Obviousness: Analogous Art and Hindsight

by Dennis Crouch

In an interesting September 2014 decision, the Federal Circuit upheld a USPTO determination of obviousness.  The majority decision (authored by Judge Newman) touches on both (1) analogous-art and (2) motivation to combine references. The problem-focused approach taken by the majority in determining analogous art is fascinatingly similar to parts of the abstract-idea analysis in Alice Corp. — looking generally to the problem-to-be-solved as the overarching focus of the invention.  Writing in dissent, Judge Moore characterized the obviousness determination as “[h]indsight, hindsight, hindsight.”  [Decision]

Scientific Plastic Products (SPP) holds a number of patents relating to cartridges for low pressure liquid chromatography (LPLC) with a resealable screw-on cap. See U.S. Patent Nos. 7,138,061, 7,381,327 and 7,410,571. When SPP sued Biotage for infringement, the defendant responded by filing an inter partes reexamination.  Reexam Nos. 95/000,495, ‘496, and ‘497 (filed in 2009, pre-AIA).  Based upon his consideration of the prior art, the patent examiner rejected all of the claims of each patent — finding them obvious under 35 U.S.C. 103. That decision was affirmed by the PTAB and is the subject of the appeal here.  Meanwhile, the district court case has been stayed pending outcome of the reexamination.  On appeal here, a split panel of the Federal Circuit has affirmed the USPTO rejection – with Judge Newman joined by Judge Wallach writing the majority and Judge Moore in dissent.

The primary obviousness reference in the case apparently discloses all of the elements of the patented LPLC cartridge except for one – a tapered lip of the cartridge that corresponds to a taper in the screw-on cap.  The tapering helps create a better seal and avoid leakage when the cap is on.  It turns out that the tapered lip feature is not new, and the USPTO identified two different patents from the soda-pop bottle industry that disclosed the approach.  See for example, Strassheimer (Patent No. 5,100,013).

Obviousness: Section 103 of the Patent Act provides the basic test for obviousness — whether “differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious . . . to a person having ordinary skill in the art to which the claimed invention pertains.”   The two primary interpretations of this decision are Graham v. John Deere Co., 383 U.S. 1 (1966)(outlining test) and KSR Int’l Co. v. Teleflex, Inc, 550 U.S. 398 (2007) (explaining that test should not be rigid but instead apply common sense).

Deere explained that there are four factual prerequisites to consider when determining the legal question of obviousness.

  1. The level of ordinary skill in the art;
  2. The scope and content of the prior art;
  3. The differences between the claimed invention and the prior art;
  4. Any objective indicia of nonobviousness.

Those who know Deere well will notice that I have re-arranged the order of the test by placing the level of ordinary skill in the art as the first step in the analysis. I do that because – as explained below – the scope-and-content of the prior art is impacted by the level of skill in the art.

In many obviousness cases, all of the elements of the invention are found within a limited set of prior art references. The argument then is that it would have been obvious for one skilled in the art to think of combining the elements from those references to create the claimed invention.  In KSR, the Court held that the justification for such a combination can be based upon common sense or other evidence and does not require a particular teaching-suggestion-or-motivation found within the prior art itself.

Scope of the Prior Art: The scope and content of prior art is determined by several factors. First, evidence must fall within the prior art definitions for anticipatory references under 35 U.S. 102.  Second, the prior art must also be seen as “analogous art.”  The analogous art requirement is based upon the idea that someone working in a particular field would be unlikely to search through or know all possible prior art but rather would focus attention on what is known (1) in the same field of endeavor or (2) to be addressing the same problem.  The general question is whether it would have been “reasonable” for a person of ordinary skill in the art to consider the given prior art in order to solve the problem confronting the inventor. In re Clay, 966 F.2d 656 (Fed. Cir. 1992).

Here, the problem identified by the inventor was to prevent leakage on a plastic screw-cap and everyone knows that the soda-pop bottles have solved that problem. From that framework this is an easy case.  However, the patentee here argued that this analysis involves improper hindsight because the leakage problem was one identified by the inventor as part of the invention process and was not previously identified in the prior art.

The Federal Circuit implicitly agreed that it would be improper hindsight to rely upon the problem first identified by the inventor for determining analogous art. However, the court rejected that argument as applied to the facts here.  In particular, the PTAB noted that the primary LPLC reference includes a particular o-ring seal that serves as an implicit recognition leakage could be a problem. On appeal, the Federal Circuit confirmed that the implicit concern was sufficient to avoid  hindsight concerns.  Affirmed.

= = = =

Writing in dissent, Judge Moore argues that majority opinion is hindsight of the worst kind, ‘wherein that which only the invention taught is used against its teacher.’ quoting W.L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540(Fed. Cir. 1983).

The patents do not indicate that leakage was a problem identified in the prior art or a problem known to those of skill in the art. Rather they indicate that the claimed design will avoid leakage. These inventors identified a design problem, articulated it, and solved it. There is absolutely no evidence of the existence of a known leakage problem that would have motivated skilled artisans to modify Yamada. The Board is taking the ingenuity of these inventors and, without any record basis, attributing that knowledge to all skilled artisans as the motivation to make the inventions at issue. Hindsight, hindsight, hindsight. . . .

I would reverse because I conclude that the Board’s cancellation of the claims at issue was based entirely on hindsight reconstruction—there is no record evidence that one of skill in the art would have been motivated to modify Yamada with soda pop bottle sealing closures.

An implicit suggestion from Judge Moore is that in hotly contested post-issuance cases invalidating evidence should be high quality:

These were inter partes reexamination proceedings between sophisticated parties. Both parties put on expert testimony regarding obviousness. Yet there is no evidence that the chromatography cartridges in Yamada had
a leakage problem that skilled artisans would have been motivated to address.

Judge Moore also challenged the PTAB’s failure to determine the level of ordinary skill in the art.  “An ordinarily skilled chemist would have likely looked to a different body of prior art than an ordinarily skilled mechanical engineer with industrial design experience. . . We cannot answer the analogous art question without knowing who the person of ordinary skill is.”

154 thoughts on “Obviousness: Analogous Art and Hindsight

  1. 14

    Setting aside quibbling about procedural issues (whether the Board made the arguments using the words that “it needed to make”), there doesn’t seem much room to doubt that the claims here were properly tanked as obvious.

    In particular, excessive reliance on the “analogous arts” defense to prima facie obviousness is a good sign that the claims are, at best, hanging on by a threat. That’s because the “analogous arts” requirement (such as it is) is little more than a result-oriented “test” that allows a judge to shrink the prior art that can be relied on by an examiner or a defendant in a patent case. One would expect the oh-so-“principled” opponents of terms like “abstract” to be equally dismayed by the “analogous arts” test … but of course nothing that leads to more patents will ever be criticized by those “principled” folks.

    The bottom line is that absent an express teaching away, the “analogous arts” to any patent claim include all of the arts where particular solutions have been developed to address the generalized problem implicated by the patent claim. The question then becomes: is there more to the claim than the art-recognized solution? In this particular case, the answer is most definitely “no”. The solution described (the screw cap with the tapered lip) is disclosed in the prior art exactly as it appears in the claim.

    The relevant art here is “the container arts.” All containers will need to solve three fundamental and long-recognized problems: how to contain the material inside, and how to control when material enters the container, and how to control when material leaves the container. There are a myriad solutions already in the prior art. Does this mean that all container claims are invalid? Of course not. But it does mean that a combination of an old container (as in this case) with an old solution (as in this case) is going to require more than merely describing the combination. If that can’t be done in a manner that results in a “valuable” claim, then the patent system is probably not worth engaging for that particular container. Perfectly reasonable result.

    I also wanted to revisit the hypothetical I proposed earlier since many of the responses seemed to miss the point or relied on facts that weren’t in my hypothetical. It’s a very mundane — but very important — fact pattern:

    Gary Goosey lives in Hawaii. He invents a new kind of sock for keeping your feet dry. On Day Zero, Gary begins selling his socks to his neighbors in Hawaii who enjoy them very much.

    One Day Two, Gary sells his socks to a tourist from Alaska. Later that evening, the tourist flies home and discovers that while his feet do stay dry in the new socks, they still get cold from the Alaskan air. The tourist looks around and sees his warm fleece slippers and he thinks “Hey, I’ll add fleece to these socks and see how it works.” Lo and behold, the tourist’s modification results in socks that keep his feet warm and dry.

    The tourist files a patent on the improvement to Gary’s socks. Should the tourist get a patent? Why?

    The answer to my first question is “Of course the tourist should not get a patent.” The answer to my second question is “The tourist should not get a patent because granting a patent on that kind of ‘innovation’ does not promote progress in the useful arts. It just promotes the filing and assertion of patents on everything that was not previously in the prior art.”

    Fleece is an old material used for warming. There is no art (at least not in my hypothetical) that teaches that fleece couldn’t be used for warming. The motivation to combine exists and there are no unexpected results. That’s the end of the analysis. It’s fascinating that anybody would try to make it more difficult than that but such is the lure of the “analogous arts” b.s. that some members of the Federal Circuit seem to be pulling for in their efforts to keep the patent system “juiced” for patent applicants.

    Note that the result is identical when the tourist goes home and sees a report on TV about some “space age” insulating fabric that was used on the space shuttle. There’s no difference in the analysis because, again, there’s a clear motivation to combine and there’s no teaching away. If the “innovator” of such a combination wants to argue that the “space age” insulating fabric is super expensive, then there had better be something in the claim that describes, in structural terms, how the cost of manufacturing the combination socks was solved.

  2. 13

    I think the judges misunderstood what the Board was saying. I think the Board could have spoken more clearly, but did the judges misunderstand deliberately?

    Yamaha shows that, in the context of LPLC cartridges, a thread is not enough. To ensure a seal, Yamaha resorts to an O-ring.

    To any engineer, busy designing such cartridges, providing an O-ring is self-evidently a burden for those downstream. For the engineer PHOSITA, at the date of the claim, was there available an alternative sealing solution less burdensome on the manufacturing process than an O-ring. Yes there was.

    Obvious to use it? You tell me!

    1. 13.1

      Max, I couldn’t help but notice that the present case was very much like the seal at issue in Graham v. John Deere. link to scholar.google.com

      “Cook Chemical argues, however, that Livingstone is not in the pertinent prior art because it relates to liquid containers having pouring spouts rather than pump sprayers. Apart from the fact that respondent made no such objection to similar references cited by the Examiner,[18] so restricted a view of the applicable prior art is not justified. The problems confronting Scoggin and the insecticide industry were not insecticide problems; they were mechanical closure problems. Closure devices in such a closely related art as pouring spouts for liquid containers are at the very least pertinent references.” Id. at 35.

      In that case, there is no question of motivation because the patentee had argued long felt need. Id. at 35-36.

      “Cook Chemical insists, however, that the development of a workable shipper-sprayer eluded Calmar, who had long and unsuccessfully sought to solve the problem. And, further, that the long-felt need in the industry for a device such as Scoggin’s together with its wide commercial success supports its patentability. These legal inferences or subtests do focus attention on economic and motivational rather than technical issues and are, therefore, more susceptible of judicial treatment than are the highly technical facts often present in patent litigation. See Judge Learned Hand in Reiner v. I. Leon Co., 285 F. 2d 501, 504 (1960). See also Note, Subtests of “Nonobviousness”: A Nontechnical Approach to Patent Validity, 112 U. Pa. L. Rev. 1169 (1964). Such inquiries may lend a helping hand to the judiciary which, as Mr. Justice Frankfurter observed, is most ill-fitted to discharge the technological duties cast upon it by patent legislation. Marconi Wireless Co. v. United States, 320 U. S. 1, 60 (1943). They may also serve to “guard against slipping into use of hindsight,” Monroe Auto Equipment Co. v. Heckethorn Mfg. & Sup. Co., 332 F. 2d 406, 412 (1964), and to resist the temptation to read into the prior art the teachings of the invention in issue.

      However, these factors do not, in the circumstances of this case, tip the scales of patentability. The Scoggin invention, as limited by the Patent Office and accepted by Scoggin, rests upon exceedingly small and quite nontechnical mechanical differences in a device which was old in the art. At the latest, those differences were rendered apparent in 1953 by the appearance of the Livingstone patent, and unsuccessful attempts to reach a solution to the problems confronting Scoggin made before that time became wholly irrelevant.”

      It seems that there is not a seal patent that ever reaches a court that is sustained.

      1. 13.1.1

        Ned, perhaps the dissent got it right, but without all the facts, and so for the wrong reasons.

        There is nothing so hard as simplification. The simplification of doing away with the O-ring is a super step forward in the art. Now, what if there had been evidence of a prejudice in the industry, that the O-ring was not negotiable? Might the outcome then have been different?

        I recall the DYSON bagless vacuum cleaner cases in England, where the evidence revealed a PHOSITA mindset that refused to countenance a bagless vacuum cleaner system, with the result that the claims were held not obvious.

        1. 13.1.1.1

          Now, what if there had been evidence of a prejudice in the industry, that the O-ring was not negotiable? Might the outcome then have been different?

          Yes. It’s called “teaching away” and it does make a big difference if it actually exists. In this case, it didn’t exist.

      2. 13.1.2

        It seems that there is not a seal patent that ever reaches a court that is sustained.

        Is that unexpected in 2014?

        It’s not like containers needing seals were invented yesterday.

  3. 12

    Part I

    Dennis Crouch wrote: “The problem-focused approach taken by the majority in determining analogous art is fascinatingly similar to parts of the abstract-idea analysis in Alice Corp. — looking generally to the problem-to-be-solved as the overarching focus of the invention.”

    Really? Has 103 become the new 101 now? So, using this obvious problem-focused approach I suppose the real reason an Integrated Technological process such as the Ultramercial invention was ruled an abstract idea was because Lourie and Mayers felt the solution to the problem was obvious. And obviously, Mayers feels that inventions with an Entrepreneurial solution, are also abstract and therefore obvious? (See Mayers DDR dissent )
    And apparently Dennis feels the same way since he said he didn’t believe Chens majority decision would stand up to Supreme Court scrutiny.

    1. 12.1

      Part II

      Well, the Supreme Court also said claims are to be considered as an ” Integrated” whole, like Diehr. And that if a court does disintegrate the claims anyway, they “MUST” determine if the so called abstract idea is “integrated” to the point the idea itself is no longer preempted.

      But with the exception of Chen and Wallach in DDR, how many CAFC panels have even come close to applying a complete and thorough analysis of the Court’s Integration?
      The answer is, none! And now we even have Dennis implying the Court will not back their own words in Diehr, Prometheus, and Alice while giving an air of legal legitimacy to the conflation attack of 103 on 101, that without, “integration” has no possible defense. It’s enough to make you want to give up on the entire patent system.

      1. 12.1.1

        Another problem with accepting and legitimizing these 103 attacks on 101 is that the minute a patent attorney employs a 103 defense the courts are going to scream you can’t bring 103 into 101!!! The Supreme Court said so!!!

        What a mess.

      2. 12.1.3

        It’s enough to make you want to give up on the entire patent system.

        Does that mean you’re going to stop littering this blog with your meaningless nonsense about “integration”?

        1. 12.1.3.1

          going to stop littering

          Coming from the guy who rather boastfully was the one who FIRST provided a link to the USPTO guidance which featured integration (rather than his own b@nal pet theory)….

          Now that is funny.

          1. 12.1.3.1.1

            The issue is not whether “integration” of an abstract idea with otherwise eligible subject matter can occur. The issue is: how does it occur?

            Saying that a “an innovation must be integrated before it is eligible” or “integration has occurred when the claim is eligible” isn’t helpful to anyone.

            The PTO guidance I linked to is perfectly consistent with the undisputed (and undisputable) fact that merely reciting a step of thinking about an ineligible fact will never suffice to “integrate” that fact into, e.g., a data gathering step that is eligible but also within the prior art. You can play the f 0 0l and pretend that isn’t the case but, at the end of the day, you’ll still be holding a worthless piece of paper and screaming at the sky.

            [shrugs]

      1. 12.2.1

        Fish sticks wrote:

        “so does a patent draftsman want to include the problem to be solved in his application or not?”

        Absolutely. Make sure that the solution to the problem is “Integrated” to the point all possible solutions are not preempted. And just to be safe make sure the application of that solution involves some type of real world technology that is described in the specification.

        Now this wont stop some grade 6 level MM Examiner from glancing at the app and seeing that it involves business or computers and promptly rejecting it as junk. And you know you risk facing judicial activist like Mayers that feel the same way. But at least you will have some powerful and compelling questions of law for your brief to the Supreme Court.

  4. 11

    I have read the decision including the dissent. Some things are clear.
    Yamaha works, but only because it has an O ring. The claim works, with the inclined surfaces doing the job of the O ring. So, the claimed subject matter delivers an alternative seal that avoids the complication of an O ring.

    When you need a seal, who do you ask? not a chemist, i would suggest.
    For such a person, are inclined surfaces a known and banal alternative to an O ring? I suspect they are.

    Of course this claim is obvious. Moore knows it too. The engineered 2:1 split is once again to provoke review, this time of the “analogous art” jurisprudence . Good so.

    1. 11.1

      I agree that the ends here is that the patent is invalid for obviousness.

      I agree that the dissent has the better argument concerning the means that the court took to arrive at its ends. Has the court not learned yet that “taking shortcuts” is frowned upon? See eBay.

      That said, I think that the dissent does not knock this out of the park, as it is clear that trying to focus on the reason for non-analogous as “but I operate in this art field” is a clear losing argument.

      The issue of hindsight and to what degree hindsight is an issue remains muddled and unclear (the Court writing in KSR on the topic is beyond atrocious).

      I question MaxDrei as to what basis or support he has for labeling this an “engineered split.” Such implies that opinions were had and known a priori, that the judges were selected for such and that “Justice” here was staged for an ulterior motive. That’s not a flippant charge to be made.

      1. 11.1.1

        Is there a Court writing in patent law that is not atrocious? I have yet to see one that is not atrocious, but I haven’t read all of them. I find the Court’s opinions create more questions than they answer. Further, many of them no longer make sense in light of 40+ years of technology advancements (yet the Court never seems to review those decisions, for reasons that elude me).

        1. 11.1.1.1

          There is a limit to what a court of appeal can do with facts already found by the court of first instance. Before criticizing the Fed Ct judges pause to think if the criticism is better directed elsewhere.

          1. 11.1.1.1.1

            Directed elsewhere…?

            Good advice.

            For the “court of appeal” called the Supreme Court, there is no limit to what it can (or should do) – least wise if you listen to those who don’t understand their attorney’s oaths and swear feality first to the Royal Nine.

  5. 10

    I wonder how much Newman is looking to her background as a chemist where a leaky chromatography column would be a problem. At the end of the opinion she states “However, the issue here is not whether the Yamada cartridge leaked, but whether there was a concern with leakage in LPLC cartridges such that a person of ordinary skill would have provided a known pressure resistant cap.”

    1. 10.1

      There is also the issue, however, of modifying chromatography columns generally v. modifying the device of the primary reference. This part sounds strange.

  6. 9

    Perhaps the affirming judges actually reviewed the cited prior art of the SSP patents and saw patent 6565745 which fully disclosed the “inventive” feature of tapered seal (48,49 in fig. 7) between a cap and container in the chromatographic art and they simply realized that such a seal was known in the art….albeit not on a threaded cap.

    1. 9.1

      But oldguy, this still begs the question as to why anyone would modify Yamada that had an O-ring a screw on cap that had no known leakage problem in the 10 years it was on the market. There was no other evidence of a reason to change the O-ring for any other seal arrangement.

      Simply because something is within the skill of the art because all the parts are known and how they can to be combined is known should not be enough. There should be a reason to make the combination, some problem in the art which the combination solves. That is the central problem in this case.

      1. 9.1.1

        Ned,

        Your post here can be translated to my two circles explanation.

        The novelty circle, the larger circle, is all of prior art in its entirety.

        The obviousness circle is a subset of that “all the prior art.”

        If, as some are advancing, the act of solving ANY problem, known or unknown, is accepted as defining the inner circle, you have effectively inflated the inner circle to match the outer circle.

        As I also mentioned, since only God starts from scratch, this evoscerates patent law.

        And yes, there is a logical connection to my other rhetorical t001 of my big box of electrons, protons, and neutrons.

        1. 9.1.1.1

          Anon, I fully agree. There has to be a reason for one to modify one reference to include the disclosure of a second reference. One cannot just say that the combination provided predictable results – looking for some synergy in the combination before a combination could be declared nonobvious. The obviousness seems to be whether to make the combination not whether the result of the combination was predictable.

      2. 9.1.2

        this still begs the question as to why anyone would modify Yamada that had an O-ring a screw on cap that had no known leakage problem in the 10 years it was on the market.

        I don’t think there has to be a problem with Yamada’s device, specifically. Leakage is a general problem with closures, and there are several known ways to solve it, including O-rings and (apparently) including tapered lips/caps. There’s also no requirement that a combination of references actually improves one of the references – it can be obvious to simply substitute one technical solution for another.

        Once you accept the proposition that leakage is an applicable problem, then you’ve got a situation that looks like several of the rationales discussed in KSR and summarized in the MPEP:

        (B) Simple substitution of one known element for another to obtain predictable results;
        (C) Use of known technique to improve similar devices (methods, or products) in the same way;

        1. 9.1.2.1

          But DanH, such a formulation would make all inventions unpatentable provided that their parts were known in the art.

          Perhaps this helps explain what is happening in IPRs where 75% of IPRs result in every challenged claim being held unpatentable. The Board may be simply ruling that because the parts are known, there is no invention, citing the MPEP and KSR.

          1. 9.1.2.1.1

            …all inventions unpatentable provided that their parts were known in the art…

            I agree with DanH – in general, it’s obvious to combine/substitute things that were known in the art. The “articulated reason with a rational underpinning” to support the conclusion of obviousness is often just that – that the combined/substituted components were known in the art and the results were predictable.

            I understand that a “motivation” or a “solution to a problem” may be more compelling as rejections go, but that doesn’t make the weaker rejection legally wrong.

            1. 9.1.2.1.1.1

              One of ordinary skill does not seek to innovate, i.e. Seek to introduce something new or alter something established. There has to be a reason one of ordinary skill in the art would modify/combine the prior. “Well he could if he wanted to” is not a reason.

              1. 9.1.2.1.1.1.1

                I agree with you, AAA JJ, but saying “should I use this cap or this cap” is not innovation.

                If one reference shows a cartridge and a cap, and a second reference shows a cap that is perfectly suitable for attaching to the cartridge, substituting it is probably obvious, even if there’s no particular advantage to changing the original combination. Swapping out components or subassemblies for others that perform the same function is just what engineers do.

                1. You’re an engineer named Winslow, and are responsible for designing a cartridge for low pressure liquid chromatography (LPLC). Before this job, you spent a few years designing closures for soda-pop bottles – indeed, that’s why you were hired for this job, since you had experience designing packages for liquids.

                  For this project, you have tentatively settled on a design that incorporates a resealable screw-on cap like the one shown in the Yamada reference, when you get a visit from (a) the VP of IP, who tells you that you can’t use that cap/cartridge combination, since you’ll infringe Yamada’s patent, and/or (b) procurement, who tells you that the supplier of the screw-on cap with O-ring is suffering from capacity problems, and really screwed the company over on an earlier project, and/or (c) a sales rep that you knew from your time in the soda-pop business, who is a great chum (or at least he buys good lunches) and who tells you that he represents a manufacturer who makes great screw-on caps with tapers on them, you know, like you used on that energy drink bottle back in 2008.

                  You re-familiarize yourself with the specs on the screw-on cap and determine that it can be substituted for the O-ring cap with only trivial changes to the cartridge body itself, with absolutely no performance improvements or penalties, and no improvements in cost. What do you do?

                  You swap out the cap design, because that’s just one of the things that engineers do. You may have incorporated a lot of innovations into this project, but this isn’t one of them.

                2. ^^^ how to assume conclusions and paint a set of “facts” to meet that conclusion.

                  Btw, this only adds to the notion that you have not spent any time as an engineer in the real world.

                3. Btw, this only adds to the notion that you have not spent any time as an engineer in the real world.

                  Impressive counter-argument, anon.

                  Compare my “painted set of facts” with this quote, from a rather famous case:

                  [P]icture the inventor as working in his shop with the prior art references . . . hanging on the walls around him. . . . what applicant Winslow built here he admits is basically a Gerbe bag holder having air-blast bag opening to which he has added two bag retaining pins. . . . Winslow would have said to himself, “Now what can I do to hold them more securely?” Looking around the walls, he would see Hellman’s envelopes with holes in their flaps hung on a rod. He would then say to himself, “Ha! I can punch holes in my bags and put a little rod (pin) through the holes. That will hold them!

                  Throw in this line, from KSR:

                  When a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one. If a person of ordinary skill can implement a predictable variation, §103 likely bars its patentability.

                  I think my scenario is pretty much the “Winslow tableau” plus a couple of ordinary “market forces,” per KSR. You apparently think differently. I don’t need to convince you. But something tells me that my argument will beat your “You’re not a real engineer!” argument, in front of 99 of 100 CAFC panels.

                4. Great – since no one is saying anything about arguing in front of CAFC panels, it is clear that you are missing the point about actual engineering experience.

                  Anyone worth their salt with actual engineering experience would have replied focusing on that experience.

                  Clearly, you have none.

                  When we start actually talking about legal experience, maybe – just maybe – your attempted reply may have some pertinence.

                  But please, continue to have these non sequitur discussions that “you win” in your mind.

                5. Anyone worth their salt with actual engineering experience would have replied focusing on that experience.

                  Right. In a discussion about obviousness on a patent law blog, you tell us that comments about persuasiveness in front of the CAFC are out of place, because the focus should instead be on my actual engineering experience. And I’m the one engaged in “non sequitur discussions.”

                  Have a nice weekend.

                6. It’s out of place NOT because we are on a patent blog – it is out place because apparently you cannot read a comment in context.

                  You are the one that stepped out of line as to what engineers do – and clearly you have never been an engineer.

                  Instead of taking a moment and realizing that you were out of line, you reached for your bucket if smarm and started slinging.

                  Next time, think before you start yapping about something you have no experience with, realize when someone with experience corrects you that the better path is to humbly accept the correction and above all, THINK.

                  And yes, “have a nice day.”

                7. His comment is out of line because he didn’t read yours in what context?

                  It seems to me that the judiciary’s understanding of how engineers work and think is very pertinent to this discussion. DanH’s position seems reasonable to me, and I didn’t hear anything of substance from you in rebuttal.

                  Just FYI, anon – people read insult-laden posts as an admission of defeat. Sounds like you lost that battle, anon.

                8. Not at all RH.

                  DanH has a (bad) habit of misplaced smarm. This is yet another example of it.

                  He then tried to “spin” this as some pure-patent-law thing, and sorry, but such spin is insulting.

                  It insults both the notion of patent law and the notion of what it means to be an engineer.

                  If you feel his portrayal of being an engineer is “ok,” well, let only lessens my opinion of your views as well. Perhaps you should spend some time in those shoes before taking on such a dismissive attitude.

                9. “anon”: DanH has a (bad) habit of misplaced smarm.

                  Try to believe it, folks.

                  And remember: “anon” is the “most articulate” guy here defending patent expansion.

                  LOL

                10. patent…

                  expansion…?

                  How Orwellian-speak of you, to portray the defense of laws as written to their full measure as somehow being expansionist.

                  You are aiming at the wrong target again. It was Congress that choose the expansive language.

                  So once again, may I suggest that if you want the law changed to something else, something more in line with your belief system, that you contact your Congressman.

                  (I recommend that you take off your tinfoil hat before you meet with him though)

  7. 8

    It stretches my credibility to assert that in the area of closure caps, the problem of sealing is “unknown”. To be useful, a cap must do its job ie seal. What else does a cap do?

    Therefore, for those designing closure surfaces of caps and containers, it is not inventive to use teachings in the art as to what surfaces do actually seal properly.

    1. 8.1

      OT, but it is completely nonobvious to me why the firestorm around Mr. Battistelli is receiving no coverage here – either through a dedicated thread or in response to questions put directly to our known Europhiles.

      What’s up with that?

      1. 8.1.1

        To assuage your curiosity about The Sun King, I suggest you repair forthwith to the IPKat blog, where there are about six threads running on this topic.

        The governance of supra-national organisations is a topic much in the news these days. Egregious behaviour, if not nipped in the bud, becomes the new norm. Until now, it has been a matter of trust, that trans-nationals will not abuse their privileges. Alas, no longer. Trust is leaking away, wherever you look.

        1. 8.1.1.1

          I chuckle – not at the problem itself – but at the ironic confirmation of my views here as being exemplified by the tyranny abroad.

          We still have people here who see no problem whatsoever with Star Chamber tactics and violations of 37 CFR 1.2.

          What else would we uncover if we were to scrutinize the shadow powers in this particular executive agency?

          The ends do not justify the means.

          Ever.

  8. 7

    Gary Goosey lives in Hawaii. He invents a new kind of sock for keeping your feet dry. On Day Zero, Gary begins selling his socks to his neighbors in Hawaii who enjoy them very much.

    One Day Two, Gary sells his socks to a tourist from Alaska. Later that evening, the tourist flies home and discovers that while his feet do stay dry in the new socks, they still get cold from the Alaskan air. The tourist looks around and sees his warm fleece slippers and he thinks “Hey, I’ll add fleece to these socks and see how it works.” Lo and behold, the tourist’s modification results in socks that keep his feet warm and dry.

    The tourist files a patent on the improvement to Gary’s socks. Should the tourist get a patent? Why?

    1. 7.1

      The converse to that question:

      Tourist sells his Warm and Dry socks.

      Does Tourist infringe on Goosey’s patent?

      1. 7.1.1

        Goosey never filed a patent so there’s nothing to infringe.

        Let’s try to focus on the issue of the thread (obviousness)?

        1. 7.1.1.1

          Thanks for clarifying (after all, it was your hypo).

          That being said, my alternative hypo (Goosey has a patent) is very much concerned with the issue of the thread (obviousness).

          Or don’t you remember the quote from KSR?

          Let me know if you need me to remind you.

        2. 7.1.1.2

          Obviousness you say. OK.

          Why put a fur collar on a Hawaiian Shirt? Who would come to that idea? Why? So, why put fleece on a Hawaiian sock?

          I like to think that, if I were to be tasked with drafting the claims and writing the supporting descrioption, I could get through to issue at the EPO. Why not also at the USPTO?

            1. 7.1.1.2.1.1

              Amusing Link. When choosing an outfit for a photoshoot is what decides patentable non-obviousness, things have come to a pretty pass.

              In writing my post and asking “why”, I had mistakenly supposed that obviousness is judged on technological considerations, rather on caprice.

              And anyway, in the photo, is the fur collar on the shirt? I think not.

                1. Betray? Or merely reveal? No it doesn’t.

                  Be sure, I’m not confused between the two utterly different legal concepts. That’s because, under the EPC, so many of the search report references are citable under novelty but not the obviousness section. Through constant daily practice, one develops a very sharp sense of what is a matter of novelty and what of obviousness, much more refined than another important jurisdiction that comes to mind.

                  We are debating MM’s hypo. He has already asked you to stick to the point: obviousness. How many times must you be told?

                  Now, on obviousness, as we were saying……………

                2. You chide me in error, as I am already sticking to the point of obviousness.

                  Nonetheless, your statement of whether the shirt itself has the fur collar indicates that you are looking for a single prior art item with all attributes and missing the combination effect: thus the miss between novelty and obviousness.

                  In other words, once again what you post does in fact betray your own boastful view of your own understanding.

                  It’s rather comical how often you do that.

                3. The “combination effect” you say. OK. Imagine (as prior art) a photo of a pair of trousers, with a conventional zipper, being modelled. Imagine (however unlikely) the claimed invention to be trousers with a shoelace shown as a closure, instead of a zip. Does the photo touch novelty, or obviousness?

                  Now imagine that the photo includes also a pair of laced-up shoes, warn on the feet, below the trousers. Does that make any difference?

                  just because all elements of the combination are in the same photo does not render the claimed subject matter obvious. Or are you saying it does.

                  Not every collocation is a combination. Or do you say it is?

                  The difference between novelty and obviousness is more sophisticated than the question, one reference or two, one photo or two. Or am I making things too complicated here?

                4. Same photo test…

                  How bizarre.

                  Why would you think I believe in a same photo test?

                  Or do you still think that your asking about a single item reference with all attributes still does not confuse novelty and obviousness and you are furiously trying to kick up a dust storm to hide your oops?

                  Making things too complicated, you ask – not too complicated to see right through the pretense.

                  The comedy continues.

          1. 7.1.1.2.2

            “Why put a fur collar on a Hawaiian Shirt? Who would come to that idea? Why? So, why put fleece on a Hawaiian sock?”

            I think the problem with this approach is that it ignores the “creative inferences” (whatever the heck those are) that PHOSITA may apply to the prior art. It may be disclosed as a “Hawaiin” shirt or sock, but it’s still a shirt or sock.

    2. 7.2

      MM, I think the facts were more like this: dry socks with fleece have been on the market for 10 years keeping people’s feet warm and dry. The inventor replaces the fleece with a particular kind of foam used in blast furnaces to keep the furnaces hot and the workers alive. The result is a vastly improved dry sock for keeping people’s feet warm.

      Along comes the Board and the Federal Circuit led by Newman and says that because we have dry socks with fleece, that there was a known problem with dry socks in keeping people’s feet warm. That might be true, but there was no known problem with dry socks with fleece in keeping people’s feet warm, and there was no reason to modify this solution to provide a better solution.

      And since there was no reason to modify the primary reference, there was no reason to look to the field of blast furnaces for a better solution to keeping one’s feet warm. Just because blast furnace foam blocked heat transfer, that fact alone is irrelevant to whether one would have any reason to modify the primary reference when one had no reason to do so.

      1. 7.2.1

        And even if there is a reason to modify the sleepers, one skilled in the arts of sleepers may not expect that the furnace foam, which perform well on furnaces, performs better than fleece on sleepers.
        The obviousness analysis should include the last step of the Graham analysis, the research of indicia of non-obviousness, and in particular of unexpected results. I did not see the last step of the Graham analysis discussed in the opinion.

        1. 7.2.1.1

          PiKa, thanks for your analysis. So you think the bottom line here is whether pop bottle solutions would be considered by someone trying to solve the problem of leakage in screw-on caps in LPLC cartridges. Clearly, they are not the same field of endeavor.

          So the question is whether it would have been reasonable to look at the pop bottle art to find a solution for LPLC cartridges. Apparently, the pressure differentials for the LPLC cartridges were significantly different than anything that could be expected to be found in the pop bottle art. Perhaps that is the central reason why one of ordinary skill would not look at that art for a solution.

          1. 7.2.1.1.1

            I have not made my opinion on whether the art was analogous. And maybe you are right it is not analogous.
            My point was that even if the court finds the art to be analogous, the analysis should not stop there. Even if the patent holder had not presented any indicia of non-obviousness to the board, and the Federal Circuit has no fact finding to review, I would have expected the opinion to at least mention it. And then, the court can affirm obviousness.

      2. 7.2.2

        I like the hypo, Ned, but if it came my way in examination I’d reject it under MPEP 2143(I)(B) “Simple Substitution of One Known Element for Another To Obtain Predictable Results” which does not require a motivation but only requires
        (1) a finding that the prior art contained a device (method, product, etc.) which differed from the claimed device by the substitution of some components (step, element, etc.) with other components;
        (2) a finding that the substituted components and their functions were known in the art;
        (3) a finding that one of ordinary skill in the art could have substituted one known element for another, and the results of the substitution would have been predictable; and
        (4) whatever additional findings based on the Graham factual inquiries may be necessary…of which there really aren’t any.

        This requires only that one of ordinary skill could have (and the results would have been predictable), and does not require a reason why one would want to.

        That said, if I were prosecuting the claim and the rejection was not made under this rationale, but was made under the TSM rationale, then whatever the Examiner offers as a motivation (and I don’t care where it comes from) is subject to be challenged if it does not make sense. In your hypo, if the motivation to combine was that the furnace lining was known, in the context of furnaces, to be beneficially non-oxidizing, and the Examiner said that the reason one would combine the references was because it would yield a combination in which the sock lining was non-oxidizing, I would challenge the rejection as lacking a rational underpinning. That is when you also have to start to question whether the art is analogous. I would argue that furnaces are not in the same field of endeavor as footwear, so the question would turn on the second analogousness prong, would the furnace reference have commended itself to the inventor in view of the inventor’s problem. Honestly, I don’t know why examiners cling to TSM when these other rationales are available and so much more unassailable, yet they keep flailing at TSM with ridiculous motivations that make no sense in context.

        1. 7.2.2.1

          znutar,

          Does not your (2) and (3) simply circle back to the determination of “in the art,”…?

          Common sense indicates that if you merely enlargen the circle of prior art suitable for obviousness to be the same circle of art suitable for novelty, that literally nothing is patentable, as only God starts from scratch.

          1. 7.2.2.1.1

            Look out for flying pigs – I agree with anon!

            I think this issue boils down to what is considered “analogous art.” If these two references are analogous, then they can be combined according to KSR rationale (B). But if they’re not analogous then findings (2) and (3) fall apart.

            1. 7.2.2.1.1.1

              Determining the scope of “analogous art” is part of the issue. The issue is more generally the difference between showing that there is a prima facie case of obviousness and determining that the invention is obvious.
              The opinion could show that the examiner followed the MPEP guidelines to make an obviousness rejection. I am not convinced it shows that the invention is obvious, it seems to me that the Graham analysis is incomplete.

              1. 7.2.2.1.1.1.1

                There is an adage that “common sense” is not all that common and not always really makes sense.

                Does that adage fit into your view here?

            2. 7.2.2.1.1.2

              The (very real) risk in over-reading KSR is to enlargen the “obviousness circle” to be coincident with the “novelty circle.”

              As I allude to with the historical notes to 103, Congress did NOT intend PHOSITA to be inventive, becuase to do so would remove being inventive from receiving the rewards of inventing.

              Those capable of a more nuanced and critical thinking view will recognize the common thread between the very bitter 101 battles and the foundations here in 103.

              To that extent, the early Supreme Court 103 cases must be arduously scrutinized for signs of power addiction.

              Keep in mind that Congress acted in 1952 to reverse the judicial attacks on those terms often confused here in 101 discussions. Given that Congress acted to remove from the courts the common law power of defining “invention,” it is NOT logical to think that Congress turned around and gave the courts that power back in 103.

              1. 7.2.2.1.1.2.1

                Congress did NOT intend PHOSITA to be inventive

                I don’t think SCOTUS has outright removed inventiveness from the picture. What they have said, though, is that a person of ordinary skill is also a person of ordinary creativity, not an automaton. To me, this suggests a distinction between ordinary creativity and inventiveness.

                In a situation like this, it seems like we need to judge whether combining known features is just an act of ordinary creativity or an act of invention, and this judgment hinges on how related we determine the references are.

                1. The problem RH is that these words from the Court are circular and – in effect – rewrite the words of Congress.

                  As I pointed out, Congress acted to take away the judicial power to set the definition of “invention” in what was prior 101 through the tool of common law evolution. It simply makes no sense whatsoever to introduce the elephant of that power back to the courts through the mouse hole of “clever interpretation” of 103 – when the congressional record indicates that such was not the intent of Congress.

                  As I have stated, albeit in biting tones, you cannot take the word of an addict as to what that addict’s limit of power is – not given the clear history that we have.

                2. As for subtlety reinforcing my point – just look at the phrasing of your own post: “SCOTUS has outright removed” and realize that it is NOT within SCOTUS authority to remove anything – such is clearly the authority given to the Legislative branch.

                  We have become far too complacent on this matter of separation of powers.

          2. 7.2.2.1.2

            If you concede that the furnace reference is analogous, you concede (2), it’s not really a question of level of skill. I don’t think the examiner has to offer any proof of (3) absent a rebuttal by the applicant that the substitution could not have been done or wouldn’t have yielded predictable results, which could turn on level of skill. I think we agree that non-analogousness serves a fine purpose and I’ve had some success in recent years pushing back on that point.

    3. 7.3

      101 fail.

      The invention is directed to nothing more than the abstract concept of keeping feet dry/warm, which people have been doing for centuries. The invention uses nothing more than generic implements (socks, fleece) to implement this well-known function. There is simply no novel and nonobvious technological improvement here. Basically, it’s j**k soft… er… socks.

      Dismissed. Next!

  9. 6

    Ned: There is something faulty in the logic that says that any invention within the skill of the art is obvious if all of the parts are known regardless that the art did not know the problem solved by the combination.

    I don’t think that’s the logic here.

    The logic here is that, in this instance, “the art” had already solved the problem of improving the seal of a bottle with a tapered lip and corresponding tapered cap. As I understand the facts, that tapering is the only difference between this particular bottle and the prior art bottle.

    If there was clear teaching away in the prior art from using the tapered lip improvement for certain types of bottles (including the class of bottles which includes the prior art bottle) you’d have a decent argument for non-obvoiusness. But of course there is no such teaching away.

    I think is how obviousness is supposed to work.

    So the space shuttle blows up on launch; and I discover that the problem is that the O-rings used at a particular joint do not provide a good seal unless the temperature is above 40°, and the launch had occurred below that temperature…. [M]y solution to provide a different O-ring is obvious because one of ordinary skill in the art would know that the particular O-ring chosen will work at below 40°.

    If that’s the sum total of all the facts then you might be in good shape. On the other hand, if there’s art out there teaching that certain O-rings (which include the kind that are on the shuttle) are prone to fail below 40 degrees, and it was also known that the shuttle launch temperature gets below that temperature, then the motivation to combine is out there. Is it unexpected that your solution would work? Nope.

    Put another way: patents shouldn’t be awarded for obvious fixes of another inventor’s cruddy rocking horse just because you happened to be the first customer to take that rocking horse for a ride.

    1. 6.2

      MM, the primary reference, Yamada, disclosed an O-ring seal for a screw on cap for an LPLC cartridge. The reference itself disclosed no leakage problem with the O-ring. In the 10 years since the primary reference had been used in the market, the art had discovered no leakage problem with the O-ring seal. There was no leakage problem known to the art with the O-ring seal. There was no reason to modify Yamada to solve a leakage problem with Yamada.

      The dissent makes a big point that the findings of fact by the board and by the majority that there was a known leakage problem are without support in the record.

      You implicitly agree with this in the analogy to the space shuttle disaster where it was discovered that a particular O-ring in a particular joint would not adequately work below a certain temperature. Now if it were known that this O-ring would not work below a certain temperature, then not only would the provision of a proper O-ring would have been obvious, but the decision to launch the space shuttle knowing that it will blow up was not just a bad call, not just a mistake, not just pushing the envelope just a bit, but something more in the criminal realm.

  10. 5

    It seems weird to me that people were considering the level of skill of a chemist. If the issue is the obviousness of a container, then shouldn’t they consider the level of skill of engineers who design containers?

    1. 5.1

      If the issue is the obviousness of a container, then shouldn’t they consider the level of skill of engineers who design containers?

      Of course that is correct.

      1. 5.2.1

        Dennis,
        As you described the case, it sounds like a situation where nonobviousness could be argued based on the fact of the discovery of the problem alone. There is a line of older cases, In re Sponoble, maybe, that says this. Any idea why this wasn’t argued?

  11. 4

    “the scope-and-content of the prior art is impacted by the level of skill in the art.”

    Lol wut? Care to have the USSC review that on cert? Facts (scope n content) is facts regardless of imaginary men or their imaginary level of skill.

    “However, the patentee here argued that this analysis involves improper hindsight because the leakage problem was one identified by the inventor as part of the invention process and was not previously identified in the prior art.”

    Lulz.

    “The Federal Circuit implicitly agreed that it would be improper hindsight to rely upon the problem first identified by the inventor for determining analogous art. However, the court rejected that argument as applied to the facts here. In particular, the PTAB noted that the primary LPLC reference includes a particular o-ring seal that serves as an implicit recognition leakage could be a problem.”

    TRIPLE LULZ!

    All that said, legal tomfoolery aside I’d think this is likely not so obvious to an imaginary man of ordinary skill. Sometimes even if all the facts suggest “obvious” to the experts and people looking at it years later it just wouldn’t have been to an imaginary man of ordinary skill as a matter of lawl back in the day. That’s the flip side of “common sense” being at issue in other cases. And that’s where good judging and judgement come into play.

    1. 4.1

      6,

      The easiest way to think of the first thing that you are “lulz”-ing is to realize that the “world of prior art” comes in different circles of applicability.

      For novelty purposes, that circle is the set of everything.

      For obviousness purposes, a smaller circle is used. For obviousness purposes, NOT all prior art falls within the allowed circle.

      The double edge sword of KSR has been remarked on of late – what that leading edge takes away from the applicants, the trailing edge gives back to the applicants in the sense of what needs not to be included in the application.

      The biggest impact of this of course is in the allowed under law use of not purely functional claiming. As Prof. Crouch has labeled it, the vast middle ground of some structure and functional claiming exists – and that existence is augmented -albeit perhaps inadvertently – by the Supreme Court’s augmenting of PHOSITA.

      1. 4.1.1

        “For obviousness purposes, a smaller circle is used. ”

        Doesn’t change the scope n content o dem prior arts just because you don’t want to “apply” or “use” some of it.

        1. 4.1.1.1

          It certainly does change the scope and content of the (legally) applicable art.

          That you as an examiner cannot readily grasp this concept is frightening – it’s your JOB to know this!

          1. 4.1.1.1.1

            “It certainly does change the scope and content of the (legally) applicable art.”

            I haven’t said otherwise.

            1. 4.1.1.1.1.1

              You certainly implied it with your response of “just because you don’t want to ‘apply’ or ‘use’ some if it” to my post concerning the different circles of art to be applied or used.

  12. 3

    OT, but something evidently obvious (with or without hindsight):

    The Glossary Pilot Program had failed to attract the minimum 200 applications necessary, and the deadline for joining has been pushed back to June 2, 2015 in the hopes that P.T. Barnum can cull a few more volunteers.

    In the age of more than half a million annual applications, the fact that not even 200 wanted to sign up should send a signal not to delay the inevitable cancelation of the program, but to perform an autopsy of the effort.

  13. 2

    There is something faulty in the logic that says that any invention within the skill of the art is obvious if all of the parts are known regardless that the art did not know the problem solved by the combination.

    1. 2.1

      So the space shuttle blows up on launch; and I discover that the problem is that the O-rings used at a particular joint do not provide a good seal unless the temperature is above 40°, and the launch had occurred below that temperature, my solution to provide a different O-ring is obvious because one of ordinary skill in the art would know that the particular O-ring chosen will work at below 40°.

      Hmmm……

      1. 2.1.1

        One could say all software inventions are within the skill of the art and therefore obvious given a flowchart. Who cares if the inventor came up with the flowchart.

        Seriously, there is something rotten in the state of Denmark.

        1. 2.1.1.1

          One could say all software inventions are within the skill of the art and therefore obvious given a flowchart.

          Why not? According to applicants everything is enabled based on a flowchart.

          Software is a perfectly predictable and logical art. There is always a motivation to combine references in software. This is not so for the less predictable arts.

          1. 2.1.1.1.1

            You never answered me if you wanted to play with my big box of electrons, protons, and neutrons; after all the way these things go together is far older than any flowchart.

          2. 2.1.1.1.2

            Your (mistaken) “form follows function” thinking implies that there can be no copyright protection for software either.

  14. 1

    “[T]here is no record evidence that one of skill in the art would have been motivated to modify Yamada with soda pop bottle sealing closures.” (emphasis added)

    That’s. Not. The. Test. KSR v. Telflex.

    Yeah, it’s in dissent, but the willingness of some Federal Circuit judges to ignore SCOTUS precedent that they don’t like is stunning.

    1. 1.1

      Motivation to combine is still a requirement.

      It is an exceptionally easy requirement to meet, but it still must be met.

      To the extent that you think this requirement was removed by KSR, you are simply mistaken (with or without lots of periods).

      1. 1.1.1

        It’s actually not a requirement. Seriously. You do need to express a rationale for combining the references, but it doesn’t need to involve a motivation (i.e., a “good reason” or a desired positive outcome) for doing so. In fact, the entire point of the KSR rationales was to impress upon people that sometimes a modification of one reference with the teachings of another reference is purely arbitrary, with absolutely no benefit from doing so, but that still doesn’t make it inventive if the outcome is predictable.

        1. 1.1.1.1

          APoTU, can you cite the portion of KSR that says that one cannot get a patent for a combination of two references, entirely WITHIN the skill in the art, when there was no reason to combine them disclosed in the prior art, and the problem the combination solves was discovered by the inventor?

          1. 1.1.1.1.1

            …can you cite…

            I think there is plenty of dicsussion on point in the decision, but how about this for starters:

            Neither the enactment of § 103 nor the analysis in Graham disturbed this Court’s earlier instructions concerning the need for caution in granting a patent based on the combination of elements found in the prior art. For over a half century, the Court has held that a “patent for a combination which only unites old elements with no change in their respective functions . . . obviously withdraws what already is known into the field of its monopoly and diminishes the resources available to skillful men.” Great Atlantic & Pacific Tea Co. v. Supermarket Equipment Corp., 340 U. S. 147, 152– 153 (1950). This is a principal reason for declining to allow patents for what is obvious. The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results. Three cases decided after Graham illustrate the application of this doctrine.

            KSR, 550 US 398 at 415-416.

            1. 1.1.1.1.1.1

              But, RH, where the invention was in the discovery of an unknown problem, why is this even relevant?

              1. 1.1.1.1.1.1.1

                Sorry if I’m being pedantic here – but the discovery of a problem isn’t really where obviousness hinges (at least in the US). Obviousness is determined for the solution (i.e. the claimed invention) to that problem. I think the distinction there is important, because the solution might be obvious for a reason other than the problem that caused the applicant to make the invention.

                In the case at issue in this post, I think the majority felt that the “problem” wasn’t really unknown. Perhaps the problem wasn’t expressly articulated in a reference about LPLC cartridges, but that was unconvincing for two reasons: firstly because the problem was implied by the existence of an O-ring, and secondly because that’s reading the field of endeavor rather narrowly. Obviously these are ultimately both matters of judgment, and I’m not surprised to see a split decision.

                In a more general sense, if an Applicant identifies a problem which was truly unknown, then they might be able to rely on the effects of the invention as an unexpected result.

              2. 1.1.1.1.1.1.2

                But, RH, where the invention was in the discovery of an unknown problem, why is this even relevant?

                But there is no invention in the discovery of an unknown problem. There is an invention in the discovery of a solution to a problem, and therein lies a semantic rub – The structures of the prior art were the structures of the prior art. Either those structures IN FACT had an INHERENT leakage problem, in which case one of ordinary skill would be motivated to fix it with the combined art (as the inherent properties of the structure are considered prior art regardless of if they were known at the time), or those structures did not in fact have a leakage problem, in which case the premise of utility of the patents is shaky.

                This isn’t to say that shakyness necessarily invalidates those patented claims. I’m just pointing out the silliness implicit in basing an argument around novelty in a solution to an “undiscovered” problem. I don’t think anyone would argue that applying a common, obvious solution to a newly discovered novel problem is an invention, because that turns the system on its head. It’s probably best to assume the “problem” was known and judge the solution on that.

                1. I would posit that it is even more silly to “assume the ‘problem’ was known and judge the solution on that.’ – as that is even further removed from the reality of the human condition (can you say NOT common sense?)

                2. “Either those structures IN FACT had an INHERENT leakage problem, in which case one of ordinary skill would be motivated to fix it with the combined art…”

                  See my comment below regarding Rijckaert. One of ordinary skill in the art cannot solve unknown problems, even if they are inherent. Think back to all the quotes I posted from KSR. The need or problem or design demand has to be known in order for PHOSITA to address it.

          2. 1.1.1.1.2

            “…can you cite the portion of KSR that says that one cannot get a patent for a combination of two references, entirely WITHIN the skill in the art, when there was no reason to combine them disclosed in the prior art, and the problem the combination solves was discovered by the inventor?”

            Solving an unknown problem, even with an “obvious” solution, is the epitome of non-obviousness. Even KSR recognized this” “Often, it will be necessary for a court to look to interrelated teachings of multiple patents; the effects of demands known to the design community or present in the marketplace; and the background knowledge possessed by a person having ordinary skill in the art, all in order to determine whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue. To facilitate review, this analysis should be made explicit.” Citin In re Kahn.

            The effects of demands to the design community or present in the marketplace must be known. In other words, the application of a known solution to a known problem is within the level of ordinary skill in the art and obvious. But one of ordinary skill in the art cannot apply known solutions to problems that one of ordinary skill in the art doesn’t know about. And one of ordinary skill in the art does not go out seeking unknown problems to solve.

            And there’s this from KSR: “Under the correct analysis, any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.”

            So in order for the examiner to establish a reason one of ordinary skill in the art would have modified/combined the prior art to arrive at the invention (i.e. the elements in the manner claimed), the examiner must establish by a preponderance of the evidence that 1) there existed a KNOWN need or problem in the field of endeavor that 2) is addressed by the prior art.

            1. 1.1.1.1.2.1

              “So in order for the examiner to establish a reason one of ordinary skill in the art would have modified/combined the prior art to arrive at the invention (i.e. the elements in the manner claimed), the examiner must establish by a preponderance of the evidence that 1) there existed a KNOWN need or problem in the field of endeavor that 2) is addressed by the prior art.”

              I agree AAA JJ. I don’t understand why there can be serious debate about this. But from the posts of RH, it seems that many believe that the discovery of a problem by the inventor is irrelevant. The entire prosecution history in this case was based upon the problem that the inventor was trying to solve, but the problem was not disclosed in the art. The primary reference, Yamada, provided an O-ring seal that worked. There was no reason to modify Yamada to address a leakage problem because Yamada did not disclose a leakage problem and Yamada had been in the field for 10 years with no known leakage problem.

              There is a basic failure of evidence here that the problem of leakage was known.

            2. 1.1.1.1.2.2

              Solving an unknown problem, even with an “obvious” solution, is the epitome of non-obviousness.

              I couldn’t disagree more. The court outright said that known techniques in one field may prompt usage in another. That exemplary rationale would be completely useless in your interpretation.

              It would also fly in the face of double patenting, as your interpretation would allow one to disclose a machine with problems, wait until just before the publication date, and then file another application “solving” the “unknown” problem in the machine with an obvious solution – extending the monopoly with an obvious variation. According to you the law deems this non-obvious and both should issue. But the rest of us call that obviousness-type double patenting.

              1. 1.1.1.1.2.2.1

                Did you not notice the use of the word “may” rather than the use of the word “must.”

                Your reading forces a “must.”

                That is just NOT what the Court said.

              2. 1.1.1.1.2.2.2

                You must be aware that you cannot turn invention into a Flash of Genius, or only reward the serendipity or flat out “oops” mistakes. The last sentence of 103 was directed at the line of thinking that you are pursuing.

                1. From the historical notes of 103:

                  The second sentence states that patentability as to this requirement is not to be negatived by the manner in which the invention was made, that is, it is immaterial whether it resulted from long toil and experimentation or from a flash of genius.” (emphasis added)

                  Now those of us with real world engineering experience will immediately recognize what the toil and experimentation phrase means.

              3. 1.1.1.1.2.2.3

                “I couldn’t disagree more. The court outright said that known techniques in one field may prompt usage in another. That exemplary rationale would be completely useless in your interpretation.”

                We’ll have to agree to disagree. :-)

                The problem with your view of what the court said is that it ignores what the court also said in the quotes from KSR that I posted. The application of the known solution/technique has to be to any KNOWN need or problem in the field of endeavor, or to KNOWN demands of the design community or market.

                PHOSITA simply cannot apply known solutions/techniques to unkown problems. Can’t do it. As we were told in American Cyanamid v. Standard Oil (or the other way around, I can’t remember), PHOSITA has knowledge of the prior art, but doesn’t seek to innovate (i.e. introduce something new or alter something established). PHOSITA is simply not seeking out unknown problems to solve.

                That’s why we have secondary considerations like, for example, long felt need. They serve as an important safeguard against hindsight. And while the kings of hindsight on this site might decry and deride them, the courts have kept them around for exactly that purpose: to protect applicants against hindsight. Every invention is obvious once you’re told about it. That’s a natural response to being made aware of something you weren’t aware of before.

                Think back to your patent law 101 class. You probably reviewed the case about the problem of liquid medicines evaporating from the glass bottles they were stored in. People tried all sorts of solutions. They thought the liquid medicine was evaporating between the interface between the bottle and the stopper. So they tried all sorts of seals and coatings to prevent the evaporation. But nothing worked. One guy figured out that the liquid medicine was evaporating through the stopper, so he solved the problem by making the stopper impermeable to the vapors of the liquid medicine. Obvious solution, right? Well yeah. But the invention was found by the court to be non-obvious. Why? Because the inventor discovered the source of the problem.

                1. “As we were told in American Cyanamid v. Standard Oil (or the other way around, I can’t remember), PHOSITA has knowledge of the prior art, but doesn’t seek to innovate (i.e. introduce something new or alter something established). PHOSITA is simply not seeking out unknown problems to solve.”

                  To the extent that the case you reference does say that it is old n overruled I’m afeared. As much as I might agree with that overall ruling and in the results it achieves overall for policy the USSC just didn’t see it that way. Judge Rich didn’t see it that way either I don’t believe. He wanted a super 103 req that would obliterate talk like what you’re talking. Imaginary men certainly seek minor “innovations” in KSR’s view and likewise in Rich’s view. Likewise with solving problems that arise in everyday use of the prior articles I’m quite sure.

                  Of course that said, you can’t use a completely unknown problem as the rationale to combine in a rejection. But that doesn’t exactly require your quoted part to support.

                2. The application of the known solution/technique has to be to any KNOWN need or problem in the field of endeavor, or to KNOWN demands of the design community or market

                  But this statement comes in a paragraph where the point of the paragraph is to distinguish between the individual versus the PHOSITA, i.e. the court was emphasizing the subject of the test, and thus it is not KNOWN that commands the emphasis, but FIELD (and also COMMUNITY and MARKET, though those are your words). Compare that with this statement: “One of the ways in which a patent’s subject matter can be proved obvious is by noting that there existed at the time of invention a known problem for which there was an obvious solution encompassed by the patent’s claims.” Yet you’re suggesting here that when the court said “one of the ways” it actually mandated “in every instance.”

                  Certainly a known problem, with an identified solution to the problem, can provide a founding for obviousness, but that doesn’t appear to be necessary. Rather the broadest statement in KSR is in subsection A –

                  “For over a half century, the Court has held that a “patent for a combination which only unites old elements with no change in their respective functions . . . obviously withdraws what is already known into the field of its monopoly and diminishes the resources available to skillful men.” Great Atlantic & Pacific Tea Co. v. Supermarket Equipment Corp., 340 U.S. 147, 152, 71 S.Ct. 127, 95 L.Ed. 162 (1950). This is a principal reason for declining to allow patents for what is obvious. The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.”

                  I read that as saying that the ultimate test is a test of whether the art appreciates that an effect will follow a cause. Note that all of the times when obviousness is not found there is evidence that either the art failed to appreciate what the effect would be (unexpected results) or the art failed to know what would create the effect (long felt need). Look at the exemplary rationales:

                  a) combining prior elements…to yield predictable results
                  b) substituting…to yield predictable results
                  c) using techniques in the same way
                  d) applying a technique…to yield predictable results
                  e) obvious to try with a reasonable expectation of success
                  f) field variations
                  g) TSM

                  The common thread to all of these is that if you are at point A, the application of the exemplary rationales would result in reasonably predictable point B.

                  That’s why we have secondary considerations like, for example, long felt need.

                  But that is evidence that goes toward the difficulty of devising a solution, not difficulty in finding the problem, which brings me to:

                  Obvious solution, right? Well yeah. But the invention was found by the court to be non-obvious. Why? Because the inventor discovered the source of the problem.

                  No – wrong. You just got through saying everyone knew what the problem was – the liquid was evaporating from the bottle, and people tried all sorts of solutions. For this to be on point, the facts would have to be that nobody was noticing that the evaporation was occurring. Instead, everyone knew their was a problem, everyone tried to fix it, and he finally did. Had everyone known that there was a leak HERE, the art would readily have a solution at hand, so these are not analogous. Instead, because others tried and failed with the evaporation, there was evidence his solution was not obvious, since the art generally could not move from point A (a structure which allowed evaporation) to point B (a structure which didn’t). That is NOT the same thing as having an unknown problem with an obvious solution. In this case the movement from point A (leaky structure) to point B (non-leaky structure) is well-known.

                  My problem with your logic is that there’s no advancement in the art merely by stating that problem exists. For example, you wouldn’t expect to receive a patent for a statement that X fails to do Y, regardless of whether that fact was known before or not. So why would you expect to receive a patent for a statement that X fails to do Y followed by a completely obvious action that results in Y? There is no utility in the disclosure of the problem and no addition to the art in disclosure of the solution. This particular case is especially rough because we’re talking about the inherent properties of a structure, and those are always considered to be part of the prior art. If the Applicant submitted claims to the prior structure but called it leaky, it would still be anticipated, and the movement off that was known, and yet you’re trying to say that a known movement off an anticipated structure would be non-obvious.

                  But really the biggest issue is that you haven’t responded to what would be a ridiculous scenario – You’re suggesting that one could write a document discussing a structure and then re-patent it by making an obvious change to it. I could run a patent on a device forever doing that, as one can make an infinite number of obvious changes to a device. I invent widget X, but before it is disclosed to the public, I note that nobody had previously disclosed that the art had failed to appreciate that my widget could be tripped over when it is dark, therefore my new invention, yellow widget, is patentable – 18 more months please! No, that’s crazy :/

                3. “To the extent that the case you reference does say that it is old n overruled I’m afeared.”

                  You Shepardized it? If so, please post the results.

                4. “This is a good argument though, you have good points.”

                  Thanks. I’ve actually been informed by your posts and RH’s posts. I haven’t been an examiner in a long time, so I may have lost some of that perspective.

                  I’m in agreement with Ned, though. It seems to me that if there is prior art Ref. 1 that discloses an apparatus comprising ABCD and it’s disclosed to solve problem X and there is a prior art Ref. 2 that discloses an apparatus comprising EFGH and it’s disclosed to solve problem X, if an applicant files for an apparatus comprising ACEH and discloses that it’s for solving problem X, I don’t think a determination of obviousness on the “rationale” that “well, PHOSITA can just substitute or mix and match prior art elements as long as the outcome is predictable.” There still has to be a reason why one of ordinary skill in the art would do it. That goes to who PHOSITA is. What does PHOSITA do? What can PHOSITA do? Why does PHOSITA do what PHOSITA does? To me, PHOSITA does not seek to innovate, i.e. to introduce something new or alter something existing. PHOSITA simply doesn’t go around mixing and matching prior art elements/steps from different prior art devices/methods. There has to be a reason why PHOSITA would do it.

                  That’s not to say that the examiner can’t provide a reason in a rejection. As long as it’s supported by evidence, it’s a proper rejection. But the determination of obviousness requires that the examiner consider all counter evidence and arguments, including evidence of secondary considerations.

                  One of the problems I have with the KSR “rationales” is that they come dangerously close to per se rules of obviousness, which even SCOTUS said is improper. I worry that examiners treat them as per se rules of obviousness and don’t actually consider applicants’ counter evidence and arguments.

                5. “No – wrong. You just got through saying everyone knew what the problem was – the liquid was evaporating from the bottle, and people tried all sorts of solutions.”

                  I may have misspoke. I guess I should have said “the cause of the problem.” I probably should have used “failure of others” as a secondary consideration in my example.

                  There are unknown problems. There are known problems that nobody has solved. Solutions to both types are non-obvious.

                6. “There is no utility in the disclosure of the problem and no addition to the art in disclosure of the solution.”

                  Sure there is. The solution to an unsolved problem, whether the problem was known or unknown, is the essence of utility.

                  “This particular case is especially rough because we’re talking about the inherent properties of a structure, and those are always considered to be part of the prior art.”

                  Obviousness can’t be predicated on inherent, but unknown, properties of the prior art. In re Rijckaert.

                7. You are absolutely correct AAA JJ.

                  Not only do you expose the fallacy and lack of real world experience of Random in his “pretend the problem is known” anti-common sense, you highlight and confirm the dangers of the Court in that Court’s subtle manipulation (and sometimes not so subtle manipulation) in attempting to wrest back from Congress what Congress claimed back as their own in 1952 (see my posts at 7.2.2.1.1.2 and Dec 12 – 11:41 am).

                8. “You’re suggesting that one could write a document discussing a structure and then re-patent it by making an obvious change to it.”

                  You can’t “re-patent” it. You can patent your obvious variation. Assuming, of course that the only applicable “prior art” is not actually prior art because it’s your own and it doesn’t actually qualify under any paragraph of section 102. That situation has existed for as long as we’ve had a patent system. That’s why the court created non-statutory double patenting.

                  “I could run a patent on a device forever doing that, as one can make an infinite number of obvious changes to a device.”

                  Not forever. Non-statutory double patenting prevents unjustified timewise extension of the term of the “original” application/patent.

              4. 1.1.1.1.2.2.4

                “That exemplary rationale would be completely useless in your interpretation.”

                Again, you’re misquoting KSR. The court didn’t just say that the examiner/accused infringer/whomever just needs to present a “rationale.” There has to be a “reason” with a rational underpinning. And the reason has to be fact based and supported by a preponderance of the evidence. The examiner can’t just say, “Clearly one of ordinary skill in the art wants to solve all the problems, known or unknown, of the prior art.” That would be an exception that swallows the rule.

                1. “And the reason has to be fact based and supported by a preponderance of the evidence.”

                  You, and perhaps even I, wish. The rationale is part of the legal determination o obviousness. It isn’t necessarily a factual finding itself nor does it require evidence in all situations. Numerous CAFC decisions regarding 103 of late show this pretty clearly where it’s just “because we say so as a matter o lawl”. In the end, obviousness is a question of law and facts only take you halfway or 3/4 of the way there.

                  But gl arguing something along those lines in court. I’ll support it.

                  “Clearly one of ordinary skill in the art wants to solve all the problems, known or unknown, of the prior art.”

                  That’s true tho. Can’t go overboard.

                2. “It isn’t necessarily a factual finding itself nor does it require evidence in all situations.”

                  Wrong and wrong. See, e.g. Ruiz v. A.B. Chance or In re Caveney, or In re Gartside, etc.

                3. Can’t go overboard

                  Maybe the Court should have taken that message to heart when it set out its own re-writing of the words of Congress in its creation of the no-limit “Gist/Abstract” sword…

          3. 1.1.1.1.3

            Don’t know of any cases off hand, but you could cite to just about any office action with a 103 rejection these days – unless the clearly articulated rationale of “it makes it better” qualifies as motivation.

          4. 1.1.1.1.4

            KSR does say there needs to be a reason and it must be articulated and rational. But if in application of that test, any reason anyone can think of after the fact is an acceptable reason, the practical effect is that no reason is really required. When an invention is perceived as simple by a court or examiner today, that is pretty much what happens every time.

            1. 1.1.1.1.4.1

              TK,

              Your point is good but very subtle and I do not think many here have grasped it (many read “may” as “must”).

              Perhaps you would like to expand upon it?

        2. 1.1.1.3

          “It’s actually not a requirement.”

          Well, whether there is a reason one of ordinary skill in the art would modify/combine the prior art is a question of fact that the examiner must establish by a preponderance of the evidence. You can quibble whether you can call that “reason” a “motivation” or “teaching” or “suggestion” but the examiner has to have a factual basis for concluding that one of ordinary skill in the art would have modified/combined the prior art. KSR didn’t change that.

          1. 1.1.1.3.1

            I think it’s more than quibbling – many attorneys still argue against KSR-type obviousness rejections on the ground that there was no motivation to make the combination. I agree with APOTU that that KSR requires that the examiner articulate a rationale for the combination, but that the examiner needn’t necessarily point to a specific teaching in a reference that would have motivated one of ordinary skill to make the combination.

            1. 1.1.1.3.1.1

              I never argued TSM, or used those words so maybe many attorneys still do. I wouldn’t know.

              “…but that the examiner needn’t necessarily point to a specific teaching in a reference that would have motivated one of ordinary skill to make the combination.”

              I agree that there doesn’t need to be a “specific teaching” that would have “motivated” one of ordinary skill to make the combination, but the reason proffered by the examiner as to why one of ordinary skill in the art would have made the modification/combination has to be fact based (i.e. supported by a preponderance of the evidence).

              1. 1.1.1.3.1.1.2

                You’ve never argued TSM? How long have you been practicing?

                TSM actually made sense. Today’s “I can use whatever reference I want to use solely because I say I can use it” arguments from the Examiners make much less sense. The reality of overruling TSM is that is now quite difficult to get an Examiner to retract a 103 rejection, even when you make a correct argument that one skilled in the art would never combine the two references.

                1. even when you make a correct argument that one skilled in the art would never combine the two references.

                  Very rarely are things out of left field though. Ref A wasn’t doing what it was doing randomly, and neither was Ref B. When Ref A and B have two features that perform the same function, it suggests the features are interchangable, and there are a host of reasons as to why you might use one or the other. If one of the references is missing a feature, I’m sure the second reference didn’t write about it just to exercise their typing skills, it probably has a purpose.

                  There are times when A and B really wouldn’t be combined, but they’re truly few and far between, imo.

                2. I’ve been practicing for 15+ years. Never needed to say, “There’s no teaching, suggestion, motivation for the combination.” I always had a better argument than that. Always.

            2. 1.1.1.3.1.2

              “I agree with APOTU that that KSR requires that the examiner articulate a rationale for the combination…”

              Actually the requirement from KSR is that the examiner articulate a reason for the combination, with a rational underpinning. The difference between what you said and what the court said in KSR are not merely semantic.

              1. 1.1.1.3.1.2.2

                The difference between what you said and what the court said in KSR are not merely semantic.

                Forgive me for paraphrasing. But it doesn’t change the fact that the court doesn’t require a “motivation.”

                1. Agreed. No “motivation” is required. Actually now that I think of it the use of the term “motivate” with respect to one of ordinary skill in the art was always wrong. Those of ordinary skill in the art are not “motivated” to do anything. They simply follow the conventional wisdom. Not much “motivation” in that.

                2. On the contrary AAA JJ, doing nothing always gets you nothing and determining exactly what the level of what PHOSITA would do (would be motivated to do – for any number of reasons) is exactly the use of the term “motivate” which is pertinent.

                3. anon,

                  I’m thinking of the “definition” of PHOSITA from American Cyanamid v. Standard Oil (or the other way around). PHOSITA may know everything, but does not seek to innovate (i.e. introduce something new or alter something established). That’s why I think the term “motivate” is not appropriate in the context of what PHOSITA would have done.

                4. I think that I do understand what you are trying to say – but I think that your statement does not survive the semantic twist that will – and has been – applied to that word.

                  I think it better then to follow my use of the word, and simply distinguish that motivation is a part of PHOSITA, but that such motivation and inventiveness must be carefully separated (and yes, the Court’s use of the term in KSR may verge on another instance of the Court writing patent law instead of interpreting the words of Congress).

                  No “interpretation” should be so blindly accepted when it has the effect of so clearly changing the intent of Congress.

            3. 1.1.1.3.1.3

              The pedantics come in as you attempt to insert here the phrase “necessarily point to a specific teaching in a reference”

              My point in saying motivation is an extremely easy mark to hit is that KSR indicates that the motivation can come from common sense, or other factors.

              Yes, someone trying to argue “the words are not in a reference” are still operating in a pre-KSR mindset.

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