By Jason Rantanen
K/S HIMPP v. Hear-Wear Technologies, LLC (Fed. Cir. 2014) Download Opinion
Panel: Lourie (author), Dyk (dissenting), Wallach
This nonobviousness case is significant because it illustrates an important way that some Federal Circuit judges are pushing back against KSR v. Teleflex (2007): by focusing the analysis on the presence or absence of individual limitations in the prior art and limiting what can be considered in establishing the presence of that limitation. Here, the majority holds that while common sense or basic knowledge may provide a reason to combine elements present in the prior art, it cannot establish the presence of an element itself.
Background: Hear-Wear is the owner of Patent No. 7,016,512, which relates to hearing aid technology. At issue in the appeal were dependent claims 3 and 9 (Hear-Wear did not appeal the BPAI’s ruling that the remaining claims of the ‘512 patent, including the claims from which 3 and 9 depended, were invalid in light of the prior art). Claim 3 of the ‘512 patent states:
Claim 9 similarly depends from claims 7 and 8, adding the identical “wherein said insulated wiring portion is terminated by a plurality of prongs that provide a detachable mechanical and electrical connection” language.
Patent Office Proceedings: During prosecution of the ‘512 patent, the Examiner rejected all claims as obvious, and further stated with respect to claims 3 and 9 that “providing a plurality of prongs for the electrical connections or for the plugs is known in the art.” Slip Op. at 3, quoting office action. In response, the applicant amended independent claims 1 and 7 to expand on the “cushion tip” element and the Examiner allowed all the claims.
HIMPP subsequently instituted an inter-partes reexamination, challenging the validity of claims 1-12 of the ‘512 patent (note that the reexamination request was filed pre-AIA). In that proceeding, the Examiner concluded that all of the claims of the ‘512 except claims 3 and 9 were invalid in light of the prior art. The BPAI disagreed with the Examiner’s basis for rejecting claims 1, 2, 4-8, and 10-12, but nevertheless concluded that these claims were invalid in light of prior art. The BPAI declined, however, to reverse the Examiner’s decision not to reject claims 3 and 9 because there was no factual support in the record for the plurality of prongs element. HIMPP appealed the BPAI’s refusal to reject claims 3 and 9; Hear-Wear did not appeal the rejection of the remaining claims.
Result: The only issue on appeal was whether the additional limitation in dependent claims 3 and 9, viz: that the “insulated wiring portion is terminated by a plurality of prongs that provide a detachable mechanical and electrical connection,” was sufficient to render the claims nonobvious. Writing for himself and Judge Wallach, Judge Lourie affirmed the BPAI. Writing in dissent, Judge Dyk would have reversed the BPAI and rejected claims 3 and 9 for obviousness.
What’s going on here? At the outset, it’s important to recognize what this appeal is not about. It is not about whether or not electrical plugs were actually known in the art as of 2001, except to the extent that the court might take de novo judicial notice of that fact. Nor is it about whether, assuming that electrical plugs were present in the prior art, common sense could provide a reason to combine plugs with the other elements of claims 1 and 2 of the ‘512 patent.
Instead, K/S HIMPP v. Hear-Wear highlights two important tensions in nonobviousness jurisprudence that are now bubbling to the surface: first, whether the standard for nonobviousness under KSR is so flexible as to allow common sense or basic knowledge to provide an element of the claimed invention, and second, the degree to which Examiners and the BPAI/PTAB may rely upon their own technical expertise. Here, the majority embraces a strict evidentiary approach: a claim element must be present in the record and if it is not, the PTO may only consider it in narrow, peripheral circumstances. The dissent criticizes the majority for adopting an overly rigid approach that denies examiners recourse to common sense.
Strong Evidentiary Requirements for “Core Factual Findings”: In Judge Lourie’s view, KSR does not dispense with the need to have evidence in the record disclosing each claim limitation, particularly where those limitations are “important structural limitations”:
“Here the Board refused to adopt HIMPP’s proposed rejection of claims 3 and 9 because it found that there was not a suitable basis on the record “for concluding that the particular structural features of claims 3 and 9 [were] known ‘prior art’ elements.” Board Opinion at 24. The Board’s decision was correct because an assessment of basic knowledge and common sense as a replacement for documentary evidence for core factual findings lacks substantial evidence support.”
Rather, there must be “evidence on the record, particularly where it is an important structural limitation that is not evidently and indisputably within the common knowledge of those skilled in the art.” Slip Op. at 7 (more on the emphasized text in a moment). KSR does not require otherwise: “[T]he Board’s holding is not inconsistent with KSR’s caution against the overemphasis on publications and patents for combining or modifying prior art that are already on the record….In contradistinction to KSR, this case involves the lack of evidence of a specific claim limitation, whereas KSR related to the combinability of references where the claim limitations were in evidence.” Id. (internal citations omitted).
Nor may employees of the PTO rely on their own technical knowledge. Examiners should only do so in narrow circumstances, i.e., where the facts asserted to be well known are not capable of instant and unquestionable demonstration as being well-known), and even then must “provide an affidavit or declaration setting forth specific factual statements and explanations to support that finding,” if challenged by the applicant. Slip Op. at 8, citing 37 C.F.R. § 1.104(d)(2) and the M.P.E.P. And while the court recognizes that the BPAI has subject matter expertise, it “cannot accept general conclusions about what is “basic knowledge” or “common sense” as a replacement for documentary evidence for core factual findings in a determination of patentability.” Id.
Common sense and Agency Expertise: Judge Dyk disagreed. “In my view, the majority’s holding is inconsistent with the Supreme Court’s decision in KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007), and will have substantial
adverse effects on the examination process.” Dissent at 2.
Here, the majority’s imposition of a rigid evidentiary standard for the presence of claim elements in the prior art goes too far. To the extent In re Zurko, 258 F.3d 1379 (Fed. Cir. 2001) (the primary case relied upon by the majority) held otherwise, it is inconsistent with KSR:
In Zurko, we held that, as to core (as opposed to peripheral) issues, “the Board cannot simply reach conclusions based on its own understanding or experience—or on its assessment of what would be basic knowledge or common sense.” Id. That statement is contrary to the Court’s holding in KSR that “[o]ften[] it will be necessary for a court to look to . . . the background knowledge possessed by a person having ordinary skill in the art” when examining obviousness, 550 U.S. at 418 (emphasis added), and that “[r]igid preventative rules that deny factfinders recourse to common
sense . . . are neither necessary under our case law nor consistent with it.” Id. at 421. The majority’s approach here is inconsistent with KSR itself and also with our post-KSR approach. Following KSR, we recognized that the Court “expanded the sources of information for a properly flexible obviousness inquiry to include . . . the background knowledge, creativity, and common sense of the person of ordinary skill.” Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009). Consequently, obviousness inquiries “include recourse to logic, judgment, and common sense available to the person of ordinary skill that do not necessarily require explication in any reference.” Id.
Furthermore, the PTO should be able to rely on its own expert knowledge when addressing issues of patentability:
Deference to the agency’s expert knowledge is particularly important with respect to obviousness. Throughout [the Supreme] Court’s engagement with the question of obviousness, [its] cases have set forth an expansive and flexible approach . . . .” KSR, 550 U.S. at 415. The Court emphasized that “[r]igid preventative rules that deny factfinders recourse to common sense . . . are neither necessary under our case law nor consistent with it.” Id. at 421. The Court specifically rejected the approach that
the majority adopts here, stating that “[t]he obviousness analysis cannot be confined by . . . overemphasis on the importance of published articles and the explicit content of issued patents.” Id. at 419. Publications and patents are not sufficient by themselves because “[i]n many fields it may be that there is little discussion of obvious techniques or combinations.” Id.
Dissent at 5. This approach – of allowing examiners and the BPAI to rely on their own technical expertise, is consistent with the approach of the predecessor to the Federal Circuit, the Court of Customs and Patent Appeals. It also maintains safeguards to prevent its abuse: specifically, the requirement that Examiners “state on the record that they are relying on a fact well known in the art and provide their rationale for doing so” and the opportunity that applicants have to challenge the Examiner’s “determination that particular features were common knowledge in the art.” Dissent at 7, 8.
No Judicial Notice: Is the presence of a plug in the prior art as of 2001 a “core factual finding” related to an “important structural limitation” that is “not evidently and indisputably within the common knowledge of those skilled in the art”? Judge Lourie thought so, and further declined to take judicial notice of the presence of electrical plugs in the art as of 2001 for the same reason that it was reasonable for the Board and Examiner to decline to take official notice (i.e.: that these facts were “not capable of instant and unquestionable demonstration as being well-known.”). Slip Op. at 8. On this point, Judge Dyk jabs back: “Every purchaser of electrical devices in the United States for the past 50 years or more is familiar with multipronged electrical connections.” Dissent at 4.
If an office action includes a conclusory statement that a thing is known to those of ordinary skill in the art, has the examiner taken official notice? According to this case, the answer is no. Whew! That’s a relief!
It is common practice, and best practice, not to make every possible argument or separately argue every claim when replying to an office action. Excessive argument creates estoppels, wastes client resources, and makes the relationship with the examiner more adversarial. A classic reply makes one or two effective arguments for each of the independent claims, with supporting amendments if deemed necessary. Redundant arguments are often withheld.
But rejections of dependent claims often include conclusory statements such as the ones that were at issue here. If those statements amount to official notice, they must be challenged in the next reply. If not challenged, they will be deemed admitted. If the grounds for rejection currently at issue can be easily overcome, must the applicant still parse every detail of the office action to avoid loss of rights? Must the applicant challenge every assertion the examiner has made, implicit or explicit, without regard to relevance? Thankfully, no.
I’m not sure it does any good, but I have been using the following boilerplate in my replies:
The applicant believes this reply addresses all cited grounds for rejection and that further traverse, including traverse of official notice, would be moot. The applicant reserves the right to traverse additional aspects of the office action should such traverse appear necessary at a later date.
Paul, sage advise. The more one says about anything, the worse it gets in litigation. Reducing the argument to the barest minimum is always the best policy.
“It is common practice, and best practice, not to make every possible argument or separately argue every claim when replying to an office action.”
Careful there as some may view this as less than thorough or somehow less than “honest.”
Marbury v. Madison
May I respectfully point out that the job of examination is with the executive, not with the courts. If the PTO is not examining the way the courts would like, they cannot order the executive to do it differently.
The courts can decide issues of law, substantial evidence, and claim construction de novo. But they cannot tell the examiner what to do, to enter a rejection that he did not make.
It is about high time some posters here re-read Marbury and try to understand why the Supreme Court said that it could not order the executive to issue the commission to the Justice of the Peace in that case even though he had established a legal right to such a commission.
I find it a bit shocking Ned that you turn around and do not realize the limits of the Royal Nine when it comes to the legislative branch and writing patent law in the first instance.
Reading a map just is not the same as writing a map.
anon, and despite that you do not believe this, I agree with you.
“despite that you do not believe this”
Can you clarify exactly what it is that you think that I believe and do not believe?
I will tell you this: I believe in the U.S. Constitution, and in the premise that it is the Constitution (and NOT the Royal Nine) that attorneys owe fealty to.
And while you are at it, perhaps you want to answer this (related) question:
link to patentlyo.com
Posted on another thread as well…
Ned,
In light of our past dialogues on the proper role of the Court in relation to Congress, I thought you might enjoy the article by Amanda Frost, Academic highlight:
Congressional overrides of Supreme Court decisions,
SCOTUSblog (May. 30, 2014, 2:56 PM), link to scotusblog.com
“This nonobviousness case is significant because it illustrates an important way that some Federal Circuit judges are pushing back against KSR v. Teleflex (2007): by focusing the analysis on the presence or absence of individual limitations in the prior art and limiting what can be considered in establishing the presence of that limitation. Here, the majority holds that while common sense or basic knowledge may provide a reason to combine elements present in the prior art, it cannot establish the presence of an element itself.”
How is this “pushing back” against KSR? WTF are you talking about, Jason? Where in KSR does it say that the examiner, or an accused infringer, is relieved of the burden of establishing, by a preponderance for the examiner and by clear and convincing for an accused infringer, that every feature of the claim is within the scope and content of the prior art?
There’s no “push back” here. It’s a very simple case. If you want to reject a claim for being obvious, you have to produce evidence that establishes 1) that every feature claimed is within the scope and content of the prior art and 2) that there exists a reason to modify/combine the prior art to arrive at the claimed invention. That was the law before KSR, and that is the law after KSR. There’s nothing new, significant, or ground breaking about this decision. Other than J. Dyk’s incredibly lame effort to kick up dust.
“Where in KSR does it say that the examiner, or an accused infringer, is relieved of the burden of establishing, by a preponderance for the examiner and by clear and convincing for an accused infringer, that every feature of the claim is within the scope and content of the prior art”
That’s never been the burden on the examiner/infringer, so I don’t know why it would need to be relieved.
A novel feature is not sufficient to surpass 103. Obviousness is not a series of anticipation rejections.
“If you want to reject a claim for being obvious, you have to produce evidence that establishes 1) that every feature claimed is within the scope and content of the prior art”
Strike two.
Finally, a comment in this thread that shows that points out the difference between obviousness and novelty, something that the majority clearly misses in this case.
To pass 103, in must be something more than someone with obvious knowledge in the art could do. If an expert says, “any of the 300 students I taught when getting my PhD could come up with this,” then it is not sufficiently creative or inventive, and therefore not patent eligible even if it is completely novel.
“not patent eligible”
Sure sign of BLOWING any credibility you may have wanted to portray by conflating patentability and patent eligibility.
“J” is more like “F”
I’ve been discussing 101 with my colleagues so much that I mistyped. Distinction with no real difference in this context.
On a patent law log….
Make that “F-F”
I read over “eligible”. It was obvious what you meant, J.
But tell me more about who has the burden, when it comes to 103, is it the Inventor or the USPTO. Then tell me who has the burden after issue; is it the patent owner or is it the party putting validity (103) in issue.
I’m seeing here a Presumption of Patentability, from the get go, and an even more unassailable Presumption of Validity, after due issue.
Applicants have to be careful what they winsomely/guilefully/skilfully ask for, OK. But the USPTO should be even more careful, what it magnanimously acquiesces to, that is to say, what it benevolently lets through to issue.
That’s something that everybody who is in business can agree with, no?
Max, burden?
1. In the PTO, the examiner has the burden, but he can simply provide notice of his position pursuant to 132. In re Antor Media Corp., 689 F.3d 1282 (Fed. Cir. 2012). References are deemed enabled. If he relies on common knowledge, he can be challenged to provide support. Once the examiner makes a prima facie case even by notice, the applicant then has the burden. The standard of proof is preponderance.
2. Third parties in the PTO cannot rely on 132. They have the burden of proof. See the present case.
3. In court, the party alleging invalidity has the burden by clear and convincing evidence. In most cases, both sides present evidence and argument to the trier of fact.
Ned,
Please be aware that all that MaxDrei is doing is climbing up on his old soapbox to bash the US presumption of validity for issued patents.
Nothing more – nothing to see here.
I might be inclined to give you a pass, J, but the “context” of the issue is snarled in massive and persistent misunderstanding of the differences between patent eligibility and patentability up to and including the U.S. Supreme Court. Thus, there is no small and innocuous error when it comes to any discussion in patent law about 103 and mixing up patent ability for eligibility, and conversely, there is no small and innocuous error when it comes to any discussion in patent law about 101 and mixing up eligibility for patent ability.
101 and 103, patent eligibility and patentability are tied at the hip and reflect a MAJOR shift in US patent law undertaken in the 1952 Act.
Far far far far too many times the effort is afoot to not recognize exactly what happened in 1952, and that effort to not recognize the extent of the 1952 Act is a major reason why we have such a mess in patent jurisprudence today.
Sorry to impugn you if you had made an honest error – but that error just was not a small error. Treating it as a small error only compounds the obfuscation that needs to be rooted out and quashed.
I am ok with being corrected. In law, and even more so in patent law, exactness in our words are extremely important. I shouldn’t criticize others for obfuscating 102 and 103 when I obfuscate 101 and 103.
Nevertheless, I think Dyk’s critique is right on, but misses the major philosophical reason why the Supreme Court has allowed flexibility in 103. 103 corrects errors for things that are old but undisclosed, prevents non-patent driven inventions from being patented, and ensure that there is sufficient subjective creativity. There can never be a bright-line rule for obviousness, which is why the Fed Cir’s “show me the teaching” rule in the 1990s was overturned by KSR. But, once again, the Fed. Cir. doesn’t get it. It’s another effort to make a bright-line rule but it hampers 103 too much.
Tell me, exactly, how the patent in Graham v. John Deere would be ruled obvious under the Fed. Circ.’s ruling in Hear-Wear?
On your point on the 1952 act, I do not see the 1952 Act as a major shift in patent law, but an effort to codify the existing law. Pasquale Federico, historian for the PTO, did a quite a lot of research for (and wrote much of) the 1952 patent act, which signals to me an effort to codify rather than major reform. Much of patent law was and still is a judicial creation. For example, obviousness was used before 1952 (I can look for cases if you don’t believe me.)
Anyways, that’s an interesting philosophical difference, and something that will be important in interpreting the AIA (especially on-sale bar, best mode requirement).
Thanks J for the response.
However, this case has less to do with what you identify, and more to do with a simple procedural notion of evidence on the record.
Put simply, the dissent is just off-base in trying to say that the majority is ignoring KSR. See my other posts on this thread to see what the gist of this particular case is really about.
As to what you view of the 1952 Act, well, you are wrong. No one – and I mean no one – that knows anything about the act will say that it was a mere codification. Many sources have already been shared, including congressional records, Cornell Law annotated statutes, Frederico’s commentaries, and even the words of the Supreme Court itself (and the dance that they do with “implicit” and the overt lip service to “the words that Congress has chosen”) that flat out indicate that you are wrong. The ability of the judiciary to be involved was changed by the 1952 Act. Prior to that Act, Congress had invited the judiciary to define the word “invention” by the use of common law evolution. In reaction to an anti-patent Court, Congress revoked that authority.
The Hear-line case echos the bright-line test that it must be expressly in the teaching for the invention to be unpatentable. The KSR decision should have knocked in down. The Federal Circuit in the 90s required either an express showing of a teaching, or a teaching that shows the invention was clearly derived from. I read the decision, I’ve read your posts, I don’t see how this decision is not “express teaching” test the Fed. Cir. used to do.
I’ll reexamine my understanding of much of the Patent Act, and maybe I am just thinking too narrowly on only a few key provisions. It’s never too late to learn! Let’s save the debate for later, though.
J, there were two patents held obvious in Graham. Pick one for anon’s analysis. I particularly like the pump sprayer, as it is there that the Court defines what “claim as a whole” means as that issue was litigated and decided.
Regarding “overruling” of the prior Supreme Court-developed standard, after a long review the history of the patent statutes and case law development, the Court concluded,
“Although we conclude here that the inquiry which the Patent Office and the courts must make as to patentability must be beamed with greater intensity on the requirements of § 103, it bears repeating that we find no change in the general strictness with which the overall test is to be applied. We have been urged to find in § 103 a relaxed standard, supposedly a congressional reaction to the “increased standard” applied by this Court in its decisions over the last 20 or 30 years. The standard has remained invariable in this Court. Technology, however, has advanced—and with remarkable rapidity in the last 50 years. Moreover, the ambit of applicable art in given fields of science has widened by disciplines unheard of a half century ago. It is but an evenhanded application to require that those persons granted the benefit of a patent monopoly be charged with an awareness of these changed conditions. The same is true of the less technical, but still useful arts. He who seeks to build a better mousetrap today has a long path to tread before reaching the Patent Office.”
J,
You are misreading the decision and placing too much credence in “angle” that the dissent takes.
The fact pattern here is not one of a mandatory nature. The Article III court merely reflected what the examiner (Examiner II) and the Article I court decided – a different fact pattern would be needed to make this decision be of a mandatory nature.
Dyk is misguided.
J, my reply to you at link to patentlyo.com
is still being held up for moderation. It must be highly controversial, as it is a direct quote from Graham v. J. Deere.
I am curious Ned – is it a quote of dicta, or of holding? Is it a self-aggrandizing, power-addiction-maintaining repainting of what the Court wants to keep its finger into (the nose of wax of 101), or does it properly reflect the fact that Congress slapped down the activist Court in 1952?
(the words of the Royal Nine are not the words of Matthew 4, let alone the words of the Constitution)
…especially the words of dicta – as can be seen by the rightful repudiation of the excessive dicta in the Benson case.
anon, the quote directly addresses the propaganda that you have been spewing here for quite some time.
I wonder why it is being held up now for two days.
…addressing my “propaganda” does not tell me if you are trying to quote dicta or holding.
(I have a few post hung up as well…
“I wonder why it is being held up now for two days.”
There has been nobody running the moderation for the last few days.
As I thought Ned – you quote dicta and false dicta at that, as NO ONE believes the self-serving, addiction-addled nonsense that the Court spouted in order to attempt to keep its finger in the nose of wax.
“103 corrects errors for things that are old but undisclosed…”
Ah yes. I’ve gotten this rejection before. It’s the old, “Well, the examiner can’t find it but is pretty sure it’s out there somewhere” rejection. Love those.
Just gotta love anon, who insists that 103 was intended to reduce the standard of patentability used by the Supreme Court in the twenty years prior to ’52 (the Douglas era), and so-called dicta of Graham that refuted this by noting that its standard had not changed.
Cuno was addressed in the second sentence of 103. The first sentence was treated as a codification and not as a wilful lowering of the prior Supreme Court standard.
After the Federal Circuit was formed, it wilfully ignored Sakraida and Andersons Black Rock. It also ignored the actual holdings of Graham regarding the two patents at issue, especially on the issue of “claim as a whole.” This willful lowering of the standard by the Federal Circuit resulted in KSR, that went out of its way to rely on pre-52 cases, and as well as the Federal-circuit ignored cases of Anderson’s Black Rock and Sakraida.
Today, as others have noted, the motivation requirement is somewhat reduced — common sense can be substituted. There is also the bit about synergism must be found when a combination of old elements is being claimed.
But still, the Supreme Court has not eliminated the requirement that the prior art as a whole demonstrate all structural limitations.
“was intended to reduce the standard of patentability
A false characterization – and one you should know is false Ned.
For shame.
Ned @ 23.1.1.1.1.3 above (“Reply” link missing):
“In re Antor Media Corp., 689 F.3d 1282 (Fed. Cir. 2012). References are deemed enabled.”
But such enablement presumption can now be challenged via In re Steve Morsa (Fed Cir 12-1609); and without affidavits or declarations:
“[t]he presumption in Antor is a procedural one—designed to put the burden on the applicant in the first instance to challenge cited prior art.” Slip op. at 9. But “[o]nce an applicant makes a non-frivolous argument that cited prior art is not enabling, . . . the examiner must address that challenge.” Id. at 10.
A novel feature is not sufficient to surpass 103. Obviousness is not a series of anticipation rejections
Indeed, but that’s not the way the know-nothings look at 103. Let us not forget the ever-popular zombie “argument”, floated here on these threads hundreds of times: “If this is so obvious, then why wasn’t it invented before?”
If anybody is confused about why the patent txxbxggers despise eligibility considerations and want their functionally-claimed jxnk examined under 103, look no further than this case (and this thread).
Any child can keep sticking “new” functions (or hey, just use old functions and describe them with new words that you just made up!) or meaningless “limitations” that do nothing except what everybody knows they do (“b-b-but our white-colored detachable wire is easier to see when it’s sort of dark!”).
And if you keep getting pushback from the Examiner, the same Federal Circuit that gave us this gxrbxge opinion also says that it’s okay to concoct some previously undisclosed “evidence” years after your application filing and hire some “expert” to present that evidence to the PTO. Or you can just borrow some recent “evidence” that someone else figured out.
Wonderful system we have here.
…and any child can keep sticking more electrons, protons and neutrons onto other configurations of such well known prior art items…
/off sardonic bemusement
“That’s never been the burden on the examiner/infringer, so I don’t know why it would need to be relieved.”
Uhm, yes that is the burden.
Strike three.
You’re out.
I am not sure what prompted this response.
The majority clearly interpreted KSR correctly. For a 103 rejection, the examiner has to show that all the limitations are found in the prior art. KSR merely lessened the motivation to combine requirement.
That’s not to say that during prosecution that the claims in question should not have been rejected, just that the Examiner failed to do their work properly by not pointing to a piece of art showing the pronged connector.
Friendly reminder to folks who were born yesterday: the patent txxbgger types who insist that every common sensical rejection of their jxnky claims needs to be backed up with “evidence” are the same folks who will then turn around and cite the number of references being cited or the number of pages in the Office Action as “evidence” of the non-obviousness of their claims. Of course, that “argument” is meritless when the limitations in question are just functionally-claimed gxrbxge or old components doing nothing other than what they were designed to do in the first place.
But that’s how the “appeal everything” crowd plays the game. And everybody knows it.
Gratuitous self-serving nonsense — as usual.
“are the same folks who will then turn around and cite the number of references being cited or the number of pages in the Office Action as “evidence” of the non-obviousness of their claims”
That’s one H of a strawman.
That’s one H of a strawman.
You still haven’t figured out what a “strawman” argument is, apparently. And now you’ve apparently confused AAA JJ, too (who was pretty confused already).
Maybe instead of adding further confusion to AAA JJ’s plate, you can instead help him out with that impeachment drive he and Eric G. cooked up a couple months ago. <–also not a strawman
Or maybe he could help you "appeal everything." Because that's how he rolls. Or have you forgotten? <– also not a strawman
Try to keep up.
Keep beating that straw wife of yours, Examiner Mooney.
Keep beating that straw wife of yours, Examiner Mooney.
The truth kinda stings you, doesn’t it, AAA JJ? Unlike you, I wasn’t born yesterday. I’ve had my eye on the patent txbxggers for years so I know exactly how the game is played. Everybody does. Even the judges on the Federal Circuit know how it works.
The main difference, really, is whether you come to the table with the mindset that it’s much, much better to err on the side of granting reams of junk patents that diminish the rights and increase the costs of the non-patenting public versus occasionally denying some already wealthy and well-off “innovator” the opportunity to further line his/her pockets.
But you knew this already.
AAA JJ,
I don’t know about you, but the implication from Malcolm (the sting) is that you are his straw wife that he beats.
(ewwww – the mere impression of this impropriety makes me nauseous)
“The main difference, really, is whether you come to the table with the mindset that it’s much, much better to err on the side of granting reams of junk patents that diminish the rights and increase the costs of the non-patenting public versus occasionally denying some already wealthy and well-off ‘innovator’ the opportunity to further line his/her pockets.”
WTF are you talking about?
WTF are you talking about?
Which part don’t you understand?
Most likely the part about how you refuse to understand (and properly use) law in your arguments concerning the law.
You seem to have a deep aversion to pounding law.
You seem to have a deep aversion to pounding facts.
You seem only capable of pounding tables of “policy”/opinion.
That does not work out so well.
“ I’ve had my eye on the patent txbxggers for years”
Apparently not the only thing – not saying that I believe the rumors about those restraining orders against you…
“granting reams of junk patents that diminish the rights and increase the costs of the non-patenting public versus occasionally denying some already wealthy and well-off “innovator” the opportunity to further line his/her pockets.”
Bias much? (as if your anti-patent tendencies was not already well enough established….)
your anti-jxnk patent tendencies
Fixed.
Note that in the same thread we find this from “anon”: counsel is not doing the client any favors here obtaining a patent that will not be enforceable
Why do you believe this patent is “not … enforceable”?
Tell everyone.
A little thing called pragmatism.
Note the difference though between you and I on this thread: I know, understand and pound the law.
Pay attention.
I think what is missing in this conversation, and what the majority misses, is that this hamstrings one of the major functions of sec. 103- that is to ensure that the claimed invention has a sufficient inventive step for patent eligibility.
While many here do not like it, novelty and obviousness are two separate requirements. That necessarily means that something can be novel but still not get a patent. If something is novel, the examiner may not be able to meet the high-evidence standard set here by Judge Lourie. That doesn’t mean that the application should pass the obviousness standard.
This decision flies in the face of 102, 103, and several Supreme Court decisions (take a look at Graham v. John Deere, for example)
“While many here do not like it, novelty and obviousness are two separate requirements.”
Everybody here understands that. And none of us have a problem with it.
“That necessarily means that something can be novel but still not get a patent.”
Again, all of us here understand that and none of us have a problem with it.
” If something is novel, the examiner may not be able to meet the high-evidence standard set here by Judge Lourie.”
The high-evidence standard set by J. Lourie? What is that? You mean when some examiner like Mooney claims that some feature is “evidently and indisputably well known” but when is actually asked to produce evidence to support the contention can only pound his fist on the table and rail on and on at the “patent teabaxxers”? If something is “evidently and indisputably well known” how hard is it to find evidence of it?
“That doesn’t mean that the application should pass the obviousness standard.”
So even if the examiner can’t meet the evidentiary burden (of a preponderance) of establishing that all of the claimed features are within the scope and content of the prior art and that there exists a reason to modify and/or combine the prior art the examiner should still be able to reject the application? I don’t think so.
Common Sense … NEVER.
This is a race of dumb v. dumb. Sure, the attorneys were dumb to not put it in. The system was dumb to not invalidate the patent anyway. I can see no way to say that the patentee hid the prior art from the patent office with deceptive intent. How do you hide the not merely ubiquitous, but the outright omnipresent?
The patent world obviously needs a few children to point out the painfully obvious.
Now that is funny.
What happens to the applicant/patentee’s duty of candor and good faith during these proceedings? Does it disappear?
I’m just trying to figure out how it’s possible for the applicant to pretend that multi-pronged electrical connectors don’t exist in the prior art when every other honest adult person on the planet earth knows otherwise and isn’t ashamed or afraid to admit that.
(sigh)
You are not paying attention, are you?
Mere existence does not make the obviousness argument.
(You might try to figure things out the meaning of law for a legal discussions that you want to join)
Mere existence does not make the obviousness argument.
It’s fun watching the patent txxbxggers dive to the bottom.
Apparently these super awesome “innovators” — responsible for all that is shiny and wonderful in our modern society — now need to be told that ancient electrical connectors exist to create electrical connections. If they aren’t told these things by the government over and over and over and over, apparently terrible things will happen and we’ll end up like the Amish.
The best part: watching them try to play these games with functional claim language.
What a bunch of clowns.
Dive to the bottom?
Hey, if that is what it takes to get to your level to tell you about the law as it is today, then don’t you think diving down to tell you should be allowed?
More gratuitous self-serving nonsense from our favorite troll here at patentlyo.
You are not paying attention
Indeed, I am. We both recognize this patent is unenforceable jxnk. But you seem incapable of recognizing that the patentee and its attorneys are ethically bankrupt. Of course, you’ve always had a hard time with that. Maybe ask your buddy on “the ethics side” to help you out. You two seem to get along quite well.
We both…
Um, you are kind of missing the important point about the law involved.
That is an important and not-small difference.
you are kind of missing the important point about the law involved
Not at all. But keep pretending that’s the case. It’s what you always do when people disagree with you about anything.
A familiar adage, no less pertinent by its oft well-targeted use:
When you have the law, pound the law.
When you have the facts, pound the facts.
When you have neither, pound the table.
Or in Malcolm’s case, pound that “policy’/opinion table.
(I heard its resonating sound is a great way to save those lemmings marching up the hill and through the field of rye from that cliff…)
Even the applicant’s background section admits that there is nothing new about detachable wiring in an earpiece.
existing earpiece auditory devices are typically designed such that the electrical components of the device (e.g, the speaker, receiver, microphone, etc., or whichever of such components are included in the particular device) are coupled to each other via some fixed connection. For example, in at least one instance, a speaker of an earpiece auditory device is electrically coupled (either directly or indirectly) to a microphone, processing circuitry, and/or a transceiver of a device via some form of fixed wiring.
“In at least one instance”? LOL. That’s some weak sauce there. Jeebus cripes, can you get down deeper into the muck than that?
Never mind the fact hear on Earth it’s the atypical “existing auditory earpiece” that is attached to a “transceiver” via a fixed wire.
But surely the patent applicant wasn’t trying to play games with universally understood facts in their background section. That might shock everyone. You know who’d be especially shocked? Judge Rader.
LOL.
How is Judge Rader implicated in the present thread?
Or are you just not able to help yourself from Malcolm-Self-FAIL?
The courts generally do not force the executive to do something within the executive’s discretion. The examiner could have, but chose not to, provide the missing evidence. That was within his discretion.
One must also observe that this was an inter partes reexam. One wonders why the 3rd party did not supply the missing evidence instead of appealing? Am I missing something?
Are you confusing discretion with duty to examine?
“Judge Dyk disagreed. ‘In my view, the majority’s holding is inconsistent with the Supreme Court’s decision in KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007), and will have substantial adverse effects on the examination process.’”
If you need any more proof, beyond any shadow of a doubt, that J. Dyk has no clue about what actually goes on during the “examination process” (i.e. “the I need a counter, baby!!!!!!!!” shenanigans examiners routinely rely on), see the above quote.