Prosecution Histories as Prior Art

Perhaps the most debated issue in obviousness disputes is the question of whether a person of ordinary skill in the art would have been motivated to combine prior art references in order to form the invention as claimed. In KSR, the Supreme Court made the process a little bit easier for patent examiners by permitting a common sense analysis. Still, 10 years later, the issue arises on a daily basis for patent attorneys and in the vast majority of obviousness challenges to issued patents.

I have long felt that prosecution history files may serve as key evidence in justifying the motivation to combine. As an example, consider a patent prosecution file history from several years ago that that includes an office action rejection based upon the patent examiners conclusion the two prior art references should be combined. Regardless of whether the examiners assertions were correct at the time, that document seems to be pretty good evidence someone actually considered combining references together.  In general, a prior art statement that expressly suggests and provides reasons for combining Reference A with Reference B is really good evidence for combining the two.

There are several difficulties with my “patent prosecution as prior art” theory.  A first problem is that, although patent prosecution files are open to the public once a patent issues or the application publishes, the prosecution history files are not well indexed or searchable in any meaningful way. As far as I know, there is no publicly accessible database of prosecution history files that is either indexed or searchable.  That problem is becoming a historic problem.

Beginning this week, the USPTO has transitioned its Private Pair system to include text versions of its office action rejections as well as notices of allowances (actual XML and DOCX versions).  It is a straightforward step to move these documents into a searchable database available for public consumption.

I’ll note here that the XML/DOCX files are quite nice and, although not well tagged, will make it easy for patent attorneys to cut & paste from the OA in their responses or client emails. The system also includes a new mechanism for submitting documents to the PTO.

100 thoughts on “Prosecution Histories as Prior Art

  1. ON topic, if my memory serves me correctly, there is a Fed. Cir. case in which some publicly available content [drawings?] of a Canadian application that never made it into the issued patent were held to be prior art for 103, since the file of a patent application is indexed and searchable.
    The Fed. Cir. has in general taken a surprisingly broad view of what can be “publication” prior art. Which is one reason the really thorough prior art searches done for litigation defenses and used for IPRs can be surprising.

  2. Dennis –

    Rather than mining Office Actions for dubious Prior Art, how about mining file wrappers for successful arguments on a per Examiner Basis.

    For example, does the Examiner concede when she hasn’t made a prima facie showing? Does the Examiner tend to accept arguments that the combination of steps A, B, C and D are not in reality fundamental building blocks or does the Examiner recognize that when the claim specifies that the steps are carried out by a machine, that the steps are not mental steps?

    THAT would be useful and would be a step toward compact prosecution.

    1. or does the Examiner recognize that when the claim specifies that the steps are carried out by a machine, that the steps are not mental steps?

      This.

      For some odd reason, the reluctance to put a stop to the zombification of the Mental Steps doctrine, by explicating its rise and fall, and it attempted re-rise by applying it to computing machines remains a rather perplexing tidbit.

      A clear explication from a “neutral” (or even anti-patent leaning academia) would help clear up (read that as remove any slim viability of) the dissembling posts by those who insist that patents should not reward innovation concerned with “logic” or the (purposeful) confusions surrounding software.

      Achieving clarity appears to be low on the priority list – lower even than the elevation of poor examination into a de facto “I read it on the internet so it must be true” effort.

  3. Fairly ironic in that a professor wants the keyword search “ramblings” of examiners to be held to be prior art merely because they are put on the record, and yet this blog employs a “do not dialogue” count-style filter that does not allow “the record” to be developed…

  4. As AtariMan said, this is a horrible idea and shows that Dennis seems to be more of an academician and less of a practicing patent attorney. Just because an OA mentions multiple references in a rejection DOES NOT constitute a motivation to combine. The Examiners merely do keyword searches – I frequently tell Examiners I am interviewing that they could easily be replaced with a machine learning algorithm that identifies key words/phrases in claims and then does a search. The Examiners NEVER look at the references as a whole and so it is often possible to make a “the combination renders at least one reference unsuitable for its intended purpose”. For example, I once prosecuted a CALEA related app that allowed law enforcement to tap (e.g., record) cell phone conversations. The Examiner cited one reference designed to do something similar (e.g., expose the contents of a call) and a second reference designed to prevent anyone from listening in. I pointed out that the combination rendered both unsuitable for their intended purposes and the Examiner had to discard the second reference. This example shows that mere mention of references in an OA is not motivation to combine but merely the results of a key word search.

    1. Please Pardon Potential (re)Post…

      Your comment is awaiting moderation.
      September 14, 2017 at 6:04 pm

      Absolutely correct.

      Anyone with ANY meaningful prosecution experience would immediately understand how unworkable an idea this was.

      So unworkable in fact, that it can serve as a litmus test on general patent law (real world) understanding.

  5. On a related note to the “searchable file history” is the very desirable dissemination of the current claims for every pending case.

    The claims of a pending application are often very different than the “draft” claims published at 18 months. For companies that still do clearance / FTO work, having access to these amended claims within standard patent search engines would be a huge boon. Currently, a lot of time is wasted having to go on Public Pair and monitor these cases one by one.

    I’ve said to others many times, whatever patent search engine first implements this feature will have every search company and law firm knocking on their door willing to pay top dollar for a subscription.

    It is my understanding that the folks at Reed Tech (aka Lexis / Elsevier) are currently scanning the file histories just as Google was trying to do before them. Unfortunately, the zero-dollar hosting contract that enables them to do this sort of discourages applying much resources to the task. Once they’ve scanned everything, they are obligated to share the data with everyone else (their competitors) and not allowed to gain any “first to market” advantage.

  6. “that document seems to be pretty good evidence someone actually considered combining references together”

    the “someone” who did the considering was an examiner at the USPTO. in most cases that means the person was NOT one of skill in the art – a fact that anyone who practices before the USPTO with regularity would grasp. and often, perhaps in the vast majority of cases, that “combining” is the result of hindsight.

    This is a dumb idea. For a smart guy like Dennis, this is a REALLY dumb idea

  7. I’ve seen a lot of responses on motivations and hindsight here which are just legitimately ridiculously off base for supposedly logical people. The hypothetical person of ordinary skill knows everything in the field. Virtually everything in the field exists for a reason. Combining a first thing with a second thing almost always yields the known benefit of the first thing and the known benefit of the second thing. Consequently, virtually every combination of known things is obvious unless 1) the actual combination produces unexpected results from the posited combination (i.e. the whole is unusually more than the sum of its parts), which DOES NOT HAPPEN in a lot of fields (e.g. computer programming); 2) some mechanism prevents the second thing from creating its usual benefit when around the first thing, or 3) the actual combination of the first and second thing was not enabled.

    Every day a person utilizes hundreds of entirely distinct systems for their usual effects to get through their day. This does not make your average person an inventor, because there is no inventiveness in stringing together things for their expected effects. This is true even if you string together a lot of things from completely distinct sources – so long as you know of them, how to conventionally do them, and what their conventional effects are there is absolutely no inventiveness at all.

    If you claim a system comprising a toaster in a car, and I show you Ref A – a car and Ref B – a toaster, that system is obvious because a car gets you places faster than walking and a toaster makes toast which is delicious and a perfect place for jelly to lay, and there is no reason to think that a toaster wouldn’t work in a car as opposed to a kitchen. That is all the logic needed to get past “hindsight.” I don’t have to come up with a reason why people in a car might want toast. I don’t have to ask ‘Why a toaster, aren’t other appliances or even other kitchen appliances more obvious?’ I don’t have to find some nexus to connect the use of a toaster to the main feature of a car – driving. I don’t have to opine on the intelligence or even the legality of attempting to cook while driving. *I don’t have to do anything other than point to the fact that people who make cars know that a toaster makes toast.* Now the system may end up being non-obvious (after all the considerations) because one of skill was not actually enabled to put a toaster in a car, or because when you put a toaster in a car it happens to generate oranges rather than toast. But *there’s no reason to think that being in a car rather than a kitchen would cause a toaster to not work,* and a toaster has a benefit – that’s why people spend money to purchase toasters – so there is a motivation to combine the toaster with the car.

    “The mere aggregation of a number of old parts or elements which, in the aggregation, perform or produce no new or different function or operation than that theretofore performed or produced by them, is not patentable invention…Elements may, of course, especially in chemistry or electronics, take on some new quality or function from being brought into concert, but this is not a usual result of uniting elements old in mechanics. This case is wanting in any unusual or surprising consequences from the unification of the elements here concerned, and there is nothing to indicate that the lower courts scrutinized the claims in the light of this rather severe test.” – A & P Tea Co

    The Supreme Court has always taken an extremely dim view of combination patents, and yet the broad functional claiming that goes on in many fields today virtually guarantees that the claim is just going to be a combination of well-known broad categories of things being used for their conventionally-known functions. Hindsight isn’t being improperly used by Examiners in many cases, your concept of a “motivation” is simply too stringent.

    1. As you say: “The hypothetical person of ordinary skill knows everything in the field” and we assess patentability through the lens of that imaginary person. If a PTO file history is available to the public, as of right, prior to the date of the claim in view then of course it is part of the PHOSITA’s database of prior art.

      So, given the artificiality of the PHOSITA entity, we need a bridge between that imaginary person and the world of real people.

      That bridge is (or ought to be) TSM.

      The EPO in 1978 set up a TSM system and by now it is unassailable. The curious thing is that whereas for those who draft for the EPO or prosecute at the EPO it is by now second nature, it is still not understood outside Europe. Judges and litigators (even in England) think they have nothing to learn from a mere Patent Office.

      But on motivation, PTO Examiners have one reason to combine docs, technologists quite another. Under EPO-PSA-TSM, the reason is of decisive importance. That a USPTO Examiner combined two references is of no interest whatsoever to an EPO Examiner, and of zero (or even less than zero) persuasive effect. So, I disagree with Dennis that it is “pretty good evidence”.

      1. But isn’t the absolute strongest TSM that you 1) can predict the outcome of a given action and 2) that your prediction is correct?

        If I know that flipping a light switch will cause the room to light up, the absolute strongest motivation I could have for flipping the switch is that I know it will cause the room to light up. Every time I flip I light switch I am motivated by the fact that, pretty unfailingly, I will get that result.

        The vast majority of actions people take is because they believe they can predict the results. Try and remember the last time you spent any real amount of energy taking actions that were not reasonably predicted to achieve a goal you wanted to reach.

        Why is science “dumber” than that? If a person knows of something that does something good – a toaster making toast for example – the most likely reason of adding a toaster to a system or adding method steps of using a toaster is that one correctly predicts it will make toast. Why must we come up with a special reason as to why toast would be desired (or to read some people in this thread – “especially desired,” or even “problem fixing”) in the context of the system? If a car does good things, and a toaster does good things, why do we need a motivation for putting a car and a toaster together beyond the fact that we know they each do good things, and they will continue to do those things if we place them near each other?

        Just to be clear – I’m not suggesting that one does not need to “bridge” the mosiac of prior art and the claimed invention. I don’t believe (and neither does the law) that an invention is obvious just because all of its pieces are previously known to the art. I do, however, believe that a patent issues for teaching the art something it didn’t know, and “not having a textual TSM in the prior art” is not the same thing as “taught something it doesn’t know.”

        1. Random,

          Your penchant for predictability is not what the law is about.

          Your view leads to the (explicitly discredited) view of Flash of Genius.

          1. Your penchant for predictability is not what the law is about.

            That’s a wonderful sentiment that has no basis in law. I’m not saying anything other than what is said in A&P Tea and Anderson’s Blackrock. In Anderson’s the testimony was that *there was no benefit to combining A with B* because A and B functioned exactly the same together as they did independently, and the court found that obvious for precisely the reason that there was allegedly no motivation – that A and B functioned exactly the same together as they would independently.

            The reason you modify is the expectation of advantage. One expects an advantage when prior art has utility and one would predict that the utility would persist in the combination, and in fact it does persist in the combination. That’s why the MPEP states that “Combining prior art elements according to known methods to yield predictable results” is *option* A for rejecting something and a TSM is *option* G.

            1. Your comment is awaiting moderation.
              September 14, 2017 at 2:23 pm

              The basis is that it is not just a question of “could,” but also a question of “would.”

        2. Random, I’m not sure if your piece is intended to draw out of me the way the EPO’s TSM Approach works but, if so, it has been effective.

          It starts by giving full faith and credit to what the inventor, in the specification, on the filing date, reports are the technical effects of the claimed subject matter. On those reported effects hang the issue of patentability. On those reported effects depend the motivation to combine.

          Looking at the “toaster in a car” invention, what might the effects be?

          It could be to deliver fresh toast to people in a car.

          OK. Well then, is there any motivation, in the prior art, to solve that problem by…..wait for it….putting a toaster in a car?

          Well, yes there is. For the reason you explain. It is what you would expect, the very first thing a person would do, who wanted fresh toast in his car.

          But what if putting a toaster in a car raises its top speed (or lowers its fuel consumption)? Is there in the prior art any hint or suggestion to get your car to go faster by putting a toaster in it? Let us suppose not. Let us suppose that no boy racer wanting a go-faster car, would come to the idea of equipping it with a toaster.

          In that case, something unexpected is delivered by the claimed combination of technical features. With that, at the EPO you are well on the way to patentability.

          OK, EPO-PSA can be abused, especially in chemistry. But abusers are easily exposed, in inter partes proceedings. Which is why post-issue opposition is more popular in the unpredictable chemical arts.

          1. Looking at the “toaster in a car” invention, what might the effects be? It could be to deliver fresh toast to people in a car.

            No. See you’re already asking the wrong question and demanding more than is necessary. The fact that I can commercialize my invention just means that if a patent issues it is worth a lot of money. The correct thing to say is “Looking at the toaster in a car invention, what might the effects be? It will likely be that you can drive instead of walk and you can make toast.” Whether or not I can figure out something that I can do *easier* than the prior art (i.e. I don’t have to make the toast in the kitchen and bring it out to the car, or as you say, the toast made in the car will be “fresher”) doesn’t have anything to do with the inventiveness of the combination.

            OK. Well then, is there any motivation, in the prior art, to solve that problem by…..wait for it….putting a toaster in a car?

            By analogy – One can commit murder without having a motive for doing so, or by using a modus operandi different from their known modus operandi. A motive or a common modus operandi are certainly “nice” and “extra convincing” things a prosecutor can show, but if you start getting hung up on proving a motive you’re going to let murderers go free. Saying that there is a known problem which there was a suggestion or teaching to solve for a commercial benefit is certainly “nice” and “extra convincing” that a proposed combination is obvious, but not necessary. That’s pretty explicitly stated in KSR.

            The motivation for putting a toaster in a car is that the art knows of a car, the art knows of a toaster, a car does not make toast, a toaster does, one would be enabled to put to the toaster in the car, and putting the toaster in the car would likely create a new system wherein the car makes toast. A car that makes toast is superior to a car that does not make toast because it has an additional feature. The prior art does not need to identify a problem, or suggest an answer to a problem, or come up with a particular benefit that applies to mobile toastmaking. All of these questions are extraneous.

            But what if putting a toaster in a car raises its top speed (or lowers its fuel consumption)? Is there in the prior art any hint or suggestion to get your car to go faster by putting a toaster in it?

            We agree that this is an allowable patent, but it’s not because “someone looking to the problem of top speed has no hint that would drive them to using a toaster” its because neither the car art nor the toaster art is aware that toastmaking affects top speed. It’s a fundamental difference in the inquiry.

            If I know that jumping into a volcano will burn me to a crisp and it in fact does burn me to a crisp, a system that includes a person jumping into a volcano is obvious. Under your analysis it would be non-obvious because there is no problem and nobody has a hint of how to solve it. Yet people every day manage to do the completely obvious thing of not jumping into a volcano. Why? Because the outcome is predictable.

            1. Random, I am disappointed in your reply at 16.1.1.2.1. We are talking past each other.

              At 16.1 I write about the way the EPO does TSM. You reply at 16.1.1.

              At 16.1.1.2 I reply, trying my best to illuminate how the EPO-TSM way works, in practice. You reply at 16.1.1.12.1, telling me I’m wrong.

              Now I do understand that there is a big difference between debating the law as it is and the law as it might be. But we are living through times of flux, where the law is changing. In such times, blogs like this can be influential on those who shape the law.

              But I do not see how to continue our TSM dialogue. I think that’s a shame.

              1. I understand you’re telling me how the EPO does it, but what I am asking you to do is use common sense.

                Nobody is going to suggest you go out and get hit by a car, but the results of getting hit by a car are predictable, which is why nobody tries to do it. Now I ask you, is the result of being hit by a car “obvious” (under the US system) or something patent worthy under the EPO? TSM is not a viable standard because it would lead to patenting obvious inferior acts.

                Person A makes a new processor, which performs 100x better than any processor today. Person A says “Don’t do X, because X will cut the processing speed in half.” Person B reads Person A’s document and patents Person A’s processor, while doing X, because it is a processor 50x better than any processor today. Should Person B be granted a patent? Did B “invent” the processor he claimed?

                1. Random, the issue should be whether the prior art taught the combination (TSM) — but only after a preliminary issue is addressed: does the claimed invention provide a new or improved machine, etc. The improvement must be statistically significant such that one can prove with evidence that the improvement is “unexpected.”

                  In your processor example, the machine is neither new nor improved. One does not even have to get to 103.

                2. In your processor example, the machine is neither new nor improved. One does not even have to get to 103.

                  Patentability is not negated by the manner in which the invention is made. The fact that he de-improved someone else’s processor doesn’t change the fact that it is 50x better than every other processor out there except for one. It is a new processor, simply not improved over one single piece of prior art. Can you point to a single case which says that utility is not met if something is not categorically better than the prior art?

                  Moreover, Person B isn’t going to come out and say “I took Person A’s prior art and made this modification,” nor will he write a Jepson claim stating “In Person A’s processor, doing X” – his Spec is simply going to be similar/equivalent to Person A’s spec, but instead explicitly doing the thing that Person A’s spec said not to do and it won’t mention Person A at all.

                  In other words, even if B was willing to fess up to copying A, the Office has no mechanism to ask him to do so and will never find out about it. And we all know that in reality B would never fess up to that anyway.

                3. BTW, B’s invention is in fact legally obvious over the A reference, but not because of TSM, which is why TSM isn’t a sufficient test and why KSR was written.

                  B’s invention is obvious because the A Reference evidences 1) a base processor and 2) a technique that could be applied to the base processor, and applying the technique yields predictable results because it is exactly what A said would happen. See MPEP 2143(D).

                4. Random, re: cases:

                  1. Rex v. Arkwright (the differences did not improve function)(a copy of the case is in the appendix to my Oil States brief);
                  2. Hotchkiss v. Greenwood (no functional difference);
                  3. Anderson’s Black Rock. (the courts said, not new, but really, it meant not improved).

                5. Well Random, I do appreciate your continuing the discussion. But I’m beginning to regret my assertion that obviousness under EPO-PSA is an example of a TSM system.

                  EPO-PSA is immersed, suffused through, with common sense. Your “hit by a car” hypo is useless because EPO-PSA is confined to what is or is not obvious within the useful arts. It is “real life” because technologists in an R&D environment do address a problem in technology, do perform searches of the literature for a realistic starting point for solving the problem and do look through the art for hints or suggestions how to solve the problem. If there are no hints, then the solution might be patentable.

                  Keep in mind that in any FtF jurisdiction, the inventor writes the patent application on a date earlier than the date with respect to which patentability is tested relative to the art. The specification is just another document written prior to the decisive date. As drafter, you have the chance to fashion the claim and the disclosure in the way best adapted to get to issue with the claims you want. To be fair to the public, the obviousness test must operate within that reality. That’s why, at the EPO, Applicants are judged on the content of their application as filed, not on what an Affiant might swear to, long after the decisive date.

                  I don’t understand your Person A/B question. Sorry.

                  We don’t even reach obviousness, because (if nothing else)B has no novelty. At the EPO, inventions are claimed in terms of technical features. B’s feature combination lacks patentability because it lacks any novelty over A.

                6. It is a new processor, simply not improved over one single piece of prior art.

                  Such a view as “absolute” improvement over all others has never been a part of the patent system.

                  Random, you operate under some seriously misguided understandings of how innovation works.

      2. So, given the artificiality of the PHOSITA entity, we need a bridge between that imaginary person and the world of real people.

        that reminds me of the unfinished conversation we had concerning PHOSITA….

        1. If you want to resume our conversation, anon, the one you consider to be “unfinished”, well then state now your still open PHOSITA point as clearly as you can, and I will make efforts to reply to you in terms that will most effectively educate and inform our many readers.

          1. Your comment is awaiting moderation.
            September 14, 2017 at 6:12 pm

            I am not going through the exercise of repeating everything when you were the one that dropped out of the conversation.

            That onus is on you (hint: don’t run away).

    2. Random – you were the one that showed me the MPEP quote directing examiners NOT to reject on mere aggregations.

      How does that square with your quote here?

      1. Random – you were the one that showed me the MPEP quote directing examiners NOT to reject on mere aggregations.

        What that section states is that there is no “aggregation” rejection, you have to reject under 112b or 103 etc. That’s not to say that an aggregation is not rejectable. The PTO couldn’t promulgate that rule even if it wanted to, the Supreme Court explicitly states that mere aggregations are not patentable.

        The office rejects aggregations every day under MPEP 2143(I)(A), which was directly explained in KSR.

    3. The Supreme Court has always taken an extremely dim view of…

      The same Court that described itself (with disgust) with the quote of: “The only valid patent is one that has not yet appeared before us.

      Some put TOO much stock into what the Supreme Court feels.

      Luckily, the allocation of power to write the statutory law that is patent law was not directed to the Supreme Court.

      Unluckily, the Supreme Court does not appear to be too concerned with that limitation.

      Thus: broken scoreboards.

      1. Some put TOO much stock into what the Supreme Court feels.

        And this is why I win the scoreboard and you don’t, and why I’m a better practitioner than you. It doesn’t matter if the Supreme Court is right, it only matters that the Supreme Court is consistent and final. The Supreme Court happens to be right most of the time, but that’s not really relevant.

        1. This was a comment to which a reply was not only held up “for moderation” but also was simply expunged so that later “timed” retrieval was not possible.

          But in addition to what I had to say previously (celebrating a broken scoreboard quite misses the larger important point that the scoreboard is broken), let me point out that your own statement of:

          it only matters that the Supreme Court is consistent and final. ” is simply NOT accurate.

          The Supreme Court is NOT consistent.
          The Supreme Court is NOT final.

          A point that you (and others) need to keep in mind: even the Supreme Court is not above the law.

          Random, you are not an attorney, so I add this to remind those that are: check your state attorney oaths. Fealty is NOT to the Supreme Court above the Constitution, and we actually have an ethical duty to NOT accept broken scoreboards.

    4. RandomGuy, thanks for a great summary. I would like your opinion on WHEN the results are unexpected, before or after the combination? Say you made a toaster in a car by making a spot in the exhaust manifold? You present data on the heat it would generate, and it is the same or better than regular toasters. You present the cost of making a little tube to go down from the driver’s area to the exhaust manifold, and it is way cheaper than a toaster, looks good, and can be used to hold a cell phone when not being used for toast. It is prior art that the exhaust has spaces just the right size for a piece of bread, and tubes to get heat from the motor are old hat. So once you present your idea and data, everything says it is totally predictable that the toaster will work. Is it obvious? And how do you prove that the results were unexpected before the combination?

      1. As always, the claim is the game. If you perform the function of toasting by modifying a manifold but your claim states “An apparatus comprising a car wherein the car makes toast” that claim is obvious over car + toaster. If your claim is specific to the modifications of the manifold, the question becomes what the art knew about manifolds. If the claim is directed to the structure that holds the bread, but the prior art is that “the exhaust has spaces just the right size for a piece of bread” you’re not getting anywhere either. The question isn’t whether “once the idea is presented, does it function predictably” the question is if the art knew enough beforehand. If someone in the art had generated the same data you generated and for some reason the art knew what was necessary to toast bread, your invention would likely be obvious.

        The invention you describe is largely helped by the fact that an automobile designer is not a baker. While he has lay knowledge that a toaster exists, he probably doesn’t have knowledge as to what temperature for what time generates toast, nor does he use a timer to control the bread’s exposure. An invention that modifies part of the car to have it function as a toaster (and that is particularly claimed) is certainly more likely to be patentable than simply moving your kitchen toaster to the back seat and finding a way to make the car power it, in the same way it is obvious to integrate a tape deck with a car and not obvious to modify the car to use its engine to play you a merry tune as you drive. The field of automobiles is more likely to have previously disclosed a means of powering electrical devices than it is to have disclosed how to bake or conduct music.

        1. The invention you describe is largely helped by the fact that an automobile designer is not a baker.

          How does that matter given KSR and the proverbial “team” of inventors allowed to play jigsaw puzzle solvers…?

          1. To what are you referring? I dont recall either a “team of inventors” or “jigsaw”ing being discussed in KSR. Cite/expound please

            1. When a work
              is available in one field of endeavor, design incentives and
              other market forces can prompt variations of it, either in
              the same field or a different one

              It is common sense that familiar items may have
              obvious uses beyond their primary purposes, and a person of ordinary
              skill often will be able to fit the teachings of multiple patents together
              like pieces of a puzzle.

              It has LONG been known that with combination patents, there are also combination arts and combination POSITAs.

              Look also to Lemley’s writings espousing the changes in law that became the AIA.

    5. “Consequently, virtually every combination of known things is obvious unless 1) the actual combination produces unexpected results from the posited combination (i.e. the whole is unusually more than the sum of its parts), which DOES NOT HAPPEN in a lot of fields (e.g. computer programming); 2) some mechanism prevents the second thing from creating its usual benefit when around the first thing, or 3) the actual combination of the first and second thing was not enabled.”

      So, the Wright Flyer was obvious and should not have been granted a patent?

      1. So, the Wright Flyer was obvious and should not have been granted a patent?

        My understanding of the Wright Flier is that nobody had been capable of sustained flight despite many people trying, so how can you say their results were either predictable or expected?

        1. People trying has no nexus with predictable or expected.

          People try – and miss – for a HUGE variety of reasons.

          This is why your rather crabbed view on predictability is simply not what the law is about.

          Stop trying to hammer screws.

    6. ““The mere aggregation of a number of old parts or elements which, in the aggregation, perform or produce no new or different function or operation than that theretofore performed or produced by them, is not patentable invention…”

      So then, no integrated (or should we say aggregated) circuit patents. Yeah, cause that wasn’t an invention and the results weren’t surprising.

  8. Um, why would you cite the combination of Ref A and Ref B to teach the subject matter in a rejection when the thing it is rejecting is a patent which obviously had a prior filing date (as you can’t examine what hasn’t been filed) and was also published (or else the rejection wouldn’t be public).

    In other words, every 103 you’re suggesting by definition has a predating 102 – the subject matter in the patent they are rejecting.

    Am I not understanding the thesis?

  9. We need, I believe, to get rid of 103. Too much opinion involved.

    Patents that cover new or improved machines, etc., should be patentable subject matter. Newness is limited by 102. Improvement should be left to the courts, but I would suggest the improvement should at least solve a known problem.

    1. The Yooks used the CCPA and the CAFC to legitimize broad, barely described functional claiming. So the Zooks got congress to authorize IPR, and they smote all the Yooks patents. So the Yooks got rid of 103, and flooded the battlefield with patents to improved computers…

      1. Ben, I fully share your attitude regarding functional claiming and trace the problem to Judge Rich and 112(f). Judge Rich was the author of 112(f) based on an original proposal from the Milwaukee Patent Law Assn. His idea was to permit functional claiming, but to then use construction to narrow its apparent scope.

        But the whole idea was as wrongheaded as it could be because it is the apparent scope itself that is the problem — the lack of defining within the claim itself the novel structure, materials or acts. The claim becomes inherently indefinite and subject to abuse.

      2. Ben, a method of calculating something using a computer does not define a new or improved computer.

        1. What about a method of configuring the computer to calculate the something…

        2. Whew – it’s a good thing then that software and the execution of software are different things, eh Ned?

          Your posts are again reflecting the fact that you neglect to think about that a machine first has to be changed and (re)configured with software before you can “just use” the machine.

          No “magic” allowed without this critical step you never seem to want to acknowledge (very much reminiscent of your repeated failures in the Grand Hall experiment)

  10. I don’t think Examiners (or patent attorneys) should count as one of ordinary skill in the art. Although many are technical experts, the practice of inventing is too fundamentally different from the practice of prosecuting: it’s not reasonable to suggest that the skilled artisan is someone who scans millions of XML documents in their spare time…

    1. I don’t think …patent attorneys … should count as one of ordinary skill in the art.

      Be careful! You’re going to offend some of The World’s Most Important People Ever.

      What about bankers? Accountants? Marketing consultants? Advertisers? Cartoonists? Painters? Cookbook authors? Car drivers? Insurance adjustors? Preferred customer rankers? Real estate agents? Librarians?

      Do they count?

      These are the most brilliant innovators on the planet, after all.

      1. Was that conflation on purpose or just through sheer ignorance?

    2. That’s not the point.

      (1) the OA is in the public, so one of ordinary skill in the art, aware of the suggestion to combine the references, would reasonably consider combining the references, regardless of who initially made the suggestion.

      (2) the fact that no innovator ever would scour old OAs is irrelevant, the fictional PHOSITA knows everything that is public.

      1. I understand that the hypothetical person of ordinary skill has access to everything public, but they’re not a god-like entity. They have ordinary creativity and ordinary time-constraints. Just because some examiner or attorney thought it was obvious to combine two references, doesn’t mean an actual real-life inventor would think so. The problems they’re trying to solve are fundamentally different. Context should matter in an obviousness analysis.

      2. To wit:

        An Office Action response for rejecting a claim that baldly states “it is obvious to combine anything with anything” is now de facto prior art for combining anything with anything.

        Charles H. Duell would be so proud…

        1. Of course, statements like that are also boilerplate in patent specs. “The disclosure is not limited to what we actually disclosed, and it is envisioned that any modifications to what we actually disclosed fall into the scope of the disclosure…”

        2. An Office Action response for rejecting a claim that baldly states “it is obvious to combine anything with anything” is now de facto prior art for combining anything with anything.

          A claim to combining anything with anything is anticipated so not a big deal.

          That said, even without this change it was well known in the art (and outside the art) that programmable computers can process any kind of input data that they are instructed to process, i.e., the “content” or “meaning” of the data that exists in minds of the people who write the data processing instructions is utterly irrelevant to the machine.

          So the PTO and you are stuck with that. Sticking your heads in the sand doesn’t change reality.

          1. A claim to combining anything with anything is anticipated so not a big deal.

            No one said that.

            Obtuse. Is it deliberate?

  11. Oh Dennis, there are so many problems with this…

    1. In order for the examiner’s comments to come into the obviousness inquiry, the other documents already on the table have to include “motivation to combine” directed at that examiner.

    Obviousness does not start with “You have the entire Library of Congress, NIST, and everything else in front of you as mosaic tiles — piece them together any way you want.” The “motivation to combine” inquiry basically says “OK, smarty pants, you have this one document in front of you. With that, what problems do you see, what itches need to be scratched? You can look for *that.* It is not the case that every atom of knowledge that exists is automatically fair game.”

    2. Way too much of what most examiners write in most Office Actions is about as sound as — well, Jules Verne’s creations were when Mr. Verne wrote about them. Lots of beggars wish up lots of horses — but the law doesn’t deem them to be actual biological horses just because they ended up in writing. The patent law requires prior art references to have some grounding beyond wishful thinking — “enablement” in the context of anticipation, “reasonable expectation of success” in the context of obviousness.

    1. The fact of the matter is that most obviousness rejections are reasonable and they are made by people with a relevant technical background who are very familiar with the state of the art.

      The whining about Dennis’ comments in this thread from the usual suspects is really quite p a thetic.

      The good news is that prosecution histories are more easily searchable by text. Some people are apparently uncomfortable with this and would like to pretend that the public gains nothing from this. Those people are — obviously — wrong.

      1. The fact of the matter is that most obviousness rejections are reasonable…

        The whining about Dennis’ comments…

        With friends like this, who needs enemies?

        As to “and would like to pretend that the public gains nothing from thisNO ONE has made that argument, oh Mr. Strawman.

        1. anon said, “With friends like this, who needs enemies?”

          How about, ” With friends like this, who needs enemas?”

    2. Way too much of what most examiners write in most Office Actions is about as sound as — well, Jules Verne’s creations were when Mr. Verne wrote about them.

      No idea what “way too much” is supposed to mean.

      But most Office Actions are not science fiction.

      There is an issue floating out there that David Boundy never seems to want to discuss which is functional claiming of machines for performing logical tasks, where the specification fails to disclose a single novel structure in structural terms. It’s clear to most of us that when the patent system veers off into claiming vapor then we are inevitably going to enter into the world of make believe where anything goes. And the system will melt down.

      This was predicted a long time ago, by the way. Long before Indian Tribes started getting into the patent game for reasons that are beyond absurd and which benefit nobody except (as usual) the game players.

      1. disclose a single novel structure in structural terms.

        …and once again, Malcolm indulges himself with the fallacy that an optional claim format somehow must be more than optional….

    3. David Boundy: The patent law requires prior art references to have some grounding beyond wishful thinking

      But functional claiming at the point of novelty is the bread and butter of the logic arts.

      Programmable computers were built to logically process information according to instructions they are given. If I’m allowed to claim functionally, what’s “not expected” about my claimed programmable computer that processes information?

      Is there a kind of information that computers are incapable of processing even when they are instructed to do so? Tell everyone, David. You seem to have deep thoughts on this subject and the PTO’s ability to deal with it. So go ahead and answer the questions.

      1. Talk about non-sequiturs….

        Tell me Malcolm, how is this any different than the Big Box of Protons, Neutrons and Elections “logic”…?

        You cannot patent those, and ALL matter is made of (configured) from those items (with a clear analogy to the “were built to” “logic” that you want to depend on.

        1. the Big Box of Protons, Neutrons and Elections

          I think if you use all caps this “argument” becomes a zillion times more compelling.

          Of course, a zillion x zero = zero but still. A zillion! That’s a lot.

          1. You keep on focusing on form instead of substance….

            (and yes, we both know why that is)

      2. “not expected” is not a requirement of invention. Anyone who ever saw an eagle fly would expect that wing warping would help control an airplane. That doesn’t disqualify the Wright Flyer.

    4. I apologize. I should not have used the word “most.” I retract that. Let me try again.

      Way too much of what way too many examiners write in way too many actions (without characterizing it relative to some 51% majority) reflects careless reading of claims, careless reading of references, or scientific fantasy of what even could be done, let alone has “motivation” to be done.

      “Too much” is relative to an efficient error rate. Some rate of erroneous rejections is necessary, even good. But the PTO’s refusal to self-police the procedural soundness of the rejections it sends, failure to weed out the incomplete, utterly groundless and wasteful, failure to police the obligation to answer all material traversed — that’s what I’m complaining about.

      Thank you MM for asking me to correct this.

    5. >>Lots of beggars wish up lots of horses — but the law doesn’t deem them to be actual biological horses just because they ended up in writing.

      Sure they do. Their wishes typically start “The invention claimed is”.

      The case law then relies on the skill and knowledge of ordinary technicians to understand these wishes as ‘enabled’ while simutaneously labeling the wishes as non-obvious to those technicians who supply everything but the wish itself.

      1. Ben —

        I really object when people don’t read carefully. Any moron can misquote or reframe a comment, and respond to the misquoted or reframed but irrelevant misparaphrase. I included the phrase “just because.” You misquoted me by leaving that out. Please don’t do that.

        A patent only acquires legal effect after examination and signature by the Director.

        In contrast, prior art becomes prior art “just because” it’s published.

    6. “The “motivation to combine” inquiry basically says “OK, smarty pants, you have this one document in front of you.””

      That is the point. If you, one of ordinary skill, has one document in front of you that happens to be an office action that suggests combining the teaching of John and Melissa, then you would immediately be motivated to seek out the teachings of John and Melissa, and would immediately contemplate combining them.

    7. The “motivation to combine” inquiry basically says “OK, smarty pants, you have this one document in front of you. With that, what problems do you see, what itches need to be scratched? You can look for *that.*

      This statement is accurate only in the most general way. Obviously the first reference doesn’t do what the second reference does, that’s why the second reference is being cited or you’d have anticipation on your hands. A motivation does NOT require a finding that the first reference has a “problem” that motivates one to “fix” it. It is sufficient for the second reference to have utility that the first reference does not express.

      The person of ordinary skill has “the library of congress,” and while they don’t just randomly place tiles together as they want, if they do know that Ref A has Utility X and Ref B has Utility Y, they generally have a motivation to combine A and B, because generally they will believe that the resulting system has utility XY, which neither had on its own. Unless the particular knowledge in the field suggests that A+B won’t make XY (for example, it is known that Y doesn’t work in the presence of X, or that A cannot interact with B, or that XY is inferior to X or Y alone), then A + B is motivated and produces obviousness unless A+B isn’t enabled or A+B produces unexpected results.

      1. This statement is accurate only in the most general way.

        So the rest of your post goes about trying to discredit the accuracy…

        Hmmm

        It is sufficient for the second reference to have utility that the first reference does not express.

        That is most definitely NOT sufficient.

    8. David, in modern Hebrew there’s an expression that idiomatically translates as “You can write anything you want on a piece of paper”. Examiners can and frequently do write whatever junk they want to in an OA. But just because an examiner proposed combining two publications doesn’t mean that a PHOSITA would have done so, let alone that those two references were properly combinable.

  12. So it seems this idea that “sovereign immunity” provides a shield against agency revocation of an improvidently granted patent started in (surprise) Florida.

    link to akingump.com

    The PTAB concluded that the similarities between the nature of an inter partes review and a civil litigation are “sufficient to implicate the immunity afforded to the States by the Eleventh Amendment.”

    Covidien LP v. Univ. of Fla. Research Found., Inc., IPR2016-01274, IPR2016-01275, IPR2016-01276 (Jan. 25, 2017).

    Thanks to Mellow Marsher for providing this link in other thread:

    link to blogs.harvard.edu

    Also interesting tweets re potential impact on Hatch Waxman balance:

    link to twitter.com

    And lastly it is interesting (as noted in the tweets) that the important case of Blonder Tongue involved the University of Illinois as patent holder but sovereign immunity was not raised.

  13. In today’s IV v Motorola opinion, Newman dissents because she would have found the claims obvious.

    Gonna be a weird day…

  14. At long last, a teeny bit of progress. Kudos to the PTO.

    1. (please note that NO ONE is taking a contrary position to this thought)

      No one except you and the strawman that you want to create.

  15. I guess this could be relevant when claim X is rejected under 103 using A+B prior to its publication date, claim Z is filed between the mailing date of the rejection of claim X and the publication date of claim X, and the teachings of disclosure X are unavailable to reject claim Z due to 103c.

    I guess such edge cases are the stuff of academic careers.

  16. Is an examiners persons of ordinary skill in the art, such that what examiner Primus thinks about an art combination should be evidence examiner Secondus can use in a rejection?

    Instead, I view each examiner less as a person skilled in the art and more the proverbial “man with a hammer”.

    Nailed it.

    1. Gluck. Perhaps proofreading before submission is optimal.

      Anyway, please read “Is an” as “Are” in the intro sentence.

    2. It doesn’t matter if examiner Primus is one of ordinary skill in the art. It matters if one of ordinary skill in the art in view of the writings of examiner Primus would be motivated to make the combination. If examiner Primus makes the suggestion to combine Smith’s teachings with Jane’s teachings– even if Primus is not one of ordinary skill– then it follows that one of ordinary skill in the art reading examiner Primus’s writings would not be motivated to contemplate the combination.

      An anonymous blog post can be used as prior art, if one of ordinary skill in view of the anonymous blog post would be motivated to combine some references.

      1. — correction “If examiner Primus makes the suggestion to combine Smith’s teachings with Jane’s teachings– even if Primus is not one of ordinary skill– then it follows that one of ordinary skill in the art reading examiner Primus’s writings would [[not]] be motivated to contemplate the combination.”

  17. “Regardless of whether the examiners assertions were correct at the time, that document seems to be pretty good evidence someone actually considered combining references together.”

    As others have noted, the reason the examiner considered combining the references is to reject the claim, with full hindsight knowledge of the claim, and to “git dem counts!!!!!!!”

    The question to be resolved in the obviousness inquiry is whether one of ordinary skill in the art (i.e. not a patent examiner) WOULD have combined the references to arrive at the claimed invention(s) (i.e. the elements arranged as claimed). A previous examiner’s rejection is not evidence of what one of ordinary skill in the art WOULD do, no matter how egregious a BUI of the term “evidence” you want to apply.

    1. Awaiting moderation?! Sheesh.

      1. A certain narrative here is a desired Ends…

      2. Typically, the “do not dialogue” count filter places the “too many” posts into moderation – but at least four posts of mine across this thread have been dropped entirely.

    2. Agreed. Hindsight makes everything obvious. An examiner’s opinion based on reading the claims is inherently infected with hindsight.

      Poor standard.

      Very, very bad ideas.

  18. that document seems to be pretty good evidence someone actually considered combining references together

    The context of the “actually considered” does not support an independent ACTUAL consideration of combining the references.

    The (should be easily seen) abuse that flows from ignoring this context is ANY examiner can make some universal type of (easily defeated) combination of references argument – and that argument being validated for what it purports by the mere fact that it was made.

    The entire “available to the public” aspect is not – and should not – even be reached.

  19. Two wrongs don’t make a right.

    Double hindsight does not show obviousness.

    Had neither the first examiner nor the second one citing the first examiner seen the combination first … maybe there would be an argument.

    1. Agreed. Hindsight at work.

  20. “patent prosecution files are open to the public once a patent issues or the application publishes”.. .There is not much to grapple with here. There is a pretty clear date of public availability for all patents. Much easier than trying to figure out, for example, the exact date that some random sales catalog or Ph.D. thesis became available to the public.

  21. OMG No! A high percentage of 103 rejections are based on impermissible hindsight.

    That an Examiner, desperate to0 make her quota, cobbled together a conclusory sentence alleging a motivation to combine a clip from the movie SAW, a youtube video of Neil Diamonds greatest hits and a scene from Goodfellas where DeNiro gives someone a tip, to arrive at a diamond tipped saw blade does not make it so. Allowing that ridiculous assertion to be cited against someone else’s application, now endowed with some glow of legitimacy because it is in a PTO file wrapper is a recipe for disaster.

    Anyway, the actual published application for the diamond tipped saw blade would be better evidence anyway.

    1. Les, if I, right now, tried to go patent “a video comprising: a youtube video of Neil Diamonds greatest hits or a portion thereof, and a scene from Goodfellas in which DeNiro gives someone a tip”, could your comment not be used as prior art? Would one of ordinary skill in the art of video composition not immediately contemplate combining a youtube video of Neil Diamond’s greatest hits with a scene from Goodfellas?

      1. No. My comment suggested no such thing. I made the comment and such a combination was not suggested to me and reading about it now, I’m sure such a video would be awful. I suggested only that an examiner might do a word search and find those three words out of context in three separate documents and alleged that it would have been obvious to make a diamond tipped saw blade as a means of pointing out how ridiculous 103 rejection allegations often are.

        Doing so did not render your video obvious. Feel free to file your patent application. Though I suspect you will have better luck at the copyright office.

  22. The prosecution history for patent X cannot be prior art or inform an interpretation of the prior art to invalidate patent X because the prosecution history is not prior art to patent X. It was created and the examiner’s thinking on the supposed combination arose after the date of invention (for pre AIA cases) and after the earliest effective filing date (for all cases).

    To use the prosecution history of patent X against a later-filed application, one would need to grapple with the question of whether the prosecution history of patent X is a printed publication or otherwise available to the public.

    1. “one would need to grapple with the question of whether the prosecution history of patent X is a printed publication or otherwise available to the public.”

      Its on public PAIR. That is at least as published as the proverbial Doctoral Thesis of which there is one copy on a dusty shelf in the library of a single university.

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