By Jason Rantanen
Professor Margaret Radin, who recently retired from the University of Michigan Law School, is a leading scholar known for her work in property theory, contracts law, intellectual property, and internet commerce. She’s best known to my students for her articulation of a modern personhood theory of property in Property and Personhood, 34 Stan. L. Rev. 957 (1982).
In her essay Patent Notice and the Trouble with Plain Meaning forthcoming in the Boston University Law Review, Professor Radin offers her thoughts on a topic at the heart of contemporary debates in patent law: the extent to which the words of claims can operate as boundaries that provide the same degree of notice that we expect in the real property context. The abstract reads:
In their book, Patent Failure, James Bessen and Michael Meurer took the position that notice of the scope of a patentee’s property right is usefully analogous to notice conveyed by real property boundaries. In this essay I argue to the contrary that the idea that patent claim language could be rendered determinate enough to justify an analogy with physical fences or metes and bounds is illusory. Patent claims raise the question, in a way that fences do not, of how words “read on” objects in, or states of, or events in the world. I take a small detour through the language theory of Quine as backdrop to my argument that there is no such thing as plain meaning, at least not in situations involving innovative products and processes where there is money at stake. I draw on three landmark patent cases — Markman, Phillips, and Festo — to illustrate this basic point. In my concluding Postscript I bring the big picture into play. The costs of providing better notice, even if that were possible, might outweigh the gains. Plus, even if the analogy with physical boundaries and the commitment to plain meaning were not illusory, such rigidity in interpreting claims would undermine a significant feature of the patent system: the flexibility to reward breakthrough inventions proportionately to their importance.
Professor Radin’s discussion is worth a read for the eloquent way that she captures and synthesizes the raw strands floating around in current discussions about patent claims.
Viewed through the lens of my current projects, though, her essay raises deeper questions about the meaning of claim construction itself. Over the last two decades, patent law has experienced the emergence of the perception that claim construction is simply the process of interpreting the meaning of the words in the claims. From Markman to Cybor to Phillips, claim construction grew into a search for linguistic meaning. Even Teva reinforces this perception, with its focus on the role of evidence in determining the meaning of key claim terms.
But patent law’s dirty secret is that claim construction isn’t just about divining the linguistic sense of words and phrases in the claims. That’s a seemingly fine inquiry when analyzing questions such as infringement, or anticipation or even, perhaps, nonobviousness. Yet when it comes to other issues in patent law–enablement, written description and especially § 101–defining the meaning of words is less central to the analysis. To be sure, sometimes the formalized procedure of Phillips does matter in enablement. Liebel-Flarsheim and Automotive Technologies offer two examples. But for the most part, the formalized claim construction that we’re used to is absent from the Federal Circuit’s enablement, written description and § 101 determinations.
Nevertheless, claim construction of a sort is present. The court articulates something that it uses in its analysis. In the enablement and written description contexts, I’ve come to call this something a target that must be enabled or adequately described. What it really is, though, is claim construction–just not in the sense that we’ve become comfortable with.
The Federal Circuit’s opinion on Monday in Bascom v. AT&T Mobility [Download Opinion] illustrates this point. That case involved a motion to dismiss granted by the district court on the ground that the claims were invalid on § 101 grounds. (I’ll summarize the facts and holding in more detail in a subsequent post.) After assuming that the claims were directed to an abstract idea under Enfish‘s statement about “close calls” at step one of the Alice/Mayo framework, the court turned to step two: the search for an “inventive concept.” Here, the court concluded that the “inventive concept described and claimed in the []patent is the installation of a filtering tool at a specific location, remote from the end-users, with customizable filtering features specific to each end user,” a concept that the court concluded was not (on the record before it) conventional or generic. Slip Op. at 15-16. This determination–of identifying an “inventive concept”–is as much claim construction as the linguistic machinations of Phillips. Indeed, the court even refered to what it is doing as construing the claims: “Thus, construed in favor of the nonmovant–BASCOM–the claims are “more than a drafting effort designed to monopolize the [abstract idea].” Slip Op. at 17.
The comment thread at #19 picks up on the lament by Bessen & Meurer, that Prof Radin summarises as
“We don’t know how a claim will be construed before a judge construes it, and perhaps not until the Federal Circuit construes it – so how will a firm have notice of its vulnerability to suit if it pursues a particular course of product development”
The #19 thread ends with Dogberry (my name for the poster who styles himself “anon”) expressing himself “not sure” why I refer to “litigation”.
I do FTO opinions under the patent law of Europe. They are do-able, at reasonable cost with reasonable certainty. I doubt they are, in the USA.
There is no inevitability about that. The appeal courts could sort it out, if somebody could explain to them persuasively, how they are the ones making claim construction unnecessarily problematic. But can anybody be bothered, to take on that role? Doesn’t it give domestic US an advantage over foreign players in the US market, to keep claim construction as complicated and vague as possible?
My dear Huckleberry MaxDrei, your laments are indeed colored by “what you do for a living.”
That is not a good thing.
You STILL are not recognizing the plain facts here that the file wrapper is every bit as available as the specification, and is – in fact – something that is helpful for your own desired end state of iii).
Stop.
Think.
Try to get out of your own way.
(focusing on who is pointing this out to you will not let you open your eyes, so the “dogberry” distraction is only and merely that: a distraction)
“every bit as available”, you say. Well, yes, like every leaf of every tree in the Amazon rain forest is “every bit as available” as every one of the other leaves there. It’s just that it does take some time to get round them all, to see what is written, on each one of the leaves in the USPTO file history. Necessary, every time, just in case, on one particular leaf, something is written that changes the complexion of the case, and substantiates the Radin lament.
Time is precious and lawyer time has to be paid for. By the Clients. Are the courts a branch of the Ministry of Social Services, a work creation scheme for out of work lawyers?
Wow – a plain “Wah, there is too much work” that does NOTHING to address the very disparity in your own position related to ii) and iii).
No such thing as a free lunch.
Stop whining.
No disparity, no whining. But there is, I agree, no such thing as a free lunch.
I also agree with that citation you are always making, about the imperative to avoid over-simplification, as you go about the business of cutting out the noise and reducing complicated issues to their inherent core simplicity and elegance. It is hard. It is a challenge. I do see that. With age-old problems though, it’s best catalysed by importing fresh thinking from outside the box, and applying that to the task.
Your attempts at portraying this as “no disparity” and “no whining” are without a doubt self-serving CR@P.
Point blank, you are wrong about the file wrapper, and merely want what you are accustomed to, and do not want to admit the fact of the matter that my observation of your ii) and iii) are incongruent with your desire of ease of what you are familiar with.
And that is some pretty dust you are now kicking up with this “fresh thinking” catalyst. Given that your own viewpoints suffer tremendously from a LACK of “freshness” (your 6 months worth of experience repeated 80 times), your mouthing this euphemism here is rather empty.
I want to download and read the Nadin Paper but before I do, can anybody here help me with a useful comment on the question I write below, a comment that will help me better to assess the usefulness of the Paper.
The law deems the reader of a duly issued patent to be a person of the art, not a lawyer or philologist. English courts construe a claim by asking what was the claim writer using the language of the claim to mean (to its designated addressee, the person skilled in the art).
What’s wrong with that way of construing a claim? It must be right, mustn’t it? What could be wrong with it? If something is, which part of it is not right? Which part of it is not understandable, in the USA?
“The law deems the reader of a duly issued patent to be a person of the art, not a lawyer or philologist.”
??? Not sure where you got that MaxDrei.
The reader is the reader. The legal points concerning application of the law have NOTHING to do with the reader, as reader.
Different readers carry their own abilities, biases, and levels. Your comment appears to be far too glib and would lead in the absolute wrong direction of “well, I read the claim and this is what that means to me” which – as is plainly evident – is a very real bane to any intelligent and critical discussion of legal points.
Perhaps you meant that the proper legal meaning of any claim is not dependent on the individual reader (chock full of what that individual reader may bring to the table), but instead is found through an artificial person “reader” – a legal “fiction” of a different “reader.”
Your last paragraph of questions then – while appearing to be of a rather “duh, no kidding” variety, seem to miss a rather important foundation.
I’ve skimmed through the Paper now. Boy is it a struggle. I’m left with the feeling that i) academics like to make a mountain out of a molehill ii) left unchecked, the courts will go on making the law more and more complex.
Nadin valiantly takes into account a number of “givens” that the English courts have proven actually aren’t givens at all. In science, advances come when one can screen out the noise and identify the real cause of the observed effect. So too in the law, I would think.
A doctrine of equivalents is no necessity. Nor is it necessary to have different ways of construing the claim in the PTO and in the courts. Instead, just i) construe the claim “as if the accused infringer had never been born” ii) look only at the patent and not at the PTO file wrapper, and iii) arrive at a purposive construction of the claim, by taking the patent document as a whole, as a coherent document, read the claim in context and ask yourself, “what was the writer of the claim using the language of the claim to mean (to the notional PHOSITA)”.
In other words, no special rules for patents. The court should construe one just as it would any other document up for assessment.
If litigators knew that the court will certainly construe the claim in this way, the would-be competitor would be able to find out, as in England, simply by reading the patent, whether its claims are i) valid and ii) infringed.
You are doing that “my soveriegn is good enough so that I don’t have to understand your soveriegn” thing again, MaxDrei.
“A doctrine of equivalents is no necessity.”
Your “feelings” are duly noted.
Just so you know, anon, I did reply on July 3rd to your 19.1 post of the same day. But the Dennis filter has held it back for “moderation”.
It is beyond my comprehension why. That is why I haven’t bothered to try to out-guess the filter.
Thanks MaxDrei – yes, the filter is troublesome in that way at times
That being said, I had noticed another item in your post above that is a bit off: your desire for what you are familiar with places your item ii) in conflict with your item iii). If you are aiming for meaning of the applicant, why in the world would you NOT use the file wrapper which – with full effect (and knowing that what is said will have such full effect) of such words by the applicant? And yes, I am talking about the US soveriegn view on this US sovereign discussion.
Why? Here’s an answer.
Ms Radin is looking at the issue of “Notice”. How can the public best be put on notice, that the acts they contemplate do (or do not) constitute an infringement of the patent they find themselves reading.
A system that frustrates any efforts to construe the patent till one has read exhaustively through the entire PTO wrapper of every patent application in the family is not helpful to the Notice requirement. Excluding the wrapper serves the Notice requirement better.
There might be other reasons to hold the patent owner to the letter of what was said to the PTO Examiner, but optimising the Notice requirement is not one of them.
There is no construction by file wrapper in Europe. But that does not mean that nobody reads the wrapper. Of course if you litigating with the patent owner you read the wrapper, and use it ruthlessly, against the owner. If it says “When I say black I mean white” for example, one will use that in squeeze arguments on infringement, or validity, or both, to win the case and dish the patent owner.
Your “feelings” of “system that frustrates any efforts to construe the patent till one has read exhaustively through the entire PTO wrapper of every patent application in the family is not helpful to the Notice requirement.” simply are discordant with reality.
What next? Don’t read the specification because that is “extra reading”…?
No MaxDrei, your want of ease simply means nothing when what is available is accorded meaning and is the very meaning that your iii) seeks.
This is just another instance where your preponderance of doing things a certain way prevent you from understanding why your “feelings” get in the way of what you say that you want.
Dogberry (if I may call you that) I don’t follow you. But never mind. I’ll continue to develop my point anyway, that being obliged to base claim construction on the PTO file wrapper frustrates the public notice requirement.
Take the ubiquitous (but only in the USA) “Definitions Section” of the patent then, the bit where the patent owner acts as her own lexicographer. It declares (to take an extreme case, for the sake of flushing out the point) that when the claim recites “black” it means “white”.
Now suppose that this Definitions Section is in the File Wrapper (as opposed to being in the patent specification itself). How (given this litigator-inspired blurring of meaning) are we to construe “black” in the claim? Does it mean “black”? Does it mean “white”? Does it mean “grey”? Does it mean “black or white but not both” or does it mean “not one or the other but, rather, both black and white”?
I think the public has a need to know, without litigation, what any given claim means. And without having to wait every time, until the Federal Circuit tells it what the claim means.
Dogberry…?
No thanks
(Unless you want me to provide my own name for you…)
As is, your “wanting” remains immaterial to the disconnect between your ii) and your iii).
Sorry, but that is just the way that it is.
The file wrapper is every bit as visible as anything else – no litigation required (not sure where that came from).
Posted below in the midst of the 12 series of comments (to which the 14 series is related), I put the following comment to Ned (and it addresses not only Ned, but Random and the larger anti-software patent folk).
Since the comment is germane not only to the discussions of the 12 and 14 series, but to the larger view of law and history, and to the end of not having this new comment lost below, I repeat the comment here and invite rational discussion of the identified proclivity:
Conflation can be a difficult trap.
Let’s take the word “Discrimination.”
dis·crim·i·na·tion
dəˌskriməˈnāSH(ə)n/
noun
1. the unjust or prejudicial treatment of different categories of people or things, especially on the grounds of race, age, or sex.
“victims of racial discrimination”
synonyms: prejudice, bias, bigotry, intolerance, narrow-mindedness, unfairness, inequity, favoritism, one-sidedness, partisanship;
2. recognition and understanding of the difference between one thing and another.
“discrimination between right and wrong”
One of the problems with “hindsight” is that it can be very difficult to either recognize or even once recognized, to remove the effect that hindsight has on human discrimination (“discrimination” used in the sense of the definition 2 above.
When “judges” (of any kind, including those providing comments on a patent law blog) do not recognize their own discrimination (used in the sense of the definition 1 above), they only too eagerly conflate their views and can – as has been amply seen on these boards – not only get these two meanings (wrongly) interchanged, they proudly pursue the first as if that first was the second.
Take then this proclivity and apply it to the legal concepts being discussed here of obviousness and 103 (and the apparent lack of concern for those factors discriminating art which is prior and how (and whether) that art may be properly used for the legal purposes.
People continue to not pay attention to the subtleties involved and want to think that 103 is merely 102 spread out through an (unlimited) number of references – with zero accountability for EACH context that EACH reference brings along with it. The view that any portion (of a reference) once shared, can – with zero error – be made a simple portion of a universal gestalt by not paying any attention whatsoever to the necessary contexts is a prime example of discrimination (definition 1) being used in place of discrimination (definition 2).
EVEN AFTER other examiners try to point this out, the level of discrimination (definition 1) has that person remaining blinded.
And further consider how this view of 103 ripples through the other discussions of law. That same person is blinded with his view of the perceived razor thin 103/112 “safe zone,” his view of “predictability” and 103 (yielding the logical end game of patents ONLY for Flashes of Genius or unteachable Oopsie types of inventions), and lastly – but certainly not least – the inability to see how the Act of 1952 carved out (and constrained) from what was a single paragraph pre-1952 the ability of the courts to use common law evolution for defining “invention,” “Gist of the invention,” “patentable novelty,” or dozens of other phrase used for that effect and remove the Court from this area of patent law (because the Court had become SO anti-patent).
That same person is blinded with his view of the perceived razor thin 103/112 “safe zone,” his view of “predictability” and 103 (yielding the logical end game of patents ONLY for Flashes of Genius or unteachable Oopsie types of inventions),
You’re referring to me of course, and the only response I need, as usual, is “scoreboard”. Nobody cares if you think the rules aren’t being applied properly or that the results aren’t what congress intended. The rules are the rules and they’re what are going to be followed unless there’s an extremely unlikely change in them.
KSR is less than a decade old, it’s not going to be overruled with no statutory change. The only thing you need for obviousness is a rationale for obviousness. A suitable rationale is that a person who knows of a base reference can apply elements and techniques known to them to achieve the effects they are known to achieve, and they can do so an “unlimited” number of times until a context-specific counterpoint emerges that explains why it can’t be done an unlimited number of times. The fact that the claimed system is just one of a possible million obvious outcomes doesn’t suddenly make that a “hindsight” act, any more than me selecting a car to purchase is an inventive act – choosing from a plethora of known options doesn’t make one a non-obvious snowflake.
“Unlimited times”. Interesting. I hadn’t thought of it like that before. Thanks Random, because I see your line of argument as one that strengthens the legitimacy of the EPO’s “Problem and Solution” (TSM) approach to obviousness.
Strengthen the legitimacy…?
How Fn bizarre.
Do you really want to conflate the different sovereigns in such a manner as thinking that US case law reaches into the EP law…?
Really?
Come man, grow up.
Your “only response” suffers from two distinct problems Random.
First, sometimes you simply are not reading the scoreboard correctly. KSR just does not say what you think it does. I have pointed out the use of “may,” which necessitates the possibility of “may not.”
Second, the scoreboard can be broken. When that is the case and the discussion is about the scoreboard being broken, it is more than just a little mindless to chant your “scoreboard” refrain with ZERO critical thinking.
Here, once again, you attempt to view 103 in merely an aggregation of 102, and you (again) fail to recognize that you cannot do so because doing so ignores every context from each reference that you simply cannot ignore.
You have a very basic misunderstanding of the legal concept of 103.
I have pointed out the use of “may,” which necessitates the possibility of “may not.”
Of course, but I’ve said the “may not” because the “may not” is also the subject of precedent – when the whole is more than the sum of the parts, or the combination creates a circumstance where application of the old is not straightforward (because of some kind of interrelationship) there is a high likelihood of non-obviousness. At a minimum, the existence of a “may not” without any logic or court decision behind it certainly can’t be a very strong argument, and instead you’re treating it like it routinely carries the day.
Here, once again, you attempt to view 103 in merely an aggregation of 102, and you (again) fail to recognize that you cannot do so because doing so ignores every context from each reference that you simply cannot ignore.
Again, I don’t. If you can identify a reason why the context change is relevant that is a good reason to say that the modification, while known, is not enabled or motivated. But if you can’t identify a reason then the default reasoning is that it is obvious, because the court has told us that it is rational to apply techniques from one context to another context. “Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one.” “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.”
Nonsense.
I only refer to the meaning of the words actually used and contrast with the imperative that you would have had them use (but they did not use).
The only “carry the day” is that you are not reading the case correctly. And that’s enough, as that is my point.
One surefire way of making 6 look reasonable – even credible:
have someone completely inane butcher up basic patent principles like 103.
(6, that’s not to say that I don’t appreciate the time that you have taken on this thread to show Random where he has gone astray – I do appreciate that)
Check it out guys, the DNC (liberal elite) and DWS done got themselves a lawlsuit:
link to observer.com
Serves them right imo.
I predict that nothing meaningful will come of the attempt to stop the shenanigans.
Probably true, but you could join the fun and try to get any donations you made to bernie ala the DNC back.
Question for the peanut gallery on obviousness here, re Moore’s statement about 4 references –
I just did a search for the word bicycle, which returned 307,728 documents. Let’s assume, for the sake discussion, that each of those documents is about a bicycle with some inventive feature (i.e. a bicycle is not mentioned tangentially, this is an invention about bikes) and lets assume that each of the documents describes a unique useful, inventive feature, with no overlap at all.
Assume I build a giant warehouse, wherein I make and place each of the 307k different bicycles. Then I file an application with a system claim directed to my warehouse comprising the 307k bicycles, each of which is fully and particularly described.
Assume there exists no greater registry of bicycles, the sole evidence of each bicycle is the previously published document. Collectively, under 103, they would each be analogous to each other such that one COULD cite a 307k reference 103 to reject the claim, and it would take 307k citations.
Does anyone here think that the system is non-obvious over the 307k references? If so, what is the rationale for that?
Suppose that someone comes along and compiles an encyclopedia of bicycles, each volume containing 150k bicycles. I cite volumes 1, 2, 3, which cover all 307k embodiments.
Does anyone think that someone compiling the 307k references into 3 references changed the obviousness of the claimed system?
Let’s say also that I file a second claim, directed to a particular bike. This bike has a particular improved type of handlebars, chassis, seat, pedal/chain system, tires and a bell. Within the 307k references is a bicycle which has none of these particular improvements (Ref A). Then, 6 other references within the 307k explicitly disclose each of the improvements: Ref B shows the claimed handlebars, Ref C shows the chassis, etc. Assume that each improved bicycle piece functions collectively in a manner that it would individually for the same result – i.e. the improved tires grip the road just as well regardless of what handlebars are being used, etc. Is Claim 2 obvious over Refs A-G?
I then decide to remove my “base bike” reference, as all my other references have bikes in them as well. Is Claim 2 obvious over Refs B-G? Did the removal of A matter at all?
Next, I note the art knows of Ref Z, which is a bike which has the exact opposite of the improvements in B-G. Where Ref E shows a pedal/chain system designed to maximize distance and ease of pedaling, Ref Z has a pedal/chain system designed to maximize resistance for stamina-training purposes, etc. Is Claim 2 obvious over Ref B-G+Z?
I respond to the rejection of Claim 2 by citing 50k other documents. Each of these 50k documents utilize different handlebars, tires, etc. I argue that there are 50k teachings away from combining the elements in the manner claimed. Does that argument carry the day? I also argue that one of skill, after reading all 50k documents, would have no particular reason to choose the elements from Ref B-G as opposed to any other elements within the 50k. In fact, since many of the references explicitly use a different type of tire that is shown to have other benefits, I argue that one of skill would use the more common tire, and therefore it is unlikely that one of skill would choose the Ref F tire to put in the system. That proves that my system is unobvious because an non-Ref F system is actually the obvious one. Does this argument carry the day?
“Then I file an application with a system claim directed to my warehouse comprising the 307k bicycles, each of which is fully and particularly described.”
As will be mentioned with respect to your post below eventually when I get to responding, these simplistic examples you’re making up do not prove the overall rule that you are attempting to prove, and that is true even if we say that yes you could tots make a 307k ref rejection for “old bikes in a warehouse”. That is because what you are spilling so much ink over is, at best, “an exception” to the actual rule (that plausibility matters in a 103, or like the Gorman court said “you have to use judgement”) or what we’d call “a special case” where plausibility never the less exists because of the absurd simplicity of all of the combinations (i.e. the combo just requires each whole bike to be put in storage). Those kinds of situations are so exceedingly rare in actual examination they’re barely worth discussing. The in real life issue here is that you are thinking that these absurdly simple situations actually arise all the time.
Also there is a special name for those kinds of rejections but I forget the word off hand.
And I was also going to tell you in re the post below that yes, you can maybe make a 100 ref BMX bicycle rejection with 100 bike features all in BMX KidsRUs magazine issue 1-200. Again, simplistic examples of the exception do not prove the rule you want it to.
The point I am making is that “plausibility” (whatever that means) is not aggregated or the product of other plausibilities.
Let’s say that Refs A/B/C/D would literally meet all of the limitations of a claim. You have a view that if there’s a motivation for combining A and B, but that it’s a “close call”, and if there’s further motivation for combining C, but that’s a close call, that by the time you reach D, that close call is too much – the straw has broken the camel’s back. The subject matter as a whole is non-obvious.
What I am saying is that it doesn’t matter if something is a “close call” or how many times that happens. Certainly you use judgment, but the judgment is only directed toward the question of whether the cited evidence supports a contention that the art was enabled and motivated to make a modification. Once you decide that A/B was motivated, the closeness of that call is irrelevant in further analysis. Correct obviousness analysis is a series of binary determinations. So long as you can keep answering “Yes” to the question of “Is this next modification enabled and motivated?” you can add modifications ad infinitum. Similarly, if your answer is “No” it doesn’t matter whether that no comes during the tenth modification or the first modification, it’s non-obvious. It is not a jenga tower where the first move is easy and the more and more you use obviousness the harder the next standard is to meet.
The law is that there is no distinction between A/B/C when there is a motivation and ability to combine them versus Ref E, which explicitly combines ABC. If you conclude that A/B/C/D is non-obvious where E/D is obvious, you’re doing obviousness wrong, which is explicitly what you argue for when you say at 12.1.1 that “The more refs you add, the less plausible your combination becomes to have actually been made by an imaginary man.” The number of references has absolutely no bearing on the analysis.
“The point I am making is that “plausibility” (whatever that means) is not aggregated or the product of other plausibilities.”
From a purely logical standpoint, your statement Random is simply not correct.
Is that true in all cases anon, or only in cases where there is dependency? Does the plausibility of any one statement necessarily have anything to do with the plausibility of any other statement?
If you have a one in ten thousand chance of having your plane crash, does safely flying 9999 times mean you can never fly again?
If the art has a difficult time making a particular modification to a particular element, but you ultimately conclude they probably can do it, does that have any bearing on whether they could make an entirely different modification to an entirely different element?
Not “all cases” need to be shown to be true to bl0w your theory out of the water, Random.
Your appreciation of statistics is nearly as bad as your understanding of the law.
“The point I am making is that “plausibility” (whatever that means) is not aggregated or the product of other plausibilities.”
Sure it is. And looking at your example(s) you’ve made up you’ve tried to make them so that the plausibility of each of the 307k combos was 100% (put a bike in a warehouse 300k times) for an ultimate product plausibility of 100% for all of them. That doesn’t normally happen in real life. Usually its more like 90% confidence for the first combo, then 60% confidence for the next combo, and finally after three combos you’re down to about 20% confidence that the combo would be plausibly made by an imaginary, all art in the area knowing, less than expert, man.
“Let’s say that Refs A/B/C/D would literally meet all of the limitations of a claim. You have a view that if there’s a motivation for combining A and B, but that it’s a “close call”, and if there’s further motivation for combining C, but that’s a close call, that by the time you reach D, that close call is too much – the straw has broken the camel’s back. The subject matter as a whole is non-obvious.”
In the situation you put forward that is generally a safe assumption to make, yes. Though it isn’t 100% true, it generally is. And further, it is the lawl. And the reason that it is a safe assumption to make is not because the combo magically necessarily went into “non-obviousness” (although that does happen sometimes). The reason is because in that sort of situation you cannot say with over greater than 50% certainty (prima facie case!) that it is obvious. You need to have made a case, at all times when issuing a rejection, that it is more likely than not (<important bro, you gotta hit 51%) that it was obvious. You, on the other hand, are just establishing that there was some remote possibility (1%? maybe .01%?) that it might could have been obvious and then putting the rejection forward.
See MPEP 2142 Legal Concept of Prima Facie Obviousness
And also
link to en.wikipedia.org
And also the wiki on Legal_burden_of_proof
Bottom line is that there is a big ol "administrative lawl" grey zone between 0 and 50% likelihood of obviousness (even when all limitations are met and a motivation exists) that can sometimes be hit where the office cannot lawfully proclaim the claim to be obvious, though the office also may not outright feel it would be good to declare it non-obvious either. And it is usually easiest to hit by continuing to make the rejection less plausible by forcing the addition of references.
And random, yes, apparently this is the legal way the system is setup. It's not so bad.
“What I am saying is that it doesn’t matter if something is a “close call” or how many times that happens.”
You’re not using judgement if you say that. Sorry bro, that’s what judgement is.
“but the judgment is only directed toward the question of whether the cited evidence supports a contention that the art was enabled and motivated to make a modification”
No sir. Re-read that one you cited and a million other decisions with the following in mind. Judgement here means you have to use your brain about the obviousness question as a whole, not just two little sub factors, enablement and motivation. You are the deciderer and the question you’re deciderering is the ultimate conclusion of obviousness, not merely sub-features thereof. Specifically you need to be figuring out if you can say with 51%+ certainty that it was “in the middle of the road” as opposed to, oh idk, 100% certain to be out in the middle of the woods, or 49% likely to be in the middle of the road. And technically that needs to happen before you send the rejection. Not after he responds. That technicality is what can make examiner’s jobs much more ez peasy if it would catch on at the office.
Once you’ve at least considered my hypothesis put forth here, which I assure you is supported by 10000000% of all the lawlyers on this board and irl, come on back and reconsider what you’ve typed further.
You’re not using judgement if you say that. Sorry bro, that’s what judgement is.
You’re judging whether the evidence warrants a holding that there is a motivation. That holding is independent of other holdings.
Judgement here means you have to use your brain about the obviousness question as a whole, not just two little sub factors, enablement and motivation.
You are doing it about the whole, you are judging every piece – from whether the reference evidences knowledge of an element to motivation to enablement to the same thing with the next element. Once you conclude that the art knew how to do something, however, you don’t turn around and decide whether it could do something else based upon whether or not someone decided to write the known thing down.
Once you’ve at least considered my hypothesis put forth here, which I assure you is supported by 10000000% of all the lawlyers on this board and irl,
Funny that you can’t point to a single judge saying what you say. Being in the company of anon on here is a great way to know you’re probably saying the opposite of what the big guns will say.
“you are judging every piece ”
Yes you have to do each piece, and then at the end you have to use judgement on the whole conclusion of obviousness. That part at the end is the part I’m discussing now with you, which you apparently don’t think exists.
As an aside (but let’s not get sidetracked) you also have to consider all evidence of record, including the things that indicate it wouldn’t be obvious.
“You are doing it about the whole, you are judging every piece – from whether the reference evidences knowledge of an element to motivation to enablement to the same thing with the next element. Once you conclude that the art knew how to do something, however, you don’t turn around and decide whether it could do something else based upon whether or not someone decided to write the known thing down.”
^This entire paragraph makes no sense to me. I don’t even know what you’re talking about my good sir. But, it is late. If you can reword it more plainly I will consider it.
“Funny that you can’t point to a single judge saying what you say.”
I just pointed to one in the very decision you presented, they’re simply speaking language you apparently don’t yet have full comprehension of. I can point to a thousand gazillion more. They’re all saying the same thing all the time, day in, day out. Every single DC judge is literally tasked with this in literally every trial that doesn’t go to the jury. And then the CAFC judges get re-tasked with it when they do de novo review. You can ask them at a conference if you’d like if you really truly don’t believe me. PTOS has one CAFC judge come every year and they always take questions.
Try these questions on for size:
Judge X, if there is only a 49% or less certainty that the claimed invention before me would have been obvious on the record before me, should I, as administrative office personnel, send a rejection or not?
Judge X, if I have all elements present in the prior art, with some elements spread out among different references, and there is a motivation to combine, and it is all enabled, is there necessarily a 100% certainty that it is obvious or do I need to ensure that it would have been plausible to make the combination (and bonus if you ask them if you have to consult all evidence of record including that tending to not show obviousness or outright show obviousness)?
Judge X, if I find that x, y, z invention would have been nowhere near the imaginary road of obvious technological progress and was instead off in the woods somewhere should I hold that to be obvious?
Spoiler answer key that you will get from every single last judge on the CAFC:
No.
No.
You need to ensure that it is plausible, but it is likely to be obvious. (and bonus, you need to check all evidence of record).
To a man/woman. Bet on it.
Anyway I have program to watch. Also, Random, I know you’ve been at this for years, and you’ve sent a lot of rejections that you’d now have to consider to have at least been a tiny bit sent in err. Don’t worry about that man, just let it be in the past, move forward, don’t be concerned about the past. Frankly even if you or everyone was screwing up the responsibility barely even lies with you or any individual examiner. The fault, in truth, lies with the setup of the office before we even got here, likely before I was even born and you were in short pants.
“Yes you have to do each piece, and then at the end you have to use judgement on the whole conclusion of obviousness. That part at the end is the part I’m discussing now with you, which you apparently don’t think exists.”
That is Random Examiner’s biggest stumbling block: he truly believes that all he has to do is conclude that each difference between the prior art and the claim(s) is obvious. Of course, you have to determine whether the claim, as a whole, is non-obvious from the prior art. You can’t just say, “Oh well, that difference is obvious. And that difference is obvious. That difference is obvious too.” That’s what Random Examiner thinks is the law. He’s wrong, of course. But try telling him that.
I’ve completely changed my thinking about you based on these posts of yours. You really do get it.
Of course, you have to determine whether the claim, as a whole, is non-obvious from the prior art.
Of course that’s true, but when the whole is not more than the sum of its parts you have that answer. As I have repeatedly said – if the art can add a bell to a bike and the art can add a basket to a bike, the art can create a bike with both a bell and a basket *provided there isn’t something about the bell and the basket coming into each others orbit which creates a problem*. If a bell and a basket don’t affect each other (as we all know is the case) then adding the bell and basket simultaneously is obvious, regardless of if that modification is the first or fifth or tenth modification. If the bell + basket does create a significant problem *you have non-obviousness regardless of whether it would be the tenth or fifth or first modification.*
You think that because two things follow each other that one is necessarily dependent upon the other – that just evidences your statistics teacher failed you. If I modify the tires of a bike it has nothing to do with modifying the handlebars of a bike. If each modification individually is achievable and the modifications don’t interact, the “as a whole” is per se achievable regardless of the fact that each of the modifications individually had a 51% chance of achievability. You don’t multiply the chances; they’re not related to each other. Again, according to you, each modification has a non-zero chance to fail (after all, its not anticipated) which means that according to you if you just pile up enough modifications you per se have non-obviousness. We have a form paragraph that explicitly tells us thats not the case.
Again, your hypotheticals or analogies, or whatever you want to call them, are so simplistic and disconnected from reality as to make them worthless. I haven’t seen an “aggregation” rejection in 17+ years of practice. That’s because nobody, not even the worst patent attorney hacks, writes “aggregation” claims.
Context matters. In the claim. And in the disclosures of the prior art. You clearly don’t understand that with your “always obvious” conclusions. Not even SCOTUS believes some modification and/or combination is “always obvious.” But you do.
Go figure.
>>I haven’t seen an “aggregation” rejection in 17+ years of practice. That’s because nobody, not even the worst patent attorney hacks, writes “aggregation” claims.
LOL. The reason you don’t get aggregation rejections is because they were banned by Gustafson in 1964.
Bob – check with Random, who somewhat recently posted an excerpt from the MPEP which shows that “aggregation” claims will not be rejected because the MPEP says they are allowed.
Aggregation rejections are banned.
Aggregation claims will not be rejected.
Same thing.
Thanks Bob – my mis-read.
And thanks for the case as well.
Random – your thoughts on this…?
You know my thoughts on this – The MPEP accurately reflects what the federal circuit says, and the federal circuit is routinely wrong. They explicitly overruled Lincoln Engineering on faulty logic that adding limitations to a claim always narrows it. Whether it narrows it is irrelevant, the question was whether adding a limitation allows liability to attach to different people, which is what Lincoln Engineering sought to prevent.
If you invent a new bow, and you try and re-claim the act of archery by claiming your new bow in a system with an arrow, and then you seek liabililty under any theory against an arrow manufacturer, you’re violating Lincoln Engineering’s anti-aggregation logic and the supremes will prevent you from recovering because you invented neither an arrow nor archery.
Regardless, its off topic as people routinely try and claim aggregations, they just do it under functional language. Alice was an aggregation claim, as are a lot of information processing software claims. The fact that the office makes up a token motivation and just rejects it under standard 103 just means we do a better job of giving deference to our superiors than others do.
Lincoln is a case from what year…?
Was 103 even on the books then?
Sorry, but your “use” of law here is simply off.
Was 103 even on the books then?
Lincoln Engineering is premised on 112b
I suggest that you concentrate and get 103 correct first (your propensity to get combinations of law wrong is part and parcel of your inability to understand the basics).
Random, on Lincoln Engineering and 112(b), if you look at the authority relied on by the Court, including the authority relied on in Bassick Mfg., all was it of the type related to the lack of “invention.”
And, the specific problem before the Supreme Court were cases for sale of old apparatus for use with the improved part.
But the case does sound in 112(b), does it not? Adding old elements to a claim with no new cooperation does tend to hide the ball. Also, one sees a lot of this practice in dependent claims. Do these claims really further limit the claim?
” you can add modifications ad infinitum”
That’s true, you “can”, and you can get away with it under the clear error standard (the later part of this is what causes problems in the office, because nobody ever gets called out for it). Indeed, this is what many literal idi ots at the office do and lawlyers cry rivers about constantly. Still yet, the person exercising judgement does not do that, because they recognize the confidence level with which they are making each determination and the determination as a whole is dropping each time they add a combo and irl it eventually drops below 50%, usually well below 50%. Most aforementioned idi ots keep soldiering on with that 1% likelihood of obviousness (because prima facie means nothing to them, they are literally ignorant of the whole concept). But there are other people that just arbitrarily boost the confidence level to 100% for each combo being made, like you are here with this “binary” determination that apparently, least in your mind, yields 100% certainty as each combo is made. This is one of the various methods I know of that are what I call “throwing the rejection”, or you could say “being a di ck”. It’s like reverse “throwing a fight” except for rejections, instead of losing on purpose, you throw the fight for yourself so that you “win on purpose” (because you’re the deciderer remember?). I’m going to go out on a limb here and say that at least 25% of rejections that issue from the office on 103 are solely this.
No you *can* because it doesn’t matter how much the applicant tells the art what it already knows. The applicant has to tell the art something new. There has to be something you can point to to say “the art couldn’t/wouldn’t have done that before.” You’re suggesting that if I just fill up a claim with enough known things that the sheer amount of mundacity becomes innovation. That’s not the case.
I think it’s very fortunate you’re in chemistry, where you’re probably not really hurting anyone with your misapplication of the rule. If you were in the mechanical arts and you went around with a thesis of “well the art knows how to do all of this but it takes me four references to show it so it must be non-obvious” you’d be allowing all sorts of terrible stuff. I guess according to you I’m an inventor because my phone has a very particular set of distinct applications providing particular features on it, amirite? A single device that initiates phone calls, messages, web browsing, driving directions, games, cameras, banking, ereading, ticket storage, blahblahblah, way too many references, nobody would think of that particular combination, patent please!
they recognize the confidence level with which they are making each determination and the determination as a whole is dropping each time they add a combo and irl it eventually drops below 50%, usually well below 50%.
Nope, entirely not the rule at all, and dangerous to think about it this way. You’re preferring textual examples over knowledge in the art. If the art knows how to paint a bus blue, the fact that there’s no anticipatory reference doesn’t mean that modifying the blue bus is suddenly a harder obviousness bar to make. There is absolutely no difference between an anticipated blue bus and an obvious blue bus that could be made when it comes to further modifying that bus.
There is not a single computer being used by a consumer right now that isn’t loaded with enough software and containing enough hardware that if you just claimed the computer sitting there it would take hundreds of references to teach the entire thing. That doesn’t make the computer inventive, just because you or someone else selected a particular set of things the art already knew to claim. Just like you filling your house with a unique blend of items doesn’t make your house a non-obvious system. You may be a special little snowflake, but all you have done is aggregated what was already known. There are undoubtably millions or billions of ways to mix and match computer features. But mixing and matching isn’t inventive. You kind of have to give the art something new.
Aren’t you the one that showed the MPEP allowing “aggregation”….?
“There is not a single computer”
Yes, you keep coming back to these extremely simplistic examples, consumer computers, consumer bikes, consumer x, y, z. Yes random it’s going to be very easy to make 103s (even multi-ref 103s) in the teacup art compared to the heavy machinery industry.
And also that is yet another issue I take with patenting upon compooter programs. Obviousness simply isn’t the same barrier that it is in most arts in the compooter arts unless you start pulling bs rejections. In the compooter arts you just add on another “imaginary” “virtual” or “detect/rule/x” feature or whatever until something doesn’t make sense about the combo and eventually you’ll stumble into non-obviousness most likely. It isn’t always quite so easy in the actual useful arts.
“actual useful arts”….
Feel free NOT to use any “compooter” thingie because you consider such “non-useful artsy”
That’s the great thing about these things – no one is forcing you to use them. Just whip out your pre-compooter ways and have at it.
Unless of course, that won’t do – and then maybe you want to take another gander at your (too) quick-to-put-down topic here.
😉
Look anon you can sit around and be all pis sy about this all you want, but even you must note that the barrier is much much lower in the compooter arts than the low barrier that it already is in most arts. Unless the administrative agency takes things into its own hands that is and ahem, applies the lawl with over-much gusto.
6,
You should stick to topics you know and leave out the anti-software philosophizing.
First, I am not the one that is being “all pis sy about anything. You must have missed my winky emoticon with my gentle and easy going reminder message. Methinks it was you getting “all pis sy” because my reminder hit the mark.
Second, the barrier itself is not lower, let alone “much much lower.” The barrier is the same. You mistake the relative ease of invention for the height of the barrier. In this regard, you are a bit like the other anti-software patent poster Malcolm. Malcolm likes to whine about “G-g-grifters” and the 1%ers and yet is against the form of invention MOST accessible to the opposite class of people. And here too, you seem to want to eliminate those same relatively less well off people from the ability to obtain patent protection for their inventions.
Do you have something against the non-wealthy?
“The applicant has to tell the art something new.”
The app is telling “the art” aka the whole world, to combine those features. Not that those features “can be” combined. But that it is “positively suggested” to be done, as in “do it”. That’s all that the good congress requires as they have set the bar low so that the everyman can get in on the patent action and so that it isn’t only experts/geniooses that ever get a patent.
“There has to be something you can point to to say “the art couldn’t/wouldn’t have done that before.””
^Citation needed.
“well the art knows how to do all of this but it takes me four references to show it so it must be non-obvious”
^That isn’t the determination. The determination is: “well the art ‘knows how’ ‘to do’ all of this but it appears extremely/very implausible that these four references that are required to make a rejection to make a rejection would be combined by a relevant imaginary man so I cannot say with greater than 50% certainty that it is obvious, thus administratively we hold it to be sufficiently distinguished from the art of record as a rejection should legally not issue”
The app is telling “the art” aka the whole world, to combine those features. Not that those features “can be” combined.
If the art recognizes it can add a feature to achieve a beneficial effect it is legally the same thing as “telling the whole world to combine those features” because we don’t prefer textual commands to non-textual motivations in an obviousness analysis.
But that it is “positively suggested” to be done, as in “do it”. That’s all that the good congress requires
This is precisely the opposite of the KSR holding. Telling someone to do something they were already motivated to do isn’t anything inventive.
“well the art ‘knows how’ ‘to do’ all of this but it appears extremely/very implausible that these four references that are required to make a rejection to make a rejection would be combined by a relevant imaginary man
hahahaha yeah of course something “very implausible” is non-obvious. Your problem is that “knowing how to do” things doesn’t make their doing implausible, nor does the fact that there are four of them make them implausible. I’m not arguing that things can’t be non-obvious, I’m arguing that the number of things you have to do doesn’t matter. You’re being awfully smug for someone who has the MPEP directly telling them that their position is wrong – the number of references isn’t relevant for obviousness.
^Citation needed.
Sure, A & P Tea, Sakraida, Anderson’s Blackrock. Old elements for their known functions are not inventive. You might also want to check MPEP 2143.
“You’re suggesting that if I just fill up a claim with enough known things that the sheer amount of mundacity becomes innovation. That’s not the case.”
Nah, not always. Especially if it is truly “mundane” things going in. Generally if you’re gong to “fill it up” you want to use the very least “mundane” things in the app, so as to have to add fewer (usually one “thing” will suffice if you do this perfectly) and be able to get the applicant to agree to your suggestion. Though yes, sometimes a gaggle of somewhat mundane things can eventually add up. Adding BMX bike addons to a bike is going to take quite a lot.
Though yes, sometimes a gaggle of somewhat mundane things can eventually add up.
Perfect, you can handle my iphone claim then. Just let me know how many apps it will take for you to call it non-obvious. Facebook, Weather, chrome, banking app, news app. That could take four references right there, right? I bet I could sue 30% of the populace if you give me that one.
Your “something new” appears to be your messing up the 102/103 distinctions….
And riddle me this while we’re at it: If I have three references that don’t mention, for example, wireless communication, and the applicant amends to put in wireless communication, am I cheating the guy out of a patent by taking official notice? If the number of references is relevant, why does the office allow for official notice? That’s making a substantive obviousness determination based upon a procedural act. That would be beyond the office’s power.
“If the number of references is relevant, why does the office allow for official notice? ”
Wow, you’re delusional. If you’re relying on Official Notice, you’re doing it wrong. And any halfway competent practitioner will let you know that.
Look. According to current practice, the number of documents is not a factor. Its just that from the standpoint of practicality and reasonableness, somewhere around the fourth or fifth document it just stretches credulity to dissect phrases out of the context of a claim, find those phrases in different contexts, stitch those phrases together and assert that the claimed subject matter would have been obvious based on that stitchery. Even Martha Stewart would look at one of these 5 reference quilts and exclaim — It’s NOT a good thing.
the number of documents is not a factor
somewhere around the fourth or fifth document it just stretches credulity to dissect phrases out of the context of a claim, find those phrases in different contexts, stitch those phrases together and assert that the claimed subject matter would have been obvious based on that stitchery
Your first sentence and your second sentence are in direct conflict with each other. If you agree that the number of references is irrelevant, then you have to conclude that the only relevant thing is the specific “stitching” and you can’t make an abstract or general rule. You can’t say that the number of references is irrelevant and then turn around and say “but by the fifth one” irrespective of what the other four stitchings are. It also doesn’t make sense to talk about “fifth” when someone other examiner would say “fourth” and another would say “third.” KSR said it’s an objective test, not a subjective one.
The only standard that is both objective (as KSR commanded) and which ignores the number of references and which applies a standard is a test which judges each “stitching” (or modification as I call it) on its own merits – if you conclude that each stitching individually was within the skill then the sum of stitchings is within the skill. It is not rational to say that the art could do each of the modifications individually but not do each of the modifications in sequence unless there is some identifiable problem that arises from the “as a whole” consideration. If you don’t have that rule you’re going to have an irrationality that each of the individual acts are obvious but the whole not being obvious despite the whole not being anything more than the sum of its parts.
Again, if you believe the principle that “by the fifth one” or you agree with Moore saying “wow, four references, what do we make of that?” then you necessarily have to conclude that the 300k reference obviousness rejection is per se invalid, as 300k is way higher than 4 or 5, right?
I can say what the policy is then say what is logical and practical. The policy is in conflict with reason.
Seen from the other direction, under the rules/policy, an examiner could cite the Encyclopedia Britannica as a single reference, stitch together citations from volumes I, IX and XXI and reject a claim under 102. But, that too would stretch credulity.
In reaching for an exaggeration, you picked up a falsehood. It would not conform with office policy to apply a 102 rejection under obviously disparate entries of an encyclopedia. No need to misrepresent policy.