Prior Art for Obviousness

In re Winslow, 365 F.2d 1017 (C.C.P.A. 1966)

In the 1966 decision Judge Rich described the scope of prior art for §103 using the tableau framework:

We think the proper way to apply the 103 obviousness test to a case like this is to first picture the inventor as working in his shop with the prior art references — which he is presumed to know — hanging on the walls around him.

I wonder if today, the proper legal analysis would begin with a Google’s search engine that has indexed the prior art references?

Also, did the AIA eliminate the “pertinent art” requirement?

87 thoughts on “Prior Art for Obviousness

  1. Everybody but the named Inventor wants the obviousness issue to be tested objectivbely. So what the named Inventor did or did not find obvious at the date of conception is not the issue any more.Now, under AIA, and objectively, the issue is what the notional PHOSITA found obvious or not, at the date of the claim under consideration.The date of the claim is not a date of conception any more but a PTO filing date.It is with exclusive reference to events anterior to that date that the obviousness question must be tested. Ex post facto analysis should be Verboten. It ain’t fair.Now what events were anterior? The publications of others AND the writing of the specification by the named Inventor, addressed to the world (including the PHOSITA) and in which the world (including the PHOSITA) is told what the Invention is. Because of FtF, the writing of the specification is an Event that happened historically, BEFORE the base date for assessing what was or was not obvious.So, for obviousness, we in Europe test, as of the filing date, whether or not that specific Invention announced by the Inventor would have been obvious to the notional PHOSITA. To be fair to the named inventor, that which is “pertinent” art is that which represents a realistic starting point for the PHOSITA, in the Technical Field named by the Inventor in her spec, that PHOSITA being deemed to be addressing the subjective technical problem specified by the named Inventor in her spec. From that point on, obviousness is a cakewalk. Fair to both patent owner and petitioner for revocation. EPO-PSA filters out barmy PTO objections in the blink of an eye. And, for the first time, you can have it too, because of the switch to a First to File law of obviousness. So Dennis, no prioblem identifying the prior art that is “pertinent” Readers, it’s easy! Get used to it!

    1. MaxDrei,Do you intend to ‘attack’ the use of secondary factors with the statement of:”Ex post facto analysis should be Verboten. It ain’t fair.”

      1. Yes anon I do. How perceptive of you. I mean it especially in an environment in which duly issued claims are invulnerable to any prior art attacks that fall short of clear and convincing. I don’t like it that the counter-balance to this aspect of the law is to construe claims narrower in court than at the USPTO. For me, to the notional PHOSITA a claim means one thing and one thing only. Three separate standards (PTO, BPAI and DC) is madness. The added complexity of i) an obligation always to fully consider all secondary considerations because they routinely tip the balance, and ii) claims meaning different things, depending on where you are construing them, leads to legal uncertainty for the public, and a playground for lawyers, with inherent uncertainty, and cost grossly inflated relative to what is needed to deliver fairness and justice between the adversaries.

        1. MaxDrei,It does not take a high degree of perception to note the typical mantras you engage in (and yes, that includes noting that you have inserted a follow-up ‘attack’ on the Clear and Convincing standard in your immediate reply).If you want to actually have a discussion on the merits of any particular legal position, perhaps we can dispense with the veiled attacks and see some legal arguments (if possessed) rather than mere ‘opinion’ about what is ‘liked.’Or we can ride the same merry-go-round as we have done in the past, and have a monologue with additional posts noting the monologue.The choice – as always (and regardless of the software used) – is yours.

          1. Not surprising that my post has garnered a ‘down’ vote.Too bad that down votes are not treated equally as up votes and we can see who disapproves of my comment.After all, ‘ruffled feathers’ is just so not PC.

            1. Not surprising that my post has garnered a ‘down’ vote.I didn’t vote you down. But your insults were uncalled for and, if I were Dennis, I’d simply delete your comment.

              1. Malcolm, exactly what was an insult? MaxDrei not only affirmed what I posted, but provided a compliment that I was perceptive in picking up the meaning of his post.Your incessant spin is a plague on these boards.

                1. exactly what was an insult?”It does not take a high degree of perception to note the typical mantras you engage in””If you want to actually have a discussion on the merits of any particular legal position”If you don’t see how your comments are insulting, then you’re just an ignorant m0r0n or a liar. Or both.Your incessant spin is a plague on these boards.I suggest that you find another blog to troll. You’re sociopath tendencies have been, um, “acknowledged” here.

                2. More of the same CRP from the pre-software change. You accuse me of insults, fail to substantiate your accusation and then add an insult of your own. My calling for a substantive reply can in no way be deemed an insult, and yet, that is what you do.So let’s see how this blog sets the standard in such a situation. Let’s see how the editorial controls set the ‘norm.’

                3. Sorry Malcolm, why exactly is this a laugh out loud situation foryou? How exactly is your comment supposedto engender a conversation?

                4. ” but provided a compliment”I’m pretty sure that was a sarcastic “compliment”. If you’d step outside sometime and engage with some real life people you might pick up on such phenomena more readily. And that’s just as a suggestion to help you become a bit more sociable.

              1. “What would you do differently?”That cannot be a serious question – as I have already made a suggestion as to what I would do differently: treat the down votes equally as up votes so that we can see who disapproves of the comments.

                1. I have already made a suggestion as to what I would do differently: treat the down votes equally as up votes so that we can see who disapproves of the comments.Right. The question is why do you care? What difference would it make to you and how you behave here?

                2. “Right”Funny that you would seek to challenge my post here. What did you say about the voting again?And why do you seek to make my comment personal to me? Why should it matter to you how I treat ANY grading of my posts? Why is that important to you?You and Leopold seem to relish doing that. Read again my suggestions and comments on the voting down operation. See if you can figure out why the voting down works differently than the voting up. What possible reason can there be to list the names of those who vote up, but hide the names of those who vote down?It appears that several aspects of the new software make it LESS LIKELY that posters will be held accountable for what they say (except that is, with the improved editorial control of the blog owner to shape the content of the blog – hey, it’s his blog and he can do what he wants,- I certainly hope that he recognizes the very real possibility that his editorial shaping of content causes a loss of an objective basis due to his inability to apply any sense of ‘norm’ in a consistently objective manner. It sure is ‘nice’ to say that you have a ‘norm,’ but when you do not live up to that norm on a decidedly content driven basis, well, you get to reap what you sow.

                3. Leopold,Your posting habits are of public record, and I will use that public record for truthful comments whenever I want to.You cannot ask your way out of something you behave your way into.

            1. That’s a good question – and most likely not in the manner that you imagined.Which is worse: the emperor walking around in his birthday suit or the child pointing out that the emperor is walking around in his birthday suit?

              1. That’s a good question – and most likely not in the manner that you imagined.No idea what you’re talking about. Do you have something to say or are you just reverting back to your usual innuendo and insults?

              2. Which is worse: the emperor walking around in his birthday suit or the child pointing out that the emperor is walking around in his birthday suit?What?

        2. The added complexity of i) an obligation always to fully consider all secondary considerations because they routinely tip the balance… leads to legal uncertainty for the public, and a playground for lawyers, with inherent uncertainty, and cost grossly inflated relative to what is needed to deliver fairness and justice between the adversaries.I agree with you, MD. The “secondary considerations” are an area ripe for reform and have been for many years.

          1. Do tell – and please provide a cogent legal basis for this ripeness. Please fell free to discuss the actual law that has developed and why reform is so necessary. And please, do so in an intellectually honest manner so that an actual conversation can ensue.

            1. please provide a cogent legal basis for this ripeness.”Legal basis” for this ripeness? Huh?fell free to discuss the actual law that has developed and why reform is so necessary.Max already discussed the “actual law” upthread. The “actual law” allows for post-filing considerations to trump a determination that the claims are obvious. It creates unnecessary uncertainty as to the validity of the claims. Why should the post-facto “commercial success” of an embodiment of a claimed invention or the licensing of a claimed invention be a factor in determining whether the claims were obvious when they were filed or granted? Is there any evidence that such information is actually probative of the obviousness of a claim? i.e., is the likely non-obviousness of a claim the primary reason that people typically choose to license a patent? Or is that just wishful thinking by someone living in a fantasy world where invalid patents are never licensed?

              1. I asked you Malcolm – not MaxDrei. And that is even besides the point that what MaxDre supplied was opinion (and conclusory opinion at that). Then with your typical pushback with questions, you continue to evade giving answers.This of course is nothing new. So please try again Malcolm and give answers with solid legal points, not conjecture, or conclusory opinions or pushback questions.

          2. MM, on those egregious “secondary considerations” Ryan Alley has a thread on Apple v FTC. Here is what I just wrote there:”Ryan having read this Decision I am appalled. What it comes down to is “If it is in the i-Phone, it can’t be obvious, can it?”.That is like taking the centre line of the obviousness playing field and moving it downfield for Goliath, until it sits within 15 yards of David’s goal line. I suspect the judges love secondary factors because they are at a loss how to decide obviousness when deprived of a briefing on those secondary factors. That would explain those incessant exhortations, in their remittals, to brief us fully, please, on the secondary factors (for, without them, we can’t Do our Job).”

            1. Thanks for the tip, MD. That’s a nice write-up by Ryan. I agree with your take as well. Pretty sad “reasoning” by the minority in that opinion. I’m still amazed that the softie woftie crowd is now pushing the lack of “enablement” of prior art descriptions of device functionalities that are no less generic and hand-wavey then the claims being sought or asserted. Once the technology existed that enabled detection of a finger touching a screen, how could the detection of movement or multiple touches not be obvious? Of course there is the issue of what speed of detection and reaction is necessary for a particular purpose, but whatever “technical” solutions exist to solve such problems will always have to be very specifically set forth in the claim for the same reason that biochemists aren’t allowed to claim drugs that “treat disease X faster” without describing novel non-obvious structural features of those drugs.

              1. I’m pushed for time MM but must add two thoughts, quickly.1. I do wish judges would focus on the precise words of the claim, because the words of the claim were chosen deliberately. to achieve the desired scope of protection, wide where wanted, narrow only where needed. It Shows a lack of respect to the drafter, to construe something other than the claim. Here, I think they were indeed busy construing something other than the claim, something much narrower than what the claim defined.2. Like you, I find it troubling, when judges apply strict enablement requirements to the art but when it comes to the invention the bare conception seems to be good enough to beat off the attacks. Again judges please, start from the claim. It is as you say, MM, the claim should be directed to the subject matter that solves the problem, not merely recite the problem to be solved. (The only exception is where the invention lay in perceiving a problem of which the PHOSITA never even conceived).

    2. Max, your post convinced me — that the only thing fair to the inventor is to measure obviousness at the time of his invention based on information in the public domain.

      1. Thanks Ned. A most valuable response, for revealing the journey ahead, for American jurists transitioning from FtI to FtF. Under FtF, the “date of conception” is irrelevant and the prior art is set relative to the filing date.Wasn’t it A. Einstein who observed that no scientist ever relinquishes his loyalty to his favoured theory of how the world works? It takes a new generation of scientists to displace the prevailing orthodoxy. So too with obviousness, I believe.

        1. Also, we need to return to the English idea of a provisional application so that the inventor can record his invention using his own words and drawings in the patent office to record his date of conception and invention. Later prior art that discloses no more than what the inventor discloses should not be considered in the obviousness analysis.You know, the Paris Convention actually reads this way. The Euros got it backwards when they focused on full support for every limitation in the priority document. The question really is, who first invented the subject matter of the reference.

          1. Don’t understand you Ned. What you accuse the EPC of doing is what I see in the AIA but NOT in the EPC (thanks to Article 54(3) of the EPC). Can you say more, so that I can understand what is really bugging you

            1. The English provisional removed subsequent references disclosing the same thing. That is what the Paris Convention says what a priority document is supposed to do. However, in the EPO, it doesn’t make a bit of difference what the reference discloses. They look at whether the claims are fully supported in the provisional.That is backwards from English tradition and the very words of the Paris Convention.

              1. Paris says you get priority for the “same” Invention. Under the EPC, if you claim an Invention that is the “same” as in your pro (and your pro enables that very invention), you get the date of the pro for your claim to that very Invention. Later publications bounce off that claim, powerless. There might be more subject matter in your non-pro, filed at the end of the Paris year. For claims directed to that “not the same” subject matter, you don’t get your prio date. Why should you though? Under the EPC, a single claim can have more than one priority date.So, I’m not seeing your problem yet Ned. I know you are on about Section 50-something of the UK Patents Act 1949 and that some say its absence from the EPC causes injustice. But actually, it doesnt. Sorry.

                1. Max, pro shows A. Ref, filed later, shows A. Non pro claiming priority shows and claims A, and also A+, depending from A.Paris convention says, “subsequent filing” is not invalidated by reason of its showing A.Euro, claim to A is OK. Dependent claim to A+ is invalidated.That, sir, is directly contrary to the Paris Convention.Our practice in the US is like this:We claim A in the independent claim. Dependent claims are allowable if A is allowable even though they add detail not disclosed in the priority document.If reference shows A, we show priority to our provisional, remove A. The independent claim is patentable. The dependent claims are patentable.Now there is some discussion to the contrary in the case law, but only of independent claims that add detail. No examiner will ever reject a dependent claim where the parent claim is allowable. Never happens. The issue never come up for appeal.So the question really is this, if the reference only shows A, and the provisional shows A, and the patentability of the claim is by reason of A, why is a claim invalidated by the reference showing A?

                2. Ned, I do not understand your:”That, sir, is directly contrary to the Paris Convention.”Unless you are telling me that the USA decides for the rest of the world what is or is not in conformity with Paris. But you are not doing that, surely, are you?This is not acte claire. Please tell me, kind sir, how you get to your “That, sir” declaration for, if you are right, all Europe, including the UK, has been labouring for 40 years under a grave misapprehension. Until you came along, nobody has called out that Europe is wrong. And now you come along and declare it wrong, with no supporting reasoning, as if it is all so self-evident as to require no explanation. Explain it sir. If you don’t mind.You ask why. The answer is that with First to File and absolute novelty (both allowed by Paris, yes?) to protect the Invention A+ you need a claim to A+ that is entitled to a PTO filing date earlier than the date on which A+ was made available to the public. Your pro makes no mention of A+ so cannot backdate your later A+ claim. The claim to A+ gets no Paris priority. OK?

                3. We have two kinds of prior art prior to AIA: statutory bars and art after the date of invention. For bars, one needs full support for the claim. For art subsequent to the date of invention, all you have to show is prior invention of the subject matter of the reference.We are talking here about references after the filing date of our priority application. These are not statutory bars. We can remove the reference by showing prior invention of the reference.English provisionals used to operate the same way. The provisional removed later references that shows the same subject matter as reference. The intervening reference was not treated as a statutory bar.Circa 1993, in a decision from the EPO, the EPO decided that one needed to show support for the full claim even though the reference was the same as the provisional, such as when the provisional became a published paper.I have had several conversations with Keith Beresford who said this 1990’s decision was treated with dismay by Englishmen.It also seems contrary to very words of the Paris convention that was consistent with the prior practice of England.The mistake of the EPO was that it followed a US opinion that dealt with statutory bars, without seeming to understand the difference.

                4. Thank you Ned. yes I can indeed confirm the “dismay” in England in the 1990’s. Indeed there has been little but dismay seeping out of the English patent professions, ever since 1978, as the EPO’s Enlarged Board of Appeal knocks down one after another English sacred cow.But times change. See now how the UK professions have come around to seeing the logic of the EPO’s jurisprudence, and how the UK Supreme Court has taken to exhorting the lower courts in England to fall in line with the EPO over utility (HGS) , novelty (Kirin Amgen), obviousness (Conor) and enablement (Biogen). If the EPO were contradicting Paris thebritish Supreme Court would not now be bending the knee to the EPO jurisprudence now, would it?I sincerely hope that the UK Supreme Court holds out against mainland Europe though, on another matter, namely, fixing the scope of protection of a claim. England has no doctrine of equivalents (as such) but the mainland still practises that nonsense. May England prevail!

                5. Let’s all sing the praises of our homeland,Rule Britannia, Britannia rule the waves….Mein Gott, one would think someone else won the war.

                6. Ned I feel your pain. This stuff matters for those start ups who need to openly publish their claimed subject matter immediately after they file their priority application.England felt it necessary to include a special provision in its 1949 Act; Section 52, if I remember right, to shade the natural meaning of Paris. England lobbied to get it into the EPC in 1973, but it never made it in there. English patent attorneys lamenting its absence ever since. But by now they are getting used to it, and so far, the sky has not fallen. Start ups can still start up.

    3. I follow and agree with your comment generally, MD, but the “pertinent art” question is still problematic:that which is “pertinent” art is that which represents a realistic starting point for the PHOSITA, in the Technical Field named by the Inventor in her spec, that PHOSITA being deemed to be addressing the subjective technical problem specified by the named Inventor in her spec.The problem being that both the EPO and the USPTO remain in the business of granting patents on obvious “innovations” where the inventor has not solved a “technical problem” but rather identified an (allegedly) previously unrecognized “need”, typically one for a computer-implemented method of performing a task with clear analogues in the “real world” (as opposed to the “virtual world”). In that situation, there is likely to be very “pertinent art” that is not found in “technical” field of “computing” (engineering a computing device) but in the decidedly non-technical field of “information processing” (the act of using brains, logic and ancient objects such as pencils and paper to more efficiently receive, store, and proces information).My perception is that the EPO does a slightly better job than the USPTO because occasionally the EPO correctly recognizes that the problem and its solution are “non-technical” when viewed in light of the prior computing art. But there is still much room for improvement.Anyway, my two cents. I enjoyed your comment, in any event.

      1. MM, try this Link:link to…for a brand new EPO case on the technicity of shopping. I dispute that the EPO grants patents for inventions that are solutions to objective problems that are not “technical” ones.And thanks for saying you enjoy reading my stuff. I yours too.With subject matter on the borderline of eligibility, there are many prior publications that are pertinent even though they are concerned with subject matter that is not eligible. It is a challenge to find the relevant art and to formulate the objective technical Problem (as T1670/07 Shows). There is attorney skill involved, from both the one representing the rights owner and the one representing the Opponent at the EPO. Many EPO attorneys handle such borderline cases less than optimally, but that doesn’t invalidate the EPO “Approach”.

  2. I guess that depend on whether you think inventing within the useful arts has moved out of the lab and into your living room D.

    1. 6,I cannot locate a legal requirement that invention must have been in the lab in the first place. Such location specificity sounds far too much in Flash of Genius, and ‘but for’ expense of effort – two well debunked myths of limitations of patent grants.Quite the contrary, I can find 35 USC 103 which dictates the lab-less nature of Congress’ thoughts regarding the expanse of patent grants: “Patentability shall not be negated by the manner in which the invention was made”I also note that your prior man-crush Dudas has shown a growth in maturity and noted the desire of the founding fathers to ENABLE invention to be made by the common man – including quite arguably in the environs of the common man’s living room with his reference to the AWARD-WINNING article that can be found at link to…In pertinent part:”Therefore, according to the historians Naomi Lamoreaux at Yale and the late Kenneth Sokoloff of UCLA, the Founders “quite self-consciously” designed a patent system that could do what no other had done before, stimulate the inventive genius and entrepreneurial energy of the common man. They wanted to expand the pool of productive U.S. inventors to include as many people as possible, even those without the resources to commercialize their own inventions.”I see that the new software still cannot adequately preserve intellectual honesty by having people acknowledge critical counter points that rightfully have their place in any intellectually honest true dialogue.Is pointing out the lack of dialogue when all we have are competing monologues considered an ‘attack?’We shall see…

      1. “I cannot locate a legal requirement that invention must have been in the lab in the first place.”Indeed, much to the embarrassment of the patent system and those who invent in the useful arts.I read the dudas article. He was always like that dude, you just didn’t know him very well and had a skewed vision of him. I know you don’t think this, but as a person that did know him a bit, I can tell you that it is certainly so.

  3. did the AIA eliminate the “pertinent art” requirement?Any prior art can be “pertinent” if the argument citing that art is compelling and well-made.Applicants in the computer-implemented art units seem to wish to limit the art that can be cited against them to prior computer-implemented art. And, sadly, the Examiners at the PTO often seem incapable of applying eons of real world knowledge and understanding to reject claims that apply that knowledge (consciously or otherwise) in broad, generic terms to the not-so-brave and not-so-new “virtual world.”People have been processing information and “social networking” for a long, long time. They’ve been doing it publicly, they’ve been doing it privately. They’ve been doing it secretly, they’ve been doing it openly. They’ve been doing it selectively, they’ve been doing it non-selectively. They’ve been recommending things, they’ve been ranking things, they’ve been disparaging things. They’ve been collecting information, they’ve been sorting information, they’ve been sharing the information, they’ve been hiding the information, they’ve been using the information to sell people things, they’ve been using the information to decide what to give away and what to keep. All this is ancient. And so, too, are computers equally ancient, for patent purposes, in the year 2013. They were ancient in 25 years ago, for that matter. So right there you’ve got a lot of “pertinent art” — far more than the PTO ever seems to manage to find.

    1. The other issue, of course, is the routine use of newly-coined terms in many business and/or computer-implemented claims. If you’re sincerely tired of seeing “non-pertinent art” being cited in Office Actions, try writing better claims that don’t obscure the subject matter behind some meaningless jargon.And yes: that’s a big “if”.

  4. We think the proper way to apply the 103 obviousness test to a case like this is to first picture the inventor as working in his shop with the prior art references — which he is presumed to know — hanging on the walls around him.Even in 1966 this was an extremely silly proposition. If the inventor is presumed to know the prior art references, what is the point of “picturing” him with the references “hanging on the walls”? How is that supposed to make the “test” work any better?

    1. “picture the inventor as working in his shop with the prior art references — which he is presumed to know — hanging on the walls around him.”Judge Rich disavowed this analysis in In re Antle 170 USPQ 285 (CCPA 1971)

      1. ‘Disavowed>’ is certainly not the right word. ‘Distinguish’ would be a better choice.There is another phrase in In re Antle, immediately after the distinguishing remark: “As we have often remarked, language from an opinion should not be divorced from the facts of the case in which the language was used.”

  5. Which raises a huge issue with hindsight and analogous art. With today’s analysis of, “it’s obvious to combine these references because they would yield the invention”, the question of analogous art is only becoming more important.

      1. That would depend on what the search terms are and how they were derived. If you’re typing in disparate terms brought together by the application, then no, that’s not analogous. But that’s exactly what happens.

        1. If you’re typing in disparate terms brought together by the application, then no, that’s not analogous.That’s not necessarily true. The art identified by such a search could certainly be analogous art. They could represent the most pertinent art. Choosing search terms carefully is certainly a good way to find the best art. But the best way to find the best art is to keep searching, using as many different terms as possible.

          1. You perfectly illustrated current examiners’ problems with distinguishing between “best prior art”, non-analogous art, and broadest unreasonable interpretation. Finding a reference to twist into a rejection is not your job, and that was exactly my point. In the old days, they searches the shoes by class to find the most relevant AND ANALOGOUS art. What you’re describing is by definition using hindsight to cobble together a rejection.

            1. Finding a reference to twist into a rejection is not your jobI never said that it was. I spoke of finding the “best prior art.” In the old days, they searches the shoes by class to find the most relevant AND ANALOGOUS art.Right. We don’t live in the “old days” anymore. We live in 2013 where (1) there is a lot more information out there that is easily accessed whether or not that information is organized by “class” in the PTO’s archives; and (2) there is a huge group of “innovators” out there who like to pretend they are “computer technologists” (or something along those lines) when, in fact, they are simply trying to be the first to describe yet another ancient real-world method (e.g., “identifying available real estate”) in the context of a “computer system.” Restricting searches to any “class” of “computer-related art” is not an effective way of dealing with the obviousness issues raised by such claims.

            2. What you’re describing is by definition using hindsight to cobble together a rejection.No, I’m not describing “using hinsight”. I’m describing finding prior art. The databases need to be searched, don’t they? How can they be searched without key words? You need to see the claim first before you do the search, don’t you? Is that also “by definition using hindsight”, according to you?

      2. is it obvious to combine the top three Google hitsThat depends on the identify of the “top three” Google hits, which in turn will depend on how the search engine is configured at that moment in time to display the results. Certainly the mere fact that the three “Google hits” were “at the top” does not make those “Google hits” per se “obvious to combine”.

      3. Right, is it obvious to combine the top three Google hits?Hits based upon what kind of search? I’ve seen 102 rejections based upon what was obviously a keyword search and the cited art wasn’t even remotely close. You could tell, by the passages cited, that the Examiner typed in a half-a-dozen keywords and cited the first piece of art that popped up.E.g., search for “gate” and “latch” and you could find art for semiconductors or art for doors.Any keyword search is only as good as the particular keywords used and the sophistication of the particular search. Regardless, it says nothing about how one of ordinary skill in the art would actually search for solutions to a particular problem.

    1. KSR witnessed a truck-driving-through of what was understood to be the world of difference between the art available for novelty and the art available for obviousness (and no, ‘spin’ or ‘powerful argument’ cannot and should not bridge that gap – that gap exists for a fundamental reason).I find it ‘amazing’ (not really) that that decision and its effects are more often obfuscated than are treated in a clear manner.If the Court lost its ability to ‘implicitly’ read what it wanted to read into the section of 101, you would see the questions become far, far, far more important.If the words of the statute were given their just accord, If the revocation of the common law ability to define ‘invention’ was recognized as what transpired in the 1952 Act, then the Court would need to recognize dead letters when they see dead letters.But the addiction of putting their fingers into the 101 nose of wax is simply too powerful.

      1. Good to have you back anon. The antis want to not apply the law and not understand the technology and science. I was thinking about J. Lourie. And, certainly what a judge must take comfort in is that they are applying the law. That despite the tedium that the greater good of the society is being met by applying the law and that this gives the judge solace and a sense of purpose. J. Lourie by not applying the law and by not trying to understand the technology has broken this bond with our society and is forever doomed to a life of a crusader where the law means nothing.Another point we should start calling Lemley, Litigator Lemley.

        1. Lourie was figuratively beaten into submission by a Court that refuses to acknowledge that Congress wanted the CAFC to be the last word on patent law (to that effect, I would have no difficulty whatsoever if the Supreme Court limited their review of patent cases to actual matters of constitutional import – but there is that policy-addiction thing going on).When a controlling power can shape what is acceptable in a discourse – through the power of a ‘norming’ factor – ‘more’ rather than ‘less’ scrutiny is the prudent course of action.Do you not think this applies even more so to a blog than a courtroom where the beauty of the adversarial nature guarantees a full picture will be brought into the light and a true conversation may ensue?

          1. anon, check out the “Under the AIA” thread. I’d like your view on whether the new 102(b)(2)(A) will actually permit the inventor to file and potentially obtain multiple patents on the same invention provided that each time he files he names a different co-inventor.

              1. The oath can be accurate as the inventor himself invented the subject matter he claims to have invented. The joint inventor might also have invented the other subject matter added. Undoubtedly, if the PTO discovers all of this, they can simply not issue the later-filed cases on double-patenting grounds. But why then do we allow two patents to issue if the first filed was filed by a pirate and not by the inventor. The first filed is not invalid because 102(f) is repealed.

                1. So then in other words you suggest a flim flam attempt at a fraud on the office? Gl with that Ned.

                2. 6, I’m not so sure it is a fraud. In the Telephone Cases, Bell’s claim to a modulated signal was enough for the Supreme Court. Thus, if I modulate a signal with a compression algorithm, have I not done the same thing as Bell? The signal is physically different.Now if the signal itself is not changed, but only its information, then we are back to claiming the abstract, adding nominal features.

                3. “6, I’m not so sure it is a fraud.”Then you should review the definition thereof.

                4. 6, Fraud involves misstatements of facts. How does claiming a signal involve any misstatement of fact? I am puzzled.

          2. “Lourie was figuratively beaten”Well he didn’t look any worse for the wear when I saw him the other day so don’t worry over-much.

  6. Regarding my “pertinent art” question: 35 USC 103 (new and old) both ask whether the differences between the invention and the prior art would render the invention obvious to PHOSITA. However, the pre-AIA law does not particularly define “prior art” for section 103. Thus, the courts have ruled that most, but not all 102 prior art count for obviousness purposes. One particular type of art that is excluded is non-pertinent prior art. Under the AIA, the new section 102 now defines “prior art” and you would expect that definition to apply when the same word is used in section 103.

    1. I think it depends on the art unit. :) I recently found where someone took all the data by examiner and art unit and if you’re in business methods, then yes, the top 3 google results will be ‘obvious to combine’, but other art units tend to be more forgiving. Really, I think obviousness is just a subjective standard, because it’s the best we can do, and trying to attach terminology to what is and isn’t obvious is an exercise futility. I also wrote an article (with reference to a PatentlyO article :) ) about the chances of getting a patent through based on how ‘new’ your technology is, and what art unit you get it examined in … link to

    2. Dennis, the controversy historically has been related to whether “secret” prior art should be included in 103. The Euros do not count secret prior art for obviousness purposes. The courts in the US however have consistently held that prior art includes secret prior art, indicating that the question is not really one of obviousness to the actual inventor, but whether the differences are sufficient on an objective level.On search engines and pertinence, there are engines that allow one to plug in the claim in its entirety and return the most pertinent art as defined by the claim. I think that is exactly what the new 103 says is the scope of the prior art — what is claimed. Plug it in to a search engine and see what pops up. That is what one of ordinary skill would do as well.

      1. OK, fine, as a way to collect the prior art references. But then you still have to sit down and read them to see what one of ordinary skill in the art would make of them. Then, you may be able to make a judgment as to whether the invention would have been obvious to one of ordinary skill.Inevitably, Google returns search results. If we use 6’s postings as the surrogate of the claim you propose using as a search term, the fact that there are search results does not compel the conclusion that what 6 says would have been obvious to a person of ordinary skill before learning it from 6.

        1. American, still the point is that if the reference shows up (top 10?) in a search using terms from the claim itself, I think it will be hard to argue that the reference should not be considered.

          1. Agreed, it can be a reference. The July 1963 Playboy is prior art to all patent applications filed after July 1964. But that does not mean that all of those post 1963 patent applications are unpatentable, unless something in the Playboy magazine, perhaps with other teachings from other references and the ordinary skill in the art, make the invention obvious.

          2. I think that the ‘rubber hits the road’ when you get down to considering what “considered” means.Does Google provide results based on a key word? Sure.Does examination start with a search for a key word in a claim (without the context of understanding the application?) Most definitely not.See 35 USC 131 and MPEP 704.01 “After reading the specification and claims, the examiner searches the prior art”

    3. Pre-AIA I thought the question was whether the prior art was “analogous” (rather than “pertinent”), which could be shown by being either in the same field of endeavor or by being pertinent to the inventor’s problem (In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004)). Defining prior art under 102 post-AIA doesn’t seemingly alter this. Analogous art was always a subset of the universe of prior art and post-AIA 103 doesn’t expressly indicate a different reading to “the prior art.”

    4. A reading of §103 suggests that the word “pertains” modifies PHOSITA, and not “prior art.” Therefore, the statute does not really refer to “pertinent prior art.”

      1. John, Not exactly true, as even if we grant that ‘pertains’ modifies PHOSITA, the point of the modification is in limiting what art that PHOSITA may use in determining obviousness.Whether you want to use the word “analogous,” “pertinent,” or “unwarranted abuse by examiners of restriction practice,” the point remains the same: the world of art for obviousness analysis is not the same world of art for novelty analysis.See also link to

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