects.

    I think the BPAI reaches for KSR when it finds the drafting lame. Conversely, when it finds that the drafter’s story of useful technical effects is standing up to the arguments used against it by the PTO, it is disinclined to use the KSR eraser.

    Just offering that as my hunch, and a hypothesis. Readers might like to rubbish it. Please do. But i suspect that Hal Milton would support it.

    Educate me, without my having to read 10,000 BPAI cases first.

  69. 3

    In a case where the rejection didn’t cite a TSM in the references as the basis for combining the references, I can’t fault the BPAI for citing KSR where the applicant argument is that there was no TSM to combine the references. The lack of TSM is not a proper counterargument (though applicant should bring up the lack of TSM as part of the overall argument for non-obviousness). The proper argument is to point out the flaws in the reasoning (or lack of it) given by the examiner for combining the teachings of the cited references.

  70. 2

    “likely to win obviousness issues that relate to KSR issues. ”

    You mean a KSR issue like, oh, say, the issue of obviousness?

  71. 1

    You needed 10,000+ cases to figure out that when they affirm an obviousness rejection, they’ll cite a case in which the legal conclusion of obviousness was made? Oh, and surprise, suprise, since the most recent Supreme Court case was KSR, this is what they are going to cite.

    This data isn’t interesting or unexpected in the slightest. I’m sure you’ll find the same thing with 101 rejections and Bilski.

Comments are closed.