Belden v. Berk-Tek (Fed. Cir. 2015) on appeal from IPR2013-00057 (Patent Trial & Appeal Board) .
In an inter partes review appeal, the Federal Circuit has sided with the patent challenger – finding that the PTAB had erred by upholding the patentability of two of Belden’s claims. This case is important largely for its result. The case is also one to be studied for some attempt to tease out the Federal Circuit’s purported legal analysis.
In the IPR of U.S. Patent No. 6,074,503, the PTAB cancelled claims 1-4 as obvious over a combination of prior art references but upheld claims 5-6. In this process, the Federal Circuit must give substantial deference to PTAB factual findings (such as the factual underpinnings of the obviousness analysis) but reviews questions of law (such as the ultimate determination of obviousness) de novo on appeal. Thus, all other things being equal, it is a much less daunting process to base your appeal on an issue of law rather than upon a factual dispute.
In reversing the PTAB’s decision upholding claims 5-6, the Federal Circuit wrote that the Board’s “contrary finding rests on legal errors.” However, the analysis in the analysis that followed, the court appeared to point out a series of incorrect factual conclusions and perhaps suggests that ‘motivation to combine’ should truly be considered a question of law rather than of fact.
There is no meaningful dispute here, and the Board did not deny, that the two pieces of prior art in combination teach or suggest the methods of claims 5 and 6. The dispute concerns motivation to combine. The Petition and the Institution Decision reveal the two related ways in which that issue was presented and considered: whether a skilled artisan would substitute the twisted pairs of CA ’046 into the method of JP ’910; alternatively, whether a skilled artisan making the cable of CA ’046 would look to the JP ’910 method to make it. The brief discussion in the Petition suggests both views of the matter. …
As the Board found, it is “undisputed that CA ’046 discloses ‘a helically twisted cable.’” There is no dispute that the twisted pairs in CA ’046 need to fit into the notches of (i.e., be aligned with) the separator, as shown in the two figures from CA ’046 reproduced above, for the resulting cable to be made. And the Board correctly recognized in its discussion of claims 1 and 2 that JP ’910 clearly teaches the importance of aligning conductors with a separator (core), and suggests doing so with a die to prevent twisting of the separator, before they are all bunched together for twisting in a stranding device. That evidence points clearly toward a motivation of a skilled artisan to arrive at the methods of claims 5 and 6 based on JP ’910 and CA ’046, as the Board reasoned in its preliminary determination in the Institution Decision.
None of the Board’s reasons for concluding otherwise in its Final Written Decision withstands scrutiny through the lens of governing law. The Board’s first reason was that JP ’910 shows only conductors that are not individually insulated, so that “one of ordinary skill…would not have been motivated … simply to substitute twisted pairs of insulated conductors for the bare metal conductors.” But JP ’910 plainly discloses the need to align the conducting wires with the core and how to do so, as the Board recognized in its analysis of claims 1 and 4. The alignment problem and solution do not depend on whether the wires are insulated. The Board’s disregard of the insulation-independent alignment teaching of JP ’910 violates the principle that “[a] reference must be considered for everything it teaches by way of technology and is not limited to the particular invention it is describing and attempting to protect.” EWP Corp. v. Reliance Universal Inc., 755 F.2d 898, 907 (Fed. Cir. 1985) (emphases in original); see In re Applied Materials, Inc., 692 F.3d 1289, 1298 (Fed. Cir. 2012). . . .
The Board, returning to its focus on insulation of individual conductors, further reasoned: “Berk-Tek also has not explained why a person of ordinary skill in the art would have had sufficient reason to use the final jacketing/extrusion step of JP ’910, which serves to insulate electrically the bare-metal conductors of JP ’910, to manufacture a cable comprising twisted pairs of individually insulated conductors that do not require additional electrical insulation.” The Board found no answer to Belden’s statement that the final jacketing step, if the conductors themselves were insulated, would be “‘redundant.’ ” But that logic misconstrues the claim language and overlooks on-point evidence. . . .
In short, the record is one-sided on the proper question of whether JP ’910 taught a solution to the problem of aligning cable components that a skilled artisan would have been motivated to use in making CA ’046’s cables. The Board erred in determining that Berk-Tek had not proven the obviousness of the methods of claims 5 and 6 of the ’503 patent by a preponderance of the evidence.
Read the decision here: http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/14-1575.Opinion.11-3-2015.1.PDF.
CAFC – is just so in the tank for the administrative state. We should just create ‘expert’ administrative courts for everything – and therefore we can all be spared the burden of jury duty. In the not too distant past you would expect a patriotic lecture from the trial judge in the rights, responsibility and obligations of jury duty and maybe some separation of power (no kings – all equal before the law) tossed in for good measure. Meh, just let the paid administrative experts ‘do their job’ so says the CAFC. Shameful betrayal of liberty. All the admin courts are going to start driving through this hole CAFC shot in the Constitution.
iwasthere, it is interesting that the government did not defend the constitutionality, at least not vigorously, of IPRs (in MCM v. HP) on the basis of some hidden expertise by the PTAB in deciding patent cases. After all, there is no requirement that the judges have any particular expertise in the technology of the patent before them.
Fortunately, iwasthere, the CAFC is not the nation’s high court.
This fight is just getting started.
David,
You might want to notice that the nation’s highest court ALSO has a problem with separation of powers.
I’m interested whether there is any nexus between KSR “predictability” and the notion of “obvious to try”.
I associate “obvious to try” with chem/bio, fields where you do not know what will “work” till you try. For example, it might be obvious to try both the d- and the l- component of a racemic mixture. It might be predictable that one will “work” better than the other. But is it any more obvious to try the d- than the l- component, and how “predictable” is it, that the d- will perform better than the l-? You might have a hunch, and your hunch might prove to be justified, but to what extent is the outcome “predictable”?
You see, I’m in engineering, where you can (usually) describe two embodiments and “predict” which one will perform better. So, I’m unhappy about the notion that anything that is “predictable” is not deserving of a patent.
Having seen obviousness argued at the USPTO and at the EPO, the way it is done at the USPTO, steered by KSR, leaves me feeling dissatisfied. Night Writer (remember him) laments that you get nowhere at the (First to File) EPO if you don’t draft the application right. Readers out there, what is it about arguing obviousness at the EPO (other than the imperative to draft the patent application competently) that leaves you dissatisfied?
Random at 832 below raises an tricky point for obviousness in the USA, whether it was obvious to substitute D for C in ABC. Fortunately for me, before the EPO, and under its TSM jurisprudence, there is no issue.
But I would nevertheless like to know the answer for the USA.
Well I would submit that there is no issue in the USA either Max, that’s the point I’m ultimately trying to cull from the discussion. The manner in which the CAFC goes about its analysis is to ask why a person would go from position A (the prior art) to position B (the claimed invention). The correct standard is “Is the evidence that this required only ordinary skill and ingenuity?” (i.e. prior enablement + a predictability) Because a motivation evidences a known principle of operation that leads to a result, it satisfies both enablement and predictability. But that is not the only mechanism by which they can be satisfied.
Random,
CLEARLY – your “predictability” notion does not square with what MaxDrei is saying.
Thanks Random. On the question “Obvious Y/N?” you write:
“The correct standard is “Is the evidence that this required only ordinary skill and ingenuity?” (i.e. prior enablement + a predictability)”
which sounds to me very much in line with my understanding of KSR. It leaves me uneasy though, because I can’t imagine how a court on this “standard” chooses between the evidence adduced by the patent owner and that adduced by the petitioner for invalidity. Metaphorically, the court wets its finger and holds it up, to see from which direction the wind is blowing most strongly, I suppose. You talk of predictability but with this “standard” predicting the outcome of the litigation strikes me as well-nigh impossible.
So I can well imagine that the outcome, every time, is that the party whose evidence does not prevail feels traduced.
When both sides have convinced themselves that they will surely win the evidential battle, that makes for more litigation than would happen if a less fuzzy “standard” were to be imposed on the litigants.
It’s all a bit sad really, I think.
Wow, what a great discussion. Having taken some time off – and standing back – ‘obvious to try’ is just a meaningless crutch for a lay judge to knock out a patent on SJ. Most – if not all – of the federal bench will just glaze over and think – I thought by going to law school – I could earn good money without STEM.
Random, The correct standard is “Is the evidence that this required only ordinary skill and ingenuity?” (i.e. prior enablement + a predictability)
Nuance here.
Consider Adams Battery:
“The Government concludes that wet batteries comprising a zinc anode and silver chloride cathode are old in the art; and that the prior art shows that magnesium may be substituted for zinc and cuprous chloride for silver chloride. Hence, it argues that the “combination of magnesium and cuprous chloride in the Adams battery was not patentable because it represented either no change or an insignificant change as compared to prior battery designs.” And, despite “the fact that, wholly unexpectedly, the battery showed certain valuable operating advantages over other batteries [these advantages] would certainly not justify a patent on the essentially old formula.”
Now, without more, it would seem obvious and predictable, as argued, to make the substitutions. But, as we found in Adams, the resulting battery performed far beyond what was predicted.
We of course know why — new functionality, the so-called synergism.
Just because all the elements exist and one might make substitutions, the resulting performance must be nor more than equivalent — expected. Otherwise the combination brings new functionality that was not expected.
Ned,
Straight up question:
Is your “nuance” the notion that synergy MUST be there?
Have the courts demanded this in all cases?
Can the courts demand this (thereby writing statutory law)?
anon, synergism defeats aggregation.
The search is for new functionality since Hotchkiss. If the combination really brings nothing new to the table not there before, it is an aggregation.
I am not asking if synergy defeats aggregation.
I think that you misunderstand aggregation as well.
Let me give an example aggregated claim:
I claim:
A fish, a blue bowling ball, a bicycle and a wonderful new Wodget**.
Wodget being something actually inventive and for the sakes of this point fully defines and enable – on its own – in the application.
You see the lack of (gasp) integration? Do you remember that word? It is the word that sunk Malcolm and his overeager glee to be the very first to post a link to the Patent Office take on a very particular Supreme Court case.
No Ned, you are not answering the question I put to you.
Please try again.
The premise for aggregation or the substitution of known elements, is that everything is known.
As to the addition of nonsense to a novel element, 112 problems.
1. Does not particularly point out the invention.
2. If the novelty is in the one element – the claim is either invalid or governed by 112(f)
Aggregation is not mutatis mutandis with “mere substitution.”
Try again.
…and you really need to retire your canard of “Point of Novelty” as you attempt to use that in a 101 sense.
For the 101 sense, it is the claim as a whole that is the “Point of Novelty,” since it is a given that EVERY ELEMENT in a perfectly valid 101 claim can be merely not-novel in and of itself.
Ned, helpful. But all the same, I’m still uneasy about predictability, synergy and obviousness in the engineering arts. How about angioplasty balloons. The mechanical behaviour of polymer balloons is known and predictable. Replacing a PE balloon with one of PA or PC would be obvious then, would it?
But fact is, the three polymers, by virtue of their different stretch characteristics, suit different patients. PA is the Cinderella material. Stretchability just right for arterial angioplasty. PA was not obvious. Fact. Despite all the “predictability” of its mechanical properties.
So, patentable Y/N?
Max, playing in the field of opinion is the problem with “obviousness” as interpreted by the Federal Circuit. Teaching. Suggestion. Motivation. Sounds good in practice, but in reality it simply comes down to opinion.
The US Supreme Court wants to find new functionality – different in kind rather than degree. This is objective. It was the test before Rich and his crew tried to change it to something subjective.
It is important that the court pointed to Hotchkiss. New functionality is the key.
Wrong again Ned – your anti-Rich curse-ade is misplaced as it was Congress, not Rich, that did what you do not like..
You KNOW (or should know) this.
IHMO, TSM – was a proper doctrine for an appeals court – to insist on admisssable ‘evidence’ in the trial court record. TSM provided a framework in which to have evidence admitted (FED.R.EVID) to support expert opinion. KSR – unhinges evidence of the prior art from the FED.R.EVID and, therefore, turns 103 into an un-reviewable battle of expert opinion. Worse, in fact, because on SJ a Judge can apply (her) ‘common sense.’ How the fracking does an appeal court review that? Breyer should go sit on a couple of trial courts – and get a clue.
iwasthere, indeed, KSR does a disservice to the extent it allows both the functional approach and TSM to sit side-by-side with the “M” being, effectively, common sense.
As in Adams Battery, even if there is motivation, if the resulting combination provides new functionality beyond the predictable, the unexpected, then I would still grant the patent under KSR — the functional approach should trump the gestalt approach.
Ah! Not Cinderella. I meant Goldilocks of course.
Right – is there admissiable evidence under the FED.R.EVID for ‘obvious to try’ or is it just KSR – ‘common sense.’
Now, without more, it would seem obvious and predictable, as argued, to make the substitutions. But, as we found in Adams, the resulting battery performed far beyond what was predicted.
That is NOT predictable. That’s what unexpected results are, a failure of predictability.
You’ll notice that every one of the “secondary considerations” are really just arguments that go toward either a failure of prior enablement or a failure of the art to predict the correct result. Long felt need, teaching away and commercial success are arguments/facts which suggest that the combination was not previously enabled. Unexpected results and commercial success go toward an unpredicted result.
There are not two steps. It’s not like you find that a combination was within the standard skill, but then award a patent anyway because the applicant can show, e.g. commercial success. Commercial success is a fact which goes into the determination of whether something was within the skill or not. Secondary considerations without invention cannot be a patent, see Sakraida @ 282.
Random, I do not disagree. But the premise of KSR’s functional approach is that there be no difference in functionality before and after the combination. That is what predictability means.
Thus when one has unexpected results or new functionality, different in kind rather than degree, the subject matter is patentable.
Also, I think it is self-evident that if reconstruction of the primary reference is required in order to make the substitution and that reconstruction is inconsistent with or eliminates a purpose for the primary reference, then the substitution is not within the doctrine of KSR. There is no functional equivalence with the substitution.
Also, I agree with you that motivation, or reason, has nothing to do with the functional approach of KSR. It has rather the do with the traditional TSM test from the Federal Circuit, where the motivation can be found in the problem to be solved in the broader sense, or with common sense. The KSR functional approach is all about whether various elements were known and known to work in similar combinations such that their combination into the particular combination would be expected to provide similar, if not the same functionality. All this of course comes out and can be found directly in Hotchkiss v. Greenwood.
Random, Ned, how about the EPO “bonus effect” and “one way street” line of caselaw? This is when some claimed combination of technical features is new and delivers a surprising technical effect but is nevertheless obvious. The feature combination was “lying in the road” of technical development, that road being one every PHOSITA would follow, and the effects are merely a “bonus” that you get when you do the obvious.
Perhaps I should add that such an obviousness attack is quite hard to make out, and so usually fails. But given the right facts, it succeeds, and quite right too. At the EPO that is.
Max, 1, 2, 4, 8, 16, … Name the next number.
I would think evidence like this would be considered “secondary.” Sure there is an improvement, but it was “known.”
^^^ and yet again the [ ** ] to the Flash of Genius mantra…
** that is, the OOps, what do I have here portion.
Lok closely gents at your “logic” – ALL engineering and planned activities are per se obvious – combined with a sliding view of PHOSITA to include “normal inventiveness” and you can pretty much just have what Congress explicitly rejected.
Tell me who again under our constitution was allocated (solely) the authority to write patent law?
At 8121141 below, I asked what, in the context of obviousness, is meant by “predictable”. My question was prompted by something MM wrote, about predictability negating patentability.
For me, and also Random Guy, results in engineering are generally predictable, those in chemistry generally not (still).
But contributions to engineering can still be patentable, in particular the ones where you say, after you have seen it, why didn’t I think of that. These are the inventions that deliver predictable results, ones that could have been predicted but, as a matter of fact, weren’t. For me, despite their predictability, they might still not be obvious.
Is this all trite? Have I misunderstood MM and SCOTUS in KSR? What do you say?
But contributions to engineering can still be patentable, in particular the ones where you say, after you have seen it, why didn’t I think of that.
The direct holding in KSR (the holding solving the KSR/Teleflex argument) is as follows:
1) A parent claim was found obvious and was further almost completely taught by a single reference
2) The claim at issue differed from the parent claim only because it located a sensor in a particular place
3) A reference which located the sensor in the proper place put the sensor there merely as a design choice.
4) For the CAFC, because there was no motivation to locate the sensor where the claim did, the claim was non-obvious
5) For the Supremes, the prior art understood that sensors were useful, and understood that sensors could only go in so many places
6) Consequently, for the Supremes it was, in today’s parlance, obvious to try – there were a finite number of places to put a sensor and a sensor was useful and enabled, therefore the claim used only ordinary application of skill.
7) Notably absent from an obvious to try rationale is a reason why the sensor would be located in that particular place. In other words, the Supremes never contradict the CAFC that there is no motivation for the claim, they simply state that the absence does not render the claim obvious.
Consequently “why didn’t I think of that?” can’t be the test because 1) it uses you rather than a PHOSITA and 2) there are situations which nobody in fact posits but a rational application of knowledge in the art would lead to the result. Now if you find yourself saying “Why didn’t I think of that” you may have informed upon the actual test because the art may in fact have misunderstood something very basic, but in all likelihood the reason you didn’t think of something is because you recognize that the art understood it perfectly and the underlying problem it solved was so unimportant that you never bothered to put your mind to it.
I agree with you 100%, that the template is not a real person but the notional PHOSITA. Considering how EPO TSM might have handled the claim in KSR, I can imagine something like this:
“The characterizing feature is the sensor in a changed location.
Adopting the location in the claim brings no difference to performance of the assembly. So the objective problem solved by the claim is not the substantial one, of how to enhance performance in a way announced in the specification but, rather, the trivial problem of finding a mere alternative to the known assembly.
The state of the art shows that alternative sensor locations are not unknown. When the PHOSITA is tasked with finding a mere alternative, one obvious way to arrive at a mere alternative is to move the sensor to where the claim says it is.”
In such ways, the EPO TSM approach can find a claim obvious even when one struggles to point to a specific source in the prior art that discloses explicit “motivation to combine”.
Re: “7) Notably absent from an obvious to try rationale is a reason why the sensor would be located in that particular place.”
? I thought a reason argued in KSR as to why a POSITA with “common sense”would put the sensor in a pivot axis location was that because the connecting wires would get less twisted there?
? I thought a reason argued in KSR as to why a POSITA with “common sense”would put the sensor in a pivot axis location was that because the connecting wires would get less twisted there?
This was the exact relevant holding from the Fed Cir:
“Neither do we agree with the district court’s reliance on the express teachings of the Smith patent. That is because the statement in the Smith patent that ‘the pedal assemblies must not precitipate any motion in the contacting wires’ does not necessarily go to the issue of motivation to attach the electronic control on the support bracket of the pedal assembly.”
The teaching was that it must be placed somewhere fixed. But the pivot point is not the only place that is fixed, therefore there was no particular motivation for that particular placing. Its true, as you say, that everyone recognizes there was a general motivation that it must go somewhere fixed. But the thing that gets you from “somewhere fixed” to “this particular fixed spot” was the obvious to try rationale, not a particular reason in the prior art. That’s because nobody ever directly posited applying Smith to an adjustable assembly (which was what the Asano structure was) so there was never any motivation to put the sensor on the pivot of an adjustable assembly.
See also the statement in the Appellate court record where they specifically acknowledge testimony:
“The only declaration offered by KSR did not go to the ultimate issue of motivation to combine prior ie wheere one of ordinary skill in the art would have been motivated to attach an electronic control to the support bracket of the assembly disclosed by Asano. [The testifier] did state that an electronic control ‘could have been’ mounted on the support bracket of a pedal assembly. Such testimony is not sufficient to support a finding of obviousness, however. (“Obvious to try” has long been held not to constitute obviousness)…the issue is not whether a person of skill in the art had a motivation to combine the electronic control with an adjustable pedal assembly, but whether a person skilled in the art had a motivation to attach the electronic control to the support bracket of the pedal assembly.”
Random, the sensor location the only novelty, it was a known location and there was no new functionality in making the combination.
Stop.
That is Hotchkiss.
KSR: “Graham reaffirmed the “functional approach” of Hotchkiss, 11 How. 248, 13 L.Ed. 683. See 383 U.S., at 12, 86 S.Ct. 684.
If there is new functionality, that is tested by the degree of predictability — unexpected results, etc.
MD: results in engineering are generally predictable, those in chemistry generally not
That depends very heavily on what you are “engineering.” Or maybe you never heard of chemical engineering before?
The fact that, in a given patent system, it is more difficult — or should be more difficult — to get a patent in a field where the results of a useful combination are predictable is not a flaw in the patent system. It’s a feature.
Patents are for more promoting progress. They aren’t entitlements handed out simply to make it easier for businesses to profit withou competing. After a lengthy period of hijacking, people have a hard time remembering that there’s more to the patent system — or there at least should be more to it — than lawyers playing word games with the PTO.
MM could you now have a butcher’s at my 13.1.3.2?
I hope you are not asserting that a result that is engineered to be, in the patent specification, “surprising” is sufficient for patentability.
But yes, I agree that a substitution that brings nothing beyond what the PHOSITA would have imagined is likely not deserving of a patent.
Care must be taken there MaxDrei, as you might (should) recall our own past conversation on the fact the US PHOSITA is indeed different than the PHOSITA according to your own sovereign’s definition.
Here in the States we have a problem with a “slippery slope” and certain people pushing the patent system to be one that it takes a Flash of Genius to obtain a patent – something our Congress has explicitly rejected.
The phrase “promoting progress” is NOT only limited to the linear progression or advancement in and of itself.
That is not how innovation works.
Instead, the phrase ALSO includes the mere notion of promotion (as in advertisement terms).
I have supplied a fitting analogy in the past: not paving streets, but paving a parking lot.
“Grown-ups” already know this about the phrase and son’t take such a “linear” childish view of that phrase. Of course, had you heeded my direction and educated yourself on innovation theory, you would likely have understood this basic principle. As it is, it is yet another optional aspect in patent law that seems to just give you fits (like certain forms of claims).
With 160 comments on this case, it is surprising that none of them are eating crow for prior “unfair death squad” descriptions of IPRs? Not only is this another in an amazingly consistent long chain of Fed. Cir. sustained IPR invalidity decisions, it is a holding that the IPR was not tough enough!
Curm: amazingly consistent long chain of Fed. Cir. sustained IPR invalidity decisions
How long is this “consistent chain” of “sustained IPR invalidity decisions”? You seem to be keeping close track. Share your data.
I’m pointed this out before but I’m happy to point it out again: be careful about promoting this silly “death squad” script. You see, some not-terribly-intelligent people take that kind of stuff seriously, so seriously that they end up putting it the briefs they file with the Federal Circuit. The judges don’t take kindly to that, and for good reason.
Worth repeating this nugget from David on top:
Per C.J. Roberts, May 2015:
“[I]f there is a principle in our Constitution . . . more sacred than another,” James Madison said on the floor of the First Congress, “it is that which separates the Legislative, Executive, and Judicial powers.” A strong word, “sacred.” Madison was the principal drafter of the Constitution, and he knew what he was talking about. By diffusing federal powers among three branches, and by protecting each branch against incursions from the others, the Framers devised a structure of government that promotes both liberty and accountability.
Preserving the separation of powers is one of this Court’s most weighty responsibilities.”
And just – if not more – worth adding:
That sense of sacredness is a foreign concept to several of those with whom I “tussle” with here on a regular basis.
Each and every branch falls under that sacredness and no single branch is above it.
While as David puts it that the Judiciary has a weighty responsibility, make no mistake that the Judiciary itself is bound by that doctrine.
As I have succinctly pointed out, the doctrine applies to each and every branch – including ESPECIALLY the Judiciary. One only need revisit the Federalist Papers to grasp this.
That sense of sacredness is a foreign concept
It should be. The term “sacred” doesn’t show up in the Constitution. Perhaps Jefferson had something to do with that. Either way, it’s a good thing.
In addition, nearly everybody in this country has no problem whatever with the Supreme Court stepping in to protect their “liberty” from greedy companies like Prometheus and Myriad. And why would they? That’s how the system is supposed to work.
You do realize that your rather empty snark here is simply meaningless, right, Malcolm?
I’m not even sure what you’re pointing to here, but Roberts was on the court when both KSR and Alice were decided, so either he isn’t guilty of what you’re accusing him of, or he’s BSing you in at least one instance.
“or he’s BSing you in at least one instance.”
You do realize that this is not a “directed to me” type of thing, eh?
And as I have already pointed out to you, the underlying issue here is that the scoreboard is broken, so indeed yes, very much so, is it that the Court is “BSing [everyone] in at least one instance”
Here’s a clue: the Court does not have authority to rewrite statutory patent law and insert its own philosophies.
the Court does not have authority to rewrite statutory patent law and insert its own philosophies.
On the other hand, if the Court inserts the philosophies of 99% of the non-k00k00bananas public into a decision interpreting a statute that, on its face, is ridiculous, only the k00k00bananas in the 1% are going to get all worked up about it..
A non reply full of nonsense.
No surprise really, Malcolm.
And yes, you should know the difference between interpretation and writing law through the mechanism of common law evolution.
If – as you state – the statute on its face is “ridiculous,” that means nothing as to the statute. The job of fixing that falls to Congress, and Congress alone. This is at the heart of the separation of powers that comes part and parcel of the Constitution.
It matters not at all if YOU think that only 1% are going to get worked up about it. The Court just does not have the authority to insert anything into statutory law. You are wrong at the core here – and you should (if indeed you are an attorney) know it.
All else from you is noise. An empty prattling not unlike an empty wagon pulled along an uneven sidewalk.
Question:
If inherency is the issue, can one include in his proof of what was known to one of ordinary skill at the time of the filing of the patent information that was not publicly available?
Inherency is not limited by the notion of “publicly available” as you appear to be using that term.
Inherency “IS” – you appear to want to use “time” as if what “IS” becomes what “IS” only at a later date instead of the actions of a later date (perhaps) revealing what “IS” at the earlier date.
You either don’t understand inherency, or you do understand inherency and are attempting a ruse.
The frying pan, or the fire – your choices are not so good.
anon, perhaps enablement is a better choice here.
Whether or not that better choice is possible is simply not a part of the argument here.
So, even if I agree with your new proposition, the argument here remains.
In other words, inserting the notion of enablement is nothing but a smokescreen in regards to the current discussion.
anon, let’s take an example. I claim a cold fusion device having an Xumpter. The reference is a cold fusion device. The question is whether it has an Xumpter.
Xumpters are unknown at the filing of the application, but later they are become both known and enabled.
Now, if the reference was describing something that was built, and that necessarily had an Xumpter, can we use this later knowledge to prove it?
But if the reference was a publication, like Star Trek’s transporter. The only think needed to make it complete is an Xumpter.
See the difference?
As I posted at 9.1.1.1, my “seeing” simply is not germane to the present discussion.
(further, there is NO indication that I ever did not “see” any argument made in regards to enablement)
Clearly, Ned, as we have no doubt discussed before, the single paragraph in pre-1952 law that Congress decided to break up into the various parts of 101/102/[new]103/112 were ALL available to the Supreme Court for them to pick and choose where THEY wanted to “rest their arguments” on.
It was the Supreme Court itself that did NOT choose to rest on 112.
Why this is so simply was not captured, and in truth, is now merely a matter of counting angels dancing atop the head of a pin.
If inherency is the issue, can one include in his proof of what was known to one of ordinary skill at the time of the filing of the patent information that was not publicly available?
Inherency is not subject to prior art limitations. Not only can you cite “secret” evidence to prove inherency, you can provide post-filing evidence to prove inherency.
Kudos Random (no snark) – you nailed one.
Random, do you make any distinction if the reference is describing something that was actually built or some “idea.”
Ned,
Why are you trying to kick up dust with this “some idea?”
Something is inherent or it is not inherent.
That’s it.
anon, it should only apply to things in public use or things that were built and tested.
People describing ideas? Nothing is inherent in an idea.
Your answer is a non-sequitur.
There is no“idea” in the current discussion.
Please stop kicking up dust.
Random, do you make any distinction if the reference is describing something that was actually built or some “idea.”
Either something inherently requires something or it doesn’t Ned. That is a binary fact. Whether any one document is sufficient proof of the fact is a separate issue. Of course any document can or can’t be sufficient based on how it talks about something. The only question is does A necessarily require B.
If a document shows that A requires B, it is irrelevant whether it does so by discussing a concrete machine or an abstract idea. The fact that it may be more difficult to show inherency when you’re only talking about one concrete machine does not mean it can’t be shown.
2 questions for everyone here, since there seems to be some possible disagreement on this:
Suppose Claim 1 is “A system comprising: Elements A, B and C”
Reference 1 teaches a system comprising Elements A, B and D
Reference 2, analogous art, teaches Element C being used in a system similar to Reference 1 in place of Element D
There is no question that a PHOSITA, at the time of filing, could have substituted C for D, and that the resulting ABC system functions as one would predict. Conversely, everyone in the art agrees that ABD is a vastly superior system to ABC in every conceivable manner, and that someone aware of Reference 1 would never worsen it by substituting C for D.
Is Claim 1 obvious? Why, what is missing/present that controls the inquiry?
Hypo 2: Suppose instead of Reference 2, Reference 1 specifically says “I originally posited ABC, but found it to be vastly inferior to ABD.” Is Claim 1 anticipated? Is Claim 1 obvious? Has anything changed from the first hypo, and if so what has been supplied/removed?
Nice strawman.
You kind of give it away with “Reference 2, analogous art, teaches Element C being used in a system similar to Reference 1 in place of Element D“
Nice strawman.
That word, it does not mean what you think it means.
Is it your contention that there is never a two-reference 103 where both the references belonged to the same field before? I would think that’s the most common kind.
It not only means what I think it means, it certainly fits what your post at 8 attempted to do.
Random –
When I parse out your :
“Reference 1 teaches a system comprising Elements A, B and D
Reference 2, analogous art, teaches Element C being used in a system similar to Reference 1 in place of Element D”
It says that Reference 2 teaches A, B and C and therefore anticipates claim 1.
Reference 2 merely applies D in a similar system, not in a system comprising AB. It was stated to eliminate the argument that there was insufficient evidence that D was a substitute for C or that C wouldn’t be enabled in that context.
The first hypo asks you to assume that D is a known substitute for C, but since C is better in every manner, there is no “reason” or “motivation” to generate the claimed ABC, since one of skill who saw Reference 1 – and thus knew of ABD – would not choose to substitute C. Does that make ABC non-obvious?