In Graham v. Deere, SCOTUS provided a five step obviousness analysis.
My question – where do motivation-to-combine and reasonable-expectation-of-success fit in? pic.twitter.com/M4F4L1gh6H
— Dennis Crouch (@patentlyo) December 7, 2022
In Graham v. Deere, SCOTUS provided a five step obviousness analysis.
My question – where do motivation-to-combine and reasonable-expectation-of-success fit in? pic.twitter.com/M4F4L1gh6H
— Dennis Crouch (@patentlyo) December 7, 2022
In the twitter steam, Prof. Crouch quips: “The motivation does not need to be found in the prior art.”
There seems to be some talking past each other.
The question posed was “where does it FIT IN”
Crouch’s quip appears to be geared to those thinking of source of authority.
Plenty of comments that seem to be conflating source of authority as the “where does it fit.”
While source certainly is important, that is a different question than the one posed.
Of course, “source” MAY inform where it fits, as the source MAY be explaining the what’s, the how’s, and (hence) the how-fit’s.
Answering a “source” alone may not be enough.
Answering a “source” with the informing context MAY be enough.
It would be interesting to cleave the Prof’s quip and note that source of authority (for the general concept) AND source of authority for the notion that FINDING the motivation TO COMBINE (and please, please, please, do not slip back into only motivation – as in, motivation of any singular element) as being from anywhere MAY be two different questions.
A first source may indeed be legislative in nature.
A second source may indeed be an illicit ‘legislating from the bench.’
Motivation comes out of the statutory language “claimed invention as a whole.” The “claimed invention as a whole” includes not only the claimed invention (i.e., the elements arranged as in the claim) but also the reasons and incentives for combining — namely, the motivation.
The statute uses two different phrases — “claimed invention” and “claimed invention as a whole.” And it is presumed they have different meanings, which they do. Some don’t appreciate that it is the “claimed invention as a whole” that must be shown to be obvious.
Hindsight seems to be a key enemy here. It’s one thing to clearly see the path through the maze and to forget about all of the alternate paths one could have taken. And hindsight is as much (if not more so) a psychological phenomenon as it is a technical one. The trick is to be able to put an examiner or a judge in the shoes of one of ordinary skill in the art at the time of the invention and point out how hindsight may have dimmed recollection of all the false paths not taken. One of the oldest mortuary temples in Egypt has huge stone support columns in it–but they are not freestanding, rather, they are anchored to very thick stone walls. We asked our tour guide the reason for this seemingly unnecessary anchoring, and we were told that when the temples were built, no one had used stone pillars in this way before, so none of the builders knew if it would be strong enough to support the roof. It’s obvious to us now they were more than capable, but viewing it through the eyes of the engineers at the time, it wasn’t. Okay– waxing a bit poetic here, but…
It seems to me that logically both motivation and likelihood of success are part of the “obviuosness determination” of the 5th step.
It seems to me if there is evidence of that one of ordinary skill would have been aware of a motivation to combine, then it logically follows that the combination is obvious. One could argue that some motivations to combine are so simple or somehow blatant, that one of ordinary skill would have thought of it, despite the lack of evidence (which seems to be SCOTUS’s position), but personally that seems to me to be practically the definition of hindsight logic (not that my opinion matters).
Similarly, if it is expected that success is not likely, then it logically follows that the combination would not have been obvious. However, it seems to me that obviousness does not logically follow just because had one thought of the combination, then one would have expected the combination to be successful. It seems to me that there still should need to be some sort of evidence/indication that one would have thought of the combination for it to logically follow that the combination is obvious.
Despite some unfortunate statements in our case law and the MPEP, that emphasize expectations of success without expressly discussing whether or not one of ordinary skill would have thought of the combination in the first place, it is illogical to arrive at a conclusion of obviousness if one of ordinary skill would not have thought of combination, despite the expectation of success had they thought of it. Fortunately, the CAFC and PTO don’t usually like to be caught arriving at a conclusion that is illogical. If you include the query of whether or not one would have thought of the combination in the query of whether or not there is an expectation of success, then at least the test does not necessarily defy logic.
Perhaps that is all obvious 🙂 (and did not need to be said).
I gather that it is part of your law that “could have combined” is not enough, that “would have combined” is the touchstone. But to me this seems too vague. If “success” is whenever the combination is do-able, and “would have” is predicated on the likelihood of “success” well then lots of combinations which would not have been obvious in fact are doomed to be found to be “obvious” under the case law.
Or not?
Too vague for you?
1) why?
2) what would not be too vague for you (and no, the answer to this question may NOT be: use my eyeglasses)…?
I think that other contributions to this thread, that have appeared in the meantime, bear out my comment about vagueness. When you have gained experience in the prosecution of cases at the EPO, and of how the obviousness issue is argued precisely and forensically, you will better understand my comment. Can’t you petition somebody in your firm, to give you the chance to learn about obviousness at the EPO? It would broaden your outlook and help your patent drafting skills, to the benefit of your employer and their clients.
Sorry (not sorry), but other comments do NOT answer my questions to you.
You seem to just want my to go elsewhere, is this because you do not have answers?
Obviousness requires both a motivation to combine and reasonable expectation of success. Consider the combination of putting a microprocessor on slab of granite. Of course, you can reasonably expect success, but why would you? What would motivate such a combination?
I keep encountering the situation where the primary reference teaches everything but X, the secondary reference teaches X, the last paragraph of the summary of the secondary reference says that what’s needed is a solution that provides A, and the rejection I get is that it would be obvious to “combine the references” because A. But there’s no meaningful nexus between X, the quick-release coupling, and A, the ability to separate isotopes faster. And “combine the references” doesn’t seem to be describing the modification of the primary reference in some clearly understandable way to now also include a coupling, but throwing both references together into some Frankenstein hybrid, like adding two cans of soup together. There’s no logic behind the motivation, it’s basically a Mad Lib, fill in the blank with anything positive the secondary reference has to say about the invention provided by the secondary reference. Voila! Prima facie, baby. Point this out and the usual reply is that you’re attacking the references individually.
Can I get a A-Men!
Nice summary of almost every 103 rejection I get. Are you my Examiner?!!
I definitely agree that #7 rings true to me. It is hard to square this very common pattern with the claim in #6 below that the motivation-to-combine/reasonable-expectation-of-success analysis is a creation of the PTO.
If the PTO really created this analysis, why do they put so little effort into making the examiner corps actually use it? I would estimate that only ~10% of the obviousness rejections that I have read have a more sophisticated “motivation to combine” analysis than “the skilled artisan would be motivated to combine X and Y because X teaches [things that X is being cited as teaching] and Y teaches [things that Y is being cited as teaching].”
This is all different if one appeals to the PTAB. The PTAB will almost always make a detailed fact-finding about the level of ordinary skill (see #3 below)—a fact finding with no basis in the record up to that point. When the the PTAB is minded to affirm the examiner, they will also usually present a detailed explanation of why one would have been motivated to combine the various references’ teachings prior to the filing date.
In other words, by the time you are ready to decide whether to appeal to the CAFC, you will have the explanation of rejection to which you are properly entitled. It is far rarer, however, to have this explanation during actual prosecution, when you are deciding whether or not to appeal to the PTAB.
znutar, well said.
And by the time they have put together 5 references the Frankenstein becomes ridiculous and there still hasn’t been a single rational reason to combine the references stated.
The way one can tell a really bad rejection is by the number of paragraphs references for each element of the claim. The more paragraphs and the farther apart the paragraphs, the worse the rejection.
When you’re making a 5 reference 103:
link to twitter.com
It never did. The “motivation” statement came directly from the USPTO training its examiners. The USPTO has to training people who have a bachelor’s in engineering and no legal experiece through its patent academy back in the day. And there was no place to learn “patent examining” other than at the USPTO, there were no college courses. So the USPTO devised a five step process for the examiner’s to follow to make it easy for the examiner to follow Graham: 1) what does the primary reference disclose; 2) what does it lack; 3) what does teaching reference show, teach, or suggest; 4) how to combine the teachings in the teaching reference to the primary reference; and 5) the motivation to combine. The motivation to combine is the check on how reasonable the examiner’s rejection is and to try to avoid hindsight bais.
Mon – Do you have info on PTO Training being the origin of this statement?
Well, for a reader wearing spectacles made in Europe, it looks as if the USPTO 5-step program was inspired by the steps of the EPO’s TSM approach to obviousness, which was devised even before the EPO opened its doors in 1978, in an effort to achieve consistency of examination, regardless from where in the multitude of EPC Member States each of the EPO’s tyro examiners were arriving.
The snag is that the entire EPO approach is built around a concept called the “objective technical problem” which is determinative of the EPO’s “would, not could” enquiry into motivation to combine. At the USPTO I see no sign of recognition of the core importance of fixing the OTP before moving on into the motivation enquiry. No wonder its motivation to combine case law is so infuriating.
“Technical” is so….
….”vague”
Ne’est-ce pas?
anon, we have been round this block often enough, haven’t we. The word “technical” serves well enough in a civil law jurisdiction like the EPO, free frem the restrictions of binding precedent. With literally thousands of decisions by now, on whether any given objective problem is or is not “technical”, European specialists have by now a pretty clear idea how to get on the right side of the line delineated by literally thousands of data points, despite the absence of a binding definition of “technical”. Indeed, the EPO appeal boards deliberately refrain from defining “technical” so as to leave room for rehearsing patentability in fields of endeavour not yet known or understood.
All different, perhaps, in a jurisdiction that operates on the doctrine of binding precedent. GATT-TRIPS uses the terminology “field of technology”. Where do we find a definition of “technology”? Did the member States see the need for any such definition? Wasn’t it already clear what that means, when they signed up to GATT?
“serves well enough”
That rather proves my point, eh?
Quick you are with suggestions for me to learn the EPO way – silly though (especially given how much time you spend on blogs directed to US Patent Law practice) that you do not avail yourself of the reciprocal advice.
Now, if I spent as much time on EPO-dedicated blogs as you do on US-dedicated blogs…
If you bros watch this about 3x or so and let your eyes relax it will produce a cool visual effect.
link to youtube.com
I would slot “motivation to combine” into the “differences between the claimed invention and the prior art” portion of the analysis. The greater the difference, the harder it becomes to discern a “motivation” to cross the distance between the prior art and the ultimately claimed invention, and therefore the less likely the ultimately claimed invention is to be obvious over the prior art.
“Reasonable expectation of success” is just an appendix to “motivation to combine.” One has no motivation to combine if one does not expect the combination to succeed. Therefore, “reasonable expectation of success” also slots into the “differences” prong. These are both just subsidiary fact-findings to the overall finding about “differences between the claimed invention and the prior art.”
York is off his rocker.
Dozens, the English courts have pondered the influence of commercial “success” on the level of “motivation to combine”. I mean, if “success” would bring profits on sales beyond its wildest dreams, the innovative corporate-oriented skilled person is perhaps under a heightened “motivation to combine”, even when the likelihood of enjoyment of scientific/technological “success” is remote.
Do the Graham factors take any of this into account? Will the court take into account issues of projected profit when mulling over the level of “motivation to combine”?
How about we get the USPTO to actually determine the level of ordinary skill in the art? Technically, that comes before coming up with a reason to combine references.
USPTO: PHOSITA is someone who would combine these disparate references together
Well that’s clearly false.
(recognizing that you may have been attempting humor)
You laugh but, in response to a rather detailed argument I made that the Examiner did not determine that the references cited in the obviousness rejection reflected an appropriate level of skill in the art, the Examiner responded as follows: “The examiner is interpreting the level of ordinary skill in the art as a hypothetical person having ordinary skill in the art.”
That’s a quick call to the supervisor.
If that does not set it right, elevate to the ombudsman.
No way any applicant should have to put up with that type of nonsense.
That’s the response I got AFTER I called the SPE because the Examiner had failed to reply at all to my argument. They sent out a second Office Action re-starting the period for response with THAT as the response to my skill level argument. Needless to say, I’ve already left a message for the SPE when I saw their idea of a ‘new and improved’ response to my argument.
” elevate to the ombudsman”
Lelz.
Done it twice – excellent results both times.
Mind you, we do tend to treat this as more of an atom b0mb (and for egregious waywardness).
” elevate to the ombudsman”
Lelz.
Going to the ombudsman is helpful when the examiner is genuinely in the wrong. The ombudsman, however, does not exist to grant the applicant anything s/he wants.
I do not think that the PTO genuinely believes that it is wrong for the examiner not to make a detailed fact-finding about level of ordinary skill. I have never seen an examiner make this sort of fact-finding (although the PTAB almost always does).
I infer from this remorselessly common pattern that the PTO simply does not expect its examiners to make this fact-finding. I am dubious, then, that the ombudsman would actually achieve anything for ipguy.
The best advice that I could give (which I dare say that he already knows) is to appeal to the PTAB if you really want to see such a fact-finding. They will make it (out of whole cloth, because it will not find grounding in the prosecution record pre-appeal).
Drum is simply 180 off from who he wants to blame for the outrage over-indulgence (and conveniently omits that Identity Politics is the sine qua non of the Liberal Left.
The hidden hyperlink is this more of the propaganda dribble.
” (although the PTAB almost always does).”
I only see it done in IPR and post-grant proceedings. Even then, it is based upon what the parties submit as defining the level of ordinary skill.
The USPTO does not train Examiners how to determine the level of ordinary skill. There are tests for non-analogousness, subject-matter eligibility, etc. but none for determining whether a reference reflects an appropriate level of skill or how to explicitly determine skill level.
I only see it done in IPR and post-grant proceedings.
You are right. Now that I go back and look, I am only seeing this sort of fact-finding in IPR/PGR decisions. I thought I remembered seeing such a finding in my recent ex parte appeal decisions, but as I review them now, I do not see it. I regret the error.
I can’t recall ever seeing an explicit determination of the level of ordinary skill in a PTAB ex parte decision. I see a lot of “findings of fact” sections that go far afield of what the examiner “found.” And then a lot of reasoning from the PTAB that was never presented by the examiner. The decision in 16/256,690 that was discussed in a recent post at the Mr. IP Law blog is a great example. Classic bootstrapping by one of the worst of the worst APJ’s on the PTAB.
I look at motivation and reasonable expectation of success as part of the level of ordinary skill element of Graham. The scope and content of the prior art determines what PHOSITA knows. The level of ordinary skill in the art is what PHOSITA could, and more importantly WOULD, do with all that knowledge.
I see the usual c!rcle jurkers are here crowing about their oh-so-clever strategy of arguing that the examiner didn’t explicitly determine the level of ordinary skill in the art. Still haven’t seen one example from them where that strategy actually makes a difference. (Hint: because it doesn’t.)
Carry on.
I just defended an IPR in which we had a serious disagreement as to the level of skill. I was unable to find a case that hinged on the level of skill in the art after serious effort. Be fun to find one.
“I have never seen an examiner make this sort of fact-finding (although the PTAB almost always does).”
Of course not, they don’t even really know what your legalese even means. Much less what it means in their context specific situation, much less to a judge.
“I infer from this remorselessly common pattern that the PTO simply does not expect its examiners to make this fact-finding. I am dubious, then, that the ombudsman would actually achieve anything for ipguy.”
correct twice.
“The best advice that I could give (which I dare say that he already knows) is to appeal to the PTAB if you really want to see such a fact-finding. They will make it (out of whole cloth, because it will not find grounding in the prosecution record pre-appeal).”
Correct. You can also hold their hands through how to make fact findings, from square 0, by yourself. Or try to get them to run it by a qas that might know what you’re talking about and may deliver it.
“Or try to get them to run it by a qas that might know what you’re talking about and may deliver it.”
I’ve asked that in the past but it’s been ignored. The SPE stands firm that the Examiner is allowed to implicitly determine the level of ordinary skill and not required to explicitly determine ordinary skill level. When I bring up that implicit determination still requires the Examiner to demonstrate that a reference reflects an appropriate level of skill, they have no answer, and the “answers” they typically throw at me are along the lines of “the references reflect the appropriate level of skill because the Examiner can come up with a reason to combine the references.”
The USPTO has had over 50 years to come up with a test for an Examiner to explicitly determine the level of skill. USPTO Management has seemingly refused do so and has come to rely exclusively on “implicit” skill level determination. Naturally, if the USPTO came up with an analysis for determining skill level, it would be something else that applicants could appeal.
Personally, it seems to me that the more the USPTO refuses to address the issue, the more leverage it gives applicants when appealing before the PTAB as the issue comes down to reversing the rejections or having to be able to justify to the Federal Circuit why the USPTO does not train Examiners on how to determine skill level, etc.
If you’re someone who files appeals on a regular basis, it’s a good issue to tee up. However, it’s got to be more than just a conclusory “the Examiner didn’t determine the level of ordinary skill”. You’ve got to show that they didn’t even implicitly determine skill level in a proper manner, and that the failure to determine skill level (or improperly implicitly determined skill level) affected the conclusion of obviousness. You need to at least put them in the position of having to decide between reversing the rejections or opening a can of worms.
“I’ve asked that in the past but it’s been ignored. The SPE stands firm that the Examiner is allowed to implicitly determine the level of ordinary skill and not required to explicitly determine ordinary skill level. When I bring up that implicit determination still requires the Examiner to demonstrate that a reference reflects an appropriate level of skill, they have no answer, and the “answers” they typically throw at me are along the lines of “the references reflect the appropriate level of skill because the Examiner can come up with a reason to combine the references.””
Right, they don’t even understand what you’re asking for. Once they do, it is of course child’s play.
“The USPTO has had over 50 years to come up with a test for an Examiner to explicitly determine the level of skill. ”
Meh, like 99% of the cases it isn’t all that relevant to. Unless you want to launch a crusade against obviousness rejections and have nigh all combinations deemed non-obvious. Which nobody in power wants you to be successful at, so it isn’t going to happen.
” Naturally, if the USPTO came up with an analysis for determining skill level, it would be something else that applicants could appeal.”
Right, and “who needs that headache” when in truth it isn’t all that relevant, UNLESS, you want what I mentioned above. Which again, isn’t happening.
“Personally, it seems to me that the more the USPTO refuses to address the issue, the more leverage it gives applicants when appealing before the PTAB as the issue comes down to reversing the rejections or having to be able to justify to the Federal Circuit why the USPTO does not train Examiners on how to determine skill level, etc.”
Gl, I’m sure NOBODY ever tried anything like that before.
“If you’re someone who files appeals on a regular basis, it’s a good issue to tee up. ”
Great, gl w/ that.
“and that the failure to determine skill level (or improperly implicitly determined skill level) affected the conclusion of obviousness. ”
Right, and that last part knocks it out of around 99% of cases, as I mentioned with the caveat I mentioned above.
“and that the failure to determine skill level (or improperly implicitly determined skill level) affected the conclusion of obviousness. ”
In the entire history of patent prosecution, this has happened exactly zero times.
As Graham v. Deere has not been overturned, the determination of skill in the art is highly relevant. As every other word in a rejection invokes the person of ordinary skill in the art, the determination of skill is highly relevant. The fact that the USPTO has indoctrinated Examiners to believe that the determination of ordinary skill is not relevant indicates that the determination of skill in the art is highly relevant.
But ipguy, since “Breeze” has not been personally affected (as for as he can tell), then nobody should care about the issue you bring up.
Feel free to cite even one case where the examiner’s failure to resolve the level of ordinary skill in the art was dispositive.
Graham v. Deere.
(Were you not paying attention?)
The examiner’s failure to resolve the level of ordinary skill in the art was dispositive in Graham? You’re even more r!diculous than I imagined.
The examiner’s failure to resolve the level of ordinary skill in the art was dispositive in Graham?
At the risk of betraying my obvious cluelessness, of what “examiner” in Graham are we speaking? Graham was a certiorari to the CA8, not the CCPA.
Yes, but argument isn’t enough, is it? If the level of skill in the art is a matter of fact, and a fact in dispute, you need to adduce evidence in support of your argument, don’t you?
MaxDrei,
Perhaps you have not followed who has the onus. Challenges to an improper reach of a prima facie rejection keeps the onus on the examiner.
So your call for “more than argument” is accurate – but likely not how you intended, as the “mere argument” equates to the bald examiner assertion.
“PHOSITA is someone who would combine these disparate references together”
100% based
The purpose of the PHOSITA being independently determined is that the PHOSITA is the objective lens through which the prior art is viewed and determined whether it reflects an appropriate level of skill in the art. The PHOSITA is also the basis for determining if the reference is even analogous.
Just because the Examiner can come up with a reason to combine references, it does not mean that the PHOSITA would have found the references to be analogous, combinable, etc. While the PHOSITA is a fictional creation, the real world individuals who testify about what a PHOSITA would or would not know often find themselves wondering how some Examiners come up with such ridiculous interpretations of the prior art or reasons for combining the references that ignore how the primary reference would be rendered unsuitable by the proposed modification.
Some Examiners forget that they are not PHOSITAs by any stretch of the imagination.
Slight correction for you, ipguy,
Not (just) “… how the primary reference would be rendered unsuitable by the proposed modification”
but how ANY of the combined references would be rendered unsuitable for ALL that they (each) teach.
A secondary reference with “gee whiz element “Z” that also teaches that elements G, H, I, J, K and L must be present cannot properly have that single element “Z” parsed out and slammed into the primary reference.
This was actually stated in the USPTO’s public-facing “How to Examine for Obviousness under 35 U.S.C. 103” program earlier this past year.
Now let’s see Smelly Breeze waft in with his usual odor.
The USPTO needs to make it mandatory for their SPEs to take that program. Just last week a SPE was insisting to me that her examiner could select any feature from a secondary reference to modify the primary reference and that did not require them to include any other structure relating to that selected feature in the proposed combination. She kept throwing out the buzz phrase “we’re not required to bodily incorporate the structure from the secondary reference” while I kept responding with proposed combination is based on the combined teachings of the reference.
Motivation to Combine (MTC) and Reasonable Expectation of Success (RES) should come in at step 5, where the court decides as a matter of law whether the patent claim is obvious. The Graham factors are predicate facts that that inform the court’s legal determination. Based on those facts, the court decides as a matter of law whether the claim is obvious. This is tantamount to deciding whether a skilled artisan would have been motivated to create the claim and would have foreseen success in doing so. Ergo, MTC and RES are restatements of the ultimate legal obviousness inquiry. Patent jurisprudence has gone awry by treating MTC and RES as subsidiary questions of fact. That’s my view, anyway.
This is pretty much what I was going to write. Thanks for saving me the effort.
I also enjoyed reading the answer at #2. It might be a silly question, but what does “success” mean under the US jurisprudence?
I know what it means under the EPO’s problem-solution approach to obviousness, but how do you know in the USA what constitutes “success”? Estimates of sales figures, perhaps?
In this context, reasonable expectation of “success” just means the skilled artisan would have expected to successfully combine the proffered prior art references, to successfully do or be whatever the claim purports to do or be.
FWIW, I once spent 30+ pages unpacking how MTC and RES should come into the obviousness analysis: 48 AIPLA Q.J. 1 (2020).
When Graham v. Deere was decided (1966), biotechnology had not yet come onto the scene. With biotech, one has a variety of potential art to consider, all over the world, including journal articles (publish or perish), abstracts, poster sessions, and slide shows. The possible combinations of references are numerous, as are the possible modifications of individual references. (This applies to the chemical arts as well, but to a lesser extent.)
Requiring a showing of motivation to combine/modify references helps to protect against improper hindsight reconstruction. Examiners often say the motivation is further improvement, or cite motivation that they glean only from the specification but then claim that is not the only basis, without providing an alternative. I would welcome seeing it added as an additional fact question, actually.
The key here is not “motivation” of ONE item per se, but (with emphasis), “motivation to combine.”
The references themselves — for ALL that they teach — must provide for a combination.
What you point to is the improper hindsight “jigsaw puzzle EDGE” syndrome, in which one edge “fits,” and the examiner calls it a day (when none of the other edges as discussed by the reference as being tied in together fit).
It’s a constant battle to educate examiners on the proper meaning.
Not just the examiners . . .
Reasonable expectation of success, like synergy, is an senseless basis for patentability. If something is obvious to try, it’s obvious. Whether it works or not does not circle back to negate the fact that it was obvious to try in the first place. Even things with a reasonable expectation of failure can be obvious.
Besides numerous magical incantations, what logic leads to the conclusion that an artisan would be motivated to do something yet hold back because the results might be uncertain? Or do we just think we should reward the guys who slog through all the obvious possible solutions until he hits on the one that works best?
[D]o we just think we should reward the guys who slog through all the obvious possible solutions until he hits on the one that works best?
It really matters how hard it is to slog through all the obvious possible solutions. The logic of patents is that up-front capital must be spent to find a solution to a problem, but once the solution is found, it is often easier for those who did not spend the capital to profit from the solution than it is for those who did spend the capital. That makes it impossible for the initial investors to profit from the R&D expenditures, and patents are a mechanism alter that dynamic and allow only the investors to profit from the discovery.
Where it will require a lot of capital to slog through all of those possibilities, it makes good sense to reward the one who does the slog and finds the optimal solution. Otherwise, it may well be that no one will ever undertake the work necessary to do that slog.
Where it requires little capital to do that slog, there is a good argument for not rewarding the discovery with a patent. On the other hand, it may just be too complicated to run a system that has to make the distinction between “little” capital and “lots” of capital requirements. In that case, it may be that the best achievable outcome is obtained by awarding patents for those who undertake the slog in both “low” capital circumstances and “high” capital circumstances, just so that one does not end up in the “valley of death” of R&D where “slog” investigations are never funded, or funded only by charitable ventures (i.e., underfunded).
Wrong and wrong.
Obvious to try is simply not the same as obvious.
ONE reason – among many — could be “for financial” aspects.
But to assert that as THE driver (only or even main) is a serious misunderstanding of the patent system.
Such leads to the insidious danger of a “must make” attitude.
The reply comments that suggest that we do think we should reward the guys who slog through all the obvious possible solutions. This suggests that factual non-obviousness is not the test for patentability. Something more along the lines of it’s patentable if it is either non-obvious or obvious but hard and expensive to do it. It seems a doctrinal cheat to first establish non-obviousness as the test for patentabilty, then establish an exception to that test for things that are obvious but require a bit of time and expense. We should just come out and say it: It is patentable whether it is obvious or non-obvious depending on how much it takes to get to the thing that works.
DC,
What do you think of the letter of the law vis a vis:
“Patentability shall not be negated by the manner in which the invention was made.“
Also, worth noting that the CAFC considers that “slog[ging] through all the obvious possible solutions” is not an instance of “obvious to try” if it really is a slog.
(internal citations and quotations omitted). Bayer Schering Pharma v. Barr Labs, 575 F.3d 1341, 1347 (Fed. Cir. 2009).
“Even things with a reasonable expectation of failure can be obvious.”
Yeah bro, but “obvious”, according to the courts that made up the patentability standard under 103, ain’t the standard. It’s a bizarro obviousness to a very specific judicial construct of a hypothetical imaginary person that is but a legal fiction created over decades but many many judge’s rulings. They really should codify all 100 quirky things about this fictional construct which is involved in the actual standard so that people aren’t so confused but they constantly don’t. Thus people like yourself remain confused.
“what logic leads to the conclusion that an artisan would be motivated to do something yet hold back because the results might be uncertain?”
I don’t think it was logic that was the basis for that thought process, it was empirical observation of actual people irl and what they tend to do. Which is exactly that, in some circumstances.
“Or do we just think we should reward the guys who slog through all the obvious possible solutions until he hits on the one that works best?”
If there is enough possibilities I see no reason why not if the outcome is sufficiently uncertain. “Innovation is 1% inspiration and 99% persperation” is the old timey saying I believe. Tho it’s rare for people to be doing that and then claiming to have done that in order to argue for their claim’s patentability.
I am surprised 6 that you did not include the caveat in 103 regarding “Patentability shall not be negated by…”
Slogging be captured in a “how” that cannot negate patentability.
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