The Invention as Different, Not Better

by Dennis Crouch

I received a number of comments on one line from my post yesterday where I stated:

The law requires that a patented invention represent a significant advance beyond what was previously known in the art.

See Obviousness as a Question of Fact, Patently-O (March 17, 2015).

The basic retort from patent attorneys is that there is no “significant advance” requirement. Rather, the 1952 Patent Act involved an intentional rewriting of the law of invention to focus only on obviousness and remove the “invention” requirement.

When thinking about patent law doctrine, I ordinarily begin with the Constitutional provision that suggests creation of a system that offers exclusive rights to inventors for their discoveries in order to promote the progress of the useful arts.  When I speak of an advance or invention, I do so within this Constitutional framework. The idea here is to promote the progress.  Now, we might generally argue about whether we care what our long-dead policy predecessors goals for society, but most will still agree that progress in the useful arts of medicine, energy, transportation, communications, manufacturing, etc., continue to be proper goals.

It makes sense that an invention will usually represent an advance that is both new and better than the prior art in some way.  However, there will be times when someone conceives of a new product that is worse than the prior art in every measurable way. (E.g., worse performance, higher costs to manufacture, higher failure rate, and worse customer appeal).  In certain instances, a company may want to make and sell that more expensive but lower quality product if – for instance – the better product is locked-up by a competitor’s patent.  That partial substitute may still be competitive in an otherwise over-concentrated market.

I argue that the invention of a lower-quality and higher-cost product can still represent the type of significant advance that I highlighted above and that the obviousness test is a good measure of that advance.

The worse-invention still represents a new application of technology that would not have been obvious to someone skilled in the art.  And that new application fills-out the space of our technological knowledge in a way that can serve as a building block for future innovations. It has happened time-and-again that major successful innovations are built upon a series of innovative but failed endeavors — those “failures” are part of the progress and represent significant advances.

We have a real problem if the system does in-fact offer patents without any invention or any advance.  Fortunately, the obviousness test is designed to prevent that from happening.  Now, we just have to make sure that the test is applied in a way that lives up to our hopes.

241 thoughts on “The Invention as Different, Not Better

  1. 20

    I’m not going to read 212 comments to see if someone else already pointed out the following:

    Art. I, sec. 8, cl. 8 does not use the word “invention” but rather refers to discoveries. Under this constitutional power, Congress has enacted Title 35.

    35 USC 100 defines “invention” and “claimed invention”. 35 USC 101 states the types of inventions that are patentable (or to use the current lingo — “subject matter that is capable of being patented”). Other statutory provisions must also be met for a patent to be granted.

    With all respect to Professor Crouch, I suggest it confuses the discussion to argue that the word “invention” includes meanings beyond the definition provided in the statute.

    Cuno Engineering is no longer the law. Congress made that clear by passing the 1952 Patent Act. See Federico’s Commentaries.

    Anything that meets the statutory definition in 35 USC 100 is an “invention.” Some inventions are patentable; some inventions are not patentable.

    1. 20.1

      John, “New or improved” IS a requirement, but of 101. I agree that whether something novel or obvious has nothing to do with improvement. Whether something is new or improved, though, IS statutory.

      1. 20.1.1

        Ned,

        You are falling back into your old habit of abandoning conversations when the points put on the table are too inconvenient for your position.

        Can you please answer the following:

        What are the parameters of this 101 newness test that Congress wrote?

        How are these parameters different than the newness tests in 102/103?

        If Congress did not WRITE parameters, why is it that you think the judicial branch has authority to WRITE parameters?

        1. 20.1.1.1

          Anon, I can only repeat to your the original understanding which has been confirmed by Myriad.

          The New World is not new even though unknown.

          “Improved” requires some actual improvement in quality, efficiency, or the like. The idea came from England.

          I think the “framers” thought that patents should be given to those who brought forth new or improved manufactures, etc., with the additional requirement that they be previously unknown.

          The obviousness require came much later as a substitute for “improvement.” See, e.g., Hotchkisss. But, strangely, “improved” remains as a independent 101 requirement.

          1. 20.1.1.1.1

            Ned – full stop.

            Just answer the questions.

            There is NO need for you to abandon the dialogue and try to insert your scripted answers, as I want you to show that you really can think and I want you to address the actual items I have put on the table for discussion.

            This should not be difficult if you truly understand the law. If on the other hand you merely have a predetermined set position that you have always “just accepted” without thinking, then your the reason for your reluctance to actually engage the conversation will be clear.

          2. 20.1.1.1.2

            “new or improved manufactures, etc., with the additional requirement that they be previously unknown.”

            First of all, its new or improved processes, etc. Manufactures are listed second to last.

            Second, why exactly doesn’t new encompass previously unknown? How could something be both previously known and new?

            102 defines new Ned.

            1. 20.1.1.1.2.1

              102 defines new Ned.

              Les,

              Do you notice that much like when you pressed Ned on his “theory” concerning using “ineligible” base material (like wood), that Ned simply disappears from the conversation when he is faced with discussion points that his larger agenda just cannot handle?

              Here too: see how he attempts to not answer simple and direct questions with immediate bearing on the issue at hand, and is only too willing to kick up dust and retreat to a different “speaking point” with pre-1952 foreign treatises and US treatises (for which I have previously supplied on point weaknesses in those very items).

              He attempts to avoid the discussion points by employing a type of “Internet shout down” of past merely-tangential items instead of being direct and forthright.

              Do you think that he really believes that he is f001ing anyone?

              1. 20.1.1.1.2.1.1

                I’m sorry anon, but Rich was overruled in Myriad.

                I again point out that when “new” was added in 1793, not known or used was retained in the same sentence. Was not considered to be the same as not known or used. It was an absolute requirement of being, in point of fact, new.

                Discovery of the New World, or a mineral in nature, are two good examples of something that is not new, but also unknown.

                1. Ned,

                  You are still falling back into your old habit of abandoning conversations when the points put on the table are too inconvenient for your position.

                  Please be direct in answering the actual questions that I have put on the table.

                  There is a reason why the law has evolved and that Congress has taken away the ability of the judicial branch to set the definition of “invention” by the t001 of common law evolution. Your constant emphasis here of wanting that pre-1952 law to be controlling law is simply NOT in accord with actual history and what Congress did in 1952 in reaction to a judiciary that simply became too anti-patent (or do you forget that famous description of “the only valid patent is one that has not yet appeared before us”…?).

                  Your “selectiveness” is a detriment, not a benefit in our discussions Ned, since I can readily point out the weakness in your desired “state of law” due to your choices of what you discuss and what you refuse to discuss – no matter how many times you simply choose to say the same old (and incomplete) thing, your position remains incorrect.

                2. anon, you are flying in the face of the cannons of statutory construction that construes the meaning of terms at the time they were first introduced.

                  179o: improved, not known or used.

                  1793: new.

                  The statute has remained unamended since, except to carve known or used away into a new 102 in ’52.

                3. Quite the opposite Ned, as my abilities for statutory construction are far superior to yours.

                  You (conveniently) are also omitting the fact that the single paragraph (pre-1952) was substantially altered in 1952.

                  The reason for this is clear (hint: it is not the reason, given in dicta by the very same body attempting to hold onto its -pre-1952 authority).

              1. 20.1.1.1.2.2.1

                Why?

                And does that have some baring on:

                “why exactly doesn’t new encompass previously unknown? How could something be both previously known and new?”

                1. Les, think about the example given, the New World.

                  New World — not really new, but truly unknown to the Old World.

                2. “New World — not really new”

                  Your example isn’t an example. It was not really new, as you point out.

                  So, I ask again: “why exactly doesn’t new encompass previously unknown? How could something be both previously known and new?”

                  The new world was previously known and it was NOT new.

                3. Les, the SC held in Myriad that a product of nature was not new under 101.

                  Whether someone discovered is irrelevant.

                4. Ned –

                  I believe the Constitution specifically refers to DISCOVERIES.

                  I submit that there is nothing TO discover, other than products of nature and laws of nature.

                  So, the Supreme Court is wrong.

                  But, in any event, that does not answer the question: How could something be both previously known and new?”

                5. Les, Previously known? I’m sorry, did I misread this?

                  The 1793 read “new” …, and not known or used.

                  Here it is in full.

                  “That when any person or persons, being a citizen or citizens of the United States, shall allege that he or they have invented any new and useful art, machine, manufacture, or composition of matter, or any new and useful improvement on any art, machine, manufacture, or composition of matter, not known or used before the application, and shall present a petition to the Secretary
                  of State, signifying a desire of obtaining an exclusive property in the same, and praying that a patent may be granted therefor; it shall and may be lawful for the said Secretary of State to cause letters-patent to be made out in the name of the United States, bearing teste by the President of the United States, reciting the allegations and suggestions of the said petition, and giving a short description of the said invention or discovery, and thereupon granting to such. petitioner or petitioners, his, her, or their heirs, administrators, or assigns, for a term not exceeding fourteen years, the full and exclusive right and liberty of making, constructing, using, and vending
                  to others to be used, the said invention or discovery.”

                  Note, anon, the word “property.”

                6. Ned,

                  You are clearly attempting to hold onto a pre-1952 Supreme Court bias against treating process patents as a full and equal statutory category – something Congress also explicitly acted against in the Act of 1952.

                  You insist on not giving that act it’s full weight when it comes to what Congress did in response to an anti-patent activist Judiciary.

                  Until you recognize the historical factual basis of what animated the Congress, your continued “spins” will simply fail of their own weight.

              2. 20.1.1.1.2.2.2

                From Walker on Patents 1889, Section 2

                “§ 2. The word” discovery” does not have, either in the Constitution or the statute, its broadest signification. It means invention, in those documents, and in them it means nothing else. The” discoveries” of inventors are inventions. The same man may invent a machine, and may discover an island or a law of nature. For doing the first of these things, the patent laws may reward him, because he is an inventor in doing it; but those laws cannot reward him for doing either of the others, because he is not an inventor in doing either. The statute provides that patents may be granted for four classes of things. These are arts, machines, manufactures, and compositions of matter. None of these things can be originally made known by discovery, as our continent was. They are not found, but are created. ‘They are results of original thought. They are inventions. Laws of nature, on the other hand, can never be invented of man. though they may be discovered by him.

    2. 20.2

      “To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.”

      Authors are rewarded for their writings and inventors for their discoveries. The word should be understood in its older meaning of things revealed as in legal discovery. Authors produce written work, whereas when the Constitution was written inventors would produce writings, drawings and often models. A more generic term was needed, and “discoveries” means the things that the inventor reveals to the government as the basis of the application for a patent. It less clearly means discovery in science or technology in the modern scientific sense. If you are looking for more modern language, revelations could express the meaning better.

      1. 20.2.1

        Paul, in 1793, Jefferson rewrote the statute that is now 101/102. When he did so, he removed “discovered” and substituted “new.” As well compositions were added.

        Improvement was in the 1790 statute.

        What your take on this?

        Check Curtis for the statutes. link to books.google.com

  2. 19

    “[W]ould not have been obvious to someone skilled in the art….” I’m sorry, but I always believed (contrary to much court dicta) that an invention would be patentable under 35 U.S.C. Sec. 103 unless it “would have been obvious to a person having ordinary skill in the art….” Under 35 U.S. C. Sec 112 (a), we practitioners write patents “in such full, clear, concise and exact terms to enable any person skilled in the art…to make and use the same.”

    Skilled and ordinary skill are two quite different standards.

    1. 19.1

      Richard,

      An interesting thought, albeit one that does not survive scrutiny.

      Please elucidate this “quite” difference.

      What is the level of the “skilled” in the first instance? Someone minimally skilled? Someone at the top of the skilled range? Or is it, by default, the nominal middle if the range – the ordinarily skilled point?

      Alas, the standards are not different at all after all.

      1. 19.1.1

        If it is any consolation, others have attempted to make arguments in order to try to decouple what is not decouple-able. Notoriously, I can think of one paper in particular by Lemley and Burk, but, well, the bias there is more than self-evident.

        1. 19.1.1.1

          In contrast, you might be interested in a paper by Jonathan Darrow identifying the danger of the seemingly unchecked “scope creep” of making the very act of inventing be a common or ordinary thing:

          link to jolt.law.harvard.edu

          One should note that the “slippery slope” of making invention be ordinary was expressly repudiated by Congress in 1952 when they overruled the Court’s writing into patent law of the Flash of Genius.

          History does indeed try to repeat.

  3. 18

    Gotta love the self-induced editorial pain.

    Nine years and running, now with Malcolm wannabes.

    Great job!

  4. 17

    This would not be an active question if we had a Patent Office (from examiners on up through APJs) and courts (District through Appellate and SCOTUS) that rationally and actively policed the boundaries of the system to prevent gobs of trash from issuing as patents, and which gave us all a measure of consistent, top-to-bottom doctrinal predictability. But we don’t have any of that. In certain arts getting a patent is now a lottery; figuring out how the courts are going to treat a patent entails expensively buying into yet another lottery, and our Congress lacks the combination of wisdom and will to set matters straight.

  5. 16

    Today’s offensive (IMO anyway) litigation.

    What is this patent? Ineligible under 101? Obvious? An “improvement” or just another way to present map data? Actual innovation that helps society?

    Should anyone have to pay a million bucks to defend themselves from it?

    I report, you decide….

    US6397143

      1. 16.1.2

        They can work well or they can become monster versions of the 300-400 comment threads here, so your 101 forum will end up with 40,000 comments- but at least all in one place and with good searching and tagging, may end up very useful indeed.

        Maybe anon could have his own pinned forum for his (or her) 32.3% of site traffic….

  6. 15

    Under European practice, claimed subject matter does not have to represent an improvement over the closest prior art: a technical problem is solved by the addition of further alternatives. It is extremely common for patents to be granted on that basis during examination proceedings and to be upheld in opposition proceedings.

    An invention that provides a mere alternative is treated less advantageously when considering patentability over a combination of references than an invention that can be shown to provide an improvement. Nevertheless many objections based on combinations of references fail to establish the obviousness of claimed subject matter for which no advantage can be found.

    There is, to my knowledge, no reason why the same principles should not apply in the US.

    1. 15.1

      They do.

      The addition of a further alternative can be labelled as “new” (or perhaps more accurately as “new enough” given the combination of 102 and 103 that controls that determination).

      It is clearly a legal error to suppose some sort of “new” and different legal requirement in 101, which as everyone knows (or should know) does not speak as to what that requirement would be or how that requirement would be met were one to attempt to read into 101 that, um, “interpretation.”

      101 was meant as a wide open welcoming gate with two (and only two) relatively easy requirements:

      1) is the utility (a low standard) the type of utility that falls to the Useful Arts?

      2) does the invention as claimed fall into one of four broadly defined categories?

      That’s it.

      It is only with the Supreme Court mucking about with its philosophical finger in the wax nose of law, attempting to hold onto a power that Congress removed in 1952 that we see so much mischief afoot.

      As I have pointed out in other sections of the statutory law, the ability of one branch of the government to share its authority is a well recognized – albeit limited – constitutionally sound manner of applying law. But it takes direct words with proper guidance and limitations for such to survive a critical review of constitutionality.

      Contrast the direct words of 35 USC 283 (proper allocation of authority from the legislative branch to the judicial branch) with the direct words of 35 USC 101 (NO words allowing the judiciary to write law in any sense of common law evolution).

      The option to the Court on ANY question of comstituionality of the statutory law of patents simply does not include writing the law differently.

      1. 15.2.1

        Yes Ned – the statute (not the Justice mashed nose of wax).

        When all else fails, read the actual words of the statute.

  7. 14

    Neither “significant advance” nor “invention” are in the Constitution. Article I, Section 8 only mentions “Discoveries.” Notwithstanding, Congress added “invents or” to “discovers” in Section 101. Under standard rules of statutory construction, “invents” must have a different meaning than “discovers” and does not appear to have Constitutional authorization.

    I haven’t researched this issue. Is there support for equating “invents” with “discovers” or defining the two terms in accordance with Article I, Section 8?

  8. 13

    Beginning from square 1, the only requirement for patentability is utility requirement in 104. But it might become necessary, in light of the prior art, that there is shown some significant advancement to show non-obviousness. Indeed, it seems that the patentee in the case concedes as such, as it was his only defense to a 103 rejection.

    “But it took us two years!”, yeah, ok, but what did you actually do in those two years? If you made a microprocessor that can do it in the first month but spent 23 months perfecting it, not sure if you deserve a patent.

    I think “significant advancement” are considerations for 101 and 102. “Something more than a computer and ‘apply it'”, and/or “this is different from the prior art because it does X and the prior art doesn’t.”

    The reason is , and Dennis is right, it comes back to the Constitutional: “promote the sciences.”

    1. 13.1

      J, “Beginning from square 1, the only requirement for patentability is utility requirement in 104.”

      Is this a plurality of typo’s or purposeful misquotes?

      1. 13.1.1

        Oops. My writing here is always worse than when someone’s legal rights are on the line. Let me try again.

        At the start, the only “advancement” requirement is the utility requirement in 104.

    2. 13.2

      The terms “significant advancement” are not found in the Constitution or the US Codes. Therefore, these not necessary. I can’t even fathom why we’re discussing this. There is no requirement for an advancement to be “significant”.

      Furthermore, why do “non-significant” advancements not “promote the sciences”? For instance, you create a drug that will keep people alive a year longer (or cure symptoms) for people who have a particular disease, but only 1 in 100 million have that disease. This is not significant, but is still patentable.

      And how does one define what a “significant” advancement even is? In the example I just gave, could one argue that this drug is a “significant” advancement since basically no one is affected? For those people, it’s significant, but it’s meaningless the broad scheme of things.

      Let’s look at other examples. Say you’ve developed an improvement to a compressor for a refrigerator that will save a few watts of power per year. Is that significant? For a single fridge, I’d say no, but for 100 million fridges in the US, I’d say yes. Now, what happens if it causes the price of the fridge to increase by $100? That means the fridge costs more, which means the “significance” for a single person buying the fridge is even less than it was. But the overall benefit to society is still there for power usage anyway (but there is a detriment of increased cost).

      This is why the term “significant improvement” is useless. It can’t be defined, and even if it could be defined, it’s not a requirement for patentability.

    3. 13.3

      Just bizarre the way people want to raise the bar. I guess it is human nature to judge others and feel they are inadequate. Weird. It is the flash of genius syndrome.

    4. 13.4

      Bizarre that you want to lower the bar. I’m not saying (anymore :) ) its a bright-line here. Mine is a flexible approach consistent with Supreme Court precedent (KSR, . Others still want “some motivation or suggestion to
      combine the prior art teachings” or some other bright-line rule.

      KSR stated, “[I]f a technique has been used to improve one device, and a person of ordinary skill of the art would recognize [notice the past-tense here, suggesting hind-sight is appropriate] that it would improve similar devices in the same way, using the technology is obvious unless its actual application is beyond his or her skill.” Thus, a substantial improvement is required in such a case.

      Finally, there is no need to go to psychoanalysis. It is unhelpful to the tone of this message board.

      1. 13.4.1

        C’mon ya’ll, obviously he’s tr 0lling. “Section 104…hindsight.”

        Pretty funny though!

          1. 13.4.1.1.1

            What did I do? Lighten up. I’ve seen you be humorous, sort of, on occasion. Dots and dashes and what-not.

            1. 13.4.1.1.1.1

              Why are you asking me to “lighten up” when I am thanking you for your post?

              You are spot on here.

      2. 13.4.2

        >>Finally, there is no need to go to psychoanalysis.

        Actually the opposite is true. Anyone that has worked in innovation for real knows that hindsight is a massive, massive issue. That humans are terrible at evaluating how hard something was to figure out once it was figured out.

        It has been a long time since I’ve read philosophy, but when I did I remember that this was recognized long, long ago as a human failing. And that many scientist noted that it was a spiritual experience to have figured something out for the first time before any other human.

        No this is not a minor point. Rich thought it was a massive point too and so does any serious patent scholar.

        1. 13.4.2.1

          The pyschoanalysis you used had nothing to do with hindsight, you wanted to say that I must feel inadequate, which 1) uncalled for and 2) incorrect. See, you forget that I fundamentally come at patent law differently than you. Patents are not derived from natural or common law, in my opinion, so I don’t think I’m tearing anyone down or doing violence to their rights (so long as there is due process). I am working from a standpoint on what is in the best interest of the public and the progression of the arts. Now, I know you disagree with my approach to patent law, but before you try to look deep into my soul, Sigmund Freud, maybe you should consider the broader picture from where I am coming from.

          Anyways, to the point of hindsight, where you misunderstand is that how hard it was to figure something out for a particular person is a secondary consideration. I advocate an objective analysis and use of common sense. That is what KSR held. As much as we all love Judge Rich, and he was brilliant, he was a circuit court judge. KSR is from the Supreme Court, and the Federal Circuit is bound by KSR. It is controlling law:

          “The Court of Appeals, finally, drew the wrong conclusion from the risk of courts and patent examiners falling prey to hindsight bias. A factfinder should be aware, of course, of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning. See Graham, 383 U.S., at 36, 86 S.Ct. 684 (warning against a “temptation to read into the prior art the teachings of the invention in issue” and instructing courts to “ ‘guard against slipping into use of hindsight’ ” (quoting Monroe Auto Equip. Co. v. Heckethorn Mfg. & Supply Co., 332 F.2d 406, 412 (C.A.6 1964))). Rigid preventative rules that deny factfinders recourse to common sense, however, are neither necessary under our case law nor consistent with it.”

          KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421, 127 S. Ct. 1727, 1742-43, 167 L. Ed. 2d 705 (2007).

          So, once again, flexible approach. Disagree with it if you want, that is what makes debate fun, but I don’t understand the “I’m smarter than you” tone.

          In summation, obviousness necessarily has some hindsight. If we are looking to reject something for obviousness under 103, it necessarily means that we concede it is novel under 102. I mean this sincerely: I’d like to have a rule articulated from you on how to enforce 103 without relying on a determination on how new it is.

          1. 13.4.2.1.1

            ee, you forget that I fundamentally come at patent law differently than you.

            What ever “direction” you are coming from, you are getting the statutory law fundamentally wrong.

            You do know that Judge Rich helped write the actual law, right? And that this statutory law is NOT subject to common law development by the Supreme Court, right? And you do get the fundamental difference between statutory law and common law and the notion of separation of powers, right?

            Your direction of coming at patent law is just not all that helpful.

            1. 13.4.2.1.1.1

              You took my statement out of context to pick a fight, and I’m not going to go into philosophical jurisprudence with you right now.

              Is obvious defined in 103? No? Ok, then statutory interpretation is necessary.

              Still waiting on that rule or principle to implement 103 that doesn’t rely on novelty…

        2. 13.4.2.2

          Night,

          I only think hindsight is a massive issue to the extent you think inventors are being unfairly denied patents based on an Examiner/Court’s improper use of hindsight.

          I, for example, believe the opposite is true. Too many inventions pass 103’s still very low bar.

          Sort of on board with MM, burden should be on the applicant to show nonobviousness (that standard is already basically there in some arts). Each application should have a section explaining why the results of the invention are unexpected or whatever argument they want to make.

          1. 13.4.2.2.1

            “…burden should be on the applicant to show nonobviousness…”

            The problem with that proposal is that 1) it’s not the law, 2) has never been the law, and 3) will never be the law.

            “…(that standard is already basically there in some arts).”

            Really? Which arts are those?

            1. 13.4.2.2.1.1

              While I don’t agree that the burden should always be on the applicant to show nonobiousness, there is an informal presumption against the applicant if the invention is just combing known elements of related patents.
              “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR, page 12 of the slip opinion.

              1. 13.4.2.2.1.1.1

                There is no presumption, formal or informal, against the applicant. The burden is on the examiner. Always.

            2. 13.4.2.2.1.2

              1. I said “should.” So, you’re 1, 2 and 3 aren’t really responsive.

              2. Key in on the word “basically.”

              1. 13.4.2.2.1.2.1

                With all due respect, my ever polite friend, that is some seriously WEAK wishywashiness there.

                Take a stand and defend it. If you can’t (which you can’t) then recognize why.

                The mealy “sort of” and “basically” contrast with your assertion of “that standard IS”

                You couch your terms far too much and mix up what you “want” with what IS, then seek to weasel out of any reply that points this out.

                That’s just not helpful for anyone – for the way things are, OR the way you would like things to be.

                1. Anon,

                  Your point is well taken. Here, I think AAA JJ was just being a bit of a j erk, so I wasn’t inclined to give him the benefit of the doubt. Still, I hear what you’re saying.

          2. 13.4.2.2.2

            Clearly Go, your belief system is hindering your appreciation of what the law actually is. Your “should haves” make nice opinions about something other than the real law, but all too often you get clouded and confused between the real law and this other wishful thinking law that you imagine up.

  9. 12

    Dennis –

    If you use advance in a way that encompasses worse….well, while you may be your own lexicographer, “any special meaning assigned to a term needs to be clearly set forth in the specification.

    Given the definition you now make explicit, I would suggest substituting “new.” As, it will lead to less confusion.

    Tangentially, I would submit that an invention can also be alternative to, but on par with the prior art.

    Furthermore, beauty is in the eye of the beholder. What may be an advance to one (e.g., because it is less expensive) may be a downgrade to another (e.g., because it does not perform as well). Whether it is an advance or not then becomes a debate, and lord knows we have enought of those…

    1. 12.1

      Les: beauty is in the eye of the beholder.

      That’s why subjective aesthetic limitations should present serious problems to utility patent claims, and they often do.

      What may be an advance to one (e.g., because it is less expensive) may be a downgrade to another (e.g., because it does not perform as well).

      That’s true. But patent law already puts reasonable limits on the sorts of “unexpected results” that one can present to overcome a prima facie obviousness case.

      For example, if my improved hamster food is otherwise obvious, the fact that it “could result in a consumer savings of forty cents over five years for an owner of a long-haired hamster who is currently feeding with Brand X” isn’t going to cut the mustrd for the purposes of obtaining a patent on that “improved” food. And it shouldn’t. “No patent” is the correct result in such a case.

      Whether it is an advance or not then becomes a debate

      Are you suggesting that evidence of some improvement over the prior art can’t be a requirement for a patent because it’s “too complicated”? If so, I’m not buying it.

    2. 12.2

      Les, Buckets.

      1. 101 requires an improvement (or new).
      2. 102 requires “not publicly known.”
      3. 1o3 requires the 1) the invention not be obvious to, and 2) to be within the skill of, a person of ordinary skill in the relevant art.

      To say that 103 does not require a showing of improvement does not end the statutory inquiry. “Improvement” and “useful” cannot mean the same thing.

      1. 12.2.1

        Ned,

        101 mentions “improvement” as alternative to entirely new:

        Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

        Improvement is not a requirement.

        The inventor can have a patent to a flying saucer, even if it is very slow and is not viewed as an improvement over anything existing.

        1. 12.2.1.1

          Les, improvement, or new, is a requirement.

          I really love you Rich-acolytes in your redraft of the fundamental law that has been with us, unchanged, since 1793.

          Simply amazing. Truly.

            1. 12.2.1.1.1.1

              Rich actually said that there was no 101 newness requirement, that what that meant was 102 novelty.

              Rich meet Supreme Court.

              1. 12.2.1.1.1.1.1

                I’m not arguing that newness isn’t a requirement. Though I believe newness is judged under 102 not some gut feeling a judge has about the gist to which he distills a claim.

                I’m arguing that improvement is not a requirement.

                Why do you keep bringing up new?

              2. 12.2.1.1.1.1.2

                Ned,

                What are the parameters of this 101 newness test that Congress wrote?

                How are these parameters different than the newness tests in 102/103?

                If Congress did not WRITE parameters, why is it that you think the judicial branch has authority to WRITE parameters?

      2. 12.2.2

        “3. 1o3 requires the 1) the invention not be obvious to, and 2) to be within the skill of, a person of ordinary skill in the relevant art.”

        Say what now? To get a patent, the invention can’t over the head of a person of ordinary skill?

        Are you in Colorado?

        1. 12.2.2.1

          Les, we discussed that holding just yesterday. I assume you missed the conversation.

          103 has a “ordinary skill in the art” requirement. Implicit, if the missing elements, or combinations, are beyond the skill in the art, they could hardly be obvious to such a person.

          1. 12.2.2.1.1

            ” Implicit, if the missing elements, or combinations, are beyond the skill in the art, they could hardly be obvious to such a person.”

            Yes, that makes sense.

            But you said:3. 1o3 requires the 1) the invention not be obvious to, and 2) to be within the skill of, a person of ordinary skill in the relevant art.”

            1) is a requirement FOR patentability. Naturely, I assumed you were saying that 2) was also a requirement for patentability (because of the word “and” linking the two).

  10. 11

    The ultimate utility of inventions may not be realized for years after their introduction. An “inferior” but novel way of doing something may later, in another context, actually be progress in the arts.

    Polyethylene may or may not be the very best material to channel x-rays within a hydrogen bomb, but it makes a fine trash bag….. I don’t think you can fairly categorize every new invention as an improvement absent the fullness of time.

    The legal allowance for an improvement appears not to be a mandate, but rather an option:

    Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, OR any new and useful improvement thereof, may obtain a patent therefor….

    Has “process” in section 101 ever been construed by the Supreme Court? Could it be judicially limited to a sequence that results in a mechanical, chemical, or radiologic change or transformation? Might that make more sense than the whole ‘abstract idea’ notion of “process” and still accord with the founder’s intentions ?

    On the subject of obviousness and/or process , I’d be interested in commentary as to why Marriot Corp should have to defend itself from the claims below all the way to findings of fact, and what good that cost does for anyone?

    US 8,915,823

    1. 11.1

      “An “inferior” but novel way of doing something may later, in another context, actually be progress in the arts.”

      Exactly. Economics 101. Thus, “utility” is the test in the USA.

    2. 11.2

      The ultimate utility of inventions may not be realized for years after their introduction. An “inferior” but novel way of doing something may later, in another context, actually be progress in the arts.

      Nobody is disputing this, Martin. The issue is what reasonable restrictions do we put on a patent system whose purpose is to promote progress in the useful arts by handing out exclusive rights to worthy innovations that represent such progress.

      Given that we can not see with crystal clarity the future of human beings on earth, it seems eminently reasonable to focus our progress-promoting efforts on those innovations that actually do represent some kind of improvement over the useful art (as opposed to products/services that are inferior in every way but “marketable” for some reason).

      Think about it this way:

      “A systematic way of injuring a person or class of persons may later, in another context, actually be progress in human evolution.”

      In view of our Constitution, is that a compelling argument for relaxing laws against discrimination? After all, “we don’t know …”

      1. 11.2.1

        Nobody is disputing this,

        As Malcolm turns around in the next sentence to dispute it…

        /face palm

    3. 11.3

      Martin, the founding fathers did not intend to patent anything that was not at least an improvement.

      1. 11.3.1

        Beauty is in the eye of the beholder Ned.

        An improvement in whose estimation?

        Work arounds were not intended to be patentable?

        Why not, don’t they promote progress too?

        1. 11.3.1.1

          Les: Work arounds were not intended to be patentable? Why not, don’t they promote progress too?

          If the “work around” isn’t an improvements over the prior art, it’s not promoting progress in that art.

          Is this really so difficult to understand, Les?

          Correct me if I’m wrong, but are you the same Les who used to comment here that “every patent creates a job”? Just curious. Maybe I’m confusing you with another defender of the lowest form of innovation.

          1. 11.3.1.1.1

            “If the “work around” isn’t an improvements over the prior art, it’s not promoting progress in that art.”

            Of course it is. You are the one that thinks patents block rather than promote innovation.

            If patent A blocks innovation, then surely an alternative method helps to unblock progress.

            If nothing else, the competition would lower the royalty demanded to use either invention.

            Furthermore, the disclosure of an alternative provides an additional basis for the next potential advancement.

            1. 11.3.1.1.1.1

              I wrote: “If the “work around” isn’t an improvements over the prior art, it’s not promoting progress in that art.”

              Les reponds: Of course it is.

              Nice try, Les, but doubling down on the nonsense isn’t a defense of that nonsense. I’ll repeat my utterly non-controversial assertion and give you a chance to take a breath and think about it a bit more: if a “work around” a patent does not improve the prior art, the “work around” is not “promoting progress” in that art. It’s basic logic. If it helps you out, try accepting that fact that many “work arounds” involve practicing the prior art. Or would that also constitute “promoting progress” in the art according to you? Please enlighten.

              You are the one that thinks patents block rather than promote innovation.

              Nice try, Carnoc. Unfortunately your mind-reading skills are poor. I don’t believe any such thing.

              If patent A blocks innovation, then surely an alternative method helps to unblock progress.

              See counter-example above proving you wrong.

              the competition would lower the royalty demanded to use either invention.

              Completely beside the point of what we’re discussing.

              the disclosure of an alternative provides an additional basis for the next potential advancement.

              Or it just reiterates what was already known. Or it’s complete baloney.

              Seriously, Les: stop digging. We know that you love defending the worst patents out there and recoil at any effort or idea that might possibly affect your ability to exploit an already broken system but you’re holding an empty hand here.

              1. 11.3.1.1.1.1.1

                ” If it helps you out, try accepting that fact that many “work arounds” involve practicing the prior art.”

                I didn’t say all work arounds are patentable.

                I said, a workaround isn’t necessarily an improvement but, if it is new and not obvious, is patentable, and should be.

                Capice?

                1. Les: a workaround isn’t necessarily an improvement but, if it is new and not obvious, is patentable, and should be

                  Why? How is progress in a given art promoted by granting patents on “non-obvious” variations which fail to improve the art?

                  As you surely are aware, the number of such variations that can be easily dreamt up is rather enormous. Why “should” such variations be patentable, in your opinion?

                  Assume that the person you are trying to convince doesn’t throw a tiny party in his/her brain every time a patent is granted.

                2. 1. Do you accept that the patent system as a whole promotes progress of the useful arts?

                  – If not, then nothing I say about the subject work around patent will convince you.

                  – If you do, then the work around patent promotes progress, the same way the earlier patent does. By disclosing how to make a second kind of mouse trap, not better or worse than the first, but different.

                  In addition to this second disclosure, others are encouraged to invent and disclose third and fourth traps, lest they be blocked from making those as well.

                3. “How is progress in a given art promoted by granting patents on “non-obvious” variations which fail to improve the art?”

                  Because having those other variations out there improves robustness as they say in the art. Then, down the road, who knows, maybe the variation excels in a given situation where the other “better” product actually suxors. It happens.

                4. You just know that it is a bad day for Malcolm when even 6 can reach out and school him.

                  That’s funny.

          2. 11.3.1.1.2

            “Correct me if I’m wrong, but are you the same Les who used to comment here that “every patent creates a job”? Just curious. Maybe I’m confusing you with another defender of the lowest form of innovation.”

            I have no recollection of ever saying such a thing.

            1. 11.3.1.1.2.1

              Maybe it was “101 Expert” sockpuppet then.

              Suffice it to say: it was a common refrain among the defenders of the worst patents out there.

        2. 11.3.1.2

          Les, beauty may be personal, but I think improvement is not. Strangely, there are cases on point.

          1. 11.3.1.2.1

            Are there cases that hold that a claim is invalid/unpatentable because no improvement is involved?

            1. 11.3.1.2.1.1

              Are there cases that hold that a claim is invalid/unpatentable because no improvement is involved?

              Better than that, Fish Sticks.

              In the grown up arts there are cases that hold that a novel claim is invalid even when there *is* an improvement over the prior art but the improvement isn’t significant enough to overcome the prima facie obviousness case.

              There are lots of such cases, in fact. I suggest you read them.

              1. 11.3.1.2.1.1.1

                Please move the goalposts back, as I am sure that you are aware that there is a difference between what Les was saying and your “offer” of something for which a prima facie case of being obvious has already been established.

                Your dissembling here, centering on “not enough change to matter but still enough improvement” for an item for which it has been determined to BE obvious is just NOT the same case as one in which the determination of being obvious has not been made, and the debate being on improvement/lack thereof.

          2. 11.3.1.2.2

            “Les, beauty may be personal, but I think improvement is not.”

            Ned – A few decades ago, there was a guy in Atlanta (I assume it was in Atlanta) that beheld an “improvement.” The improvement came to be called “New Coke.” An angry nation did not see the improvement. Improvement is in the eye of the beholder. Case on point.

              1. 11.3.1.2.2.1.1

                Ned,

                To the contrary, Les’s point is that improvement is as idiosyncratic as taste, in direct opposition to your view at 11.3.1.2.

                Think about it for a moment.

                The art of real world engineering is all about trade-offs. The “pure-book” engineering on the other hand leads only to Gold-Plating everything.

                The moment you enter the real world and start making trade-offs is the moment in which you introduce the idiosyncracities.

                Now granted some of these will be purely functional while others will be purely aesthetic. But this does not lessen the point that the defintion of improvement becomes a personal one.

                The example that you refused to engage in concerning improvement and value can be brought to bear on this point as well: the famous battle between VHS and Beta.

                There, one became of ultimate value while the other had its value zeroed out. That happened expressly due to the idiosyncraties involved. Bottom line is that engineering is simply not constrained to the world of “books,” but must as a necessary and unavoidable aspect deal with idiosyncraties – of multiple different kinds, those of utility and those of non-utility, and there is nothing in the law that dives down to that level and segregates “improvement” based on the lower nature of the idiosyncratic driver.

                I can easily see how you might want to (mis)apply your faulty 101 sense of PON, and not take the engineering as a whole, and wish to make a judgement as to “improvement” only “counting” when the “improvement” itself can pass the patent laws, but there is NO legal basis in the US system for doing that.

      2. 11.3.2

        Ned,

        Define improvement.

        Is “new” strictly an improvement?

        Can something be “new,” and not be an improvement? In other words, is not the mere fact that an addition to knowledge alone that the “new” thing brings not an improvement?

        Likewise, can something be an improvement and not be “new?” If the thing itself is in fact not new, how can it be an improvement? It’s already “there,” so what is IT improving?

        1. 11.3.2.1

          Actually, anon, the case law seems to do quite well in defining improvement. Just look at the quotes from Norman and Curtis.

          As to new: Consider the New World. It was unknown to Columbus. He discovered it. But the New World is not new in 101 sense, even though it was not known.

          Improvement — something known, but made better. Advancement in the useful arts.

          From Norman — English: If the result produced is a new article, a better article, or a cheaper article to the public than that produced before, it may well become the subject of a patent.

          From Curtis — American: The term “improvement
          of the trade” was obviously used by the learned judge in
          the commercial sense, meaning the production of the article as
          good in quality at a cheaper rate, or better in quality at the same
          rate, or with both these consequences partially combined.· There
          are many cases where the materiality and novelty of the change
          can be judged of only by the effect on the result; and this effect is
          tested’ by the actual improvement in the process of producing the
          article, or in the article itself, introduced by the alleged invention.”

          1. 11.3.2.1.1

            Somehow pointing out that my questions are different and more nuanced than the offered definition is considered “offensive.”

            It’s getting bizzaro.

  11. 10

    From JP Norman, Treatise (English) (1853), Section 2,

    Statute 21 Jac. 1, cap. 3, sect. 1-6, declared grants of
    monopolies to be contrary to law, and enacted, that all mono·
    polies for the sole buying, selling, working, or using of anything
    should be void and of none effect, except” letters patent
    and grants of privilege for the term of fourteen years or under,
    for the sole working or making of any manner of new manufactures
    within this realm to the true and first inventor or
    inventors of such manufactures,”

    Section 6: “An exclusive privilege can only be justifiable as a
    reward to him who adds to the general stock of knowledge.”

    Chapter II : “THE manufacture must be· new, that is, the knowledge and
    right of using it not public property. It must differ specifically,
    and not merely in accidental circumstances, from existing and known manufactures.

    “1. A patent cannot be had for applying an old contrivance
    to a new object, as scissors to cut silk.

    10. “It is sufficient if the invention is a new combination of
    materials previously in use for the same purpose, as of new
    proportions of the materials used for charging blast-furnaces.
    If the result produced is a new article, a better article, or
    a cheaper article to the public than that produced before, it
    may well become the subject of a patent.”

    Curtis, (1854), “In this country, when the Constitution of the United States
    was framed, and the clause was inserted giving power to Congress
    ” to promote the progress of science and useful arts, by securing,
    for limited times, to authors and inventors, the exclusive right
    to their respective writings and discoveries,” the terms “inventtors” and “discoveries” had a well-understood meaning, founded
    not only upon the practice and law of England, but upon similiar practice of some of the States ‘before the adoption of the Constitution, which, by special grants in particular cases, often protected new and useful inventions.”

    Section 33: “Thus, if an alleged invention is absolutely frivolous and
    foolish, though it may have the element of novelty, in one sense,
    it is not the subject of a patent. So, too, mere colorable variations,
    or slight and unimportant changes, will not support a patent. … In such cases, if the consequences resulting from the change are unimportant, and the change’consists merely in the employment of an obvious substitute, the discovery
    and application of which could not have involved the exercise of
    the inventive faculty in any considerable degree, then the change
    is treated as merely a colorable variation, or a double use, and not
    as a substantive invention.”

    Section 35: “The term” improvement
    of the trade” was obviously used by the learned judge in
    the commercial sense, meaning the production of the article as
    good in quality at a cheaper rate, or better in quality at the same
    rate, or with both these consequences partially combined.· There
    are many cases where the materiality and novelty of the change
    can be judged of only by the effect on the result; and this effect is
    tested’ by the actual improvement in the process of producing the
    article, or in the article itself, introduced by the alleged invention.”

    1. 10.1

      Treatises are not the law, foreign treatises even more so (I have in the past discussed the Justice Story and a English anti-method bias) and I have in the past highlighted at least two different aspects of Curtis that are deficient in the law (for example, 35 USC 100 and the ability to patent a new process of using an old thing).

      Each of these things Ned contribute to your own bias and attempts to make the process statutory category a lesser than full category of its own right, as you would limit that category to be but a handmaiden of the hard goods categories. This is reflected also in your imperfect view of MoT.

  12. 9

    Patent applications that pass a 103 test yet have no commercial value to anyone issue all the time. E.g., just look at the patent abandonment rate for non-payment of maintenance fees. One reason is that very few employed scientists [not even to mention individual inventors] have any training or understanding of manufacturing or distribution costs or market potential for their inventions, especially in comparison to other alternatives. Yet they may have enough influence with their employer, and/or their employer desires filing more applications enough, that the applications get filed. [In my impression this is somewhat less of a problem with engineers, who tend to be working on actual product plans,]

      1. 9.1.1

        The post is fine here. The discussion is resolved by application of the “utility” test, which although requires a minimal showing, is nonetheless the law.

        1. 9.1.1.1

          Since “fine here” and “better there” are not mutually exclusive, I will grant you that the comment is fine here, if you grant me that it would be better there.

          Just like I said.

    1. 9.2

      Paul, the founders never intended to patent frivolous inventions, but new or improved … An improved … is not something that has no value.

      1. 9.2.1

        Ned: The success rate for VCs is fairly low for a reason – it is not easy to tell which products will become successful.

        Also as a process, filing patent (particularly under AIA – first to file) comes Before the inventor has chance to test the market, or even discuss with commercial experts. You are asking the inventors to file and disclose all their secrets upfront to the public – not after they are successful commercially.

        link to wsj.com

        1. 9.2.1.1

          And it costs a lot of money to make the “invention” valuable. Many will not fund the marketing, manufacturing, advertising, etc without the patent being issued to begin with. How do you know if something has “value” if it is not even been tried to be sold?

          1. 9.2.1.1.1

            How do you know if something has “value” if it is not even been tried to be sold?

            What sort of person spends the time and money to prepare and prosecute a patent application without bothering to consider the value of what he/she is trying to patent?

            Describe this person, please. Maybe start with a comparison between that person and the 99.99% of ordinary people in the US who don’t file patent applications.

            1. 9.2.1.1.1.1

              The point Malcolm was not about value per se, as your spin would indicate, but rather it was that there be no actual item necessary to be sold for the item to have value – the metric of “actual sales” being a false, or perhaps better put as “necessarily incomplete and untrustworthy to make policy from” metric.

              Your dissembling about “ordinary people in the US who don’t file patent applications” is a non sequitur here. The patent system is a purely voluntary system as I am sure that you are aware, and that system worked best when both the carrot and the stick were elements of the system (your past errors of posting insinuating that “independent creation” being a defense to infringement come to mind).

        2. 9.2.1.2

          S36a, it is assumed that non obvious inventions are at least improvements. But, in an appropriate case….

      2. 9.2.2

        Ned,

        Define frivolous.

        Then realize that something “improved” can in fact be of no value.

        1. 9.2.2.1

          Then take a (relatively short) journey to yesteryear when both VHS and Beta were vying as improvements for that media.

          As I recall, Beta was in fact the superior (better) improvement – but merely lost the marketing war. What value then is Beta?

          1. 9.2.2.1.1

            The Germans invented magnetic (tape?) recording. Betamax certainly was an improvement as it allowed the recording of video.

          1. 9.2.2.2.1

            Now aren’t you the one that is conflating utility?

            Tell me again why Congress put in 103, apart from 101, and why they choose “obviousness” instead of “invention.” Feel free to use the materials of Judge Rich, who helped write the actual law.

    2. 9.3

      There are many reasons to file a patent. One such reason is for defense. Your engineers might have come up with a good idea, but one that your company will not be implementing (but perhaps could be used to design around something you’re doing). So, you file and get a patent on a good idea, even though it’s commercially worthless to your company. The patent is itself good for your defensive strategy, though.

      1. 9.3.1

        Great post PatentBob, and one that I am certain goes right over the head of Malcolm.

        Of course the benefit of even this type of patent effort – meant to block “the progress” can be seen as providing the impetus for even greater innovation in the way of disruptive innovation (as the adage goes, Necessity is the Mother of Invention).

  13. 8

    Let’s all face it. The biggest problem is hindsight. Only those that have taken the time to understand it really understand it. (I’d note too that hindsight is discussed by some of the greatest scientist of how easy it is –mysteriously–to figure something out once someone else has.)

    Maybe a good paper on hindsight should be required reading at the Fed. Cir. and PTO. A list of some of the things that seem oh-so-obvious now, but weren’t at the time of the invention would be good.

    1. 8.1

      And an evaluation of obviousness without understanding hindsight is really not possible.

  14. 7

    Dennis: In certain instances, a company may want to make and sell that more expensive but lower quality product if – for instance – the better product is locked-up by a competitor’s patent. That partial substitute may still be competitive in an otherwise over-concentrated market. I argue that the invention of a lower-quality and higher-cost product can still represent the type of significant advance

    A “significant advance” over what? It’s not a “significant advance” over the art. At best, what you’re describing is an “advance” in the “art” of selling someone an inferior product. Awarding patents to “innovators” who make inferior but “different” products is probably the worst possible reason out there for granting a patent but certainly it’s completely at odds with the idea of “promoting progress in the useful arts.”

    Non-obvious means “more than merely different.” Your use of the term “significant” was appropriate and benign. Don’t fall into the trap of your critics and start evaluating obviousness from inside the fun-house mirror. The next thing you know we’ll be back to the days when people regularly came here and “argued” that junk claims were non-obvious because “otherwise someone would have described it already.”

    1. 7.1

      I would wager that the vast majority of people upset over Dennis’ comment, as a practical matter, roughly equate novelty with nonobviousness.

      That is, if they can find any difference between their claim and the references cited by the Examiner, they will argue tooth and nail for nonobviousness, regardless of common sense.

      I’m not even saying there’s anything wrong with that, you’re supposed to advocate for the client.

      But to freak out because Dennis supposedly is creating this giant hurdle in 103, just recognize that, as a practical matter, you’re trying to practically eliminate 103.

      1. 7.1.1

        I would wager that you are absolutely wrong Go – you are continuing to show a cry very very thin grasp of patent law, and the animus here of the distinction between 102 and 103.

        As a practical matter, I suggest that you understand that which you speak of – and more than the superficial level that you have been displaying.

      2. 7.1.2

        I would wager that the vast majority of people upset over Dennis’ comment, as a practical matter, roughly equate novelty with nonobviousness.

        This.

        And it’s a recurring theme here. As I noted elsewhere in the thread, there used to be steady stream of sockpuppets here who used to jump in every time some junky claim was being analyzed to defend it with the absurd “argument” that “if it was so obvious why didn’t someone already make or describe it.”

        Now you see sockpuppets trying to equate “improvement” with “flash of genius”.

        Nobody disputes that Congress got rid of a high hurdle used in the Federal Courts (“flash of genius”) when they passed the 1952 patent act. But they didn’t intend to replace that high hurdle with the basement floor or a tunnel.

      3. 7.1.3

        “I would wager that the vast majority of people upset over Dennis’ comment, as a practical matter, roughly equate novelty with nonobviousness.”

        Speaking for myself, not so. I’ve advised many clients that they’re not getting a patent because their claim(s) is(are) obvious.

        But the size of the “envelope” around the prior art defined by section 102 that section 103 is intended to define as unpatentable for obviousness is a subject of debate. Some believe the envelope is very small, some believe it is very large. But I don’t think anybody believes it is non-existent.

        1. 7.1.3.1

          AAA JJ,

          Well, that’s to your credit. I’ve literally never seen that happen. Let’s just say I think a lot people upset about the word “significant” haven’t had many of those conversations.

          1. 7.1.3.1.1

            I don’t know if it’s to my credit, it’s just my experience. I was an examiner for quite a while, worked in private practice for 13 years at four law firms and in-house since then, and have worked with quite a few patent attorneys. I can’t recall a single one who actually believed that novelty was the only requirement for patentability. I’ve seen colleagues give up on cases that I was sure I could successfully argue were non-obvious, and I’ve seen colleagues fight tooth and nail for claims that were in my opinion sure fire losers. The spectrum is pretty broad, even in the patent bar.

            My objection to D’s statement that non-obviousness requires a “significant advancement” is that such a declaration is just wrong. I understand it’s his opinion.

            1. 7.1.3.1.1.1

              AAA JJ My objection to D’s statement that non-obviousness requires a “significant advancement” is that such a declaration is just wrong.

              But you agree that “any advancement whatsoever” is insufficient evidence to prove non-obviousness at least when a prima facie case is made (which is not terribly difficult to do, particularly when we’re discussing the micromental innovations that are being filed upon habitually these days).

              Or not? Let us know.

              1. 7.1.3.1.1.1.1

                “But you agree that ‘any advancement whatsoever’ is insufficient evidence to prove non-obviousness at least when a prima facie case is made (which is not terribly difficult to do, particularly when we’re discussing the micromental innovations that are being filed upon habitually these days).”

                Not sure I understand your question, but I don’t think you can “prove” non-obviousness (which applicant is not required to do, but I’m sure you know that) by simply alleging that the claimed invention represents “any advance whatsoever.”

                Obviousness is a legal conclusion based on underlying factual determinations. Any error in the underlying factual determinations prevents a correct legal conclusion of obviousness. So when traversing obviousness rejections, I point out the errors in the examiner’s factual determinations. I do not, and have never, argued that the claimed invention is non-obviousness because it is a “significant advancement” or an “improvement.” Those aren’t requirements of non-obviousness and I don’t argue them as “proof” of non-obviousness.

                1. AAA JJ: I do not, and have never, argued that the claimed invention is non-obviousness because it is a “significant advancement” or an “improvement.”

                  You are so awesome, AAA JJ! Love the pedantry and focus on what you “don’t do” to procure your client’s awesome claims. We already know you are sooper dooper successful because you tell us so here all the time! We get it. Your mommy is proud of you. Congrats.

                  I don’t think you can “prove” non-obviousness … by simply alleging that the claimed invention represents “any advance whatsoever.”

                  Right. Some tiny advance over the prior art isn’t going to cut the mustard when you’ve got a prima facie case against you. So the question is: what sort of advance do you need to show?

                  Here’s one possible answer: a significant, practical advance commensurate with the scope of the claims.

                  Do you have words that you would prefer to use instead? Let’s hear them.

                2. “Love the pedantry and focus on what you ‘don’t do’ to procure your client’s awesome claims.”

                  What’s pedantic about it? The examiner has the burden. If the examiner doesn’t meet it, my client is entitled to the patent. That’s the law. If you don’t like the law, that’s not my problem. That’s your problem.

                  “We already know you are sooper dooper successful because you tell us so here all the time! We get it.”

                  I’m sure you do. And yes, I’m good. Actually, I’m great.

                  “Your mommy is proud of you.”

                  She is. Is there some point you’re trying to make with that comment?

                  “Congrats.”

                  Thanks. Doesn’t mean much coming from you, but, meh, I’ll take it.

                  “Right. Some tiny advance over the prior art isn’t going to cut the mustard when you’ve got a prima facie case against you. So the question is: what sort of advance do you need to show?”

                  You don’t need to “show” any “advance.” All you need to do is point out the errors in the examiner’s factual determinations or show secondary considerations that tip the weight of the evidence in your client’s favor. The fact that you don’t understand that is what makes me “sooper dooper successful” and you s#ck.

                3. BTW Dennis, is the bullsh!t posted above by Mooney the type of enlightened and civil debate you’re looking for on this site?

                  I predicted that the new leaf Mooney allegedly turned over the last time you made a call for more civility and substance would last a week. Looks like I overestimated by 6.9 days.

                4. BTW, let me once again answer your “So the question is: what sort of advance do you need to show?”

                  You don’t need to “show” any “advance.” It’s not a requirement for a determination of non-obviousness.

                5. What’s pedantic about it? The examiner has the burden.

                  What’s pedantic is that the issue isn’t about “who has the burden” during prosecution. The issue is the role that considerations of “improvement” over the prior art have in determining obviousness, period.

                  You don’t need to “show” any “advance.” All you need to do is … show secondary considerations…

                  Ah, yes, the secondary considerations:

                  1) The invention’s commercial success
                  — must have a nexus to the claim, i.e., must be related to an claimed improvement relative to the art

                  (2) Long felt but unresolved needs
                  — i.e., a long sought improvement

                  (3) The failure of others
                  — to improve upon the prior art

                  (4) Skepticism by experts
                  — that the improvement over the art was possible

                  (5) Praise by others
                  — of the improvement over the art represented by the claimed invention

                  (6) Teaching away by others
                  — teaching that the claimed improvement was not possible

                  (7) Recognition of a problem
                  — recogniation of a desired improvement over the art

                  (8) Copying of the invention by competitors
                  — copying because the invention is an improvement over the alternatives

                  And then there’s unexpected results, as I’ve already mentioned, where the case law is clear that the evidence must be more than evidence of “any improvement over the art whatsoever”.

                  I do not, and have never, argued that the claimed invention is non-obviousness because it is a “significant advancement” or an “improvement.”

                  By the way: does anybody believe this? I sure don’t. But AAA JJ won’t be sharing his prosecution histories with us anytime soon. That’s a real pity because we know there’s some wonderful fun to be had there.

                6. “Not sure I understand your question, but I don’t think you can “prove” non-obviousness ”

                  Submit evidence tending to sway the obviousness conclusion.

                7. “Any error in the underlying factual determinations prevents a correct legal conclusion of obviousness.”

                  Gonna have to disagree with you there sparky. An error in the underlying factual determinations CAN prevent a correct legal conclusion of obviousness. But there’s thousands of de minimus factual determinations that don’t affect rejections issuing from this office all the time. This is why the office goes with the “thrust of the rejection” standard for finality.

                8. Editing out comments on what is plainly there by appearance won’t change those appearances.

                  In fact, such censorship only creates MORE appearance that something is off-kilter.

                  (More self-induced pain)

                9. “An error in the underlying factual determinations CAN prevent a correct legal conclusion of obviousness.”

                  No, an error in any underlying factual determination DOES prevent a correct legal conclusion. If the examiner incorrectly concludes that all of the claimed features are in the scope and content of the prior art pertinent to the subject matter sought to be patented, can the legal conclusion of obviousness be correct? If the examiner makes an error in determining that there existed a reason to modify/combine the prior art, can the legal conclusion of obviousness be correct? If the examiner incorrectly concludes that one of ordinary skill in the art had a reasonable expectation of success in modifying/combining the prior art to arrive at the claimed invention, can the legal conclusion of obviousness be correct?

                  “But there’s thousands of de minimus factual determinations that don’t affect rejections issuing from this office all the time.”

                  Really? Name one. Just one.

                  “This is why the office goes with the ‘thrust of the rejection’ standard for finality.”

                  The Office’s “standard for finality” has nothing to do with the examiner’s ultimate burden on patentability. And you know that.

                10. “1) The invention’s commercial success
                  — must have a nexus to the claim, i.e., must be related to an claimed improvement relative to the art”

                  You got a case cite for that? I doubt it.

                  And with the exception of unexpected results (I’ll throw you a bone on that one), do you have any case cites on any of the secondary considerations requiring a “significant advance” or even an “improvement.”

                  Let us know.

                11. “If the examiner incorrectly concludes that all of the claimed features are in the scope and content of the prior art pertinent to the subject matter sought to be patented, can the legal conclusion of obviousness be correct?”

                  You didn’t say that the examiner “incorrectly concludes that all of the claimed features are in the scope and content of the prior art”. Of course if he “incorrectly concludes” that then there is error. That doesn’t affect what I said though. Often they’ll make some little mistake in finding this or that fact (or more often in drafting the OA), but indeed the fact is present in the reference anyway.

                  “If the examiner makes an error in determining that there existed a reason to modify/combine the prior art, can the legal conclusion of obviousness be correct?”

                  That’s a big ol if.

                  “Really? Name one. Just one.”

                  Hmmm, seems like we saw one on here just the other day, but I forget what thread. However, the one that stands out in my mind is that a friend of mine one time found that a part that was silver was not necessarily reflective or some such property and thus made a 103. That was factually incorrect as a silver piece of the type he was using would have in fact been inherently reflective (which he recognized later). He made a mistake on the facts. Still, he substituted in a piece that was noted to be reflective and that he had motivation to combine in. His conclusion of obviousness was never the less correct, though he should have done a 102 also in that case.

                  But they happen the other way occasionally as well like where the examiner finds x is present in a reference, cites to the wrong paragraph, but x was in fact present in the reference. His factual finding that x was in that wrong paragraph was factually mistaken (because it wasn’t a typo in that case, he actually thought the reference was disclosing x in that paragraph). Even so, that same embodiment did in fact disclose x a ways down anyway. Same reference. Arguably same thrust. Arguably not the same thrust though in that case also (I’d probably just give them a new non-f if I sent a second action).

                12. “The Office’s “standard for finality” has nothing to do with the examiner’s ultimate burden on patentability. And you know that.”

                  I wish. The office’s standard for finality is the way it is precisely because of the “ultimate burden on patentability”.

              2. 7.1.3.1.1.1.2

                “by simply alleging that the claimed invention represents “any advance whatsoever.””

                Nm my last comment, I missed the last half of this long sentence.

        2. 7.1.3.2

          AAA JJ I don’t think anybody believes it is non-existent.

          You’re wrong about that. At least, you’re wrong to assume that some people are capable of understanding the difference.

          We know that for a fact because of the comments that those people make and have made here.

          1. 7.1.3.2.2

            Your cynicism regarding the patent bar is well documented. Thankfully I don’t share it.

            1. 7.1.3.2.2.1

              AAA JJ Your cynicism regarding the patent bar is well documented.

              The “cynicism” you refer to is just the acknowledgement of the views that are posted here freely by others, AAA JJ.

              Go search through the archives and you’ll see umpteen examples of commenters here stating in no uncertain terms that they believe a claim is non-obvious because “otherwise it would have been made/described already.” If that’s not a quintessential example of someone confusing anticipation and obviousness, I don’t know what is.

              And then we’ve got folks stating their beliefs that judges who use the term “monopoly” in a patent case should be impeached. And folks who compare critics of the patent system to “rapers and killers”.

              All that’s just the tip of the iceberg, of course, because that’s just the stuff that folks are willing to put out there in public when they know everybody is reading what they write.

              I’m part of your “patent bar”. I’ve worked for years litigating patents and prosecuting patents and counseling patentees and wannabe patentees. I’m not making stuff up. I don’t have to.

              1. 7.1.3.2.2.1.1

                I don’t consider the anonymous hyperbole posted here, granted a lot of it being over the top ridiculous, with the actual views of the vast majority of the patent bar. Many here, you especially, are pushing their agendas. The vitriol you use in attacking anybody who advances any position, no matter how calmly and reasonably expressed, that is contrary to your beliefs is as equally offensive as those you continually rail against. I have no doubt that you know that too.

                1. AAA JJ I don’t consider the anonymous hyperbole posted here, granted a lot of it being over the top ridiculous, with the actual views of the vast majority of the patent bar.

                  How about the anonymous and non-anonymous hyperbole posted all around the Internet at places like IPWD? Are those representative of “actual views” of the “vast majority” of the patent bar?

                  Many here, you especially, are pushing their agendas.

                  LOL. Thank goodness you aren’t pushing an agenda, AAA JJ! Other than that “impeaching judges who use the term monopoly in their patent decisions” thing. I guess that doesn’t count, right? Tell everyone why, AAA JJ.

                  The vitriol you use in attacking anybody who advances any position, no matter how calmly and reasonably expressed

                  And yet somehow I never suggested anything remotely as extreme as impeaching a judge who used the term “monopoly” in a patent case.

                  That was you. I haven’t forgotten, AAA JJ, because you never apologized for it. Go ahead and apologize for it, admit that you made a huge mistake, and maybe we can move on.

                2. And by the way: I don’t consider the anonymous hyperbole posted here, granted a lot of it being over the top ridiculous, with the actual views of the vast majority of the patent bar.

                  Nobody argued otherwise. The statement that YOU made was “I don’t think anybody believes [obviousness] is non-existent.”

                  You want to walk that back? “Ridiculous” people who either believe that or behave as if they do certainly do exist and they do comment here. And you know what else? You don’t seem to bothered by those ridiculous people. You certainly don’t feel compelled to correct them.

                  Go figure.

                3. It appears my original response to your nonsense was moderated out of existence by Dennis, so I’ll repost without whatever taboo words got it caught up in his filter.

                  “That was you. I haven’t forgotten, AAA JJ, because you never apologized for it. Go ahead and apologize for it, admit that you made a huge mistake, and maybe we can move on.”

                  Still on that? Interesting.

                  I’m as inclined to apologize for whatever it is you think I said about as much as you’re inclined to apologize for calling me on numerous occasions a l0w life bottom feeding gr!fter and fl#ffer.

                  And even if I were inclined, which I’m not, it’s not you I would apologize to. Unless you’re one of those legally uninformed judges who doesn’t know the difference between a patent and a monopoly. You aren’t, are you? Well, anyway, in the extremely unlikely event that you are, I’m truly, deeply, and sincerely sorry that you’re so uninformed.

                  Happy? Are your preciously fragile little feelings all better now?

                4. I’m as inclined to apologize for whatever it is you think I said

                  Excuse me, AAA JJ? You are denying jumping on that li’l impeachment bandwagon? Let me know if you are denying that.

                  Still on that?

                  Helpful hint, AAA JJ: you come after me with some silly “you have an agenda” baloney then you should be prepared to “dish it in”. I didn’t bring the subject of “agenda” and “hyperbole” up — you did. You did it in defense of “ridiculous” patent worshipping commenters here who’s “ridiculous” statements about obviousness somehow don’t seem to bother you. You seem to wish to pretend that those ridiculous commenters don’t exist.

                  Go figure.

              2. 7.1.3.2.2.1.2

                “I’m part of your ‘patent bar’. I’ve worked for years litigating patents and prosecuting patents and counseling patentees and wannabe patentees.”

                You’re sooper dooper awesome! I’m sure your mommy is real proud!

                BTW, is anybody buying this from Examiner Mooney? Please feel free to post the numbers of some of these patents that you’ve prosecuted and litigated so that we can all get a laugh.

                This is fun.

                1. Please feel free to post the numbers of some of these patents that you’ve prosecuted and litigated so that we can all get a laugh.

                  Maybe you should try a bit less hard to overcompensate for your shortcomings, AAA JJ.

                  Nobody is impressed.

                2. “Maybe you should try a bit less hard to overcompensate for your shortcomings, AAA JJ.

                  Nobody is impressed.”

                  Helpful hint: It’s as equally unimpressive when you do it.

                3. as equally unimpressive when you do it.

                  That is such a common instance over the course of nine years that there is an acronym for that.

      4. 7.1.4

        I did not read his original comment, so I have no idea why people were upset.

        However, the idea that a patentable invention requires a “significant advance beyond” is exactly what the 1952 act intended to do away with. Now this all may be a matter of semantics.

        1. 7.1.4.1

          Lionel: the idea that a patentable invention requires a “significant advance beyond” is exactly what the 1952 act intended to do away with.

          Where did you come up with this conclusory statement, Lionel?

            1. 7.1.4.1.1.1

              Thanks Lionel.

              That’s already on the table (because I put it there).

              Malcolm just cannot get out of his own way and his fixation on ad hominem.

            2. 7.1.4.1.1.2

              The legislative history.

              Please show everybody the part of the “legislative history” where anybody in Congress said that “we are doing away with the notion that a patent requires some significant advance by the inventor.”

              I’d love to see exactly what you’re referring to. I strongly suspect, however, that you don’t know what you’re talking about.

    2. 7.2

      Regardless of what the founding fathers intended for the last century or so, and certainly since 1952, if it was new and nonobvious and was in a useful – i.e., technological – art, it was patentable.

      Evaluating what technology is better opens a whole can of worms that should not be dealt with as the usefulness may depend upon the eye of the beholder.

    3. 7.3

      “At best, what you’re describing is an “advance” in the “art” of selling someone an inferior product.”

      Not necessarily. Sometimes the suckier/more costly etc. embodiments can in fact be what turns out to be a longer lived product than the better/cheaper embodiment that someone else came up with first. And then it can itself become the basis for more innovation in the art in the future. If you ever want a good irl area where this happens look to oilfield services. They use all kinds of ollllllld stuff that was shity even back then. But they continue to build on that old stuff none the less.

      1. 7.3.1

        6 They use all kinds of ollllllld stuff that was s— even back then.

        Yes, but using old stuff isn’t an “advance” over the prior art — that’s my point.

        they continue to build on that old stuff none the less.

        Of course they do. But that has nothing to do with granting patents on new variations that are worse in every patentable respect than those in the prior art but, for whatever reason, remain commercially viable. That’s the subject matter we’re discussing, i.e., the patenting of “lower quality” or unimproved products/services.

        Seems to me that granting patents on the improved products/services is all we need to do (and more!) to encourage the continued availability of unimproved products/services. Those unimproved products/services are the products/services that people will inevitably resort to when they can’t afford a license or they can’t afford the higher priced product or when they don’t need those higher quality products. Patents, on the other hand, are awarded for improved products, i.e., products which represent progress in the useful arts.

        1. 7.3.1.1

          Yes, but using old stuff isn’t an “advance” over the prior art

          I’m pretty sure all those using those old things called electrons, protons, and neutrons are going to disagree with you.

          1. 7.3.1.1.1

            anon, I think it would not be an improvement if the thing caused actual harm. Thing the flight control system that caused stalls.

            Imagine you are in court defending against a patent and you asked your expert whether the flight control system disclosed in the specification worked. Imagine he testified that if one followed the specification, every plane using the system would crash.

            Imagine a pain killer patent. Your expert testifies that people taking the pain killer would become addicted, suffer massive brain damage and predictably go psycho.

            These “inventions” might have utility. They might be non obvious. But are they truly valid under 101?

            1. 7.3.1.1.1.2

              Ned,

              You over- and under- speak at the same time, missing in multiple dimensions.

              Weapon improvements for example are meant to cause actual harm.

              Failing to meet a purpose (your strawman of flight control system) is just not the same as doing something to a lesser degree.

              Come man – the real life engineer in you should readily grasp the notion of trade-offs and realize that in some instances, less is more.

              And the notion of the well respected Washington football team and the swarm of asisine political correctness which is all about the political and nothing about the correct is simply inapposite to the discussion here.

              What next? Change the state name of Oklahoma?

        2. 7.3.1.2

          granting patents on new variations that are worse in every patentable respect

          Worse in every patentable respect? What does that mean? Where did that goalpost get moved from?

        3. 7.3.1.3

          “are worse in every patentable respect than those in the prior art but, for whatever reason, remain commercially viable.”

          Sure it does. Trust me, all that old cr ap they’re using day in and day out is ancient compared to the state of the art. And they continue to build on the old stuff, all the time, instead of getting with the new stuff. All that stuff they build on that old cr ap is worse than the new stuff, but it’s all still patentable if they want.

          “Seems to me that granting patents on the improved products/services is all we need to do (and more!) to encourage the continued availability of unimproved products/services. ”

          Maybe, but the disclosure in the art will be anemic. And that’s SUPPOSEDLY what the f the whole entitlement program is for.

    4. 7.4

      MM, the obviousness inquiry does not necessarily included any requirement that there be an “improvement.”

      101, does however impose this requirement.

  15. 6

    The strange thing about this obviousness or “significant advance” is that the courts seem to gravitate towards large advances and the PTO towards smaller advances. The flash of genius from the SCOTUS illustrates that the SCOTUS gravitates towards huge advances that occur very seldom. Those of us that actually practice patent law know that is an unworkable framework.

    I argue that the size of the advancement of what is non-obvious should come from the people of ordinary skill in the art and not judges. Judges should realize how limited their understanding of technology and innovation is and be far more deferential.

    I think many of us see engineers compete to come up with patent application worthy inventions in large corporations. We see the motivation that patents provide in the trenches. We also see how patent provide a very open exchange of information and the ability of inventors to move freely from job to job.

    What I think is the judiciary should take a significant step back and consider whether they have the skills to be opining on patents. From what I’ve read from them, their views are right out of Disney movie on inventors where a single person makes a massive leap forward in a night of thinking and a song of work.

    Maybe it is time for the judiciary and Congress to take a significant step backwards and spend some time really understanding the system before taking any more steps.

    1. 6.1

      Night, in the PTO and in court, an advance is all but presumed. But it still remains open, I think, to challenge a patent that on the basis that it does not disclose an “improvement.’

  16. 5

    “We have a real problem if the system does in-fact offer patents without any invention or any advance.”

    No worries. Our patent law clearly requires an invention.

    However, no requirement that it be “flash of genius”, “pioneering” or “a significant advancement”.

    What’s “worse” or “better” is sometimes too subjective. Most patents never commercialized and many maintenance fees not paid.

    We’ve had “significant” independent patent reforms from the Court and Congress. I’d recommend treading very carefully going forward.

    We needed some reforms, but the pendulum can swing too far the wrong way.

    1. 5.1

      However, no requirement that it be “flash of genius”, “pioneering” or “a significant advancement”.

      There’s a big differernce between a “flash of genius” and a “significant advancement.”

      Non-obvious means more than “merely different.”

      Dennis has it right. You guys are just proving how desperate you are.

      Again.

      1. 5.1.1

        I just want to make it clear that I am not amongst those critical of Dennis for his using the words “significant advance”. That word formulation is OK with me.

        Paul Cole summarises patentability in other words, namely as “A difference that makes a difference”.

        You will instantly appreciate that Paul’s “difference” is what confers novelty, and his difference which the difference makes is what counts for non-obviousness.

        If you haven’t captured in your claim the essence of a difference that makes a difference, you’re gonna go down, sooner or later, under 103.

        1. 5.1.1.1

          and his difference which the difference makes is what counts for non-obviousness

          Skirts the issues under discussion here by more than just a little bit.

          Consider, that at the time of filing, exactly what else is 103 prior art is gen er ally not known, and that “the difference that makes a difference” cannot be known a priori, because in truth innovation is NOT a matter of straight line predictability.

          Parking lot, not streets, MaxDrei.

          1. 5.1.1.1.1

            at the time of filing, exactly what else is 103 prior art is gen er ally not known

            While every piece of art in the universe might not be “known”, the closest art is almost always known because the alleged innovator is improving on that art.

            Parking lot, not streets, MaxDrei.

            Oh lookie — another meaningless slogan that “anon” is going to be shouting at everyone for the next five years. File next to “big box of protons” and “look at the stars.”

            1. 5.1.1.1.1.1

              It is not meaningless.

              Unclench those eyes. Stop trying so hard to first disparage and instead try to think.

              closest art is almost always known

              Absolutely not per Prof. Crouch’s own posts on the art used by examiners typically NOT being the art known and supplied by applicants.

              But why let another fact get in the way of your rants?

              1. 5.1.1.1.1.1.1

                “anon” per Prof. Crouch’s own posts

                I’m happy to debate Dennis any time over the question as to whether “the closest art is almost always known because the alleged innovator is improving on that art.”

                In any event, it’s you who is ranting away here with your “innovation is not a straight line” baloney. 103 exists for a reason. If your “innovation is not a straight line” baloney was some bedrock principle undergiriding our patent system, we’d be far better off without obviousness, wouldn’t we? Of course, I’m sure just my asking the question made you a little hot and blushed.

                1. It was not a debate by Prof. Crouch, but objective data he showed.

                  As to what I share about innovation, that is not “baloney.”

                  So, there you go, two more completely wrong statements.

                  As to being better off without obviousness, I have no clue where you dredged up that strawman, or how it relates to anything I have said, but we can pretend that that is not more flailing about by you if you want (as long as you do realize that such is in fact pretending).

      2. 5.1.2

        Tell me again how islated DNA sequences (and not the isolation process itself) is a significant advancement?

        1. 5.1.2.1

          Tell me again how islated DNA sequences (and not the isolation process itself) is a significant advancement?

          Again? I don’t remember stating that “isolated DNA sequences” were a “significant advancement” over the prior art.

          I do remember making arguments to the contrary. And I certainly remember making more specific arguments that many (most?) of Myriad’s compositions claims were obvious junk, if not anticipated junk.

          I’m shocked — shocked! — that those arguments went right over your super sophisticated head, Les.

  17. 4

    Dennis. I was shocked you wrote this in the first place. Fortunately you are now corrected by some practitioners. Please be more careful. Your “significant advance” requirement is far off the mark and frankly an inexcusable error for a law professor.

    1. 4.1

      “We have a real problem if the system does in-fact offer patents without any invention or any advance. Fortunately, the obviousness test is designed to prevent that from happening. Now, we just have to make sure that the test is applied in a way that lives up to our hopes.”

      How smug. And again wrong.

      1. 4.1.2

        Why do I say “wrong”?

        Because “obviousness” is not a test of “utility”.

        Duh.

        1. 4.1.2.1

          Why do I say “wrong”? Because “obviousness” is not a test of “utility”.

          The term “utility” doesn’t appear in the passage you quoted.

    2. 4.2

      RB: Frankly an inexcusable error for a law professor.

      So what happens next? Does Missouri need to open some sort of an investigation?

  18. 3

    I would add that that Constitutional provision cannot be read in the non-legal view of “promoting the progress” must be an advance in the state of the art in a oft-thought linear (or non-linear) better item.

    The “promote” term includes the advertising sense of promotion, or merely that of “captured in publication.”

    I have used the analogy of comparing the “aesthetic” of paving a well ordered system of streets and the “non-aesthetic” paving of a mundane parking lot.

    It is the parking lot view that prevails – that must prevail.

    This is due to the nature of innovation itself, which is NOT a linear process.

    We simply do not – and cannot – know a priori which “advance” of today will be the shoulders upon which tomorrow’s advance will stand.

    As to the notion of “better,” Prof. Crouch is exactly correct in that often disruptive innovation will in fact under perform the more incremental “traditional” innovation (see Schumpeter and Christensen).

    What we really need to be on guard against is the advocacy based on philosophies against certain types of innovation that actively obfuscate these points.

    1. 3.1

      We simply do not – and cannot – know a priori which “advance” of today will be the shoulders upon which tomorrow’s advance will stand.

      That’s nice.

      It doesn’t change the fact that the intent of the patent system is to “promote progress in the useful arts”, not to “promote diversity in the useful arts.”

      What we really need to be on guard against is the advocacy based on philosophies against certain types of innovation that actively obfuscate these points.

      We need to be on guard against people like you who fought like bulldogs against not just KSR but also against restrictions on protecting mental processes with patents, and who do so while pretending to be “philosophically” more pure than their critics.

      1. 3.1.1

        Your lack of understanding of the history of the term “promotion” is matched by your hubris, as well as your (continued) mischaracterizations of my positions on KSR and TOTALLY mental processes.

        Please stop flailing and ground yourself in knowledge, not your touchy-feely “wants.”

        1. 3.1.1.1

          Your lack of understanding of the history of the term “promotion”

          I am trying desperately not to laugh here. “Promotion” isn’t the key term here, Sherlock.

          your (continued) mischaracterizations of my positions …on TOTALLY mental processes.

          What’s your position on totally mental processes? What’s your position on claims that recite a non-mental step like ingesting a drug (caffeine, for example) followed by a non-obvious mental process?

          I look forward to your answer.

          1. 3.1.1.1.1

            The game of constant questions while ig noring answers already on the table.

            No thank you to the brier patch. Time for answers from you properly integrating the points already made.

            1. 3.1.1.1.1.1

              Excuse me, “anon”, but if you insist on whining that your positions are being “mischaracterized” (when they aren’t) then you should put on your big boy patents and state what your positions are.

              Of course, if they are embarassing or indefensible positions then it’s easy to understand why you whine and then run away.

              Pretty funny to know that stating your position on totally mental processes is a “briar patch” for you. You should work on that. Most of us don’t have your special problems.

              1. 3.1.1.1.1.1.1

                Excuse yourself Malcolm as such is NOT permission for you to mischaractize and then demand anything.

                Stop the spin.

                Let’s see you first come to grips with the points of this discussion before you engage in your dust-kicking and goalpost moving.

                Stay focused.

                1. such is NOT permission

                  I don’t need your permission do say anthing, “anon.”

                  Just state your position on totally mental processes and your position on claims that recite a non-mental step like ingesting a drug (caffeine, for example) followed by a non-obvious mental process. Stop being a whining crybaby.

                2. It’s always delicious irony whenever the site’s biggest crybaby and perpetual whiner about “grifters” and such talks all “grown up” and asks others to stop crying (and then gets “editorial help in the one-way street application of some invisible “rules”)…

                  Accuse Others Of That Which Malcolm Does

                3. ^^^ I have to chuckle at how the application of unwritten “rules” mirrors the title of this thread:

                  Different, Not Better.

                  One set of rules – applied evenly to all….

  19. 2

    How do you square this with 101’s section “discovers…any new and useful improvement”?

    For instance, one of our inventors has discovered a problem with a current system. He then determined how to fix that problem. Is his fix a “significant improvement” over what came before? It’s definitely an improvement, but the word “significant” is fraught with non-specificity. What’s “significant” to one person is not “significant” to another.

    Moreover, this requirement of a “significant improvement” is problematic in an engineering sense. Many improvements are improvements relative to one area but may be detriments relative to another area. Take LED light bulbs. They have the benefits of lower power usage for the same brightness as an incandescent bulb, but they have to be formed to look like an incandescent bulb, something has to be done to remove the heat from the LEDs themselves, and there are a host of other issues.

    It is rare that any improvement is a “significant improvement” at least in a global sense. All improvements pretty much have detriments too.

    And this can be applied to anything. Drugs, for instance, might improve some disease but cause side effects or even other diseases (eg, statins are associated with higher instances of diabetes). How does one gauge “significant improvement” in these cases?

    1. 2.1

      PatentBob, there must be an improvement … in efficiency, quality, or something. It may not be for all purposes, but it must be there. See Curtis and Norman which I quote.

  20. 1

    Dennis, why complicate things by invoking “better” or “worse”. To find an alternative to the established product or process, no better or worse but just as good, could in itself be a brilliant invention, not at all obvious, and steamingly useful.

    That said, Paul Cole would I am sure endorse your thinking, that “different and better” is the most powerful justification for grant.

    At the EPO, “mere alternative” is often the precursor to a slow death under the Problem and Solution exploration of obviousness. But by no means always.

      1. 1.1.1

        OK. But we should keep in mind how much our “Progress” is achieved by the plethora of “incremental” steps which established manufacturers make, to keep their noses in front.

        Often, the tinier the increment, the more attractive it is to the competitors, and so the more important it is to get on it a patent that is not vulnerable to a validity attack.

        Very often it is, paradoxically, the patents on the smallest tweaks which do the most to Promote the steadily ongoing Progress of Useful Arts.

        1. 1.1.1.1

          Actually (and not so unsurprisingly), MaxDrei, the opposite is true.

          It is the disruptive innovations rather than the incremental ones that most advance the progress of the Useful Arts.

          I think your attempt to want to focus on “steadily ongoing” is entirely inappropriate.

          1. 1.1.1.1.1

            It is the disruptive innovations rather than the incremental ones that most advance the progress of the Useful Arts.

            This is meaningless baloney that the More Patents All the Time crowd never tires of reciting.

            Define “disruptive”. Define “incremental”. How do you measure the “advancement in progress”?

            1. 1.1.1.1.1.1

              Asked and answered – inform yourself with the basics of the innovation literature.
              (Yes, go to the authorities for what the authorities have to say)

          2. 1.1.1.1.2

            Or is it that inventions that advance the most, disrupt? It’s just definitional, just as “innovations” are inventions that actually advance.

            Max’s point is similar to Judge Rich on “enrichment” and not confining “ourselves to thinking about invention on a grand scale”.

      2. 1.1.3

        Improvement may be useful in establishing non-obviousness, but neither improvement nor significant advancement is the test. The law most certainly does not require a significant advance. But loose language in a blog is not big deal.
        “The idea here is to promote the progress” seems correct, and that is the goal of the patent clause. That can be accomplished by giving patents to new and non-obvious inventions without regard to whether each invention constitutes a significant advance. The patent office grants patents, and the founders assumed that that would advance the useful arts (your recent guest posts seem to be arguing about this assumption). The advancement of the useful arts is promoted by the act of granting patents, and Congress dictates the terms, which to date do not require a significant advance.

        1. 1.1.3.1

          Whether something is an improvement or not is not an requirement of 103.

          But 101 does require either “new” or “improved.” If one could demonstrate that the claimed invention was worse, on the whole, than prior examples, I think a validity challenge could be made.

          Think drugs. A new painkiller is patented that is not as effective as prior pain killers, has significant side effects, and is vastly more costly to produce. If the FDA did not act, I think the a patent on such a drug might be stricken from the roles as contrary to public interest.

          What about a flight control system that caused planes to stall?

          And the beat goes on.

          1. 1.1.3.1.1

            §101 allows patents for two categories: new and useful things, and new and useful improvements. New and useful fits the bill, even if it’s a diminishment rather that an improvement. So, proving that it’s not an improvement is not a threat to validity, and might even enhance non-obviousness.
            Your new painkiller would be new, and if it kills pain, useful. §101 is satisfied, even if its terrible compared to aspirin.

            Yes, 103 does not suggest that improvement is a requirement for non-obviousness, but every patent attorney has argued that what he is trying to claim is better than the prior art.

            1. 1.1.3.1.1.1

              Davey, I agree that whether something is “new” or “improved” or “useful” is not a consideration for 102/103 purposes.

              However, they are considerations for 101 purposes.

              Newness and improvements – what are the differences if any? However there is the overall constitutional requirement that there be an advance in order to justify exclusive rights. The statute should be construed accordingly.

              The issue hardly ever comes up course because virtually everybody assumes that if an alleged invention is not obvious it must be an improvement. But what about training a cat? Of course this is useful in a sense, but is it an improvement on anything otherwise patentable as in a improve machine, improved manufacture, improved composition? We don’t even have to get into the Constitution talk about whether training a cat is an improvement.

              The early cases all required improvements to be in one of these.

              1. 1.1.3.1.1.1.1

                You are doing that denigrating the statutory category of process to be merely a subset of the hard goods categories again…

          2. 1.1.3.1.2

            When did 35 USC 101 get change to add this “on the whole” notion of improvement? Does this mean that any patent that is an improvement in one area but not an improvement “on the whole” to some (any?) particular person now fails 101?

            Something is “goes on”…

              1. 1.1.3.1.2.1.1

                Ned,

                Your comment smacks only of being anti-Rich, as 101 was a properconsideration in the Rich era for the purpose that Rich helped Congress write it:

                1) utility of the proper type in the Useful Arts

                2) fit into one of the broadly – and equal – categories.

                It is only under the mashing of wax nose Supreme Court meddling that 101 has turned into a nightmare of vague and capricious philosophically driven ends no matter the means activism.

                1. Rich held in at least one case (I can’t remember the name) that 101’s newness meant 102 novelty.

                  He is and was plainly wrong and his position has been overrule by Myriad.

                  Rich never discussed the meaning of “improvement” in the statute. However, given his reading of “new” I would hear him say that its work was now done by 103.

                  Plainly Rich tried to rewrite 101 to remove “new” and “improved” from 101 and to accord them no weight.

                2. Plainly Ned you have ig nored my post directly above, as well as have NOT answered my questions up at the “12” sun thread.

                  Let me make this convenient for you:

                  What are the parameters of this 101 newness test that Congress wrote?

                  How are these parameters different than the newness tests in 102/103?

                  If Congress did not WRITE parameters, why is it that you think the judicial branch has authority to WRITE parameters?

                3. anon, I have explained this is detail to you multiple times. I give the example of the New World which is an example given by Curtis, I believe. Unknown, but not “new.”

                  Similarly, a gene, not known, but also not new.

                  1793: “New” was added with “composition,” but not “known or used” was retained.

    1. 1.2

      A new alternative process may not be an improvement to the old process it is based on, but it can still be an improvement in the useful arts, because it broadens society’s ability to reach the objectives of those processes and perhaps improve on them in the future in new ways that would otherwise not have been possible.

      When I read Dennis’s post previously, I also had a kneejerk reaction to that sentence. But when I thought about it more, it occurred to me that what he might really be saying is that, by definition, an advance in the art that is insignificant must necessarily be obvious. And I think this is true, if you are talking about the impact of an invention on the art as a whole, rather than just talking about some particular limitation in a claim and how it improves the limitations surrounding it, for which the test for obviousness is more legal than philosophical, following Graham v. Deere and KSR.

      1. 1.2.1

        because it broadens society’s ability to reach the objectives

        Absolutely correct Apotu,

        Being able to turn quickly at any point is like the parking lot, as opposed to the street.

        Parking lots are just not as pretty as streets…

      2. 1.2.2

        Still, APoTU, the English, who were more affected by trade patents that we, were chary of granting patents that were not true improvements in practical knowledge.

        American cases were consistent — before we really figured out obviousness.

        Thus, early on, an invention had to be both novel and an improvement. That was the essential inquiry.

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