Patent Law’s Fifth Column: Motivation to Combine with Reasonable Expectation to Success

by Dennis Crouch

Apotex Inc. v. Cephalon, Inc. (Supreme Court 2022)

In its petition for writ of certiorari, Apotex asks the Supreme Court to revisit motivation to combineobvious to try and whether the non-obvious contribution needs to be an improvement over the prior art.   The petition argues that KSR v. Teleflex (2007) requires a flexible analysis, but that “over the ensuing decade-and-a-half, the Federal Circuit has … reverted to its old rigid ways.”  The petition also complains that the Federal Circuit has again masked its jurisprudence via Summary Affirmance without opinion.

The accused infringers here were seeking to market a drug treatment for chronic lymphocytic leukemia covered by several Cephalon patents and sold as Bendeka.  The defendants challenged the patent claims as obvious, but the district court sided with the patentee — finding a lack of motivation to combine the references with a reasonable expectation of success.  This test has become the sina non quo of post-KSR Federal Circuit obviousness decisions.  See, for example, Accorda Therap. v. Roxane Labs., 903 F.3d 1310 1328 (Fed. Cir. 2018) (“motivation to modify or combine with a reasonable expectation of success”);  In re Stepan, 868 F.3d 1342, 1345-46 (Fed. Cir. 2017) (“requires finding both that a skilled artisan would have been motivated to combine the teachings of the prior art … and that the skilled artisan would have had a reasonable expectation of success in doing so.”), etc. Apotex’s petition explains this as follows:

[T]he Federal Circuit seems to believe that if there is any uncertainty about whether an obvious-to-try approach will succeed, that potentially compromises the motivation to try an obvious solution to a pressing problem, and therefore produces patent monopolies for what is obvious to try. Indeed, so ingrained has the motive-to-try-what-is-likely-to-succeed test now become in the Federal Circuit’s obviousness psyche, that the Federal Circuit now sometimes includes motivation as a fifth Graham factor.

I also write about this same issue in the Federal Circuit’s recent decision in Teva v. Corcept (Fed. Cir. 2021). Cephalon’s response is due in about 2 weeks.

Federal Circuit Draws a Hard Line Against “Obvious to Try” Analysis

 

100 thoughts on “Patent Law’s Fifth Column: Motivation to Combine with Reasonable Expectation to Success

  1. 10

    OT, but the number of patents decreased 7% for 2021 based on 2020.

    Strange that this site doesn’t report on the continuing decline in patent applications from US sources.

    1. 10.1

      Do you really think that longstanding desired narrative to be strange that that narrative continues to be maintained?

      Both you and I have provided counter points that never seem to be recognized.

      Both you and I have a solid understanding of why that is.

  2. 9

    Oh brother reading through this dredge is the reason I loath reading the comments.

    Only one person used the term hindsight reasoning in the comments.

    KSR is trash. It allows any fact finder to proclaim that any invention is obvious.

    The history of humanity tells us that innovation is not an easy thing and that inventions with an incredible amount of utility are not invented for tens, hundreds, thousand, and even tens of thousands of years. There are many examples of things like sails, steel, information machines, and so forth.

    Any new combination should be presumed to be non-obvious where to rebut the presumption of non-obviousness, a TSM should be found in writing.

    That is the only way where non-obviousness just isn’t at the pleasure of anti-patent judicial activists.

    1. 9.1

      KSR is another I know it when I see it test. F’ing ridiculous. We have turned into a third-world country.

      “In sum, Defendants failed to prove by clear and convincing evidence that a POSITA reading the Preiss and Schöffski studies, Barth, Glimelius, and the
      Treanda® Label would have found the claimed infusion times, volumes, and concentrations obvious.”

    2. 9.2

      Two responses:

      1) I agree that KSR was terrible.

      2) The good news is that—even under KSR— any new combination is presumed to be non-obvious. “The word ‘presumption’ properly used refers only to a device for allocating the production burden.” Texas Dept. of Community Affairs v. Burdine, 450 U.S. 248, 254 n.8 (1981). In other words, so long as the proponent of obviousness has the burden of persuasion—and the proponent of obviousness does have the burden, at both the PTO and the district courts—the the claimed combination is presumed nonobvious.

      However, this presumption is just an evidentiary burden, and it is an easy burden to carry for many combinations. If the claimed invention is just an assortment of prior art elements, each doing no more than its prior art function, then it is not too hard for the proponent of obviousness to explain how and why the PHOSITA would combine them before the filing date.

      1. 9.2.1

        I have to chuckle at Greg “recognizing” presumption – but continues to
        f
        a
        i
        l
        to acknowledge that such a presumption not only has a presence but also a level — and critically, WHY there are both the presence and level.

      2. 9.2.2

        If the claimed invention is just an assortment of prior art elements, each doing no more than its prior art function

        Yet again, I call out Random to explicate his “the MPEP does NOT state that amalgamations alone cannot be patented” view.

        The fact that he does not do so merely confirms his propensity for confirmation bias and his lack of ability to entertain an inte11ectually honest conversation.

        1. 9.2.2.1

          Yet again, I call out Random to explicate his “the MPEP does NOT state that amalgamations alone cannot be patented” view. The fact that he does not do so merely confirms his propensity for confirmation bias and his lack of ability to entertain an inte11ectually honest conversation.

          I have other things to do than sit on your comments.

          Again, the MPEP explicitly states that amalgamations are not rejectable *as amalgamations.* The MPEP also explicitly quotes from KSR which explicitly states that simply arranging known things, each performing their own function is obvious. There is no tension in either of these statements.

          The “no amalgamation rejection” section is in the indefiniteness part of the MPEP, the point being that we don’t actually police the “point out and particularly claim the invention” statutory language – i.e. You can’t force an applicant to subtract subject matter from the claim that they admit they did not invent despite the fact that the claims are supposed to particularly claim what they invented. I frankly think that’s kind of ridiculous – when you invent a new car battery you contribution is sufficiently protected by a claim describing the new car battery. To let you write a system claim to “the new battery + a conventional car” (which will be non-obvious for the same reason the new battery claim issues, which is why 112 has to be the policing statute) when the battery powers the car the same as any other battery is just an attempt to shoehorn in contributory infringer defendants who shouldn’t be there. Further, it doesn’t really give notice if you invent a doorknob, claim a system that includes it with a building, and then mark the building and not the doorknob. That seems kind of intentionally calculated to avoid giving notice in bad faith. From my standpoint as a non-litigator I don’t much care about the prohibition on amalgamation rejections. It simply seems like something that is not in keeping with the law. But those concerns have absolutely nothing to do with this discussion on obviousness.

          1. 9.2.2.1.1

            LOL – it is NOT my calling you to “sit on my comments” that draws your silence on this point.

            And we both know it.

            It is that you addressing YOUR OWN past comments and admissions thereof just does not fit your desired narrative here.

      3. 9.2.3

        “the claimed invention is just an assortment of prior art elements, each doing no more than its prior art function, then it is not too hard for the proponent of obviousness to explain how and why the PHOSITA would combine them before the filing date.”

        Your shift the burden too soon. The rejection cannot stop at picking an choosing known elements in the prior art and concluding that the combination was obvious. On many occasions, however, the rejection does. My experience is that examiners cite to KSR as the rationale (i.e., “because KSR”). That is in error. KSR, and as guided by the MPEP, explained that an obviousness rejection still requires a rationale to pick and choose the elements which were disparately found in various pieces of prior art.

        In my pharmaceutical arts hypothetical, the rationale (A) is appropriate.
        That said, how does an examiner support a predictable result of the combination of known elements but for using the applicant’s own invention to “prove” the combination works? Saying the amalgamation of element would be predictable to do and would actually work in and of itself isn’t proof, but that’s where most of the rejections stop in their analysis. That’s the issue I have with these types of obviousness rejections. They lack a supporting rationale.

        MPEP2143

        I. EXEMPLARY RATIONALES
        Examples of rationales that may support a conclusion of obviousness include:

        (A) Combining prior art elements according to known methods to yield predictable results;
        (B) Simple substitution of one known element for another to obtain predictable results;
        (C) Use of known technique to improve similar devices (methods, or products) in the same way;
        (D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
        (E) “Obvious to try” – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
        (F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art;
        (G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention.

        1. 9.2.3.1

          You[] shift the burden too soon. The rejection cannot stop at picking an choosing known elements in the prior art and concluding that the combination was obvious.

          Two points:

          (1) I do not shift the burden at all. The proponent of obviousness has, at all times, the ultimate burden of persuasion.

          (2) As Judge Giles rich observed (1 APLA Q. J. 26 (1972)), “the unobviousness provision… is the heart of the patent system… [because] it is §103 that brings about statutory compliance with the Constitutional limitation on the power of Congress to create a patent system… and… assures that the patent grant… is not in conflict with the anti-monopoly brought to this country from England… .” In other words, the non-obviousness requirement serves to keep patents from being extended to that which is already within the technical ambit of the ordinary practitioner in the art, even when a given embodiment of the art is not exemplified in a single document or item in commerce.

          The right way to think of the non-obviousness requirement is to imagine a world in which 10 inch, 11 inch, and 12 inch diameter barrels have all been sold in the U.S., but never 11.5 inch or 13.2 inch diameter barrels. Does that lack of 11.5 inch or 13.2 inch diameter barrels mean that such things were beyond the skill of the ordinary cooper? Not really. If you had gone into a cooper’s shop, and asked for 11.5 inch barrels, the cooper would have known how to make them. It is simply the case that no one had done so.

          If, therefore, I show up at the USPTO and claim an 11.5 inch diameter barrel, the examiner will not find a reference suitable for a §102 rejection. Still and all, the examiner’s §103 rejection does not have to explain why some hypothetical ship’s captain would want 11.5 inch barrels. The rejection is sufficient if it merely notes that every other diameter was within the skill of the ordinary cooper to make, and the arbitrary selection of 11.5 inches adds nothing to the overall knowledge of the art.

          Mutatis mutandis, the same goes for combinations of toasters and televisions, or known APIs and known excipients. “[T]here is nothing inobvious in choosing ‘some’ among ‘many’ indiscriminately.” In re Lemin, 332 F.2d 839, 841 (C.C.P.A. 1964). While it is true that the “rejections on obviousness grounds… [require] some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness,” (In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)), that articulated reasoning does not have to be any more sophisticated than the logic behind the combination of the elements in the claim. If one chooses, arbitrarily, to combine toasters and televisions, then one should expect an obviousness rejection that notes that the arbitrary combination of these known integers is obvious unless the combination achieves some previously unexpected technical effect.

          1. 9.2.3.1.1

            What rebuttal argument or evidence and to what level is needed to overcome an obviousness rejection which “does not have to be any more sophisticated than the logic behind the combination of the elements in the claim?”

            Here’s what I experience:

            Examiner 1st rejection: It’s obvious because I say so. See KSR.

            Applicant: No it’s not. Just because you say so does not make the claimed combination prima facie obviousness. While your rejection cites various prior art references disclosing individual claim elements, your rejection hasn’t articulated a rationale to combine the elements in the way the applicant has claimed. (This provokes a more thoughtful response from the Examiner.)

            Examiner final rejection: Your rebuttal to the rejection is non-persuasive. My rationale is that all the elements when combined work for their intended purpose and you didn’t rebut that (even though it wasn’t articulated in the first rejection).

            Response after final: 132 declaration from the inventor showing the failures of the prior combinations leading up to the claimed successful invention.

            Advisory Action: Your rebuttal to the rejection is non-persuasive. What you did was obvious to try selecting from a known finite number of variables. (It is not a new ground of rejection, for example, if the examiner’s answer responds to appellant’s arguments using different language, or restates the reasoning of the rejection in a different way, so long as the “basic thrust of the rejection” is the same. In re Kronig, 539 F.2d at 1303, 190 USPQ at 427; see also In re Jung, 637 F.3d 1356, 1364–65, 98 USPQ2d 1174, 1180 (Fed. Cir. 2001))*

            *also improper final rejections are petitionable, which does not toll the response deadline. You end up filing an RCE anyway.

            And that, in a nutshell, is my practical complaint about obviousness rejections.

            1. 9.2.3.1.1.1

              I carry no brief for the poor quality of most USTPO obviousness rejections in the AU1600s. I agree that most of them are poorly written and poorly reasoned, even in situations in which one could make a very convincing rejection over the same art. I put the poor prose quality of most office actions in the 1600s down to “you get what you pay for.” If we wanted EPO quality prose, we should pay EPO level fees. For what an applicant pays in the USPTO, this is what you get.

              Setting aside the poor quality of prose, however, my point is to emphasize that conclusion of many of these rejections is correct, even if only accidentally. I think that a lot of people misunderstand “motivation to combine,” supposing that it means that the claims are only obvious if you can explain why one would have combined (e.g.) a toaster and a television before the filing date. If you begin from this understanding of obviousness, then the toaster/television combo might arguably be patentable, because the combination is so obviously arbitrary and illogical that there is no motivation to combine the articles.

              The point, however, is that the non-obviousness requirement exists to exclude from patentability that which is already within the skill of the art at the time of filing, even when it has never been precisely embodied in a single reference or salable article. The thing to understand is that “within the ordinary artisan’s skill” is merely the definition of “obvious” within the sense employed in §103. That is why, in Spectrum Pharma. v. Sandoz, Inc., 802 F.3d 1326, 1335 (Fed. Cir. 2015) the court held that an impure composition of (6S) leucovorin was obvious over a prior art disclosure of pure (6S) leucovorin. Even though it would be counterintuitve to adulterate the pure composition, it was entirely within the ordinary artisan’s skill to do so once in possession of the pure composition. Therefore it was “obvious.”

              1. 9.2.3.1.1.1.1

                I agree: ” the non-obviousness requirement exists to exclude from patentability that which is already within the skill of the art at the time of filing.” However, how does one know what is within the skill of the PHOSITA at the time of filing without explanation of the level of skill of the art and how that PHOSITA “would” have combined the art in the manner claimed?

                Your reasoning of: it’s obvious because it “could” have been combined is based upon hindsight. This is not the law even under KSR.

                There is more the the Spectrum case and it does not support your position that a “could” is sufficient to support obviousness. The facts in Spectrum includes more than a “could.” It includes a “would.”

                In Spectrum, the diastereomer of leucovorin was known. The claim was to a single s enantiomer of leucovorin at a certain purity level compared to the r enantiomer. The court found that the prior art disclosed: (i) leucovorin as a mixture of (6R) and (6S) diastereoisomers; (ii) that the therapeutic usefulness of leucovorin derives wholly from the (6S) isomer; and (iii) a rationale for investigating a purified isomer product for use in 5–FU combination therapy.

                (ii) and (iii) are critical. (ii) and (iii) provide the reason why a PHOSITA “would” isolate the S compared to the R as claimed. This fact is more than a “could.”

                1. You are focusing on the other portion of Spectrum than I am discussing. The prior art disclosed both a racemic mixture and a pure (S) isomer. The court concluded (Id. at 1334) that “the claimed substantially pure compound would have been obvious over both the 50/50 mixture and the pure (6S) isomer compound in the prior art.”

                  It is easy to understand the motivation to isolate a more pure (S) isomer from the racemate once you know (as the prior art showed) that (S) is the pharmaceutically active isomer. However, the court also concluded that it would be “obvious” to adulterate the prior art’s pure (S) isomer, despite the fact (Id.) that “no reason has been shown why one would want to have an impure material.”

                2. Your reasoning of: it’s obvious because it “could” have been combined is based upon hindsight. This is not the law even under KSR.

                  What this is, is Greg’s lack of understanding that 103 art is simply not 102 art under separate items.

                  This also reflects the position that I noted between the mere word “motivation” and “motivation TO Combine.”

                  “Could” / 103 merely separate 102 / motivation alone are aligned.

                  “Would” / 103 NOT separate 102 / motivation TO Combine are also aligned.

                  What else is aligned? Those with anti-patent bent tend to ‘go for’ the former.

                3. [Y]our position [is] that a “could” is sufficient to support obviousness.

                  Definitely not. I agree that “could have done” is not the way to phrase the test for obviousness.

                  Judge Miller once complained (In re Yates, 663 F.2d 1054, 1056 n.4 (C.C.P.A. 1981)):

                  The Solicitor, relying upon In re Aller,… 220 F.2d 454… (1955), argues that it is “not unobvious to discover optimum or workable ranges by routine experimentation.” In many instances, this may be true. The problem, however, with such “rules of patentability” (and the ever-lengthening list of exceptions which they engender) is that they tend to becloud the ultimate legal issue—obviousness—and exalt the formal exercise of squeezing new factual situations into preestablished pigeonholes.

                  I think that “motivation to combine” (a phrase that appears nowhere in Title 35) can be one of those illusory “rules” of patentability that can end up distracting from the ultimate (statutory) issue of obviousness. What “obvious” means in the §103 context is not that the skilled artisan “could” have done X before the filing date, but rather that the skilled artisan knew to do X before the filing date.

                  It is important to guard against hindsight reasoning when assessing obviousness. Identifying a motivation to combine prior art elements is a useful discipline against such hindsight. However, some inventions are so plainly within the skill of the prior art artisan that the “motivation to combine” test can trip you up.

                  In Spectrum, the pure (S) isomer was in the prior art. Surely, if the skilled artisan pre-filing had a supply of pure (S), s/he would know how to adulterate it to achieve the claimed 90% composition. If you try to articulate a motivation to make this change, it can trip you up, but that just goes to show that “motivation to combine” can be just as misleading as any other “rule” of patentability if you let yourself lose sight of the real, big picture issue. Don’t get lost in the weeds of “motivation to combine,” when the ultimate (statutory) is of obviousness is so easy to settle.

                  Similarly, the ordinary prior art artisan surely knows how to attach a toaster to a television once those two integers are each in the prior art. If you get lost in the weeds of looking for a “motivation to combine” these two integers, it can trip you up, but the solution to that problem is not to walk down the “motivation to combine” path when assessing the obviousness of the toaster/t.v. combo in the first place. You can know that claim is obvious at first glance, even without the “motivation to combine” analysis. One need not be so open minded about the patentability of such a claim that one lets one’s brain fall out.

                4. Greg’s choice of phrasing clearly shows that he
                  L
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                  when he says that he does not read my posts.

                  He is, of course, wrong about the “could/would” difference and he falls into the “103 art if merely separate pieces of 102 art” fallacy.

          2. 9.2.3.1.2

            Greg’s 11.5 inch barrel example reminds me of the 5 1/2 inch diameter dinner plate example, the favourite of long-retired English patent judge Robin Jacob, who used it to illustrate the fallacy of the argument that the 5 1/2 inch plate cannot be obvious because there was in the state of the art no motivation to make such a plate. A 5 1/2 inch plate is just as obvious as a 11.5 inch diameter barrel, for exactly the same reasons Gerg adduces. The motivation argument has to be used correctly. Perhaps this is why TSM works a treat at the EPO but is discredited in the USA.

            1. 9.2.3.1.2.1

              Perhaps this is why TSM works a treat at the EPO but is discredited in the USA.

              +1. The Court in KSR would never have so badly misunderstood the TSM test (and thus would not have looked so seriously askance at it) if US proponents of obviousness applied TSM as rigorously and methodically as EP proponents of obviousness.

              1. 9.2.3.1.2.1.1

                Now there’s a thing! For years and years, the EPO Boards of Appeal in the chem/bio space remained unconvinced by the TSM approach of the EPO’s by now unassailable Problem-Solution Approach. And now here we have Greg, from deep inside the chem/bio space, commenting favourably onEPO-PSA.

                But Greg, I have to ask: how could it be, that the learned Justices of the Supreme Court so grotesquely failed to appreciate the manifest merits of a TSM Approach to obviousness? Perhaps something to do with the quality of advocacy before that court? Or were they just not interested?

                1. Blame the applicants falls flat – and if you actually paid attention to the wells of wisdom that I have led you to, you would recognize that the PLAYERS on the Supreme Court very much indicate how they are re-writing patent laws to suit their own desires.

                  Again: MaxDrei: the epitome of the mind NOT willing to understand.

        2. 9.2.3.2

          That said, how does an examiner support a predictable result of the combination of known elements but for using the applicant’s own invention to “prove” the combination works?

          I think the fact that you put “prove” in quotes suggests you know the answer to your own question. You can have a threshold level of certainty about something (e.g. be more than 50% sure) without directly having done/witnessed it through context or through other knowledge. For example, if you know computer code A and computer code B exist, you can be assured that running A and then running B results in AB, and you know that even before you actually run the code. Similarly, if you have a first structure and a second structure and you have no reason to believe that they will interfere or interact with each other, you are pretty certain that A + B will about equal AB.

          To give you just one example from this thread – I know from references that a toaster makes toast and that a speaker plays sound. I have never seen a toaster and a speaker together in one device, but I know of no reason to believe that the toasting apparatus would render the device unable to produce sound, and vice versa. Therefore I can, right now, make a finding that the results will be predictable: the combination will (1) produce toast when bread is input and (2) play audio when audio signals are input, and I can make that finding without even looking at an applicants disclosure (indeed, that’s what I’m actually doing). Now I suppose its entirely possible that heated coils from the toaster will interfere with speaker output (although unless the claim has size limitations that’s not going to matter from an obviousness standpoint, and I doubt it would render it completely unenabled at any size) but I don’t have to prove it beyond a reasonable doubt, I just have to be more certain than not that one of skill would find the results predictable.

          If there is evidence that the results aren’t predictable the applicant can submit it and it will be considered and possibly defeat the rejection.

  3. 8

    Where Dennis writes “sina non quo” I assume he means “sine qua non”. 🙂

  4. 7

    “Examiners have that 103 references are merely a 102 spread out in different references.”

    Based on my own experience, Examiners are taught at Patent Academy to determine what kind of 102 reference each particular reference can be categorized under, and that’s what they have in mind when combining those individual references in a 103 rejection. My understanding is that this is what Examiners are still taught to this day.

    As has been pointed out before, Examiners cherry-pick the teachings from individual references which they then combine in a 103 rejections, and ignore the remainder of what each reference teaches. Examiners are quick to attack your arguments for allegedly attacking each reference individually (when you are doing nothing more than pointing out what each reference actually teaches) instead of what the combined references teach. Meanwhile, the Examiners themselves fail to take into account what each reference teaches AS A WHOLE (which is what you were pointing out to begin with), and what the COMBINED TEACHINGS of all the references would result in (i.e., something other than the claimed invention).

    1. 7.2

      “I claim a method of greeting a customer at a hotel, including a step of saying hello, a step of smiling, and a step of asking for the customers reservation information.”

      “Here’s a reference that teaches greeting a customer at a hotel.”

      “AH HA! Examiner, this reference does not teach smiling at the customer.”

      “We both know that doesn’t add anything.”

      “No, the name of the game is the claim! This is part of my client’s invention. Your rejection is invalid!”

      “Okay, here’s another reference that teaches smiling at a customer. Your claim is obvious in view of this combination.”

      “But this reference is for greeting a customer at a burger stand! If you were to combine these references, you would get a method of greeting a customer at a burger hotel! That’s absurd. Hotels for burgers don’t exist! This combination cannot teach my client’s invention.”

      You and your predecessors built an irrational system. I have zero sympathy for complaints about the irrational parts that don’t benefit you.

      1. 7.2.1

        Did you enjoy mastering and bating that strawman?

        Maybe you now want to actually engage on the legal points, eh?

      2. 7.2.2

        “You and your predecessors built an irrational system. ”

        I disagree with you on that one big hoss. The obviousness standard is, within horseshoes, about the best thing that’s been come up with. You can argue about the edges but overall it’s pretty good.

        1. 7.2.2.1

          It’s not so much obviousness rather than the overall naivete that’s baked into the system. The mercenaries here talk about “innovation” but the system really protects “different.” Some “different ” is innovative, but a lot of it is just junk designed to nibble at the existing public domain.

          1. 7.2.2.1.1

            The mercenaries here talk about “innovation” but the system really protects “different.”

            Ben – you clearly have never studied innovation, and your bias (and disdain for innovators) is showing.

          2. 7.2.2.1.2

            “The mercenaries here talk about “innovation” but the system really protects “different.””

            That is a good way of putting it, but that is basically what innovation is bruh. Yes, some people will put a little extra umph in there for the overall disclosure, indeed tis quite often the case in my art. And sometimes the app at hand is a bit more advanced etc. We get a loooooooot of disclosure, and though they try for a broad claim they don’t always get a lot of scope. Overall, currently in my art the office, and the gov, and the public is making out like a bandit on the ol’ innovation disclosure front. That is a literal fact. Beyond dispute at the moment. We get the results of million dollar+ projects and uni PhD/professor projects alike. Sometimes for bargain basement scope.

    2. 7.3

      “and what the COMBINED TEACHINGS of all the references would result in ”

      That’s a reta rded argument bruh, you should make it explicitly in your response so that the office can tell you to your face that it is tar ded. No wonder I see some ta rded arguments that are likely somewhat along this vein of argument, but they don’t explicitly say it spelled out in tar d languge like this. The office is practically never “combining the COMBINED TEACHINGS of ALL THE REFERENCES” in their grounds of rejection, thus, this is a tar ded argument as you are erecting a straw rejection to argue against and not even addressing the grounds of rejection before you. Remember, you do not control what the grounds of rejection are, you cannot force the office to “COMBINE TEACHINGS of ALL THE REFERENCES” or “COMBINE ALL THE TEACHINGS of ALL THE REFERENCES” or whatever. The office controls the grounds of rejection. Arguing against straw rejections is ta rded bro. Trying to control the grounds of rejection is ta rded bro. Yes, it sometimes BSes as judge or two, but it should be sanctionable as outright trickery.

      Just fyi, yes, obviously, in any given combination of teachings from references there will be other combinations of teachings from those same references, inclusive of a grand overall smashing together of all the teachings of each individual reference, which would 99.9+% of the time be non-obvious. Derpa herpa. Bringing that up is tar dation tho and just shows you don’t understand prosecution, who controls the grounds of rejection (that is, who is making the legal case against your application), or the law.

      1. 7.3.1

        The office controls the grounds of rejection

        LOL – ah, a ever-so-typical bureaucrat fiefdom statement.

        No 6, you do NOT “control.” You may offer your grounds, and you are REQUIRED to establish a prima facie case for your offering, but there is no such thing as “Your control.”

        1. 7.3.1.1

          “No 6, you do NOT “control.” You may offer your grounds, and you are REQUIRED to establish a prima facie case for your offering, but there is no such thing as “Your control.””

          Yeah “offering”/”putting it forward”/”establishing” is controlling what grounds of rejection is currently of record/under discussion/being argued against re re. The point is, we have a lot of attorneys erecting straw rejections to argue against and then knocking down straw rejections in their responses, never even bothering to address the actual grounds of rejection. Should be deemed outright non-responsive imo (to put an end to the practice outright post haste), but the office likes to collect the RCE fees and send final, which is why it continues. The applicants paying for that scam by attorneys are the ultimate ones “hurt” the vast majority of the time, although the examiners also have to sort through the response and ensure it is even a response to the rejection of record which is a literal waste of lived life (basically getting scammed out of living life).

          1. 7.3.1.1.1

            The point is, we have a lot of attorneys erecting straw rejections to argue against and then knocking down straw rejections in their responses, never even bothering to address the actual grounds of rejection. Should be deemed outright non-responsive imo

            LOL – first, that is NOT the point of your attempted portrayal of “control” – as my counterpoint dissects. You just do NOT have “control” as you would deign to use that word.

            Second, as to this notion of practitioners NOT answering the rejection, you are likely misconstruing what practitioners are doing (based on your errors here vis a vis the legal points of obviousness), and IF indeed practitioners are not answering the rejection, not only SHOULD you deem the response non-responsive, you are probably examining wrong in doing anything but that.

            but the office likes to collect the RCE fees and send final, which is why it continues.

            Are you saying that an abusive practice should be ig n0r ed? Believe you me – this scam has been vocally opposed by practitioners (including yours truly) for like forever.

            1. 7.3.1.1.1.1

              “You just do NOT have “control” as you would deign to use that word.”

              Uh yeah we do. Whom do you think has “control” if not the office re re? There is only one power in the universe that can issue a ground of rejection for a claim in an app and controls that ground of rejection in toto. The office.

              “and IF indeed practitioners are not answering the rejection, not only SHOULD you deem the response non-responsive, you are probably examining wrong in doing anything but that.”

              I just explained to you what they are doing. Tho to add to the above, sometimes when queried they say that it’s “the applicant” (meaning the internal counsel for the assignee corp) that is the ultimate controlling body, and not them as a lawyer themselves. Thus suggesting they have been hired on as errand boy basically. Not sure how that is allowed, but there it is.

              “not only SHOULD you deem the response non-responsive, you are probably examining wrong in doing anything but that.”

              Nah they make us as a matter of unofficial “policy” (divine internal command from director level). Its so they get the RCE fee and the attorney is not embarrassed and/or pressed for time up against a short time period to respond.

              “Are you saying that an abusive practice should be ig n0r ed?”

              I specifically suggested the opposite re re. But I’m not sure what you’re proposing I do. You want me to call the applicant themselves, get ahold of a supervisor at their big corp and explain the scam and outright accuse them? Or what? They’re just going to beg off on a translation error or some other bs. If not outright just state that the tar ded argument method espoused by a presumptive attorney just above is liek tots legit n sheet.

              “Believe you me – this scam has been vocally opposed by practitioners (including yours truly) for like forever.”

              Well how are we supposed to root it out? It’s so complicated that only experts even know what is happening and half of them think that line of argument is legit, and the other half speaks in re ta rd terms like yourself.

              1. 7.3.1.1.1.1.1

                Yet again 6 – your use of the word “control” simply does not carry the connotation that you want it to have.

                The control is in how easily dispatched your offerings are. L A Z Y (of bogus items) provide the Office NO real control as practitioners dispatch these with ease.

                And yet again – this is also NOT at point here in the legal discussion of the points within the obviousness mechanism vis a vis the difference between “motivation” (alone) and the actual legal requirement of “motivation TO Combine” that is at point on this thread.

                Your “errand boy” reply is garbled — can you try again? (you should know that ALL attorneys serve clients, and that it is — and always has been — the clients’ calling of the shots, so your attempt here to introduce some differentiation just falls flat.

                You further reply of “Nah they make us as a matter of unofficial “policy” (divine internal command from director level” only solidifies my prior response.

                As to “Well how are we supposed to root it out? It’s so complicated” – your reply is utter nonsense. You appear to be again confusing responses at the get go that treat obviousness properly (even as you just dont understand the treatment IS proper) and those responses the simply are not responsive and to which YOU should be treating properly so as non-responsive (at which point then, you appear to meekly accept the Office abuse vis a vis the RCE gravy train.

                I suggest that you hurry back with a nonsensical reply, that you pause and realize why the problems are on the examination side. That way, your response won’t (again) show your own confusion.

                1. “The control is in how easily dispatched your offerings are. L A Z Y (of bogus items) provide the Office NO real control as practitioners dispatch these with ease.”

                  Not even sure wtf you’re talking about. None of that has anything to do with who controls the grounds of rejection. Regardless of how supposedly easy you can overcome a grounds of rejection, you do not control the grounds of rejection. Burpa. The office does.

                  “And yet again – this is also NOT at point here in the legal discussion of the points within the obviousness mechanism vis a vis the difference between “motivation” (alone) and the actual legal requirement of “motivation TO Combine” that is at point on this thread.”

                  I’m obviously not discussing that. I am discussing the topic the guy I responded to was broaching.

                  “Your “errand boy” reply is garbled — can you try again? (you should know that ALL attorneys serve clients, and that it is — and always has been — the clients’ calling of the shots, so your attempt here to introduce some differentiation just falls flat.”

                  Supposedly attorneys are supposed to have some responsibilities as to what they submit for their clients. Obviously these replies I’m discussing do not meet those responsibilities.

                  “which YOU should be treating properly so as non-responsive”

                  Um no I should not dumas, the ol boss man says not to. What don’t you understand about this?

                  “the Office abuse”

                  It’s not “the office abuse” dumas, like 99.9% of the applicants would rather have the final rather than the notice of non-compliance. This is because they don’t want the short deadline. It’s the attorney abuse that is at issue re re.

                  “that you pause and realize why the problems are on the examination side”

                  What are you talking about re re? I specifically brought up an issue with the responses. That is literally the topic. I decline to discuss whatever other topic you constantly want to veer off into.

                2. As much as I try not talking down to you, it is sometimes completely unavoidable.

                  This is one of those times. You just cannot get out of your own bureaucratic fiefdom mindset.

                  You continue to want to use the word “control” when ALL that you have is the ability to offer grounds (that you yourself are constrained to offer properly). The real control is in dispatching those offerings.

                  The “grounds” of the rejection are hardly “control.” That is merely you doing your duty of examination (and often – with the Royal You – poorly).

                  I’m obviously not discussing that.” [vis a vis the difference between “motivation” (alone) and the actual legal requirement of “motivation TO Combine” that is at point on this thread.]

                  LOL –which is exactly the context of my having to talk down to you. You want to engage in minor side points, while missing the major point that sets the context of the thread.

                  As to “Supposedly attorneys are supposed to have some responsibilities as to what they submit for their clients. Obviously these replies I’m discussing do not meet those responsibilities.

                  This is clearly something that you have pulled out of your arse, as there is no way for you to know this.

                  As to “ Um no I should not dumas, the ol boss man says not to. What don’t you understand about this?

                  Well clearly I understand your job better than you – like the part of your job that is legally authorized and thus, what makes the abuse TO BE abuse. That you cannot recognize it as such is you merely being you.

                  As to “It’s the attorney abuse that is at issue re re.”

                  LOL – the classic ‘blame the applicant’ wont fly. It practically never does, and this is no exception.

                  As to “specifically brought up an issue with the responses. That is literally the topic. I decline to discuss whatever other topic you constantly want to veer off into.

                  Again – YOU have veered off topic and cannot realize the context here – this is a YOU problem precisely because your so-called “issue with the response” is not the issue that you think it to be.

                  All your “re re” pronouncements reflect badly on you because you are in the weeds. Get back on the path.

                3. “You continue to want to use the word “control” when ALL that you have is the ability to offer grounds (that you yourself are constrained to offer properly). The real control is in dispatching those offerings.”

                  None of that has anything to do with controlling the grounds of rejection. And that remains so regardless of whether you consider that “non-real” control or “real” control. But what we can take away is that you are a ta rd.

                  “You want to engage in minor side points”

                  Lol, minor side points. It’s a fair major “point” in prosecution as a whole. Even 4% annually of this kind of response is tens of thousands of such nonsensical responses to the office per annum. That’s a huge amount of waste.

                  “This is clearly something that you have pulled out of your arse, as there is no way for you to know this.”

                  Sure there is, there is the MPEP which clearly states the restrictions/rules on replies which are to be submitted. That’s herp derp how I know this. All pending grounds must be/are required to be addressed by formal rule. If the applicant (attorney) instead erects a straw-grounds of rejection and addresses that instead of the pending grounds of rejection, then the pending ground of rejection that they avoided responding to stands as unaddressed. That is a violation of the formal rules for replies, and it is very easy to spot in the wild. Further, it is sometimes confirmed by the attorney themselves in further discussions down the line. Sometimes they will have conveniently “not understood” a simplistic grounds of rejection with their 130+ IQ. Sometimes they are hilariously adamant that only their understanding of the grounds of rejection is the “one true” understanding of the grounds of rejection even with me explaining it clearly and explicitly not to be their understanding of the grounds of rejection. Sure thing big hoss, in both of those situations.

                  “YOU have veered off topic”

                  You do know that I can start a sub-topic anytime right? Does that compute at all to you?

          2. 7.3.1.1.2

            ..and if you want to talk about the amount of times that Examiners improperly go final, we can have that discussion.

            Including the ‘trap’ that the Office has set up in that challenging the propriety of finality is not an appealable matter, but the recourse is one of petition — and the Office has no meaningful restraint of abuse on timing in relation to any such petitions.

      2. 7.3.2

        “The office is practically never “combining the COMBINED TEACHINGS of ALL THE REFERENCES” in their grounds of rejection, ”

        Thank you for your admission that examiner’s don’t know how to make proper obviousness rejections.

        1. 7.3.2.1

          “Thank you for your admission that examiner’s don’t know how to make proper obviousness rejections.”

          Why the f would anyone practically ever combine the COMBINED TEACHINGS of ALL THE REFERENCES? There is no command in the statute, and not doing so is ten gazillion times the stronger legal case 99.9+% of the time.

        2. 7.3.2.2

          I’m getting a real “Examiners HATE this one simple trick. Click now!” vibe here.

          1. 7.3.2.2.1

            Are you aware of “the vibe” that YOU are giving off?

    3. 7.4

      Well said! This describes almost all of my cases.

  5. 6

    The chances of getting certiorari in a patent appeal are low to begin with, but the Supreme Court is never going to revisit a major substantive area of law like obviousness from an appeal of a summary affirmance. I don’t know why clients pay lawyers to file briefs like this.

    1. 6.1

      “I don’t know why clients pay lawyers to file briefs like this.”

      It’s theater for investors and other naive parties who need to be fooled for a while longer. Also mutual back rubs between the attorneys in house and outside.

    2. 6.2

      Many DOA certs are presumably buying a further time period of delay in facing the admissions and consequences of the finality of the bad news from already-costly litigation. By corporate managers and/or in-house counsel and/or outside counsel. Especially in cases with large awarded damages.

  6. 5

    I beg of attorneys to please reread KSR carefully before putting your name on a horrid brief. You don’t get your reputation back.

    1. 5.1

      Say what you want about KSR, but the court is going to be able to use whatever combination of rationales it chooses as long as it doesn’t stray from the overall Graham framework. Of course, none of the briefs would be able to show that the court wasn’t in line with Graham, so they attack the KSR rationale. Why do they keep doing this when the answer is always—cert denied, KSR is flexible? Clients keep wasting money for some reason tilting windmills.

      1. 5.1.1

        Q18,

        Your ode to flexibility reminds me of one of the other adages that my Uncle Ben would tell me:

        It’s good to have an open mind; but not so open that your brain falls out.

        1. 5.1.1.1

          Don’t shoot the messenger. *Shrug*

          1. 5.1.1.1.1

            No problem Q18 – I did not shoot the messenger.

            I shot the message.

    2. 5.2

      Justice Scalia said that all these balancing tests are not really laws.

      KSR means that any fact finder can determine that any invention is obvious or non-obvious as they like.

  7. 4

    I did not know that you wrote that Federal Circuit opinion.

  8. 3

    Without the “expectation of success”, then almost every improvement would unpatentable as “obvious to try”, because so many patent specifications include such broad language that they would then obviate all future improvements. For example, if a prior art process simply discloses “organic solvent” as a reaction milieu component, and the prior art process produces a high level of a specific impurity, and the “expectation of success” were not a requirement, then a process improvement wherein a particular solvent provides a 95% decrease in impurities would not be patentable because it would be “obvious to try” any organic solvent.

  9. 2

    Another missed teaching moment.

    The operative word is NOT “motivation,” as Every application inherently has that.

    Rather the operative focus must be on the phrase “motivation TO combine.”

    Hint: the LARGE majority of Office 103’s — especially those with three or more references
    F
    A
    I
    L
    to properly apply the phrase and instead err on a piece-part key word smooshing and hand waives motivation from a strictly hind-sight regurgitation of the rejected application’s own teaching.

    1. 2.1

      Rather the operative focus must be on the phrase “motivation TO combine.”

      No, the operative focus is to improve the art. That’s why KSR used the word “motivation” exactly zero times when not talking about what the federal circuit did, because a motivation is simply not the test. The test is whether the art knew of the causal relationship and could bring it about or not.

      If you use a toaster to make toast, the toaster is obvious. The toaster is obvious regardless of whether you put it in the kitchen, or in a car, or in a place where no rational person would ever desire toast. You don’t have to come up with a special UNIQUE motivation as to why toast would be BETTER in a car as opposed to a kitchen (which is how most inventors and half of the federal circuit view the issue). You don’t even have to verify that the CONVENTIONAL motivations *for wanting toast* maintain utility in the new context – If you wrote a claim that provided for dispensing toast right after a sunday brunch where you ate 5 pounds of food, got food poisoning, and only had moldy bread available, when no rational human would possibly want toast, using a toaster to make toast would still be obvious. That’s because *the art* is concerned with the machinery structure that causes bread to toast, and not with *the commercialism* of trying to convince someone that they desire toast at any given point in time.

      It is enough that the machine that converted bread into toast still provides humanity with the function of converting bread into toast – doing what it always did is the epitome of obviousness. So long as you are enabled to place the toaster into the system, and so long as the result of using the toaster is that it generates toast, the system is obvious. It naturally HAS to be this way, or else the toaster inventor would be disinclined to share the structure that toasts bread, lest other people simply repeat their words and take their invention from them. When you are unenabled to power a toaster with a car, or when the car context causes the toaster to turn inputted bread into milk (ie. things the original inventor never had), then you have a nonobvious invention. Replace toaster with any other structure or act, and car with any other context, and the rule holds.

      Consequently, if a first document discloses a base reference, and a second reference discloses a technique that one of skill would recognize COULD BE APPLIED to the base reference, and the application of that technique results in the EXPECTED outcome, the best that could be said for a disclosure that puts two known-but-previously-disparate things into orbit with each other is that “this context that we thought would have no differing effect on the technique indeed has no differing effect.” That’s simply regurgitating what the art already knew, and the claim only embraces what was obvious to the hypothetical person who had the entire knowledge of the art.

      There is a fundamental mistake in using the word “motivation” to evoke some sort of specialized reasoning or desire toward using the end result. You don’t need to explain why a car would be an especially good place for toast, or even why toast would be at all desirable in a car. Either a car could make toast to begin with (in which case the car/toast system is anticipated) or the car could not, in which case adding the toaster structure to the car results in the improved machine which has the combined functionalities of locomotion and making toast – improved by the obvious act of applying a known structure for its known benefit. The only “motivation” (and one should use the term loosely) that is needed is that the car couldn’t make toast without the known structure being added, and now it can. For my examiner friends, the “operative phrase” is “The expectation of some advantage is the strongest motivation” (Mpep 2144 I believe)

      The operative word is NOT “motivation,” as Every application inherently has that. Rather the operative focus must be on the phrase “motivation TO combine.”

      The use of something for its usual reason is obvious. It is true that most every application has utility, and that applications rarely include completely extraneous information. Consequently, it’s largely accurate to say that “most every application discloses a motivation for utilizing each feature disclosed therein for at least some kind of benefit.” or that “every application inherently has motivation” as you put it. Unless context provides some reason to believe that the result could not be realized in the new system, every motivation IS a motivation to combine. And in that category of failed combinations, it is both more legally accurate and more logically convincing to simply discuss it in terms of lack of enablement to combine or lack of expected results. That makes for a simple articulation of the advancement in the art – the art could not put A into B, now I’ve taught it how, through my superior skill I have improved the skill of the art; or the art thought putting A with B would result in AB, it in fact results in C, thus even though I use only conventional skill, I have improved the knowledge of the art.

      I struggle to see how people think otherwise – do you think we sit down and say “ahh, toaster in a car, and the prior art was toaster in the kitchen, let me weigh the pros of a warm slice with the cons of having to butter while driving to see if the average person of skill would be motivated to make this combination?” That would have patentability turn on the subjective weighings of the fact finder rather than the objective standard of what the art knew.

      1. 2.1.1

        But I use a computer to determine when the toast is done and it has multiple sensors. Also it sends a signal to open the garage door because a lot of people go to work after they eat toast.

        Failure to grant my patent is anti-technology and anti-innovation. Bargle bargle Obama leftists China software is hardware.

        1. 2.1.1.1

          Ah yes, Malcolm returns with his mindless script item, and I am reminded as to how fast he would run away when I presented the counter of my big box of Electrons, Protons, and Neutrons.

          Clearly, a focus merely on single claim elements necessarily misses the point.

      2. 2.1.2

        Seeing as you moved the goalposts and want only to talk about the larger concept of obviousness qua obviousness rather than the finer legal point of one legal element that should be understood in its context, I find it incredibly frightful that you are still an examiner.

        It’s even more frightening that you are so assured of yourself, while being so c1ue1ess.

      3. 2.1.3

        Another teaching moment here:

        103 is NOT an attempt at merely collecting multiple items that may serve as 102’s to their individual parsed items.

        If that is your thought process, you are doing it wrong.

      4. 2.1.4

        Random, I’m looking at your first para and baulk at the word “improve”. Does that not imply that technical progress is a prerequisite of patentability (as it used to be in Germany)? Is that what you want to convey? If not, might not the word “enrich” be more apt?

        1. 2.1.4.1

          “technical”…..

          As ever, you are not going to define that, are you?

          As ever, you are (rudely) going to ignore what the US Sovereign has decided, aren’t you?

      5. 2.1.5

        It is enough that the machine that converted bread into toast still provides humanity with the function of converting bread into toast

        LOL – says the guy who wants to find non-enablement for every claim that is more than one rung up on the ladder of abstraction.

        The toaster is obvious regardless of whether you put it in the kitchen, or in a car, or in a place where no rational person would ever desire toast.

        The new claims is simply NOT just to a toaster – PLUS (per the Prof’s hyperlink recent thread on the related topic), YOU were the one that provided that mere amalgamations are NOT rejectable under the MPEP. I (politely) asked for you to reprise your statements to that effect and you disappeared.

        Are you going to disappear again, or are you going to rebut those looking for some type of required synergy?

        1. 2.1.5.1

          LOL – says the guy who wants to find non-enablement for every claim that is more than one rung up on the ladder of abstraction.

          I certainly agree that the prior art’s lack of enablement to make the combination is a grounds for finding the combination patentable. I bet more applicants would succeed on this ground if they actually, you know, taught how to make the combination rather than relying upon the ordinary skill in the art to fill in the disclosure. That’s a really poor avenue of drafting I often find. I could allow a lot more applications if there was at least the fig leaf of pretending that the art didn’t know how to do something.

          YOU were the one that provided that mere amalgamations are NOT rejectable under the MPEP.

          Mere amalgamations are not rejectable AS ITS OWN REJECTION under the MPEP. Mere amalgamations are the heart of being obvious, and the supreme court says so.

          1. 2.1.5.1.1

            THAT is decidedly NOT what you had shared in the past and you know it,

            Please share the MPEP citation and your past admission ON that citation.

      6. 2.1.6

        [T]he operative focus is to improve the art.

        I think that this is basically correct, but I would quibble about “improve.” The essence of nonobviousness is that one is teaching the field something that it did not know how to do.

        Right now, we make toast by applying heat to bread. Imagine that you discovered a room temperature method of making toast that involved the application of various chemicals. It could be that this method is more expensive than prior art methods, more time consuming, more dangerous, and produces toast that is less tasty. In other words, along every dimension, this new method of toasting bread is inferior to the prior art methods. Still and all, the fact that no one knew how to do it before your discovery would make the discovery patentably non-obvious.

        In some sense, the addition of new knowledge means that you have “improved” the art. Still, “improve” in this context is fairly calculated to midlead. It would be better to speak of “enlightening” the art, or “expanding the pool of knowledge.”

        1. 2.1.6.1

          I think that this is basically correct, but I would quibble about “improve.” The essence of nonobviousness is that one is teaching the field something that it did not know how to do.

          I do indeed use improve to mean “adding to the sum total knowledge of the art,” which is the same as “teaching the field something that it did not know,” which is akin to what you said.

          In other words, along every dimension, this new method of toasting bread is inferior to the prior art methods. Still and all, the fact that no one knew how to do it before your discovery would make the discovery patentably non-obvious.

          Yes, I agree. I focused on the contrapositive above (that not having superiority does not render something non-obvious), but it is equally true that being inferior does not render something obvious.

      7. 2.1.7

        So what you are saying is that all inventions in the predictable arts (that almost always use known elements) are obvious. That’s nice, but its not consistent with the law.

        In KSR, the Supreme Court stated “rejections on obviousness cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” What is a rational underpinning? That’s a good question.

        Your approach is that if it is capable of being combined, then it is obvious. A toaster can be put on a speaker speaker so that is obvious. A toaster can be put on a computer monitor so that is obvious. Right? Isn’t that what you are arguing?

        The definition of ‘rational’ is “based on or in accordance with reason or logic.” An ‘underpinning’ is something that serves as a foundation. Thus, the foundation of an obviousness connection must be based upon reason or logic. Reason or logic sounds more like a motivation to me.

        Your analysis appears to be some form of “obvious to try” argument. However, there are some other findings associated with “obvious to try” (see MPEP 2143) that does not make it universally applicable.

        Regardless, the logic you’ve presented is classic examiner logic — it is a belief that so long as you can find all of the individual elements then the claimed invention is obvious.

        “The expectation of some advantage is the strongest motivation”
        The MPEP refers to advantages as being “it is stronger, cheaper, cleaner, faster, lighter, smaller, more durable, or more efficient.” However, your Examiner friends take it like this: The combination of A + B is known, and the claim recites A + B with C connected to B. The prior art shows that C connected to D provides C provides benefit X. The rejection is that it would have been obvious to have C connected to B in order to prove benefit X. However, this analysis fails to appreciate that nearly every element provides some function, which could be construed as a benefit/advantage. Using this logic, nothing cannot be combined.

        the art could not put A into B, now I’ve taught it how, through my superior skill I have improved the skill of the art; or the art thought putting A with B would result in AB, it in fact results in C, thus even though I use only conventional skill, I have improved the knowledge of the art
        Let me introduce you to one portion of the language of 103 — “Patentability shall not be negated by the manner in which the invention was made.” As stated in Leo Pharmaceuticals Products v. Rea, 726 F.3rd 1346, 1357 (Fed. Cir. 2013), “an invention can often be the recognition of a problem itself.” Consequently, once the problem was identified, the solution to the problem can be self-evident. Using your logic, this is not patentable. Putting A into B is capable of solving Problem X, and therefore this is not patentable — that’s your argument, right?

        Sometimes the invention is recognizing that X is missing, and once that is recognize, getting to X is fairly trivial from easy to identify combinations. However, the fact that getting to X is trivial does not mean that these combinations are obvious. Patentability shall not be negated by the manner in which the invention was made.

        1. 2.1.7.1

          A toaster can be put on a speaker speaker so that is obvious. A toaster can be put on a computer monitor so that is obvious. Right? Isn’t that what you are arguing?

          Yes, both of those statements are legally correct as presently phrased.

        2. 2.1.7.2

          Respectfully, WT, I disagree with you about what Random is saying above. What his Examiner friends say in their Office Actions might well be just as you say though.

          I have read Random’s words and, like Greg, quibble with the word “improve”. But in general, I couldn’t find where Random and the EPO’s Problem-Solution Approach are inconsistent. Under EPO-PSA, there is something called the “could-would” distinction. What the PHOSITA”could” have done is not determinative. What is decisive for the obviousness issue is what the skilled person “would” have done, to solve the objective technical problem.

          At the EPO, PSA treats the predictable and unpredictable arts to the same effective Approach, which disciplines the Examiner-attorney debate. I think Random does the same. As inany PTO, however, the quality of Examiner work product varies.

          1. 2.1.7.2.1

            BOTH

            I disagree with you about what Random is saying above.

            and

            I think Random does the same.

            are flat out incorrect – and no doubt this is driven from MaxDrie’s EPO Uber Alles bias (as witness here with his statement of “ I couldn’t find where Random and the EPO’s Problem-Solution Approach are inconsistent

            Learn to respect OUR Sovereign, MaxDrei and STOP trying to see every (and I do mean EVERY) conversation about US law as somehow being a conversation about EPO law.

            This tendency of yours is downright rude, and continues to introduce the errors of your bias as to what people here are saying about US Sovereign law.

        3. 2.1.7.3

          [Y]ou are saying is that all inventions in the predictable arts… that … use known elements… are obvious.

          I do not read RG as saying the above. It seems almost a willful misreading to take him as saying this. I am certain that RG would agree that if one’s mechanical assemblage of known integers achieves an unexpected result, then it is patentable.

          1. 2.1.7.3.1

            It seems almost a willful misreading to take him as saying this

            LOL – says Greg, the king of willful misreading.

            Classic.

          2. 2.1.7.3.2

            I am certain that RG would agree that if one’s mechanical assemblage of known integers achieves an unexpected result

            THAT is not the point.

            At all.

            Nice strawman.

            Maybe now you might want to ask Random to engage on his own past offered point vis a vis the MPEP and the NO requirement for synergy – aka amalgamations alone are just not de facto obvious.

          3. 2.1.7.3.3

            It was my instant reaction too, Greg, that this was a willful misreading of RG. I hope we hear back from WT after the week-end.

          4. 2.1.7.3.4

            WT has run with this specific argument before- he seems to genuinwly believe that there are no unexpected results in the predictable arts. I only mention it as such a belief would undermine your “willful misunderatanding” take.

            1. 2.1.7.3.4.1

              Fair enough. I always prefer to consider that my interlocutors are speaking in good faith. I am obliged to you for setting me straight.

              1. 2.1.7.3.4.1.1

                Ben, I’m obliged to you for that insight. I find the interplay between “predictable” and “expected” interesting. It seems to me defensible to assert that in the predictable arts there are, given enough time, and looking back with perfect hindsight, no results that one could hold up as “unexpected”.

                That’s the great thing about arguing obviousness within the predictable arts: how to do it fairly, in circumstances when hindsight knowledge of the invention is unavoidable.

                1. Yep – as I thought, MaxDrei does not see any interest in those items of conversation that do not reinforce his already held beliefs.

              2. 2.1.7.3.4.1.2

                As if Greg “never” engages is willful misunderstanding, ignoring counterpoints, or generally playing patticake with those he already agrees with, while being inte11ectually dishonest with those that point out his weaknesses…

        4. 2.1.7.4

          So what you are saying is that all inventions in the predictable arts (that almost always use known elements) are obvious.

          Being in the predictable arts does not render every single application predictable. But I do agree with the thrust of this statement that the office allows far too many obvious patents in the predictable arts.

          Your approach is that if it is capable of being combined, then it is obvious.

          No, my approach is that if it is capable of being combined, and the combination results only in expected results, then it’s obvious. But that’s not me saying it, its the supreme court:

          Finally, in Sakraida v. AG Pro, Inc., 425 U. S. 273 (1976), the Court derived from the precedents the conclusion that when a patent “simply arranges old elements with each performing the same function it had been known to perform” and yields no more than one would expect from such an arrangement, the combination is obvious.

          “The combination is obvious” seems pretty final. Or how about:

          The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.

          Likely obviousness is sufficient for an obviousness rejection. These both come from KSR, which is why it is unsurprising that MPEP2143 allows for simply finding that the pieces existed, could have been combined, yield only expected results, and then considering the secondary graham factors.

          See a motivation to combine is one OPTIONal rationale for supporting an obviousness rejection. (In the MPEP it’s *OPTION* G) When a rejection is based upon one of the other rationales (for example, option A, simple combination), the fact that there is no motivation to combine simply is not relevant. There are certainly mechanisms for attacking the rejection (such as a false factual basis or the art being unable to make the combination) but the fact that there is no motivation to do so simply is not one of them.

          A toaster can be put on a speaker speaker so that is obvious. A toaster can be put on a computer monitor so that is obvious. Right? Isn’t that what you are arguing?

          Yes. If a toaster on a speaker both plays audio and toasts bread, it is obvious. If a toaster on a display both displays information and toasts bread, it is obvious. If you can prove the bass from the speaker makes the bread unexpectedly delicious, then you can have a patent. Barring that, a toaster speaker is not patentable.

          Your analysis appears to be some form of “obvious to try” argument. However, there are some other findings associated with “obvious to try” (see MPEP 2143) that does not make it universally applicable.

          I really can’t understand how you can blow by simple combination or even application of a known technique and get to obvious to try. Simple combination is up at the top of MPEP2143. Like you’re in the right place man, you just have to read the whole thing.

          Regardless, the logic you’ve presented is classic examiner logic — it is a belief that so long as you can find all of the individual elements then the claimed invention is obvious.

          No. Again, it is a belief that (1) the elements must be known, (2) the art was able to combine them without using the instant disclosure and (3) the result of their combination is expected. It is not just (1), which is often the complaint I hear from people who don’t understand it. It just so happens that because most disclosures don’t teach how to make the combination (instead relying upon the ordinary skill in the art to enable the combining) and most results are the expected results, most claims in the predictable arts are obvious.

          However, this analysis fails to appreciate that nearly every element provides some function, which could be construed as a benefit/advantage. Using this logic, nothing cannot be combined.

          That’s simply not true. To use my previous example, a toaster gets power in the kitchen through a connection to a wall socket. Most cars do not have a socket. If a mechanism to draw power from the car battery to power the toaster was beyond the skill of the art to create the combination would not be enabled and therefore not subject to an obviousness rejection. One could describe the power converter, claim the power converter, and also claim the toaster/car system. But if it was within the skill of the art to make the converter (which is most often demonstrated by the fact that the toaster/car system application does not describe how to make the converter and instead relies upon the skill of the art to do it) then the combination is obvious. You ignore the only relevant invention – the creation of the power converter – and then complain that I’m finding everything obvious.

          Consequently, once the problem was identified, the solution to the problem can be self-evident. Using your logic, this is not patentable. Putting A into B is capable of solving Problem X, and therefore this is not patentable — that’s your argument, right?

          Again, no, as this is the second option I put forth. If the art did not recognize that B had a problem, the art was mistaken about what the AB combination would result in – they would expect A to have no effect on B and instead A causes B to be improved by defeating X. This is a classic example of A + B not resulting in AB but instead resulting in C: A synergized with B in an unexpected way.

          Sometimes the invention is recognizing that X is missing

          I explicitly said that one mechanism for finding a claim nonobvious is when the applicant can articulate that a combination produces unexpected results.

          1. 2.1.7.4.1

            and yet your past admission undoes what you are trying to say here.

            Is that why you are not repeating that past admission?

      8. 2.1.8

        RandomGuy, have you ever invented anything?

        You are so FOS. Just hindsight reasoning and yappy nonsense from you again and again.

        Read about hindsight reasoning. There are lots of psychological studies.

        1. 2.1.8.1

          Night Writer,

          You have provided this very point previously to Random.

          He refuses to even acknowledge that point.

        2. 2.1.8.2

          Just hindsight reasoning and yappy nonsense from you again and again.

          It’s just the opposite – as Einstein said Insanity is doing something over and over and expecting different results. Doing the same thing you already did to get exactly what you would expect is the height of obviousness.

          when a patent “simply arranges old elements with each performing the same function it had been known to perform” and yields no more than one would expect from such an arrangement, the combination is obvious.

    2. 2.2

      Correct, and don’t forget the USPTO’s continued fraud that the Examiner has determined the level of ordinary skill in the art in a 103 rejection.

      1. 2.2.1

        NONE of such is needed for those who confuse the

        “could /103 art is merely separate 102 art / ‘motivation’ as a single word”

        as being “THE” standard, instead of the correct:

        “would / 103 art is NOT merely separate 102 art / “motivation TO Combine” standard.

        It’s pretty clear how the line is drawn between the pro-patent and anti-patent folks here.

  10. 1

    It has never been the case that a “non-obvious contribution needs to be an improvement over the prior art.” In fact such alternatives, to avoid patents, are even argued to be a feature. But does this “QUESTION PRESENTED” really argue that? It is: “Whether claimed invention involving reformulating and administering an old drug in ways that are no better than prior techniques, and which had been taught and suggested in the prior art, are nevertheless patentable although these formulations and methods were at least “obvious to try” under this Court’s decision in KSR, Int’l v. Teleflex, Inc., merely because the court found that a person of ordinary skill in the art would not have been sufficiently motivated to make and administer the drug in this way.”
    I find that to a confusing, if not internally conflicting, Question Presented, for what seems to really be just a challenge to a 103 decision?

    1. 1.1

      You are definitely right with how the Question Presented is a confusing mess. That will most likely mean cert denied.

    2. 1.2

      But, lack of “motivation to modify or combine [plural references] with a reasonable expectation of success” [of a POSITA] does seem to be an effective 103 argument in some patent litigation cases and appeals. Albeit rare in application prosecution, but the declarations needed to support that argument there are equally rare.

      1. 1.2.1

        does seem to be an effective 103 argument in some patent litigation cases and appeals. Albeit rare in application prosecution, but the declarations needed to support that argument there are equally rare.

        I can attest that at least one small part of that rarity is that fighting “Motivation TO Combine” at the prosecution level often becomes fighting “motivation” alone – and as seen above with Random, examiners quite often cannot grasp the difference.

        I will fight that fight if need be, but VERY often there is other lower hanging fruit of other examiner errors that are just more efficient to use to overcome rejections.

        But I will add here yet another teaching lesson based on your insertion of [plural references], and that is that the Motivation TO Combine must survive the combination of ALL of the references. Often the counter on this point is NOT phrased in the motivation to combine space, but instead is phrased in the references must not be negated for their manner of operation as taught space.

        The two ARE related, and stem from the general (FALSE) view that Examiners have that 103 references are merely a 102 spread out in different references.

        The bottom line for both is — as I stated (and as Random BADLY misses) — the “TO Combine aspect is the actual LEGAL focus to be understood.

        1. 1.2.1.1

          +1 “[] Examiners have that 103 references are merely a 102 spread out in different references.”

          See it all the time in the pharmaceutical arts. The examiner picks and chooses where the claim elements are found in a number of different references, waives hands, then concludes it would be obvious to combine them. E.G. Take an excipient from reference A, a binder from reference B, and the active from a reference that generally discloses your type of compound (i.e., a steroid). Combine all three references and conclude its obvious to put them all together in the way the claimed invention did because “KSR.”

          1. 1.2.1.1.1

            The examiner does that because it is a proper obviousness rejection. The skilled artisan in drug formulation is familiar with Remington. The knowledge of excipients is imputed, and “there is nothing inobvious in choosing ‘some’ among ‘many’ indiscriminately.” In re Lemin, 332 F.2d 839, 841 (C.C.P.A. 1964). Any combination of known actives with known excipients is an indiscriminate selection of some from many unless there is something about this combination that yields an unexpected benefit.

    3. 1.3

      >In fact such alternatives, to avoid patents, are even argued to be a feature.

      I agree. Economically speaking, the mere existence of competing alternatives solutions is a good thing(tm).

      My general impression is that the FDA takes a different view. The new drug/treatment must be ‘more effective’ than the prior art (where ‘more effective’ != merely cheaper). This petition seems to be mixing those two standards.

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