by Dennis Crouch
The USPTO released a new data set of office action rejections, including an action-by-action breakdown of the basis for each rejection and the prior art relied upon. The first chart below shows the frequency that obviousness and anticipation rejections are found in office actions. The shift since 2009 is quite interesting — obviousness rejections are up significantly following KSR while anticipation rejections are way down.
79% of what: Note here that the data set only includes office actions that contain at least one rejection. Thus, for 2017 we could say that, 79% of actions with a rejection include an obviousness rejection. A second big caveat is that the data set only includes applications that have been laid-open; and they had OCR scanning or other data problems with about 10% of the rejections and those have been excluded from the data set.
I’m still chasing the difference between novelty and obviousness, using the example of a claim dated 2010 and a very old reference, say published in 1930.
It seems at first sight to destroy novelty, but you have a rock solid case that (never mind the precise reason) its teaching was not enabling when A was published in 1930.
PTO replies “Be that as it may, it was enabling in 2010 so you lack novelty. And anyway, even if my novelty objection doesn’t get me home, in 2010 this reference indubitably renders your claimed subject matter obvious.”
What is your reply to that?
The examiner’s logic sounds like impermissible hindsight to me.
He takes technology that was not enabling in 1930, combines it with his 2010 knowledge (why — he has to explain that combination and not just make a conclusory assertion because he wants to make an obviousness rejection).
Look at the #14 Thread.
Lee De Forest’s 1906 Audion, a partial vacuum tube that added a grid electrode to the thermionic diode (Fleming valve), is a (partial) vacuum tube triode.
The vacuum tube diode that is an “ancestor” of the vacuum tube triode.
The vacuum tube diode and the solid-state diode were invented in the 1870s.
The solid-state production techniques needed to make a transistor (a solid state triode) were patented starting in 1946 and were being researched by many in the early 1940s.
Does that 1940s knowledge in combination with the vacuum tube triode of 1906 make Shockley’s solid-state triode (the transistor) obvious?
Was Shockley entitled to patent?
There should be no argument with respect to Shockley’s entitlement.
Using simplified Kantian terminology, the Examiner is trying to argue that the new knowledge that the inventor created was not synthetic but was predictable on the basis of a combination of 1930 technology with 2010 technology.
That combination does not sound like a minor near-analytic (obvious-to-try) change producing a predictable/analytic or near-analytic result but is in fact a radical modification that produces new synthetic non-obvious knowledge.
Thus the Examiner argues for obviousness (novel synthetic knowledge) on the basis of his novelty (novel synthetic knowledge) that he created on the basis of hindsight from knowing the written description that he is reading.
Such reasoning is completely inappropriate and non-persuasive.
If the new technology were predictable, the 1930s inventor might have invented it by minor modification (obviousness), but we know he could not have because the knowledge did not exist in 1930, the 1930s inventor would have had to develop all that knowledge to which he had no access in the 1930s.
The arguments that I outline above need to be made tighter (I have to do some errands), but I think you can run with them.
One should be able to argue that because a PHOSITA knew in 1930 that magnets were insufficiently powerful to be enabling, there was implicit teaching away from 2010 technology. If there is not an explicit chain of references since 1930 teaching toward the 2010 technology and if the examiner can’t supply said references, he can only be using impermissible hindsight to make an obviousness rejection.
MaxDrei keeps on “still chasing” by wanting to focus on the “single reference” aspect and somehow (without more) wants that single reference to be able to change (over time) what it teaches and thus permit a reference to have some type of “moving date” as to its legal effect. He keeps on asking because he does not like the (correct) answer that has been given him (again and again).
His modus operandi: keep flinging his feces against the wall until something sticks.
Max, one difference between citing prior art for 102 versus 103 is that the latter does not need to meet 112 requirements, including enablement, it is a teaching for whatever it discloses. Whereas 102 [fully anticipatory] prior art does. E.g., Amgen Inc. v. Hoechst Marion Roussel Inc. 79 USPQ2d 1705 at 1714-15, and cases cited therein: “In order to anticipate, a prior art reference must not only disclose all of the limitations of the claims invention, but also be enabled. Elan Pharms., Inc. v. Mayo Found., 346 F.3d 1051, 1054 [68 USPQ2d 1373] (Fed. Cir. 2003). A reference is enabled when its disclosures are sufficient to allow one of skill in the art to make and use the claims invention. Id. (quoting Bristol-Myers Squibb Co. v. Ben Venue Labs., Inc., 246 F.3d 1368, 1374 [58 USPQ2d 1508] (Fed. Cir. 2001)). Like a patent, a prior art reference is enabled even if some ‘routine experimentation is required in order to practice a claimed invention, but . . . such experimentation must not be ‘undue.’ ‘ Enzo Biochem. Inc. v. Calgene, Inc., 188 F.3d 1362, 1371 [52 USPQ2d 1129] (Fed. Cir. 1999). When considering whether or not a prior art reference requires “undue experimentation” we look at the reference from the perspective of a person of ordinary skill in the art. In re Wands, 858 F.2d 731, 735 [8 USPQ2d 1400] (Fed. Cir. 1988). We established in Amgen II that when a piece of prior art is a patent, like the Sugimoto patent, there is a presumption of enablement. 314 F.3d at 1355. The patentee, Amgen, must present persuasive evidence of non-enablement to overcome this presumption.”
[in this same case:]
“Obviousness – The Sugimoto Patent
The district court held in Amgen I that the Sugimoto patent did not render claim 1 of the ‘422 patent obvious because the Sugimoto patent was not enabled. 126 F.Supp.2d at 114 & n.29. In Amgen II we vacated this finding and remanded because nonenablement does not preclude a finding of obviousness. 314 F.3d at 1357.”
Well yes, Paul, I do understand that references relied upon as novelty attacks necessarily must be enabling, but ones relied upon for obviousness attacks not necessarily. For me, that much goes without saying.
For me, the interesting things are 1) for novelty, the date on which enablement is assessed (1930 or 2010) and 2) for obviousness, how much the basic knowledge of the skilled person in year 2010 can be relied upon when assessing in 2010 what claimed subject matter a 1930-published Ref A renders obvious.
Max, it sounded to me like the example being used was an old 102 reference with an inoperative magnet?
An old reference, yes. Magnet, yes. But no reference teaches to resort to an “inoperative” component does it? Doc A taught, in all good faith, to do it with “a magnet”, without having any appreciation that no magnet at the time could deliver a strong enough magnetic field to do the trick.
What I set out in 15.2.1 as of interest is the point. Forget the magnet example if it does not help or if it confuses. How about my 15.2.1? Do you understand either one or the other of my two interesting things?
If an embodiment can be prophetic, can’t a teaching be prophetic?
2164.02 Working Example [R-11.2013]
Compliance with the enablement requirement of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, does not turn on whether an example is disclosed. An example may be “working” or “prophetic.” A working example is based on work actually performed. A prophetic example describes an embodiment of the invention based on predicted results rather than work actually conducted or results actually achieved.
“can’t a teaching be prophetic?”
Once again, science fiction cannot be a teaching.
Elsewise – NOTHING is patentable. (and one does not have to be pedantic to appreciate that)
Paul – be careful with the “it is a teaching for whatever it discloses.” as the case oft cited for presumed 112 support for 103 does NOT mean that NO 112 type of support is required (in other words, science fiction cannot serve as a proper basis for 103 – even though some of the regular examiner types that post here are confused on the matter).
I have to ask whether this discussion is wholly theoretical or whether you are looking for an argument to make before an examiner, the PTAB, or an Article III Court.
It is no longer really disputed whether Gilbert Hyatt (US 4,942,516 A invalidated for lack of enablement) or G Boone (US 3,757,306 A).
Boone did.
The respective Claim 1s show the difference.
Here is Hyatt’s claim 1.
Boone’s claim 1 is above in the image.
Let’s assume the same examiner is reviewing Hyatt’s and Boone’s applications.
The critical limitation is Boone’s semiconductor substrate.
Hyatt’s Claim 1 (unenabled) tells me that the knowledge that the metes and bounds encompass is present among inventors, and Hyatt has even provided citations.
I also know that fabrication research was also out there.
What stops me from cobbling together a bunch of publications to construct an obviousness rejection?
The impermissibility of hindsight.
I would not have cobbled together all these published documents without having Boone’s application.
Now in maxdrei’s case to make the obviousness objection, I need to find some known technology that combines relevant 1930s technology with current magnetic technology. Only then have I demonstrably not used hindsight.
In simplified Kantian terminology, only then could I use the combination of the 1930s reference with modern magnet terminology without introducing significant synthetic terminology that I identified and combined through the use of hindsight.
Here is the pdf of Boone’s patent.
link to docs.google.com
The image of Boone’s patent is too hard to read.
The first sentence above should have been the following.
“It is no longer really disputed whether Gilbert Hyatt (US 4,942,516 A invalidated for lack of enablement) or G Boone (US 3,757,306 A) invented the microprocessor.”
Max –
You raise an issue I have noted several times in the past in conversations with Ned with your comment:
“The skilled person reading A on its date of publication would not have come to the idea of using a transistor (because transistors hadn’t been invented, back then). But by 1980, transistors had become so ubiquitous that the skilled person reading A would not have thought of using for that amplifier anything other than a transistor.”
There is evidence to suggest that in fact, transistors HAD been invented. Just not on Earth. In his book The Day After Roswell, Lt. Colonel Philip James Corso explains the he was in charge of getting technology from the 1947 Roswell UFO crash reverse engineered and distributed to U.S. corporations. This included transistors found in the wreckage. William Shockley and Gerald Pearson, “invented” and applied for a patent for the transistor 11 months later, in June of 1948 : link to patentimages.storage.googleapis.com
The discussion I’ve had with Ned involves the word “new” as used in the patent statutes. Ned thinks a newly DISCOVERED aspect of nature is not patent eligible because it is not new. I argue the “new” as used, for example, in 35 USC 101, must mean newly known because if it means absolutely new in the universe, we have no way to determine whether the claimed subject matter exists three galaxies over, or if it existed there 4 billion years ago.
I hope this comment is a joke.
Thermionic vacuum tube (valve) diodes and solid-state diodes were invented separately but at about the same time in the 1870s (and again in the 1880s for vacuum tubes or valves — Edison was the second inventor).
Tommy Flowers was building vacuum tube-based logic circuits in the late 19-teens and 19-twenties. Shockley and Pearson could not build the transistor without solid-state manufacturing techniques developed in 1940s and patented in the 1940s and 1950s by Scaff, Theuerer, Ohl, Storks, and Teal.
Unless the Roswell flying saucer included a manufacturing system or a handbook that was was written in an earth language and that described manufacturing solid state devices, nothing at Roswell could have helped Shockley and Pearson develop the transistor.
Diodes are not transistors. I’m sure there are cover stories as to how the transistor was developed out of diode work. Nevertheless….
And even if it was only Velcro (sorry, hook and loop) that came from Roswell, my point remains the same “new” must mean newly known, as we have no way of knowing what is absolutely new in a 15 billion light years radius universe that is on the order of 15 billion years old.
I am a physicist although my medical physics work in non-invasive imaging is not significant. I have occasionally done circuit design.
A transistor is a solid-state triode (or sometimes pentode) valve.
You are correct that it is a very small step conceptually from a diode to a triode, which was invented in the 19-naughts if I remember correctly.
From the standpoint of early modern epistemology, 35 USC § 101 seems to require that a claim be directed to a combination of knowledge, whose metes and bounds in simplified Kantian terminology encompass novel synthetic and posterior knowledge, which becomes prior art on the effective filing date if the patent application is published.
If we really want to extend the statutes to cover extra-terrestrial prior art, the statutes have to be modified to uses 4 dimensional space time coordinates and require that the prior art be in the timelike past of the effective filing date (also a 4 dimensional space time coordinate).
You really need to lose that artificial complexity of the “language” translations Joachim.
I “get” that you are comfortable with it, and that you feel that it gives you some type of “universal” framework, but it simply is not really needed.
Anon,
I used to be on the MIT faculty, and I am pedantic.
You did not complain about my use of physics terminology on a physics question.
Using epistemological terminology on an epistemological issue (35 USC § 101) is no different as far as I understand.
Kantian terminology provides precision whereas the phrase “abstract idea” comes from grammar and really does not belong in patent law unless grammar as a matter of law is under discussion.
Using epistemological terminology on an epistemological issue (35 USC § 101) is no different as far as I understand.”
That’s part of your (and the) problem: 35 USC § 101 is not an epistemological issue.
It is a legal issue.
And I suppose that 35 USC §§ 102, 103, and 112 pose no issues in science and technology.
Now if you wrote that 35 U.S. Code § 119 poses only legal issues, I would agree.
Love the picture, but the point remains: you are attempting TOO much “epistemological” treatment of a legal issue.
(you did say that you were pedantic… )
some comments still stuck in moderation, but I am enjoying the exchange Joachim.
That picture of yours has info in our Smithsonian:
“Created as an educational occupation guide for young readers, these two volumes contain copper-engraved illustrations with accompanying text explaining the work of the brick maker, the weaver, the paper maker, the printer, the glass-blower, button maker, and other pre-industrial revolution industries. They provide a simple overview of each trade no doubt geared to educate and perhaps inspire young children.”
No doubt as you could pick up (even being pedantic) – ALL of these occupations are occupations concerned with (gasp): business.
“If we really want to extend the statutes to cover extra-terrestrial prior art, the statutes have to be modified to uses 4 dimensional space time coordinates and require that the prior art be in the timelike past of the effective filing date (also a 4 dimensional space time coordinate). ”
Yeah. Try telling that to Ned.
“This included transistors found in the wreckage. ”
If you look at the first Shockley and lilienfield transistors they’re so nearly unimaginably primitive that no “alien tech” helped them out. It was practically college experimentation type sht.
1745175
look how primitive that is. It’s literally a piece of glass broken in half with a little bit of stuff put on it. And that is the first MESFETish device according to wiki and everything I’ve ever heard. And it was dated 1930. Unless you think the “alien tech” specifically had to do with changes between that above and 1940’s style transistors (on a spacecraft presumably from 10000000 years further in advancement than us) then that whole hypothesis is literally ta rded.
“I’m sure there are cover stories as to how the transistor was developed out of diode work”
The patent noted above is not a “hur dur” cover story. It practically is a transistor. It is certainly a switch, though its amplification properties are likely not that great.
Perhaps “transistor” is now too broad a term. Schockley’s patent is to bipolar transistors, not FETS.
Actually, what was found at Roswell were integrated circuits.
I don’t think its odd that first steps at recreating something found in an alien spacecraft would be “primitive.” This was 1947 after all. Remember how much trouble Spock had recreating a memonic memory circuit using the available tech just 10 or so years earlier:
link to youtube.com
“Actually, what was found at Roswell were integrated circuits.”
So putting two circuits of the above on the same work-piece took an alien spacecraft to achieve?
Literal, not even figurative, ta rdation is required for that hypothesis.
But look, I could sympathize with your BJT (or BJT IC) hypothesis a bit if not for the fact that other people were doing a lot of work in the area of mat sci through the 20’s and 30’s that then led up to the work in the 40’s, specifically to understand and perform what is now known as doping. I could cite much for you, but you’ll have more fun looking that up yourself.
Genius no doubt was at play, genius that gets too little recognition these days. And a lot of money. But that’s all it was brosefupogulous.
“Actually, what was found at Roswell …”
“muh extraordinary claim” “muh no evidenciaries”
Sure, people were working on stuff. Those are the people the army went to with hints and information to push them in the right direction. You read the book yourself.
I should also note that I believe the near certain reason that this ta rded hypothesis continues to this day is because it was such a huge development that gets so little historical attention (very few museums, all of the documentary information and publications aren’t compiled in one location from all the sources of the revolutionary developments that took place so that people can see how the development took place all in a line).
I actually think there is a real need for someone to go through all the histories and do the compilation for realz complete with database for all the relevant infoz. Not just to do away with the alien hypothesis, but rather so that the people of the world can marvel at the revolution that took place.
Someone has:
link to amazon.com
The exemplary rationales
that are found in MPEP 2141 Examination Guidelines for Determining Obviousness Under 35 U.S.C. 103 [R-07.2015], and
that may support a conclusion of obviousness may be slightly defective.
The vanilla rationales consist of the following.
Should we replace “predictable results” wherever it occurs with “only predictable results”?
I am thinking of :
1) the Jeffreys genetic fingerprinting patents, US 5175082 (Method of characterizing genomic dna) and US 5413908 (Method of characterizing genomic DNA by reference to a genetic variable) and
2) the Symbiota/Indigo Spangenberg neo-Linnaean taxonomy patent application PCT/AU2013/000557 (Selection of symbiota by screening multiple host-symbiont associations).
There may have been reason to combine the pre-existing techniques and procedures to obtain the predictable results, but the structure created in the Jeffreys patents (the genetic fingerprint) tells us so much more in a way that is unpredictable.
The neo-Linnean taxonomy (a structure) that Spangenberg’s invention creates in many ways is predictable and an interesting improvement over prior-art taxonomies of symbionts, but its true value lies in selecting valuable combinations of symbionts to improve crops. This new taxonomy makes it possible to select analytically (by computer) those few symbiont combinations likely to be beneficial from the tens of thousands or more possible combinations of symbionts of less or no benefit.
“Should we replace “predictable results” wherever it occurs with “only predictable results”?
There may have been reason to combine the pre-existing techniques and procedures to obtain the predictable results, but the structure created in the Jeffreys patents (the genetic fingerprint) tells us so much more in a way that is unpredictable.”
MPEP 2145 explains how unexpected results can rebut those rationales.
I am not sure MPEP 2145 fully covers the case of the Jeffreys patents or the Spangenberg application.
In the Jeffreys patents and in the Spangenberg patent application, there is reason to combine (with no teaching away from the combination) and there are predictable results, but there is so much more than the predictable results in the technologies of the Jeffreys patents and of the Spangenberg application that I suspect the inventor required a flash of insight to understand what he was seeing.
The Spangenberg claims seem to have been written with attention to possible anticipation rejection by combining establishment of the neo-Linnean taxonomy with finding an effective symbiont combination.
I am not familiar with the claims you reference, so I defer to your analysis.
But where the combination of A and B produces both results X and Y, if X is predictable and Y is unexpected, the existance of unexpected result Y should be able to overcome a rationale based on expected result X.
“that I suspect the inventor required a flash of insight ”
That EXPLICITLY has no bearing for the patent world here in the US.
This new taxonomy makes it possible to select analytically (by computer)
“Taxonomies” aren’t eligible subject matter.
In re Lowry, 32 F.3d 1579 (Fed. Cir. 1994) tells us that a data structure is patent-eligible. A taxonomy is a data structure — particularly in the case of the Spangenberg Application.
One could consider a taxonomy a specialized example of a database, which has long been considered a patent-eligible manufacture under 101.
We occasionally see allowance in the case of an improvement to a database.
The CAFC recently reviewed a patent claiming a database improvement.
Even though the decision does not reference In re Lowry, Malcolm should read Enfish, LLC v. Microsoft Corp. (Fed. Cir. May 12, 2016).
The Spangenberg Application discloses analyzing ribosomal nucleic acid to produce an electronic taxonomic database, which is the used to select useful groups of symbionts. In addition, this Application directs claims thereto.
From an epistemological standpoint the claims define the metes and bounds of a method that is novel and new and that represents synthetic knowledge enabling raw data to be transformed into a data structure (taxonomic database and statute-eligible manufacture) from which symbionts with optimal genetic relationships to be beneficial can be selected.
Sometimes to make a proper eligibility argument, one needs to under multiple arts (technological areas — in this case software engineering, biochemistry, and classical biology), the statutes, the case law, and epistemology.
Facile assertions with respect to eligibility should not be accepted.
Random (or somebody else) can you help out here?
At 7.2, I reply to Random’s Point 7, that anticipation is the “epitome” of obviousness. anon replies and there follows a dialogue between us.
But this dialogue leaves me unsatisfied. So below I try to set my point out again, afresh, to see if I can interest any other reader in my point.
Suppose my claim is directed to some sort of electrical machine. There is a Ref A, that the PTO cites against my claim (filed in 2010), under both 102 and 103. Ref A was published in 1930 (say). I reply on the 102 point that A is not enabling. I prove that in 1930 there was no magnet strong enough to put into practice what A discloses. Therefore the novelty attack must fail.
When it comes to 103 however, I have a different task, for A falls now to be read through the eyes of a PHOSITA in 2010. And for that person, strong enough magnets are by now totally conventional.
anon tells me that one always reads A as of its 1930 date of publication. German Supreme Court judge Rogge used to tell me that one should read it, also for 102 (!), in 2010. The Established Caselaw of the EPO has it as 2010 for 103 but 1930 for 102.
How is it at the USPTO?
Well, Max, let us just say that anon is of the school that would cite Star Trek’s transporter as anticipating prior art on the grounds that someone will figure out how it works, especially if the inventor has.
Be that as it may, Ned, here in this dialogue anon seems to have left that school behind him. Perhaps it was you who convinced him to leave?
But, apart from that, are you leaving it to Random Guy, to answer my question?
Or do you not understand my question?
“here in this dialogue anon seems to have left that school behind him. Perhaps it was you who convinced him to leave?”
A rather odd comment, seeing as my views on this topic are consistent with my views across the board.
Where is this “seem to have left.. behind” coming from?
“for A falls now to be read through the eyes of a PHOSITA in 2010. ”
A can only teach you what it possessed as of 1930.
You are still making the mistake of trying to move the “A” reference date.
In your current example, it is the OTHER art that sinks you – NOT the “A” art (or any semblance of the “A” art date moving).
Ned – bite me – your reply has nothing to do with any position that I have ever put forth.
What “other” art? Art published later than 1930, you mean?
Can I formulate an obviousness attack using a combination of A and this other art?
What other art, you ask?
That’s silly MaxDrei – your pwn hypo is providing that this is a 103 rejection.
Can you formulate an obviousness attack?
Again – silly question.
Silly? Perhaps. But necessary, to pursue my point.
Through what prism is obviousness to be assessed? The PHOSITA perhaps.
And on which date is the PHOSITA mulling over the issue? 2010?
Or 1930?
Silly questions, I know. But necessary, it seems.
You remain off on the wanting to focus on the PHOSITA.
NO ONE is debating that point.
But the references used by that person – those references have specific dates. Those dates NEVER change.
The references teach what they teach as of their date – THAT also never changes.
Prior to ’52, there was prior art (known or used) and bars: on sale and public use for more than a period of time. An inventor could swear behind known or used prior art. Thus prior art was anything public before the date of invention or bar type “art.”
103 stated that obviousness was determined at the time of the invention — the date of conception being the earliest date. Relevant was known or used prior art, and any bar type “art.”
102(e) became a wildcard because it was not intended to be prior art because it was neither of the known or used type nor of the bar type. The Supreme Court decided it was nevertheless 103 prior art, but the inventor could still swear behind.
That decision by the Supreme Court was a mistake. But rather than fix it in the AIA so that the US could become harmonized with the rest of the world, the AIA double down and extended the principle of 102(e) to foreign priority type art.
The people in charge of crafting the AIA certainly were not really in favor of harmonization. An American can now patent his invention in the ROTW, but not in the US, because foreign prior art is good against his US application for obviousness purposes only in the US. How is this good for the American inventor? It makes no sense at all.
Makes no sense Ned? On the contrary. Maxing out the possibilities for using secret prior art to attack a claim as obvious is something that makes a lot of sense for a corporate bulk filer, who can use all of that bulk, at full power, against any nuisance tiddler that incurs his displeasure.
In Europe, there are two mechanisms for restraining the aggregation of patent power by the assiduous corporate bulk filer, that are nowhere to be seen in the AIA.
The first is the restriction on secret prior art to novelty attacks. Art 54(3) EPC.
The second is the availability of your own earlier filing P, as secret prior art, to attack the novelty of your own later filing Q.
It is almost as if Big Corp compiled from ist experience under the EPC a wish list for the AIA. Perhaps the AIA was sponsored by Big Corp, aiming to create a free run with its own pile of patent filings, undisturbed by the nuisance USPTO filings of others.
Why do I write “nuisance”? Just observe for yourself what happens under the EPC. When several filers hit on much the same contribution to the art, and each files independently, around the same date, they mostly all get to issue with something. How irritating for each CEO. Much better that one corp sweeps the board, eh?
Max, I think you are right that the big international corporations. They’re behind getting rid of both US first to invent, and “fixing” the self collision problem you describe: IBM and others lead the way to eliminate co-owned prior art from being 103 references. Now, they have eliminated such from even being 102 references.
The stink on the AIA is unmistakable.
The U.S. statute indicates:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
If PHOSITA would have known about the 1930 document, and that document didn’t imply or indicate that magnets of the time were sufficient but indicated that if a magnet strong enough could be made, then so too could the invention, and if PHOSITA would have been aware that sufficient magnets were now available, then I don’t see how anons position could be supported.
If on the other hand, the 1930document wrongly asserted that the invention could be made with existing magnetic technology, and the 2010 inventor was the first to recognize that error and find the cure, then I’d say the invention was not obvious in 2010.
anon says that what 1930 discloses is what it disclosed in 1930. He and I and the EPO agree on that.
But that is not enough, when it comes to performing the test what was obvious in 2010, for then the prism is the PHOSITA in 2010, who reads the 1930 doc in 2010, obviously through the eyes of a skilled person in 2010.
These matters would all be beyond argument, except that some people think you must read the 1930 doc through 2010 eyes, even when examining whether 1930 doc prejudices novelty of the 2010 claim.
What is “obvious” for a skilled Person in 2010 when reading an old (1930-published) doc is different from what was “disclosed” by the 1930 doc to a reader of it, who was reading it in 1930. OK?
Please Pardon Potential (re)Post:
No.
It is NOT OK.
The 1930 reference cannot disclose one iota more than what it could disclose on its date. The date does not move.
Now for a PHOSITA, and for a 103 rejection, that single reference will likely NOT be alone – but it is the OTHER items – with other dates – that will change the understanding of the PHOSITA.
Once again MaxDrei – you are conflating the timing of different things.
“OK?”
Yes, I understand what you said and would not argue with it.
Salvaged from moderation:
awaiting moderation.
December 4, 2017 at 10:14 am
“then I don’t see how anons position could be supported.”
Magnets strong enough – THAT is a secondary reference that need to be present for the 103, and the reference A does not (and cannot) ever “teach that.”
It is only when that secondary reference itself exists (e.g., the item no longer is “Science Fiction”) that a proper 103 can be formed. But note that this formation does not change anything AT ALL about the “A” reference.
Science Fiction simply is not a proper basis for obviousness rejections.
Your hypothetical is not analogous. If your claim sounds in function “a machine structured like this with a magnet that performs this function” then Ref A was not anticipatory, as it never had a magnet that performed the function. If the claim sounds in structure, then Ref A is anticipatory because whatever you’re using the magnet for is unclaimed intended use.
Assuming you mean the former case, the fact that Ref A is very old is likely irrelevant. If a claim has a 2010 date, there’s little distinction between citing a reference from 2009 or a reference from 1999 or a reference from 1899.
Your situation (assuming the claim had a functional limitation) sounds like a simple 103 where Ref A is combined with Ref B teaching a new magnet in simple substitution.
An “anticipation is the epitome of obviousness” situation is where it’s unclear if Ref A disclosed limitation X, so you cite Ref B which definitely teaches X, with a motivation. Thus you either have a true obviousness situation or you have committed error in your motivation because Ref A already had X and thus wasn’t motivated to modify to get it. That error is harmless error, as the failure of the 103 proves a 102, and the claim is still unpatentable. Anticipation is the epitome of obviousness.
Kind of you to reply to #12, Random. But I feel I haven’t got my point across to you either. As I stipulate at #12, Ref A from 1930 teaches an electrical machine that uses a strong magnet. It isn’t enabling because back in 1930 there wasn’t a magnet known that was strong enough to deliver the required functionality. So, the novelty attack based on A fails.
But by 2009, strong enough magnets were banal, commonplace, bog standard, part of the common undergraduate textbook knowledge of the skilled person in this particular art. When such a person reads A in 2009, a magnet that is strong enough to deliver the functionality required cannot be other than implicit, automatically “read into the teaching” of A. Nevertheless, in 2009, A is still not a novelty destroyer (because for novelty you read A as if you were reading it in 1930) even while, in 2009, it alone, without requiring support from any second reference B, it renders the claim hopelessly obvious.
My point is that legal clarity requires rigorous separation of the different legal concepts “lacking novelty” and “obvious”.
You say you want clarity, then you muck it up with:
“alone, without requiring support from any second reference B”
That is simply false. The reference alone does not change what it is over time.
Period.
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December 5, 2017 at 8:52 am
You say you want clarity, then you muck it up with:
“alone, without requiring support from any second reference B”
That is simply false. The reference alone does not change what it is over time.
Period.
No I do understand I’m just doing a poor job of explaining. Let’s put some concrete things in there and expand the hypo to two claims and two timeframes.
In 1930, Ref A is published which expressly states that in a system with particular structural limitations (we’ll call this context C) sits a “strong magnet” (which we call M). Ref A explicitly posists “In context C, M.” M is not strong enough to produce function F when placed in C.
In 1931 a *Non-Published* Application is filed (the ‘931 application) which claims the following two claims:
1. A system comprising: In context C, M.
2. A system comprising: In context C, M such that F.
Claim 1 is anticipated by Ref A. Claim 2 is not only not anticipated, but (according to your hypo) non-obvious and thus patentable. But for whatever reason, Claim 2 is abandoned and ‘931 never publishes.
In 1980, the magnet group gets together and decides that strong magnets (M) will now be defined as being some sub-group of strong magnets (i.e. “modern” strong magnets) such that they would produce function F in the relevant context. This shift of definition we will denote as M->M(prime).
In 2009, an Applicant files an application (the ‘009 application) which claims:
1. A system comprising: In context C, M.
2. A system comprising: In context C, M such that F.
Claim 1, one might opine, is easily disposed of. It was anticipated in the ‘931 application, so it must be anticipated in 2009. Claim 2, one might also argue, is also anticipated because M will inherently cause F in context C.
One would be wrong.
The reason is because even though Claim 1 of ‘009 uses the same words as Claim 1 of ‘931, they are not the same claim. ‘931 is construed with M=M, and ‘009 is construed with M=M(prime). Consequently, Ref A is insufficient to anticipate either Claim 1 or Claim 2 of ‘009.
Claims 1 and 2 are easily made obvious, however, because one simply need cite Ref A and a Ref B (possibly the notes of the 1980 symposium, or a similar textbook) to teach the new strong magnet, and apply simple substitution. Ref A/B render the claims obvious.
This is not a situation where anticipation is the epitome of obviousness, since there is no manner that Ref A could be construed to anticipate even Claim 1, because Ref A never teaches M(prime).
However, one can (and this might be what you are getting at) generate a one-reference 103 and find Claim 1 obvious solely over Ref A. However, here anon is correct – you cannot do it solely based on the one reference. Rather you need a finding that one of skill would have recognized the difference between M and M(prime) and that the disclosure of Ref A, when filtered through the lens of M->M(prime) would suggest the invention of Claim 1.
I agree you can make a one-reference 103 (since that is what you are really asking for without knowing it) but on the condition that (as anon says) the record contains the re-definition (or the definitional shift) of M->M(prime). In other words, the 1980 symposium or a similar textbook would need to be cited in either case, though it need not technically be part of the rejection. Either way you would need to cite Ref A and Ref B, but you could make a 1 or 2 reference rejection.
There is nothing odd or paradoxical here. M and M(prime) may use the same words but don’t mean the same thing. One reference obviousness rejections are not impossible (neither are two reference anticipation rejections for that matter). One of skill is not “forced” to use “only” the conventional meaning – they may be aware of what the term meant today and also be aware that it meant something different at another time.
Once you admit that Ref A doesn’t enable the instant claim, anticipation is out the window. All obviousness requires is a rationale as to why it is obvious with sufficient evidentiary underpinnings. A can form a one-reference 103, but it can’t do so “without requiring support from any second [source]” as anon correctly points out.
Anything going on in the news today? Lol
Rot in hell, Re pu kkkes.
Are there no other places on the internet you can slum it?
The better question is why after more than eleven and a half years of the same blight – and after repeated “calls” by the editors here for a “better ecosystem,” is he STILL slumming it here?
Well more than half his blight has absolutely zero to do with patent law.
blight has absolutely zero to do with patent law
What’s the point of “law”?
Tell everyone, “anon.”
You presend to very concerned with it … and yet …
Should be: “You pretend to be very concerned with it … and yet …”
Time for the afternoon cup of coffee.
Time for something else.
Like noticing that this is a PATENT law blog.
Try starting with that.