In re Paul Morinville (Fed. Cir. 2019)
Morinville is an independent inventor and inventor-advocate. In the photo to the right, see Morinville burning one of his patent documents. He is also a regular contributor to Gene Quinn’s IPWatchdog site.
In this case, Morinville is attempting to patent a method of reorganizing a business hierarchy into a more centralized functional hierarchy. Example: Move from Fig. 1 to Fig. 2.
Operationally, the claims require association of “roles” with each position, including a “major function” and then identifying positions in the hierarchy that have functional commonality between the roles. Those associations are then used to generate a new hierarchy. And, “each of the steps is automatically implemented in the computer.”
The application was filed back in 2004. In its first office action (2008), the examiner rejected the claims as directed to an abstract idea (applying a machine-or-transformation test) and also anticipated and obvious. That rejection was followed by a second non-final rejection in 2009 and a final rejection in 2009. During that time, Morinville added an “implement it on a computer” requirement, which satisfied the PTO on 101 grounds. Morinville appealed the other rejections and filed his appeal brief in 2010. Later that year, the examiner reopened prosecution with new obviousness rejections that were made final in 2011. Morinville appealed again and won — with a 2012 PTAB decision finding the claims non-obvious (or at least that they have not been shown to be obvious). However, rather than allowing the case, the examiner issued a new set of rejections on post-Alice eligibility as well as a new anticipation rejection. That rejection was then made final. On appeal, the PTAB affirmed the examiner’s eligibility rejection — finding that the claims were effectively directed to an unpatentable abstract idea. The PTAB explained:
The subject matter of claim 1, as reasonably broadly construed, is drawn to a business administration concept for management of a business; that is, claim 1 is focused on a methodology of creating a functional organizational structure from a hierarchical operational structure and controlling access to business processes based on the created functional structure. . .
We find the concept of organizational structure, in which an organization can be structured in different ways, and managing access to business processes based on an organizational structure, is a well-established business practice, and an idea with no particular concrete or tangible form. Furthermore, we find the “computer” of claim 1 is invoked merely as a tool and does not provide any specific improvement in computer capabilities.
Now on appeal, the Federal Circuit has affirmed. Writing for the court, Judge Newman explained that organizing a hierarchy is “a building block, a basic conceptual framework for organizing information” and thus abstract. The court also agreed with the PTO that Mr. Morinville’s “computer” elements were claimed at such a “high level of generality” so as to have no grounding effect sufficient to transform the abstract idea into a patent eligible invention.
Unsure why the need to mention his political affiliations here as they are completely irrelevant to the particular case at issue. But then it seems this site has been becoming more political and less patent based for some time.
With Malcolm, that “some time” passed the 14 year mark in February.
Based on an objective factual recollection made on one of Prof. Crouch’s periodic “can we have a nice blog?” campaigns.
In response to Greg,
I think that a machine that is processing an organization chart is technical.
How can you argue that something that a machine is doing is not technical? It seems absurd on its face.
Now if it could just as easily be done with paper and pencil and the machine isn’t really adding anything, then I think that the method can be analyzed outside the scope of machine implemented.
But you know, what you see in reality, is that these methods are adapted to the computer and there things that are done that would not be done but for the computer.
Etc.
This is technical. It is bizarre to try to add this condition that not only must a machine perform the method, but that also the subject matter of the method be something that people consider technical. This is the most backwards ridiculous line of reasoning I’ve ever heard. It is right up there with the flat Earthers.
The very nature of innovation is using technology to solve problems that may not be thought of as technical on their face. That is the very nature of innovation.
(I know the Scotus just Ginsburg who should have retired in the 1800’s says differently. Ginsburg also talks about technology like a five-year old girl where she speaks of universes in her computer. )
Think too about Deener. Why in the world would processing grain be technical? The only reason it is technical is because machines have been devised to process the grain. Think hard about that.
“Why in the world would processing grain be technical?”
Well, in order to try to answer that, we need a (non-circular) definition of “technical.”
For all of the typical “anti” bluster (from others, NW, not you), I have yet to see anyone advance such a definition for discussion purposes.
Business organizational structures are not patentable under 101?! There is a big “duh” factor to this opinion, as they wouldn’t even have been patentable under the old Bikski line of cases. Seems like this outcome didn’t warrant a 12 pages opinion, and even Dennis might have been okay with a Rule 36 affirmance.
The concept of Void for Vagueness is surprisingly absent from the academic reviews in light of the fact that this case (yet again – see Cleveland Clinic) stands for the fact that meeting the executive branch level of scrutiny to earn a patent grant simply cannot account for the Common Law law writing evolution (past, present and into the future) of how the judicial branch will change the law.
Given the level of importance of key terms simply not defined (in a proper legal sense), the level of Vagueness and “we know it when we see it” as a function of the particular “we” yielding vastly different results, the parameters of the second shear of the Kavanaugh Scissors (from the oral arguments of California Franchise Tax Board v Hyatt) can be seen to be readily met.
Combine that shear with the shear of the holding from the Schein case, and you have a way to cut the Gordian Knot and eliminate the broken score board that now wreaks havoc with a simple foundation of patent law (simple, if one takes the words as directly written by Congress).
At first I thought this was the worst claim to bring, but now I think Morinville may have a plan to ask SCOTUS (or Congress) to address/roll back judicially created exceptions to 101.
I don’t think anyone believes this claim is likely eligible under the current law.
But this claim probably only looks like “abstract idea + computer” because 2008’s 101 law required amendment to add the machine. It was likely a pure business method before.
A decent patent attorney could probably write a version with a “practical application” or a “technical improvement” (albeit 15 years later) that might pass eligibility muster.
So if Morinville likely knows it’s abstract under current Alice standard, he probably wants to change the law, pro se, maybe at SCOTUS level.
He probably wants to roll back the clock to before Bilski.
He likely wants to know why the judges created exceptions that have arguably swallowed all business method inventions. E.g., if the business method is novel and non-obvious, why not give him a patent?
What makes a business method an inferior invention?
Is the idea to disincentive disclosure of business methods and increase trade secrets?
If the judges/justices essentially asked inventors to add a machine to their business method in 2008 and then said “but it can’t be merely a method + a computer” in 2014, then the analysis should probably be more focused on whether the method was known/disclosed beforehand than the nebulous “abstract” exception hinging on a “technical” improvement that wasn’t required 15 years ago.
Re: “I think Morinville may have a plan to ask SCOTUS (or Congress) to address/roll back judicially created exceptions to 101.”
It would be difficult to find a fact pattern more likely to have the opposite effect.
+1
+1
Sure, Paul “has a plan.” He’s very smart! A very serious guy.
You are gone for days and that is what you came back with?
Beyond lame.
GregDeL: when the courts say “… because your claimed computer is really an abstract idea, and abstract ideas are not patentable,” the result to the interested community is exactly the opposite. Instead of saying to themselves “well, that is fair because the statute requires a written description,” they will say to themselves “what is this about abstract ideas? That is not in the statute.”
It’s true that abstract ideas are not listed among the categories of eligible subject matter. Why this is difficult for some attorneys to grasp is a total mystery! How can that difficulty possibly be explained by anybody? It would be so irresponsible to speculate.
“It’s true that abstract ideas are not listed among the categories of eligible subject matter.”
Great.
Pull your head out.
People are defending this garbage? Today might be the day that Patently-O jumped the shark.
Read Chief Judge Archer’s dissent in In re Alappat, 33 F.3d 1526, 1553-58, 1566-68 (Fed. Cir. 1994). It’s illuminating on these issues, including the music thought experiment.
then compare and contrast the losing dissent with the winning holding…
Good point, Greg. It seems to me unarguable, that in fields like musical composition, patents would impede rathat than promote progress. About 20 years ago, the UK Government commissioned a large survey to find out whether patents on programs for computers would promote progress in the programming arts. Meanwhile, the EPO’s eligibility/patentability/technicity case law rumbles on, delivering ever more legal certainty as to what is patentable.
Perhaps this quiet and steady (under the radar) but remorseless progress in Europe is what motivated Randall Rader’s mischievous, provocative and (I like to think) disingenuous utterance.
Sorry. That was intended to reply to Greg’s 2.2 comment.
>>Randall Rader’s mischievous, provocative and (I like to think) disingenuous utterance.
It was a genuine remark. And, Greg is mixing up different types of protection. Radar was talking about technical areas, which this obviously is as it is about automating the reorganization of corporations.
Music has copyright a different type of protection.
Google was started with patents along with many other software companies in the USA. Europe has 1/10 the software industry as the USA. So it seems that Europe definitely made the wrong decision.
And the EPO’s caselaw on eligibility is abysmal. It is a minefield where positive decisions are based on large corporations with lots of political sway pushing for eligibility in certain areas.
Geez, Max.
All of the same types are chiming in here, with a “mischievous, provocative and disingenuous” LACK of appreciation of the context of innovation along the lines of utility versus expression.
I have to wonder if any type of “balance” is called for in responding to these examples of disingenuousness.
>>I have to wonder if any type of “balance” is called for in responding to these examples of disingenuousness.
anon, what I think is that less balance is called for in accordance with the unreasonableness and the motive of the argument. Here what we have are objectively unreasonable arguments that have a clear motive to not provide patents for an area of technology. The arguments are crafted for a purpose and as such are not fair arguments.
These are the times when your persistence and intolerance is called for.
If you don’t think music is useful, then you’re even less of a human being than I imagined.
Obtuse. Is it deliberate?
Did I say “not useful,” or can you pull your head out and understand the context of utility within the Useful Arts?
Google was started with patents along with many other software companies in the USA. Europe has 1/10 the software industry as the USA. So it seems that Europe definitely made the wrong decision.
California has tougher pollution emission standards than Iowa, and the weather is warmer in California than Iowa, so clearly Iowa could make it weather nicer by toughening its air pollution emission standards, no?
Correlation is not causation. There are myriad other differences between Europe and the U.S. beyond their patent laws, so ascribing all industry differences between the two to the patent law differences is a fallacy. At a first order guess, I would say that German and French tax law have much more to do with the relative paucity of software startups in those countries compared to the US than does patent law in the various jurisdictions.
While certainly correlation is not causation and that there are myriad other differences between Europe and the US beyond patent laws, the converse position that you attempt is not supported that patent law differences have had no effect.
One more macro aspect is the way that patent law reflects a larger cultural aspect of “follow the guild” versus “pioneering individualism.”
Seeing as Greg is deep within a “Big Pharma” mindset, his lack of grasping the different (and PRO-US, strong patent “maximalist”) position may be noted.
Google? Patents? How about the founding algorithms that delivered the early astounding search success? Have they played any role at all in making Google the success it is? Which Google patents disclose them then?
I should have thought that Google’s success is as much to do with patents as Coca-Cola’s secret formula for making a cola drink. More an example of success without help from patents than an example of success thanks to patents.
+1
I have sat on speaking panels with Google engineers and spoken with many of their in-house lawyers, and they will consistently tell you that patents had nothing to do with the company’s success, and that the patent system as a whole is largely an impediment to advancement. They have tens of thousands of patents now, obtained and acquired mostly for defensive purposes.
There are definitely industries that succeed on the back of patented inventions, but for companies in Google’s space, not so much. Most technology companies in their space became established and dominant players in their respective markets before they even had a single patent. For example, Google got its first patent in 2004, six years after the company was founded and at least three years after it had utterly vanquished its competition in web search. It went on to have a massive IPO that same year, having only one issued patent that has never been asserted against anyone.
The Efficient Infringement position of Big Tech (like Google) is of the “and water is wet” variety of “news.”
Greg is mixing up different types of protection. Radar was talking about technical areas…
From #2: I don’t see why [Morinville’s invention] shouldn’t be eligible… This is clearly technical.
Now you are just begging the question. Is the org chart “technical”? What does “technical” even mean in this context? It seems to me that if we grant that Judge Rader’s quote is implicitly limited only to “technical” matters (a fair reading of Judge Rader, I will grant), then your citation to Rader’s authority here is wholly specious, because the Morinville invention’s qualification as “technical” is dubious at best. The only way that Rader’s quote works in your defense of Morinville’s invention is if one reads Rader’s assertion as extending beyond the “technical,” which is the over-broad sense in why my response was intended as refutation.
If you think that Rader should be fairly read as only speaking of “technical” arts, then I withdraw my critique of his statement. On the other hand, at that point Rader’s comment does you no good in your defense of Morinville.
As far as I remember, no one has ever bothered giving a non-circular definition of “technical.”
” the over-broad sense in why my response”
Er, ” the over-broad sense in which my response…” Mea culpa.
I think that a machine that is processing an organization chart is technical.
How can you argue that something that a machine is doing is not technical? It seems absurd on its face.
Now if it could just as easily be done with paper and pencil and the machine isn’t really adding anything, then I think that the method can be analyzed outside the scope of machine implemented.
There may well BE the “unstated” position that the machine is merely some “proxy.”
Of course, what that unstated argument is really all about is merely the Mental Steps Doctrine (or rather, the attempted Zombie reanimation thereof).
This is one of the reasons why you will occasionally see me ask that an academic (who won’t be accused of bias or otherwise improvidently dismissed) actually paint the historical picture of that patent doctrine — doing so would greatly clarify (and dispel the nuevo attempts to use that doctrine).
Otherwise, the more direct, simple, and effect adage of:
Machines do not think may be used (even if some have qualms about the “Slogan” nature that such an adage presents).
Eligibility at the EPO depends on drafting around the statutory exceptions to eligibility. Big corporations have the resources to procure and deploy prior to filing for patent protection the necessary international drafting skills.
So, in that sense, I agree with you, that eligibility law is a “minefield”, but only for those who draft under domestic US eligibility law under the misapprehension that it will work just as well under the EPC. But I certainly disagree with you about whether the established case law of the EPO is “abysmal”.
If you think there is a minefield at the EPO, what is your opinion of the “contribution” eligibility case law at the UK national Patent Office?
OK. MaxDrei. But what you are saying is that eligibility under the EPO is a case by case basis. There are no real rules, but rather different areas that the EPO has decided are or are not eligible.
That is very European. That is not very American. We like rules and then running with the rules.
The UK seemed to me to be more rule based. Tough rules.
You know, MaxDrei, we have a magazine for patents that the ABA puts out and they had an article about how to get around the EPO eligibility barrier. Basically, it was about drafting your application to focus on the improvements that would result from the invention based on the computer architecture.
And I’ve cases like that from the EPO. It is just ridiculous to have to twist things like that to get eligibility.
As I have pointed out to MaxDrei – it is very easy to sidestep the “per se” and “as such” caveats that MaxDrei sometimes forgets to note in his “EP Uber Alles” spiels.
I am surprised though that MaxDrei has NOT noted how the current Director of the USPTO has drawn some direct comparisons (in the new eligibility protocol and comments made concerning the same), as to how the new protocol’s emphasis on “practical application” can be very much equated to seeing that claims simply pass a “per se” or “as such” basis.
This point would mirror MaxDrie’s advocated position.
It would also mirror other posts by me, notably those posts that I put out when certain types of people are trying to obfuscate what software actually is.
To wit:
Distinguish between:
math
applied math (e.g., engineering); and
MathS (philosophy).
Heh, no grant for automatically streamlining an org chart. Maybe if he’d tied it into some sort of succession planning scheme it would have fared better.
The whole thing screams CBM, obvious, abstract, and cocktail napkin sketch.
An org chart, like any other technical diagram, is intrinsically abstract.
The only way it’s not abstract is if its used by a non-human actor (no human, no abstraction) to achieve some purpose.
Even then, it would still have to be non-obvious and a not-abstract claim (i.e. show the inventor was in full possession of the invention, or that the claims are not merely aspirations)
While I agree that the claimed invention is unpatentable, the claims do point to a non-human actor achieving a purpose (and, no, not the token recitation in the last step). Specifically, the “invention” is directed to an access control system that dynamically updates an access hierarchy based on organizational roles. One could analogize it to chown and chmod Linux commands that have variables pulled from an org chart. Data security is an improvement in a computing system, performed by a non-human actor.
Now, invalid under 102, 103, and 112? Surely. But depending on how access is defined, it may be eligible or ineligible under 102.
/s/102/101 obviously.
The highly disruptive reorganization of organization charts for all kinds of alleged reasons is a favorite and frequent activity of corporate staff and outside consultants in many large companies, and not surprisingly the kind of thing hard to find prior art for in a normal examiner search.
p.7 of the opinion states: “Mr. Morinville argues that his method is not an abstract idea, for it “ensures that access rules between organizations are matched automatically when any organization changes its structure,” Appellant’s Br. 12 (emphasis added), whereas in the prior art if an organization changes its structure “the access rules associated with the [prior] organization” structure must be manually changed to match the new organization structure, Appellant’s Br. 11”
Wasn’t that an admission that what is being claimed is doing on a computer what had been done manually? Without any claim to any specific or novel software?
Mostly off topic, but there is a new Trading Tech opinion out today. At the very end of the opinion—in just one paragraph—the CAFC disposes of a constitutional attack on the CBM system. There is no much detail in the opinion about the nature of that attack (the CAFC considers the challenge to have been waived for insufficient briefing in front of either the Board or the court). If you listen to the oral arguments, however, it is clear that the patentee was trying to make the takings argument that anon champions around here (the application of a more-likely-than-not standard to a §101 challenge in a pre-AIA patent constitutes a “taking” of the patentee’s right to a clear-&-convincing standard for post-grant §101 challenges). In other words, this sort of argument is little-by-little working its way up the line, awaiting a resolution. Eventually, this argument is going to be presented correctly, at which point it will be interesting to see the answer it receives.
Regrettably, in this instance the PTO neglected to make the right response to this takings argument (i.e., no such right has been “taken” from anyone, because the challenger still must prove invalidity by clear-&-convincing evidence in court under the AIA, and no patentee ever had a right to clear-&-convincing proof in front of a PTO tribunal even before the AIA). Mercifully, the failure of the PTO to make its best argument in Trading Tech did not matter, because the challenge was waived by the patentee.
“no much detail in the opinion about the nature of that attack (the CAFC considers the challenge to have been waived for insufficient briefing”
They clearly were NOT paying attention to what I have said, as what I have said would not have ended up with this “insufficiency” issue.
Incidentally, I highly recommend the oral arguments. The government attorney gets hammered by Judge Moore for failing to give a direct answer to a yes/no question. For all that, however, the government dances and stalls and hems and haws long enough that she eventually sits down without ever answering the question. I found it kind of cringe-worthy, but it was a master class in how an agent can evade a judge’s direct question when to do so would exceed her principal’s authorization.
Even Judge Moore grudgingly acknowledges at the end of the exchange that the government attorney’s sandbagging had overcome Judge Moore’s own determined insistence on a yes/no answer.
The government attorney gets hammered by Judge Moore
Ah, sounds like another one of those “too much coffee” days.
Greg, re “the government [attorney] dances and stalls and hems and haws.” What do you expect on any major issue from from a civil servant who now may not know what position his or her top management is going to take or be told to take from one day to another with the present government? I understand there are now more than 300 pending civil suits against agency conduct or policy changes absent normal rulemaking procedures?
“What do you expect on any major issue from from a civil servant who now may not know what position his or her top management is going to take or be told to take from one day to another with the present government?”
I think your question is both over and under inclusive.
What I expect from any civil servant that has an appearance in court is to be prepared for the questions that likely to (or even merely may) come up IN court that touch on the matter at hand.
While indeed the argument on Constitutionality was exceedingly weak (and basically a throw-away), the fact of the matter is that THAT question was there and thus was fair game.
The “I’m only a lackey and thus not prepared when I should be prepared” gambit does not sit favorably with me, nor should it sit favorably with anyone.
What do you expect on any major issue from from a civil servant who now may not know what position his or her top management is going to take or be told to take from one day to another with the present government?
I find this a rather unconvincing excuse in this case, Paul. This is the fifth case where this particular attorney has had to defend the constitutionality of CBM proceedings, and she has been asked this question (and has successfully evaded answering) in the previous four.
There is no way that she did not know she would be asked again. The judges of the CAFC have a right to expect the PTO to answer this question, so the attorney should have insisted on receiving instructions from her principals on the answer that she is to give.
That said, it was an impressive spectacle to listen to her manage (successfully) to evade giving an answer for a fifth time. This is no way to run a justice system (the judge really is entitled to a policy answer from the agency), but simply as a feat of lawyering, I tip my hat to the deputy SG who pulled off the evasive maneuver (sort of the same way that you can think that a given Luftwaffe pilot flies the bomber well, even as you acknowledge the evilness of the mission).
In other words, this sort of argument is little-by-little working its way up the line, awaiting a resolution.
ROTFLMAO
Gosh, it’s just impossible to predict how this is going to end.
Greg,
You also miss the fact that a Taking occurs for a granted patent at the institution decision point (the transition back into the Federal Agency, for which your comment of “in front of a PTO tribunal even before the AIA” may apply.
I am reluctant to criticise Judge Newman, but wonder whether the claimed subject-matter is sufficiently transformative to fall as a matter of substance within the eligible “process” category of Section 101.
And I sympathise personally with Paul but do not consider that burning your patent represents the best way forward.
I am reluctant to criticise Judge Newman, but wonder whether the claimed subject-matter is sufficiently transformative to fall as a matter of substance within the eligible “process” category of Section 101.
Perhaps I am just not on the ball today, but I am having a hard time connecting the first clause of your sentence (before the “but”) to the second clause. If, as you suggest, the claim does not recite a “process” within the statutory definition because it is not “sufficiently transformative,” then Judge Newman got it right, in which case you have no occasion to criticize her.
For my part, I will criticize her (or at least part ways with her) here, but only very mildly. I agree with the panel’s conclusion to affirm the PTO’s rejection. I would have preferred if she had pulled an In re Comisky move and affirmed on a §112 basis rather than a §101 basis. Even then, however, this is a very mild disagreement. Given the absolute hash that the SCotUS has made of §101, however, I cannot say that her §101 reasoning is “wrong” (as in, inconsistent with controlling precedent).
The Pandora’s Box lid of “a matter of substance”….
I’ve read Morinville’s stuff at the other place and I had no idea that he’d be associated with claims like these. Good to know.
I can agree with Mr. Morinville that this claim should pass §101, but this is the poster child for the sort of claim that deserves to fail under §112, even though long years of neglect from the PTO and CAFC have lead people to think of this sort of thing as a legitimate patent claim. Nearly every step simply screams “written description and scope-of-enablement problems.”
NB, the final wherein clause tells you that each of those steps must be done on a computer. So every step in that method, the reader should ask “how is this done?” How is hierarchical organization structure provided? How are the plurality of roles associated with their respective positions? How is the first position identified? Etc and so forth.
Is there more than one way to do each of these steps? Yes, the answer is “yes.” Has the patent taught us how to perform every possible way of performing each of those steps? No, not even close. Has the specification described every way of performing these steps, such that the reader can recognize that the putative inventor has possession of the full scope of the putatively claimed invention? No, not by a long shot.
I can agree with Mr. Morinville that he did not deserve to lose under §101. That said, there is no injustice in denying him these claims. The PTO was quite right to refuse grant here, because the claims do not comply with the statutory requirements that Congress laid down in §112.
Any attorney worth their salt would immediately recognize the appropriateness of the adage: The Ends do not justify the Means.
The Ends do not justify the Means.
Except when they do, which is quite often. Bildo the Hypocrite knows this but he can’t help but recite that vapid aphorism out of one side of his mouth, day in and day out.
Most of us can understand that the various requirements of the patent statute overlap with and complement each other, for the plain reason that those aspects exist to serve the same purpose: keep junk claims out of the system. A claim to “The earth and everything on it” fails multiple aspects of the statute. You can dance around and cry that the claim fails for “overbreadth” or “vaguenss” and not because it covers ineligible abstractions but at the end of the day, it’s just you dancing in a puddle of your own tears. Boo hoo hoo.
The more interesting question is: what kind of person spends a decade arguing with the PTO and the Federal Courts about cr ap that is so objectively st 00 pit? Get a life already.
They do NOT.
Not in law — which is why I put in there the “worth their salt” phrase.
You can’t tell if it has 112 issues without looking at the specification.
My comment on the claim would be that I think it would fail under 103. It sounds like the type of process that goes on by business consultants. Seems like something that is an implementation of a known business process. So 103.
You can’t tell if it has 112 issues without looking at the specification.
Agreed. But it does not take long in looking at the spec to see the §112 (written description and scope-of-enablement) problems.
Seems like something that is an implementation of a known business process. So 103.
I wish I could show obviousness by saying that the claim seems like something that is an implementation of a known thing.
It sounds to me like the examiner tried 3-4 times to reject something as obvious and failed.
It’s funny how 103 becomes a really easy standard when someone else has to do it and you’d prefer that rejection instead of a 112a/101 one, and a really really hard standard when it’s the only rejection remaining.
It’s funny how 103 becomes a really easy standard when someone else has to do it and you’d prefer that rejection instead of a 112a/101 one, and a really really hard standard when it’s the only rejection remaining.
LOL
No doubt.
It’s funny how 103 becomes a really easy standard when someone else has to do it and you’d prefer that rejection instead of a 112a/101 one, and a really really hard standard when it’s the only rejection remaining.
This is true in the main, and a real shame. I realize that there will be a lot of resistance to this idea, but it seems to me that this problem can be fairly easily solved (and work a considerable improvement to the quality of examination and claims ultimately granted) if the PTO were to promulgate a regulation requiring/i> that claims be presented in Jepson format.
The applicant knows what s/he thinks that s/he has invented. S/he should not hide the ball as to what the putative advance over the art is, but should rather put the putative advance right out front there in the claim. This would greatly simplify the matter of establishing whether the putative advance is a real advance relative to the whole state of the art, or only an advance relative to the inventor’s own limited knowledge of the state of the art.