Obviousness: Known Solutions from other Fields of Art

In re Robert Kross (Fed. Cir. 2020)

In this short decision, the Federal Circuit has affirmed the PTAB’s determination that Kross’s claimed invention would have been obvious. Apn. No. 13/275,400. (Real party-in-interest here is Poly-Gel L.L.C.).

The invention: A method of printing using “non-gelatin viscoelastic gel printing plates.” The gel used here is designed to solve cracking problems that were “a hallmark of gelatin plates.”  The claimed viscoelastic gel was already known in the art for its non-cracking properties. In its decision, the Board concluded that PHOSITA would have been motivated to solve the known cracking problem by using “known properties of a known material.”

The difficulty in this case involves the claimed viscoelastic gel. The prior art (Chen) discloses the gel and its non-cracking and ease-of-manufacture properties.  However, Chen only describes this outside of the printing context. On appeal, the Federal Circuit affirmed that PHOSITA would have been motivated to use Chen’s disclosure:

 [T]he fact that Chen does not teach the use of viscoelastic compositions in any type of printing does not undermine the Board’s finding of a motivation to combine. We agree with the Board that Chen’s silence “as to a particular application is of little or no moment given the teachings of the properties and the resulting general uses of the viscoelastic gel-like materials, which would have suggested those materials as, more likely than not, a successful solution to the problems of gelatin cracking and splitting.”

Slip Op. (Quoting PTAB determination).  Here, the Federal Circuit was guided by its reading of the prior art — which identified the particular problematic parameters (cracking, splitting) to be addressed. That guidance from this prior art brought this case outside of the “obvious to try” world and into one of “reasonable expectation of success.”  I’ll note here that the court was guided by its reading of the prior art — it turns out that there are many many problems with gel-based printing recognized in the prior art. The court skipped over how those additional problems might have guided PHOSITA off of the neat invention pathway offered by the opinion here.

16 thoughts on “Obviousness: Known Solutions from other Fields of Art

  1. 6

    Could have been worse. At least they didn’t say the properties taken advantage of by the inventor are a product or law of nature.

    1. 6.1

      With Newman and O’Malley on the panel, that wasn’t going to happen.

  2. 5

    Re: “The court skipped over how those additional problems might have guided PHOSITA off of the neat invention pathway offered by the..” [2 combined references in the IPR petition].
    Isn’t providing actual evidence of that [or other kind] of unobviousness of the proposed combining of references what the patent owner has a trial period for?

  3. 4

    I do not see how evidence of long felt and unmet needs undermines a conclusion of obviousness based on a finding of a motivation to use a non-gelatin gel in a printing process, and a reasonable expectation of success of such a use. The applicant could use evidence of teaching away against the motivation to apply to another use, or evidence of incredulity of experts against the expectation of success, but it does not seem that such evidence was available. Professor Crouch suggests that such evidence could be out there. So the decision is more likely the result of an unsuccessful argument rather than a problem with the way obviousness was analyzed.

    1. 4.1

      I do not see how evidence of long felt and unmet needs undermines a conclusion of obviousness based on a finding of a motivation to use a non-gelatin gel in a printing process, and a reasonable expectation of success of such a use.

      You do not see the natural conflict between that reasonable expectation of success and no one actually employing that reasonable expectation to establish a long felt and unmet need?


      That’s like saying a reasonable path is one that no reasonable person bothers with, even though a need to arrive at the end of the path has been pressing for a long time.

      What does “reasonable” mean in such a contrasting situation?

      1. 4.1.1

        Reasonable expectation of success means that the evidence shows that the gel was expected to address successfully the problem of cracking (i.e., the motivation to use another material than gelatin).
        Long felt and unmet need seems to me more appropriate to undermine a finding of simple substitution.


          I see — I think that you might be over-reading the expectation to be actual proof, and under-reading the long felt need.

          Look at my last post and try to place the two on closer ground.

  4. 3

    Mr. Kross was robbed — his new-use arg should have — by itself — carried the day.

    And what — no sua sponte 101 rejection . . . ’cause, well, you know; “cracking” is “of nature” . . . or is abstract . . . or is diagnostic . . . or . . .

  5. 2

    This Fed.Cir. 103 decision continues it’s all to frequent improper practice of completely ignoring and failing to even cite its controlling authority on 103 [and the very issue here], the Sup. Ct. KSR decision.

    1. 2.1

      I believe you’re referring to the line

      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. If a person of ordinary skill can implement a predictable variation, §103 likely bars its patentability. For the same reason, if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.

      1. 2.1.1

        Thanks for that quote, plus the several KSR references to POSITAs using “common sense” in that regard.

  6. 1

    Before PROST, Chief Judge, NEWMAN and O’MALLEY, Circuit Judges.

    O’MALLEY, Circuit Judge.

    1. 1.1

      God forbid Dennis mention the composition of the CAFC panel at the beginning of the post.

      The application itself contains several patent profanities, including the recitation of several “objects of the invention”. The PTO’s position doesn’t seem entirely implausible, viz. if you know you have a problem making a plate from one material, look for another material. I wonder if mere description of the claimed process in the application, rather than admitting the problem one was trying to solve, which the court felt made the solution obvious, might have led to a different result in the proceedings.

      1. 1.1.1

        Indeed, reciting “objects of the invention” with that title in a patent application introduction was already considered undesirable old hat patent scrivening that could lead to losing interferences, or other patent interpretation issues, in 1963. We really do still find some long-surviving fossilized patent practices.

      2. 1.1.2


        Without commenting on the particulars of THIS case, your comment does remind me that what many whi ne about comes about because of the patent profanity introduced by anti-patent courts.


          Wait — what?! “Anti-patent courts!?”

          Here in America?!

          Say it ain’t so, Joe! Say it ain’t so!

          link to en.wikipedia.org

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