Obviousness Law: A Reasonable Expectation of Success

In re Stepan Co. (Fed. Cir. 2017)

In a split decision, the Federal Circuit has vacated the PTAB ruling that Stepan’s claims are not patentable.  The claims here are directed to the use of ultra-high concentrate glyphosate and a particular surfactant to ensure “better adherence to leaves, thereby enhancing penetration.”  Although the PTAB (Board) found motivation to combine elements of the prior art to form the claimed system, the Board did not fully support that PHOSITA would have a ‘reasonable expectation’ that the combination would be a success.

Success

The decision here thus goes to the core of obviousness law:

The majority: An obviousness determination requires finding both “that a skilled artisan would have been motivated to combine the teachings of the prior art . . . and that the skilled artisan would have had a reasonable expectation of success in doing so.” quoting Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359 (Fed. Cir. 2016). . . . Absent some additional reasoning, the Board’s finding that a skilled artisan would have arrived at the claimed invention through routine optimization is insufficient to support a conclusion of obviousness. (Majority opinion by Judge Moore and joined by Judge O’Malley).

The Dissent (Judge Lourie): Where, as here, there is a single prior art reference, there does not need to be a finding of reasonable expectation of success for those skilled in a particular art to make conventional modifications to the prior art and look for improvements in some parameter. See In re Ethicon, Inc., 844 F.3d 1344, 1351 (Fed. Cir. 2017).

Majority’s Response in FN.1: The dissent suggests the PTO need not establish a reasonable expectation of success where there is a single prior art reference. We do not agree. Whether a rejection is based on combining disclosures from multiple references, combining multiple embodiments from a single reference, or selecting from large lists of elements in a single reference, there must be a motivation to make the combination and a reasonable expectation that such a combination would be successful, otherwise a skilled artisan would not arrive at the claimed combination.

To be clear here, the PTAB did appear to find a reasonable expectation of success. [PTAB Decision] The holding here though is that such a broad conclusory finding must also be supported by specific factual findings targeted to the patent at hand.  An important element of this decision is that the majority particularly held that the lack of factual findings supporting the PTO’s conclusion meant that the agency had not even established a prima facie case of obviousness.

Image result for stepan company

122 thoughts on “Obviousness Law: A Reasonable Expectation of Success

  1. I have read the majority, the dissent, and the comments here. From my standpoint (obviousness at the EPO) I am puzzled why there is so much difficulty over what strikes me as a very simple set of facts.

    I read that a high cloud point (ideally higher than 60°C) is desired by those skilled in the art and that 120°C is already known, suggesting that >70°C is banal. I read that the only feature in the claim that endows the claim with novelty over Pallas is the >70°C cloud point. I read that only some of the compositions covered by claim 1 deliver a cloud point >70°C, the rest coming in at <70°C.

    Typically, at the USPTO, just one worked Example that delivers Result X allows an Applicant to get to issue with a claim to ALL ways of achieving Result X. The scope of such claims is not commensurate with the contribution to the art, namely the Example that works. Such claims of excessive width are an affront to common sense and therefore bring the patent system into disrepute.

    Moore and O'Malley expect the PTO to generate the evidence to establish a prima facie case of obviousness on a "likelihood of success" standard. It eludes me how the PTO is to do this, hampered as it is, in not having at its disposal a fully equipped test laboratory and a budget for conducting a full test regime.

    Moore and O'Malley might naively suppose that they are disciplining the PTO. Instead, they are writing a roadmap for extortionists.

    1. Max, Agree. While some my dispute novelty and obviousness, none can dispute that the claim claims any formulation within ranges to achieve the result and the specific provides no methodology for making adjustments of the various constituents to reliably achieve the claimed result.

      If obviousness was not the proper grounds, there should have been a remand all the way back to the examiner to issue a rejection under 112(a) and (b).

      1. Thanks Ned. I suppose the “take home” for the PTO is that, in future, the PTAB will have to resolve to write its Decisions in a style fit for an intelligent non-specialist onlooker, such that high-flown jurists who are unfamiliar with, unused to, and totally without experience in the examination of patentability, can read along and accept the Board’s holdings, without getting into their heads the notion that they know better, and must reverse.

        Not a bad thing then, for the health of the patent system, if we take the long view?

    2. The “greater than 120” point is NOT reflected in the majority of comments, MaxDrei, as that was only shared most recently, after the majority of comments here.

      Your finding of “banal” is itself banal.

    3. I hope I am not the source of a 120C cloud point, as my comment regarding 120C was in jest.

      The >90C part was serious and can be found in Stephan’s specification at paragraph 12 of the PPA. Though to be fair, that was with a related but distinct surfactant.

      This case is simple.

      Examiner makes rejection based on MPEP 2144.05.II which is principally based on In Re Aller.

      PTAB adopt’s the examiner’s rejection, mentions In Re Aller for a secondary reason, and doesn’t clearly articulate the basis of the rejection.

      Because PTAB did not hold their hands, the CAFC wildly misunderstands the rejection as prematurely forcing the applicant to prove non-obviousness.

      If the Examiner/PTAB had so prematurely shifted the burden of proof, the CAFC’s response would have been reasonable. Nothing to be learned here by anyone other than PTAB.

      This case should be embarassing to the CAFC that they got it wrong in two opinions.

    4. “Moore and O’Malley expect the PTO to generate the evidence to establish a prima facie case of obviousness on a “likelihood of success” standard. It eludes me how the PTO is to do this, hampered as it is, in not having at its disposal a fully equipped test laboratory and a budget for conducting a full test regime. ”

      If one needs all that, then its not obvious, is it?

  2. I just noticed that Stephan’s specification acknowledges a glyphosate concentrate using a related surfactant with a >90C cloud point was known in the prior art.

    I was going to make a snarky comment about next issuing a patent for a concentrate with a cloud point of 120C under 10 bar of pressure. But I realized that was unfair, as in contrast to Stephan’s claims, such experimentation would not be nearly as routine in this field.

  3. Two comments about Judge Lourie’s dissent:

    (1) I sympathize with the problems that Judge Lourie identifies with these claims, but his complaints (that the novelty here resides in the claimed functional effect (>70˚), and that the application disclosure does not teach one how to recognize which formulations within the specified structural genus have these functional properties, except by trial and error. That is a legitimate complaint, but the proper rejection here sounds in written description, not obviousness. When the correct rejection is written description, and the obviousness rejection is all wrong, then defending the obviousness rejection on written description grounds just makes one sound silly. Judge Lourie would have done better just to come out in the open with the written description complaint, rather than couching it all in terms of an obviousness argument that makes no sense.

    (2) I really cannot agree with Judge Lourie that the cited references teach all of the structural limitations of the claim. Yes, I can find these various structural limitations, but that is just because these references constitute a sort of “Whole Earth Catalog” of glyphosate art. When the art discloses an undifferentiated welter of everything, this is no more informative to the ordinary artisan than a disclosure of nothing. I see no meaningful teaching to combine each of the various structural limitations to reach the claimed formulation, nor any suggestion that such a combination would yield a higher-than-ever-previously-achieved cloudpoint with this class of surfactants.

    The fact that the applicant here achieved a higher cloudpoint than anyone had ever previously achieved with this class of surfactants strikes me as conclusive proof that there is a nonobvious invention here, and the only question is whether the applicant had properly claimed this nonobvious invention, or something more than just the nonobvious invention. Here again, however, the limitation limiting the invention to the nonobvious (>70%) conclusively establishes that the claim is limited to nonobvious subject matter.

    The only question, then, is whether the applicant has described that subject matter such that the person of ordinary skill can identify and practice that subject matter. Once again, that is a basis for a §112(a) rejection, not a §103 rejection.

    1. The only question, then, is whether the applicant has described that subject matter such that the person of ordinary skill can identify and practice that subject matter. Once again, that is a basis for a §112(a) rejection, not a §103 rejection.

      Some of the “confusion” about which statutes to apply arises from various judge-made doctrines out there that permit certain types of claim “limitation” to be ignored when evaluating claims versus the prior art (“limitations” regarding intended use, for example).

      Limitations relating to results achieved can also be problematic especially if the art teaches that the recited structural components in the claim are components that should be tested and combined. Identifying, say, two specific mixtures that work to achieve the “non-obvious result” recited in the claim and then claiming a far broader range of mixtures and reciting the non-obvious result can sometimes get the patent out of the office. But it’s a patent with problems. Expensive problems, in some cases.

      1. Identifying, say, two specific mixtures that work to achieve the “non-obvious result” recited in the claim and then claiming a far broader range of mixtures and reciting the non-obvious result can sometimes get the patent out of the office. But it’s a patent with problems. Expensive problems, in some cases.

        I agree 100%. A functional limitation can often get the patent across the §103 hurdle, but that is not to say that it is a good strategy. In fact, I question whether such a strategy really should not get the patent to allowance. To my mind, one resolves the §103 rejection by provoking a §112 rejection. Unfortunately, it does not appear that the PTAB thought to make the §112 rejection here, and the CAFC simply has no power to make such a rejection.

    2. In re Chudik CAFC opinion published today:

      The patentability of an apparatus claim “depends on the claimed structure, not on the use or purpose of that structure.” Catalina Mktg. Int’l v. Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir. 2002); see also In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997) (“It is well settled that the recitation of a new intended use for an old product does not make a claim to that old product patentable.”) Thus, Dr. Chudik’s contention that his apparatus will be used in a humeral, as opposed to a glenoid, implant is not a patentable distinction

      This “well settled’ law applies to any composition or system claim, not just “apparatus” claims.

      1. It applies in context – and NOT as the type of trying to make an optional claim format into a non-optional claim format that you are attempting to do.

        Another way ( of course) of looking at this is with the Inherency Doctrine.

        1. Inherency is a doctrine for weaponizing the prior art and can be used to “import” unrecited structural limitations into the prior art (not just “results” and “statements of purpose/use” and functional limitations).

          It applies in context

          True of everything.

          NOT as the type of trying to make an optional claim format into a non-optional claim format that you are attempting to do.

          I’m not “attempting” to do anything. I’m just telling everyone what has already been done. It’s settled law.

          Nobody knows what you’re talking about.

          1. I’m not “attempting” to do anything. I’m just telling everyone what has already been done. It’s settled law.

            Nobody knows what you’re talking about.

            Pure B$ – and we both know it.

        1. There is no exception to §§102/103 for medical uses. A new use of an old drug can be patentable if the new use is useful, novel, and nonobvious. The question is whether the claim will be worth anything, however.

          If I discover that some very precise serum concentration of aspirin (for example, 150 to 200 µg/dL) can cure ringworm, I might be able to get a patent for the method (e.g., “a method of treating ringworm in a patient in need thereof, the method comprising administering a dose of acetylsalicylic acid to the patient to achieve a concentration of 150 µg/dL to 200 µg/dL of acetylsalicylic acid in the patient’s blood”).

          Mere sales of aspirin will not infringe this claim, however. The usual way that such a claim is infringed is if a generic drug manufacturer writes on its label that one should administer aspirin at this concentration to treat ringworm. That constitutes infringement by inducement under §271(b). However, if the aspirin seller does not write this message on the label (or in the promotional materials, or some such), then there is no inducement.

          As such, second medical use claims tend not to be very useful in the context of over-the-counter drugs, because there is no mechanism to make the drug-seller write an inducing message on its product, and absent such a message you have no cause of action for infringement, except against the end-user patient, who is hard to identify and not worth suing even if you do.

          Second medical use claims are frequently valuable in the context of prescription drugs, however, because the FDA will frequently require generic drugs to copy the branded drug’s label verbatim. If the branded drug’s label says “use this product to treat X,” then it is inducement to infringe when the generic copies that label.

        2. MS Is there an exception for medical uses?

          What Greg said is correct but I want to make clear that there is legal distinction in the US between composition/apparatus/system claims reciting “intended uses” as limitations (on one hand) versus method claims describing the actual physical transformative steps that are “used”.

        3. The new use is patentable. As is a new use of an old machine or a new use of an old composition of matter. Of course, software is a component of the machine, so new software makes a new machine, just as a new gear makes a new machine.

  4. Bottom line. Federal Circuit refuses to follow KSR in cases involving the chemical arts. Junk chemical arts patents abound. It’s disgraceful.

      1. Laurie’s method of applying the law is as follows. He reads the claim and determines whether he thinks it is patent worthy using his hindsight reasoning and set of beliefs about how technology works, which are sadly lacking.

        He then constructs arguments to back-up his flash judgment.

        1. Night, regardless how people claim they do it, this is always how everybody reasons. Not just Judge Lourie. It’s not a fair criticism you’re making. You do it just as much yourself.

          They cannot help it. That’s the way the human brain works. You already know Kahnemann’s Thinking Fast, Thinking Slow. It inspired Jonathan Haidt’s The Righteous Mind (and its Elephant and Rider metaphor) and, after that, there’s a Paper applying those academic research findings to the everyday work of jurists.

          It’s trite, I know, but we still today enjoy much the same quick-thinking brain that we already had, 100,000 years ago, when struggling to stay alive on the African Veldt. In an instant, even today, one’s elephant brain simply cannot help itself but take the Friend or Foe decision, and then act accordingly.

          1. It’s not a fair criticism

            Pure B$.

            Legal thinking is supposed to be different – supposed to be critical thinking and is supposed to NOT be that type of mere reflex.

            To say that “oh well, it is just natural” is the antithesis to critical thinking and has NO place in the legal world.

            We choose differently.
            We aim differently.
            We set the standard differently.

      2. Ned: The claim is to a result.

        Nice to see people thinking about this stuff. Yes, functional claiming at the point of novelty is a real problem. It’s less of a problem in the chem/bio arts, of course, than in the logic arts where the claims and disclosure disclose nothing but vapor.

        1. than in the logic arts

          What is a “logic art,” and how is that copyright project coming along on “logic”…?

          Your prevarications are old, trite and exceedingly meaningless.

  5. Let’s do the Malcolm Sniff on claim 1:

    1. An ultra-high load, aqueous glyphosate salt
    a. water;

    b. glyphosate salt in solution in the water in an amount
    greater than about 39 weight percent of acid equivalent,…

    said glyphosate salt being selected from the group consisting of
    the isopropylamine salt of glyphosate,
    the potassium salt of glyphosate,
    mixtures of the isopropylamine salt and the potassium salt of
    glyphosate and
    mixtures of the potassium salt and the ammonium salt of glyphosate;

    c. a surfactant system in an amount
    ranging from about 1 to about 20 weight percent…

    comprising:

    i. from about 10 to about 60 weight percent,…
    of one or more dialkoxylated alkylamines;

    ii. from about 5 to about 30 weight percent,…
    of one or more water miscible solubilizers; and

    iii. from about 30 to about 75weight percent,…
    of one or more amine oxides;

    said concentrate having a cloud point above at least 70ºC.
    or no cloud point when the concentrate is heated to its boiling point.

    What is the single “objective physical structure” of the invention?
    Malcolm’s “sniff test of objective physical structure demands A single objective physical structure. You have several “moving parts*** here,” and the invention finishes being claimed by the result about cloud point (even throwing in a function of heating “whatever” it is to its boiling point).

    *** you are actually covering a fairly wide range of different “objective physical structures,” tied together with a desired result, and that desired result based on words sounding in function.

    But “chemical” is enough to close Malcolm’s eyes and snuff the sniff. Does that leave a bad taste in your mouth? I hear you. I feel the same.

      1. You know full well that it is YOUR argument.

        Even if your “Billy” comment is wiped out, your “softer” version here still says nothing.

      2. You need to take up the challenge here MM. Anon has challenged directly on a substantive point that you have made thousands of times.

        Please provide a substantive answer.

        1. What Malcolm needs is a little more intensive than taking up a challenge of him squaring his own “objective physical structure” mantra for this chemical arts case without looking like a complete d00fus.

          Be that as it may though, and quite apart from any (all too easily seen) running away by Malcolm, the dialogue can be fruitful by noting what it is that IS happening with the direct claim language here that place this claim outside of the single objective physical structure meme that Malcolm so eagerly embraces (in his attacks on other claims).

          Of course, we both know that the [shocking] concept at play here is “the ladders of abstraction” [notwithstanding the “A” word, this concept is a good thing].

          Claims – in all art fields – employ the technique of ladders of abstraction.

          That is, any worthwhile claim (and any claim above a painfully exacting picture claim).

          Even – as noted here – claims in the art field of chemical compositions.

          Instead of simply recognizing this truism, we have the prevaricators and the conflationists expounding as if ladders of abstraction always merely have two rungs on the ladder, and any attempt at reaching for a next rung is somehow a “bad” thing.

          This too – in particular – highlights the personal cognitive dissonance that runs rampant in Malcolm’s perpetual parade of propaganda (as you note).

          In most all cases, the heart of anti-software (or anti-business method) patent “arguments” can be critically examined and found to be merely anti-patent arguments.

          This is because the law – as written by Congress – is agnostic to the various art fields and areas of innovation – as it should be. Those seeking to curtail innovation in particular art fields then must obfuscate and prevaricate in order to draw legal distinctions not there.

        2. Pardon Potential (re)Post…

          Of course, we both know that the [shocking] concept at play here is “the ladders of abstraction” [notwithstanding the “A” word, this concept is a good thing].

          Claims – in all art fields – employ the technique of ladders of abstraction.

          That is, any worthwhile claim (and any claim above a painfully exacting picture claim).

          Even – as noted here – claims in the art field of chemical compositions.

          Instead of simply recognizing this truism, we have the prevaricators and the conflationists expounding as if ladders of abstraction always merely have two rungs on the ladder, and any attempt at reaching for a next rung is somehow a “bad” thing.

          This too – in particular – highlights the personal cognitive dissonance that runs rampant in Malcolm’s perpetual parade of pr0paganda (as you note).

          In most all cases, the heart of anti-software (or anti-business method) patent “arguments” can be critically examined and found to be merely anti-patent arguments.

          This is because the law – as written by Congress – is agn0st1c to the various art fields and areas of innovation – as it should be. Those seeking to curtail innovation in particular art fields then must obfuscate and prevaricate in order to draw legal distinctions not there.

        3. Third try…. (the “Don’t have a dialogue” filter may still be tripped from yesterday)

          Of course, we both know that the [shocking] concept at play here is “the ladders of abstraction” [notwithstanding the “A” word, this concept is a good thing].

          Claims – in all art fields – employ the technique of ladders of abstraction.

          That is, any worthwhile claim (and any claim above a painfully exacting picture claim).

          Even – as noted here – claims in the art field of chemical compositions.

          Instead of simply recognizing this truism, we have the prevar1cat0rs and the conflationists expounding as if ladders of abstraction always merely have two rungs on the ladder, and any attempt at reaching for a next rung is somehow a “bad” thing.

          This too – in particular – highlights the personal cognitive dissonance that runs rampant in Malcolm’s perpetual parade of pr0paganda (as you note).

          In most all cases, the heart of anti-software (or anti-business method) patent “arguments” can be critically examined and found to be merely anti-patent arguments.

          This is because the law – as written by Congress – is agn0st1c to the various art fields and areas of innovation – as it should be. Those seeking to curtail innovation in particular art fields then must obfuscate and prevaricate in order to draw legal distinctions not there.

    1. P.S. This claim 1 was the only independent claim of the 31 claims rejected.
      Also note that this was a Board appeal decision on an ex parte application examination, not an IPR, so how could the Board itself, or even the ex parte examiner, come up with such required adverse-evidence proof “that a skilled artisan would have been motivated to combine the teachings of the prior art .. and that the skilled artisan would have had a reasonable expectation of success in doing so?” Thus this application will undoubtedly issue with all claims intact.
      However, if someone is sued on the patent, this decision practically invites whomever is sued to file an IPR petition supplying that missing adverse-evidence via declarations and other patent or publication references.

      1. >>how could the Board itself, or even the ex parte examiner, come up with such required adverse-evidence proof “that a skilled artisan would have been motivated to combine the teachings of the prior art .. and that the skilled artisan would have had a reasonable expectation of success in doing so?”

        I suspect a much more persuasive rationale could have been crafted by the Examiner using the Pallis reference, if the Examiner knew that such a rationale was necessary. Instead the Examiner provided a rejection based on the the obviousness of routine optimization in the context of In Re Aller (and MPEP 2144.05.II).

        The point being, these claims could be dealt with by ex parte examination.

  6. And… one more comment — those criticizing Judge Lourie’s dissent should be sure to read it. Including the case caption, it’s barely over three pages, straightforward, and not the sort of controversial missive one might expect after reading the majority’s footnote.

    1. People should read “Judge” Lourie’s dissent because it includes ad hominem attacks on the patentee. The problem with Lourie is that he thinks he can use hindsight reasoning and just look at an invention and decide on his own whether it is patentable. He has no concern about applying patent laws.

      A person that is clearly unfit to be a judge on CAFC.

    2. And, dcl, if you bother actually reading what he writes and actually listening to him, you will see time and again that Laurie just looks at the invention and uses hindsight reasoning to form his own private opinion about an invention. And, then he just patches together some lame argument to justify his private opinion.

    3. Read it dcl, and I cannot agree with you.

      While I do appreciate Judge Lourie’s attempt at discussing the point of the composition claim attempting to claim a result, his “reading” of claim limitations is abysmmal. Just because a claim limitation sound in function does NOT mean that THAT claim limitation is not there (Lourie attempts to read the claim WITHOUT that final limitation). To wit, Lourie’s “In that case it could be argued that the achievement
      of a 70ºC cloud point was a special goal of the invention,
      which made its achievement nonobvious and important,
      ” misses the point that the limitationin the claim (functional, or result as it may be) DID expressly make that ’70ºC cloud point’ a special goal of the invention.

      Judge Lourie evidences a type of judging in that he know the result he wants, and simply speaks in order to achieve that result.

      Also, I find (scientific) fault with the way that an upper limit type of limitation is being treated.

      Having something “greater than 60” is (or can be) an open invitation to injection of science fiction that would have no place in a legal obviousness analysis.

      (yes, I realize that I am treading into the domain of “art for obviousness does not need to be enabled”- but maybe it should be).

      Finally, What Lourie would do would ALLOW an admittedly flawed decision to end the story for the patentee. The majority here – based on the actual legal points and arguments in front of it – remands BACK TO the lower forum.

      That is simply the better path.

    1. My first step is believing that you do appreciate the poster.

      Beyond that, I am not inspired to take a second step.

      😉

  7. “This is Exhibit A as to why I think that the SCotUS’ should be stripped of jurisdiction to review patent cases.”

    Amen.

    1. The only thing more awesome is 80+ year old judges who are trained in chemical arts opining over comp-sci inventions.

  8. One of the interesting things I saw in reading the English cases in the run up to Oil States is that they viewed differences from the prior art in terms of utility. Did the difference cause an improvement. If the alteration provided little or no difference, the difference was deemed immaterial and could not support a finding of newness.

    I think this translates well into obviousness law. At a minimum, the change must bring new or improved utility. If it does, then was that change known to the prior art such that it could be expected?

    Actually, this is just Hotchkiss v. Greenwood. But the way the English cases treated it, it seemed a whole lot clearer and simpler.

    1. At a minimum, the change must bring new or improved utility… Actually, this is just Hotchkiss v. Greenwood.

      That sounds right to me. If the reason that the change from the prior art is not obvious is because it makes the product worse in every possible way, then that is not enough to make the claim patentable.

      The important caveat to this point, however, is that one can achieve patentability that effects an improvement in one aspect of the product, but a worsening in another aspect. The important part—to the patentability assessment at least—is that the improvement was not expected (i.e., obvious) ex ante, regardless of whether the corresponding worsening might or might not have been expected.

    2. This does NOT translate well. As anyone with any background whatsoever in the history of innovation can tell you.

      The misnomer of “better,” as in some linear advance, is simply not how innovation occurs (or can occur).

      1. As anyone with any background whatsoever in the history of innovation can tell you

        As one who has spent his entire adult life innovating, I’m struggling to think of a patent-worthy example of anything new that was worse in every possible respect compared to what existed before.

        Even if such things existed, why on earth would we choose to “promote progress” by rewarding the people who create worse things?

        Sometimes you have to put the patent crack pipe down, “anon.” I know it’s hard for you.

        1. “Every possible” is a lovely strawman.

          Why don’t you actually inform yourself as to the relative seemingly backward steps that disruptive innovation so often exhibits.

        2. Perhaps the lesser thing is lighter, less complex, more easily manufactured and less expensive, and has broader industrial appeal. I have dealt with such a situation in aerospace applications utilizing graphite composites.

          1. <iPerhaps the lesser thing is lighter, less complex, more easily manufactured and less expensive

            Those would qualify as improvements, kids (although the “less expensive” is an abstraction absent some context — charging less for something is not innovative).

            Please try to keep up.

    3. Ned, thanks for that. I observe in reply Englishman Paul Cole’s book has it that patentable matter corresponds to “A difference that makes a difference”. The “difference” is the novelty. The difference that said difference makes is the measure of non-obviousness/utility/eligibility, call it what you like.

      When the EPO was being set up in 1977, patentability was structured by an Englishman called Cadman. The EPO had it then (and still does today) that a patentable invention is to be equated to the solution of an objective technical problem. Of course, that which solves the problem is the same thing as “the difference that makes a difference”.

      Patentability, actually, is much the same to judges everywhere, it seems.

    4. link to ipkitten.blogspot.de

      Ned, a Link for you, on technical effects and the difficulty of assessing whether they are real.

      To the IPKat blog, revealing how deceitful a pharma corporation can be, about utility, in order to get to issue on a claim to a variant of a molecule. It seems that one files comparative data at the PTO, in support of assertions of an improved pharmaceutical effect, even though you know there really isn’t any such effect.

      How does the PTO (and those who establish the PTO as a patent granting authority) guard against such corporate deceit? IPR perhaps?

      1. “How does the PTO (and those who establish the PTO as a patent granting authority) guard against such corporate deceit? IPR perhaps?”

        Generally they don’t if it is filed as x y z evidence iirc. Though post grant proceedings do help, along with court cases.

        1. Indeed. So I wonder, how many invalid claims does the USPTO issue each year, how much does it cost to put their validity in issue, and why must the standard of proof to knock out such deceitful monopolies by “clear and convincing”?

          It is almost as if a “strong” patent system is a tipped-scales corporate conspiracy against the long-suffering public.

          1. MaxDrei,

            LONG have you had a bug up your arse about the clear and convincing level of the presumption of validity in the US sovereign.

            Your “corporate conspiracy against the long-suffering public” is but a thin veneer for being AGAINST inventors. It is NOT the public that suffers from strong patents. The public benefits.

            It is the Big Corp’s that suffer from strong patents.

      2. I agree, the PTO does not have the means to examine the utility requirement under a preponderance of evidence. And without utility, a disclosure has no more value to the public than a random idea generator.

      3. “deceitful a pharma corporation can be, about utility… files comparative data at the PTO, in support of assertions of an improved pharmaceutical effect, even though you know there really isn’t any such effect.”

        I don’t get that – at all – from IPKat’s write-up. The complaint about deceit is in filing and obtaining a patent to the alpha form of the crystal despite apparently knowing that their old process also produced a certain amount the alpha crystal, making Sevier Lab’s own previous sales prior art.

      4. Max, in addition to the right of every defendant to raise fraud in the patent office, if a patent is enforced knowing that it was fraudulently procured and it creates or maintains an unlawful monopoly in some field, and one could argue that a particular drug might be a field, then there is an antitrust action as well that involves treble damages and attorneys fees.

        Any party lying to the patent office to obtain a patent is not only putting their client at grave risk in United States, they are putting their careers in jeopardy.

        But then we have this very case where the patentee is claiming a result, and not the means or methods by which it is obtained. It is incredible that even today Federal Circuit is not implementing Supreme Court case law in this field. Perhaps Congress has to act and declare functional claiming illegal and criminal, opening the door for Qui Tam actions to enforce. Now would not that be something?

        1. Ned – you still over react to this “functional claiming” thing – and you still have not addressed the difference between Vast Middle Ground (Prof. Crouch’s coined term) and PURE functional claiming.

          All your “umbrage” until you clarify these things is all sound and fury, signifying nothing.

          1. Anon, why do you do this? Supreme Court made clear that that which is functional has to be at the exact point of novelty.

            In other words, it is no vice to define elements functionally, or to use functional language in a claim to help explain what something is, but the novelty cannot be in the functional language.

            In this case, the only thing new was a result. We have a claim to various constituents with ranges. That identical subject matter was disclosed in the prior art. If there was some combination of constituents and ranges thereof that produced the claimed result, that was not claimed. That is why the claim is invalid.

                1. we ought to be clear that any claim that is F at the PON or to a result invokes 112(f).

                  You still have not provided an explanation of the difference between PURE functional claiming and the Prof. Crouch coined term of Vast Middle Ground.

                  To that point then, your instant attempt to “invoke 112(f)” remains a failure, and is merely you holding to a view that is simply not in accord with the actual law as written by Congress.

                  You remain clutching a panacea that is just not there.

        2. Ned, my point is that all there is on the public file at the PTO is some comparative data. How does one prove from that data, beyond doubt, that the patent was obtained by fraud?

          In ordinary civil proceedings, governed by a “more likely than not” evidential standard, the Opponent files its own comparative data and there follows an exploration of which data carries more weight.

          For the life of me, I cannot understand why a jurisdiction would load the scales in favour of the party applying for a patent. The Opponent should have a sporting chance of getting to a “more likely than not” watershed, surely.

          1. MaxDrei, we have comparative data on file that allegedly proves superior pharmaceutical effect when in fact there is no superior pharmaceutical effect. The allegation however is more. The allegation is that the author of the data, and potentially the patent attorney submitting the data, knew at the time of submission that the data did not prove the superior effect.

            So the infringer in court demonstrates that the claimed the molecule does not have the superior effect allegedly demonstrated. But how does one prove that the applicant knew this? Absent a smoking gun, I would think you would have to have testimony from an expert that nobody of ordinary skill in the art would believe that the data proved the alleged superiority. E.g., the blue computer is obviously better than the gray computer because it is blue. A distinction without a difference is no distinction at all.

            But I think the larger point you are trying to make is that if there is no very large penalty, beyond the mere holding the patent unenforceable, against the patent attorneys involved or the Corporation involved, the incentive will remain to obtain patents through fraud. To me this is criminal and ought to be punished as such.

            But, due to the seriousness of the charge and the seriousness of the consequences, when one goes from validity to fraud, there should be a heightened burden of proof. But the consequences have to be severe if proved.

            1. My point, Ned, is that an Applicant can set up experiments to deliver the comparative data it needs, to get to issue. Every chem/pharma/bio corp throughout the world knows this and does this.

              Fraud? Hardly ever does it rise to that. It’s no more than exercising reasonable judgement in setting up the experimental parameters and conditions.

              It’s a fact of life. A functional patent system needs some means for dealing with it. Like IPR. Handing patents out like sweets, and then putting impossibly high hurdles in front of any party that disputes validity is NOT the way to nurture the general welfare.

              Look for example at what happens at the EPO. Specialist, technically educated and legally competent Opposition Divisions consider data supplied by the opponent and then, in reply, by the patent owner. And then they decide, on a “more likely than not” basis.

              Can you show me any legitimate reasoned criticism of that way of adjudicating chemical patents, either from the Association of patent Owners or from the Association of Opponents? As far as I know, neither side has yet uttered a legitimate grumble.

              What’s not to like? I really would like to know.

              1. Max, understood. Perhaps the PTO could identify a number of cooperating universities that any applicant could hire to review his or her data and provide some certification to the PTO that the data proves the contention.

                1. Ned what you imagine is nowhere near a million miles away from what routinely happens already, in inter Partes patent proceedings, here in Europe. In England, the court observes cross-examination of the technical experts of the opposing parties (not infrequently professors of chemistry from Oxford university and Cambridge University) whereas in Germany the court hires its own technical expert.

                  But that’s in full-blown infringement and validity litigation. The more interesting area is what happens (cost/prospects of success) at the EPO (which lacks the expensive English law fact-finding tools of discovery and x-exam) each time a party opposes a chemical patent.

                2. Max, OK, let try this.

                  1. Applicant submits data and says it shows X.
                  2. Examiner selects university to verify data, requests quote on costs.
                  3. If applicant agrees to pay, the data is verified by the U. If the U approves, the patent issues.

                  Ned

              2. A functional patent system needs some means for dealing with it. Like IPR. Handing patents out like sweets, and then putting impossibly high hurdles in front of any party that disputes validity is NOT the way to nurture the general welfare.

                Your spin is noted, MaxDrei.

  9. Rather difficult to assess the merits of the case based on this write-up. Other than the fact that the limitations appear to have been suggested in a single reference, the only other “fact” is described thusly:

    The claims here are directed to the use of ultra-high glyphosate concentrate a particular surfactant to ensure “better adherence to leaves, thereby enhancing penetration.”

    And that’s not a sentence.

    I’m going to go waaaaaay out on a limb here and suggest that — regardless of Lourie’s misguided attempt to articulate a broad “rule” — if a single prior art reference written by a practitioner in the field suggests that you could use surfactant X in a composition to enhance penetration of another compound in the composition (or for any other reason), then absent some contrary teaching in the reference or eleswhere both the motivation to combine and a reasonable expectation of success are met. Generally speaking (like 99.9% of the time), people in a field don’t write articles suggesting combinations if they don’t think there is a reasonable expectation of success. Shocking stuff, I know! It’ll turn your world upside down, right?

    So it would seem to me that prima facie case was made here, and quite plainly. Can the applicant rebut? Sure.

    1. MM, the claims seem to me to be claiming a result.

      We have is a concentrate comprising a number of constituents having ranges of concentration wherein the concentrate formed from the constituents has a specific property. According to Lourie, the prior art discloses the same constituents having the same ranges.

      Now it seems this claim covers any combination of constituents within the ranges that achieves the result. If that is correct, this claim is clearly unpatentable under Morse/Perkins glue/General Electric v. Wabash/United Carbon/ because it does not particularly point out and distinctly claim which combination achieves that result. Rather, it is functional at the point of novelty.

    1. This In re Aller?
      link to scholar.google.com

      I don’t know if it was cited in the briefing. The PTAB decision (see link in the post) cites it. The CAFC majority says this about routine optimization:

      “Stating that a person of ordinary skill in the art would have arrived at the claimed invention through routine optimization falls short of this standard. Missing from the Board’s analysis is an explanation as to why it would have been routine optimization to arrive at the claimed invention. Similar to cases in which the Board found claimed inventions would have been “intuitive” or “common sense,” the Board must provide some rational underpinning explaining why a person of ordinary skill in the art would have arrived at the claimed invention through routine optimization. Absent some additional reasoning, the Board’s finding that a skilled artisan would have arrived at the claimed invention through routine optimization is insufficient to support a conclusion of obviousness.” (orig. emphasis, citations omitted)

      I’m not sure what a discussion of In re Aller would add here. The statement from Aller that the PTAB quoted says that “it is not inventive to discover the optimum or workable ranges by routine experimentation.” Perhaps true as a general matter, but the “routine-ness” of the experimentation must still be proved by the party with the burden of proof and explained by the factfinder.

      1. Yes, that In Re Aller. The Examiner’s rejection was obviously based on Aller, and PTAB more or less adopted the examiner’s rejection.

        In Re Aller:


        They described one experiment and its results, indicating in no way that this was the maximum yield obtainable. Any chemist reading the article could logically assume that higher yields might be obtainable, and by experimentally varying the conditions of temperature and acidity could find the most productive conditions. If it could be held that the skilled chemist would never think to reduce the temperature or increase the acid concentration, then it might be held that invention resides in so doing. However, appellants have not demonstrated such fact. The skilled chemist who chose to experiment with the reference process would undoubtedly try the conditions defined by the claims, although he might be surprised at the extent of improvement obtained. No invention is involved in discovering optimum ranges of a process by routine experimentation. In re Swain, supra.

        Cloud point is a process variable analogous to yield. Pallis’ results showed cloud point as a function of surfactant type and concentration. Therefore, optimizing cloud point based on surfactant type and concentration is obvious, and the range of between the explicitly taught cloud point and the optimized cloud point is obvious, lacking some unexpected result. It’s the same as In Re Aller. And that is why PTAB went directly to whether applicant had shown that the optimization was not routine or that the values were critical.

  10. It’s easy to think if we just got subject matter eligibility right, all the problems would go away. The problem is we can’t get it right unless we also get obviousness right, which is a very difficult, inescapably political process.

    The Supreme Court has recognized and explicitly said in KSR that ordinary innovations are obvious and not fitted for the patent system. Unsaid but unneeded to say is that such a position is demanded to maintain proportionality, because the extraordinary power of patents should be balanced by extraordinary innovation being a requirement to obtain one.

    Obviousness is almost always a subjective call, despite any cloak of procedure or test piled on top. As with many subjective experiences, like beauty or comedy, there are examples purely in the eye of the beholder and examples very widely acknowledged to be hawt or funny. The easy cases should have easy procedures to bounce early, the lack of which has led directly to the double-duty of 101. The Supreme Court has said no TSM, factions of the CAFC have fought tooth and nail otherwise.

    “There must be a motivation to make the combination

    That is clear error.

    and a reasonable expectation that such a combination would be successful, otherwise a skilled artisan would not arrive at the claimed combination”.

    This is logically incorrect. Skilled artisans try things all the time: that is the essence of skill. Trying all the time means failing often. Very often seeing how something fails directly leads to success on the next try.

    The true situation would be better stated:

    and a reasonable expectation that such a combination would be successful, not be disastrous, otherwise a skilled artisan would not arrive at the claimed combination”.

    I hope they seek en banc and then cert if needed on this case. The Supreme Court needs to firm this up before there is any hope for subject matter reform.

    1. [B]ecause the extraordinary power of patents should be balanced by extraordinary innovation being a requirement to obtain one.

      I could not disagree more. Patents are meant to incentivize R&D spending. If you make it the rule that one only gets a patent for “extraordinary” innovation, you are going to get 90% of the incentive effect that patents are meant to provide. Everyone in charge of R&D spending knows that most (>90%) of R&D spending is going to result in only incremental improvement. I suppose that some of that spending will achieve a sufficient ROI even without patents, but most of it will not (at least not in the bio and chem fields, I am less conversant with the details of mechanical or electrical). Adding an “extraordinary” requirement to patentability is a good way to turn the U.S. economy into something more like Argentina’s.

      The Supreme Court has said no TSM, factions of the CAFC have fought tooth and nail otherwise.

      That is because the CAFC has to think about obviousness day in and day out, while the Supreme Court only considers the subject once a decade, and then only in a particularly abstract and rarified manner. The CAFC knows what kind of obviousness tests can actually work in practice, while the SCotUS (with all due respect) has not a clue.

      1. … you are going to get 90% of the incentive effect…

        Whoops. “… you are going to gut 90% of the incentive effect…”

    2. Skilled artisans try things all the time: that is the essence of skill. Trying all the time means failing often. Very often seeing how something fails directly leads to success on the next try.

      I think that this assertion rests on a misunderstanding of what is meant by “skilled artisan” in the common-law of patents. It is not just (as the words might imply) “an artisan with skills.” The best explanation of “skilled artisan” (in the patent sense) ever given can be found in Beloit Canada Ltd. v. Valmet Oy, (1986) 8 C.P.R. (3d) 289 (F.C.A. per Hugessen J.A.):

      The classical touchstone for obviousness is the technician skilled in the art but having no scintilla of inventiveness or imagination; a paragon of deduction and dexterity, wholly devoid of intuition; a triumph of the left hemisphere over the right. The question to be asked is whether this mythical creature (the man in the Clapham omnibus of patent law) would, in the light of the state of the art and of common general knowledge as at the claimed date of invention, have come directly and without difficulty to the solution taught by the patent. It is a very difficult test to satisfy.

      The person who tries what he knows and fails, but keeps trying something new is not a “skilled artisan.” This person is, by definition, an inventor. Much mischief in patent law comes from forgetting that inventors are not “skilled artisans.”

      1. Greg the law so far as I know on this subject says this:

        “We build and create by bringing to the tangible and palpable reality around us new works based on instinct, simple logic, ordinary inferences, extraordinary ideas, and sometimes even genius. These advances, once part of our shared knowledge, define a new threshold from which innovation starts once more. And as progress beginning from higher levels of achievement is expected in the normal course, the results of ordinary innovation are not the subject of exclusive rights under the patent laws. Were it otherwise patents might stifle, rather than promote, the progress of useful arts. See U. S. Const., Art. I, §8, cl. 8. These premises led to the bar on patents claiming obvious subject matter established in Hotchkiss and codified in §103. Application of the bar must not be confined within a test or formulation too constrained to serve its purpose”.

        It is not a sustainable legal fiction, if one even exists, that “skilled artisans” are not inventors.

        I had to glue up a broken chair this morning. My clamps were too short. I found some long heavy boxes and balanced them carefully to clamp with weight. It was inventive. It was a handy, creative solution. I did not know before trying if the weight would be sufficient or the boxes able to balance in the precise position needed.

        1. I did not know before trying if the weight would be sufficient or the boxes able to balance in the precise position needed.

          But you weren’t surprised at all when it did work, were you?

          “Not surprised at all” and “reasonable expectation of success” aren’t terribly different concepts.

          1. Interesting. “Not surprised” and “reasonable expectation” do not strike me as synonyms. Not surprised is a 2 or 3 out of 10 shot coming in- like Trump’s election. Reasonable expectation is 7 or 8 out of 10. There is a pretty big gap between those concepts to me.

            1. “Not surprised” and “reasonable expectation” do not strike me as synonyms.

              LOL

              First, I never said they were synonyms. There might be a little gap between them (but I don’t think it matters). Second, I said “not surprised at all” which is a synonym for “not the least bit surprised.” If you reasonably expect something, then surely when that “something” happens, you are “not surprised at all” by it.

              That’s all I’m saying.

        2. It is not a sustainable legal fiction, if one even exists, that “skilled artisans” are not inventors.

          Regrettably, Martin, I must concede that you are correct in your articulation of the law. Justice Kennedy’s KSR opinion is not worth a pitcher of warm spit as a piece of legal reasoning, but it is the law all the same.

          This is Exhibit A as to why I think that the SCotUS’ should be stripped of jurisdiction to review patent cases. The fact that judge can conflate ordinary artisans with inventors shows that the SCotUS does not understand even the most basic and fundamental concepts of patent law.

          This is why the CAFC inevitably winds up in tension with the SCotUS. The CAFC is trying to give effect to the Congressional text, while SCotUS tries to burn it all down. In a sane world, the side that wants to make the patent system work would have the upper hand in this fight, but in practice the arsonists are in charge of the lumber yard.

          1. In a sane world, the side that wants to make the patent system work would have the upper hand in this fight, but in practice the arsonists are in charge of the lumber yard

            And yet you seem so reasonable most of the time Greg.

            Here is a TSM test for you: Why would the Supreme Court of the United States want to burn the patent system down?

            The answer is, of course, that they wouldn’t. They want to protect the public and maintain proportionality. They think things have gone too far with wide open subject matter and too stringent obviousness inquiries and a specialized appeals court captured by its bar.

            I tend to think they are correct.

            1. They think things have gone too far with wide open subject matter and too stringent obviousness inquiries and a specialized appeals court captured by its bar.

              All evidence would lead me to agree that this is what the Supreme Court thinks. I happen to think that they are wrong.

              If there is a problem with dodgy patents or vague patents getting in the way of legitimate commerce, I think that the cure is to be found much more readily in §112(a) than in §§ 101 or 103. Subject matter eligibility and obviousness are two of the murkiest parts of patent law. Using them as a vehicle to solve problems is guaranteed to cause as many problems as are solved.

            2. Why would the Supreme Court of the United States want to burn the patent system down?

              The answer is, of course, that they wouldn’t.

              You are, of course, correct (except, perhaps, with regard to Justice Breyer and former Justice Stevens). I really should not style them as arsonists. This implies active malice, which I agree is not likely.

              Still and all, the Court really is in over their heads every time they touch patent law. They do not know what they are doing, and when you do not know what you are doing, you should leave well enough alone. Instead of likening them to arsonists in a lumber yard, the more apt analogy would be a person with much experience driving cars and trucks, who thinks therefore that he is well qualified to fly a plane.

              The results, however, are often equally poor from active malice as from recklessness.

              1. Not at all correct here though.

                Ever here the historical quote from none other than a Supreme Court Justice…?

                The only valid patent is one that has not yet appeared before us

                The Pollyanna view that the Court cannot want to burn the patent system down is beyond Naïveté.

        3. “It is not a sustainable legal fiction, if one even exists, that “skilled artisans” are not inventors.”

          Sure it is. When those same in “real life skilled artisans” act as an inventor they are going above their normal station in the “realm of idea characterizations of imaginary people”. Save perhaps in routine experimentation like your chair repair.

    3. The Supreme Court has recognized and explicitly said in KSR that ordinary innovations are obvious and not fitted for the patent system.

      That type of statement is worse than dicta and has ZERO place in any sense of interpretation of statutory law that is patent law.

      Some just love to point at broken scoreboards, with zero cognition of why the scoreboard is indeed broken.

      1. (by the way, this type of statement – in the particular – was explicitly rejected by Congress in 1952 and the rejection of Flash of Genius, of which, the denigration of “ordinary innovation” is but a backwater reflection of the Eliteism that the rather disconnected Royalty exhibit).

    4. The ‘reasonable expectation of success’ is a red herring.

      I think PTAB suggests that the claim scope is within the range of routine opitimization of the system. Not that a user would have used routine experimentation to achieve 70C specifically.

    5. “There must be a motivation to make the combination

      That is clear error.

      Insignificantly different semantics so long as the motivation does not have to be found in specific references.

      “Often, it will be necessary for a court to look
      to interrelated teachings of multiple patents; the effects of
      demands known to the design community or present in the
      marketplace; and the background knowledge possessed by
      a person having ordinary skill in the art, all in order to
      determine whether there was an apparent reason to combine
      the known elements in the fashion claimed by the
      patent at issue.
      To facilitate review, this analysis should
      be made explicit.” KSR.

      Skilled artisans try things all the time: that is the essence of skill. Trying all the time means failing often. Very often seeing how something fails directly leads to success on the next try.

      Obviousness is not throwing darts at the wall…

      “The combination of familiar elements according to known methods is
      likely to be obvious when it does no more than yield predictable
      results.
      (If it would be predicted to fail and succeeds, that qualifies as something more)

      but neither is non-obviousness merely resolving modest uncertainty.

      “The Court relied upon the corollary principle that when the prior art teaches away from combining certain known elements, discovery of a successful means of combining them is more likely to be nonobvious.”

      To the extent that you’re arguing that the true situation should be “a combination [that would] not be disastrous,” disastrous is either wrong or a misrepresentatively hyperbolic way of rephrasing the standard.

    6. [T]he extraordinary power of patents…

      I expect that we will not agree on this, but I really cannot agree with the premise that patents come with an “extraordinary power.” To my mind, if one has a patent on a truly great invention, that patent will have a great power in the market. If, on the other hand, the invention is only a small advance, then the market power of that patent will be correspondingly slight.

      That is to say, if my invention represents only a slight improvement over the prior art, then people who wish to avoid my claims need only continue practicing the prior art. If the patented invention is only a slight improvement, it follows that it should not be much of a sacrifice for them to go on with the prior art. If, however, those in the market find that they cannot stay competitive without practicing my invention, we must question whether my improvement really is so “slight” as some style it.

      As Justice Story rightly said so many years ago: “the degree of positive utility is less important in the eye of the law, than some other things, though in regard to the inventor, as a measure of the value of the invention, it is of the highest importance.” Earle v. Sawyer, 8 F. Cas. 254, 256 (C.C.D. Mass. 1825).

      1. Greg the extraordinary power arises from being able to make a total stranger, an entity with no privity or previous contact with you whatsoever, into a federal defendant based on virtually any colorable argument that their activity involves your patent. It’s not a run of the mill civil power.

        1. [T]he extraordinary power arises from being able to make a total stranger, an entity with no privity or previous contact with you whatsoever, into a federal defendant based on virtually any colorable argument that their activity involves your patent.

          How is this an “extraordinary” power? What you are describing is true of most tort suits. If you slip on my icy sidewalk, we have neither privity nor previous contact, but you haul me into court all the same. Does that make sidewalks “extraordinarily” powerful? Few people would describe them so.

      2. There’s also that class of patent where the invention is minimal but the claims are broader than all get out and, as a result, the “value” is in the “monetization” (the targets of the litigation/licensing will typically have been practicing the claims without ever thinking about what — if anything — was actually “invented” by the named inventor).

        If you make it as difficult as possible for the PTO to undo its error in the granting of the patent, then the creation of the patent right is definitely associated with the creation of an extraordinary ($$$$$$$) “power”.

        I know this is incredibly shocking to some.

        1. If you make it as difficult as possible for the PTO to undo its error in the granting of the patent, then the creation of the patent right is definitely associated with the creation of an extraordinary ($$$$$$$) “power”.

          Yes, “if.” I agree that invalid patents have the potential to make the patent system more socially costly than beneficial if one raises the price of culling to be too steep. That is why I am all in favor of a quick, low-cost mechanism to cull bad patent claims from the rolls. As between adding an “extraordinary” requirement for patentability, or lowering the transactions costs for tanking an improvidently issued claim, I know which seems to me the more consonant with a well functioning system and the best incentives for innovation.

  11. Judge Lourie’s dissent here is very disappointing. Judge Lourie is a very smart man, and has spent many years now thinking about patent law. How can a person with so much intelligence and so much experience still not understand the MOST BASIC ASPECTS of obviousness law?

    If you do not have a reasonable expectation of success from change, then it cannot be “obvious” to make that change. It seems odd even to have to explain that.

    I take it that Judge Lourie is so focused on the different legal tests that the courts have created over the years (what is prior art for obviousness purposes?, when are you allowed to combine two references?, etc) that he has lost sight of the big picture. Time to go back and re-read In re Yates: “The problem, however, with such ‘rules of patentability’ (and the ever-lengthening list of exceptions which they engender) is that they tend to becloud the ultimate legal issue — obviousness — and exalt the formal exercise of squeezing new factual situations into preestablished pigeonholes.”

    1. I listened to Laurie several times at oral argument. He wants to burn the patent system down. He is one of those judicial activists that thinks the patent system is just horrible and anything he does to burn it down is justified.

      1. Listening to him at oral argument doesn’t give you much information. He likes puns, but otherwise he’s relatively quiet and usually asks a few focused questions. Among Federal Circuit judges, he’s generally more pro-patent than the median. I don’t know what the briefs or record looked like. Judge Lourie has significant chemistry training and is a bit more conscientious than others about respecting the role of the first-instance factfinder and about following the Supreme Court. In this case, I would guess (and it’s just a guess) that those things led him to think that there was no reversible error here.

          1. I don’t know if there are any numbers collected on this. He’s no Judge Newman (who else really is?), but this description doesn’t sound a thing like him: “one of those judicial activists that thinks the patent system is just horrible and anything he does to burn it down is justified.”

            If by “Laurie,” you actually mean Dr. Gregory House, then maybe you’re onto something. That character seems more likely to be into burning things down.

            1. No idea what you are talking about dcl. From what I’ve seen of him, he judges inventions based on his own hindsight reasoning. He is rude. He believes all EE inventions are junk. He is ignorant of technology. A real bad actor. He is unfit to be a judge.

              Etc. Please retire.

            2. J. Lourie (makes me gag to put a J before this foul person’s name) believes that all computer software is something that you just give a boy to program. You figure out what you want and give it to a boy.

              J. Lourie is an ignorant judicial activist that is unfit to be a judge.

              I have no idea what you are talking about dcl. Maybe you are mixing him up with Newman.

  12. The holding here though is that such a broad conclusory finding must also be supported by specific factual findings targeted to the patent at hand. An important element of this decision is that the majority particularly held that the lack of factual findings supporting the PTO’s conclusion meant that the agency had not even established a prima facie case of obviousness.

    Examiners – unlike judges – MUST abide by APA (and Office) guidance when it comes to making factual assertions.

    One wonders when this too will take effect for the factual assertions that are found in the 101 examination guidance protocols….. (as others have recently asserted).

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