by Dennis Crouch
In re Universal Electronics, Inc., No. 2022-1716 (Fed. Cir. Aug. 15, 2023) (non-precedential)
This was a consolidated appeal from two Patent Trial and Appeal Board (PTAB) decisions affirming the rejection of claims from Universal Electronics, Inc.’s (UEI) U.S. Patent Application Nos. 12/645,037 and 16/279,095 as obvious under 35 U.S.C. § 103. On appeal, the Federal Circuit has affirmed.
The typical approach to obviousness determination is for the examiner to mentally divide the claimed invention into a number of individual elements, and then search for the individual elements within the prior art. If the examiner finds all of the limitations, then the only key question that remains is whether the combination would have been obvious. Under KSR, that outcome does not necessarily require further evidence, but typically focuses on questions of whether PHOSITA would have been motivated to combine the references to create the invention, and have a reasonable expectation of success of that endeavor. On the other hand, based upon my experience, examiners are much more uncomfortable finding claims obvious where particular elements are not found in the prior art. This difference is reflected in KSR and other older cases where the Supreme Court has been most critical of patents merely claiming a combination of known elements.
As a prosecution strategy, patentees have some control over the “size” of each element through their organization of claim language. Here though, the patentee attempted to do this via argument, but ultimately failed. Lets look at the rejection and the arguments here:
The claims at issue relate to a system and method for providing improved user input functionality on a controlling device, such as a universal remote control. Representative claim 1 of the ‘037 application recites determining and then using a particular “touch location” on a touch sensitive surface to retrieve command data from a library stored in the controlling device’s memory. The Examiner rejected the claims as obvious over two prior published patent applications, Fisher and Dresti. Fisher discloses determining a touch location and using it to control an appliance. Dresti discloses retrieving command data from a library in the remote control’s memory.
The patentee argued that a key component of the invention was not found in the prior art. In particular, UEI argued that neither reference individually taught the limitation of a “controlling device that uses a determined touch location to retrieve command data from a library of command data stored in a memory of the controlling device.” Admittedly, each individual bit of this limitation was found in one of the prior art references, but the patentee argued that this feature should be treated as an entire limitation.
On appeal, the Federal Circuit found the argument unpersuasive, concluding that the rejection properly relied upon a combination of prior art to teach all of the claim limitations. As the patentee here attempted, attorneys can argue against dividing the claims into smaller pieces. However, it is an uphill battle once the examiner and PTAB have defined the elements narrowly and found them in separate references.
The takeaway may be that attorneys should advocate for the broader, unified view of the invention during early prosecution to avoid being boxed into a narrow element-by-element approach. Carefully crafted claims and thorough responses emphasizing the integrated advance can help shape the analysis in the desired direction. But as this case shows, it can be difficult to overcome once piecemeal elements are embedded in the record.
Unfortunately, the non-precedential opinion does not provide any detail analysis for when a tribunal be satisfied with micro vs macro elements. But, I can imagine that we’ll look to the claim language, specification disclosure, and PHOSITA knowledge.
This is the same issue that arises during infringement analysis with application of the doctrine of equivalents.
Thus, the PTAB’s conclusions that the claims would have been obvious over the cited references.
Judges: Circuit Judges Reyna, Taranto, and Stoll
America didn’t become truly great until 1997.
“there’s been a large growth in the unexamined application inventory from 570k (June 2020) to 735k (June 2023).”
That’s just the human capital issues the PTO has been sweeping under the rug are finally spilling out.
What else should one expect between 1) shrinking pay, 2) increasing work requirements, 3) terrible routing, 4) 100% remote training, and 5) a decent economy? The PTO is failing to keep new examiners, and experienced examiners are slowly leaving for one reason or another.
I’ve heard whispers that new graduates are treating the PTO as an ideal waystation to collect a paycheck from while they look for a worthwhile job. The PTO is desperately hiring anyone, it’s full remote so you dont need to relocate, and no there’s real production requirements for the first 8 months.
In trying to keep fees down, the PTO is being penny wise, pound foolish.
Don’t worry, according to NightWiper there’s going to be a massive decrease in filings and then there will need to be examiner layoffs.
Or at least that’s what he’s been predicting for the past 10 years.
Any day now.
My prediction of reduced filings turned out to be correct but I did not anticipate the Chinese filling the gap. This has been covered over a year ago. But facts mean nothing to Breeze.
“My prediction never came true but I wasn’t totally right!!” – NightWiper.
Awesome critical thinking skills on display.
“..was totally right!!”
Coffee hasn’t kicked in yet.
Interesting Ben. It is weird that government jobs were looking better and better but the Biden inflation kind of changed all that. The government jobs can’t keep up with inflation.
What’s weird is how you reflexively misremember history to suit your political bent.
During the admittedly strong economy of the Trump years, Government jobs increasing looked like junk. Private opportunities were abound and pay had substantially eroded before January 2020.
Of course it’s gotten progressively worse since then.
Particularly so with examiners as the structure of the special pay rate causes examiners to receive even smaller raises than the majority of federal employees.
Appears to be arguing that the combination suggested by the Office in the ‘103 does not meet all claim limitations, instead of merits re presence/absence of motivation to combine. I’ve used it successfully when not all claim limitations are met by the suggested combination, but the deficiency(ies) were clear. I wonder if “library” was a defined term in the spec., since defining the library is at the lexicographers leisure and one can do a lot with it.
>>the patentee argued that a key component of the invention was not found in the prior art. In particular, UEI argued that neither reference individually taught the limitation of a “controlling device that uses a determined touch location to retrieve command data from a library of command data stored in a memory of the controlling device.” Admittedly, each individual bit of this limitation was found in one of the prior art references, but the patentee argued that this feature should be treated as an entire limitation.
The problem is that if you use a single word that means all that then infringers argue the meaning of the word and you left in a precarious position of having to define a new word that may or may not be adopted (since it is new stuff you don’t know).
Generally, what I find is the biggest problem with the piecemeal elements is that there is no prior art that is performing the functions the claims perform. That should be the test. If the examiner can’t build what you built with the prior art and obvious arguments (i.e., doesn’t perform the same function), then it is not obvious.
I have this argument all the time with examiners. What you built doesn’t do X.
So, get that the issue is that building a claim element by element can be done with virtually any claim. But having to build the functionality while filling in the elements is not so easy even when they use your claim as a template (99% of the time this is what the examiners and court do).
As RG notes “All you can do is present an argument that makes the combination invalid – provide a reason that destroys the motivation or enablement for the combination”.
Was it ever otherwise? That’s how it is, every time, at the EPO too. I guess also in every other jurisdiction.
And therefore it is regrettable, that for this case there is no EPO counterpart because it would have been interesting (at least to me) to read how an EPO tribunal would have argued “motivation to combine” under their well-established and highly prescriptive problem-solution approach to obviousness.
I see Jason has again turned off comments. Ironically, perhaps, Jason works with ethics. We all know transparency and feedback are at the core of maintaining a heathy system to fight unethical behavior.
Again, what I would say is that the number of grants needs to be adjusted for inventions made inside the USA. Applications that are coming from China should not be counted if we are interested in measuring the health of the innovation engine in the USA.
To your point, I would be curious as to the relative percentage drops of different Sovereign (and in that; having a classification for multinationals) in relation to that drop in grants.
It would also be interesting to overlay the allowance rate over time graph. Are we still at the “recovered” near-steady-state 70% mark? Should that “allowance” graph be recalibrated for the “take-backs” of IPRs and PGRs?
I wonder also how many new readers might not be aware of the cliff-effect of Office drop to near 30% as a “we@p0n” of “quality”….
I see Jason has again turned off comments.
Jason has never seemed fond of criticism.
Again, what I would say is that the number of grants needs to be adjusted for inventions made inside the USA. Applications that are coming from China should not be counted if we are interested in measuring the health of the innovation engine in the USA.
As for the health of the innovation engine in the USA, what is that exactly? For example, I know US companies have development facilities in places like China and India (and lots of other countries for that matter). Does their innovation count?
Regardless, the number of US grants is not necessarily indicative of anything beyond what it is measuring — the number of patents granted by the US Patent Office.
[T]he number of US grants is not necessarily indicative of anything beyond what it is measuring — the number of patents granted by the US Patent Office.
Exactly. No matter how you “calibrate” this statistic, it will never be a proxy for “the health of the innovation engine in the USA.” The total number of grants per year is an interesting thing to know, but it is not a measure of anything real in the economy.
Probably the most interesting feature of that chart is the slope change right at the point where the CAFC came online. Does anyone seriously contend that companies became more innovative at exactly the same time as the CAFC came online? Is it not much more plausible to explain that slope change as a function of the law becoming more grant-friendly than as a function of companies becoming (overnight) more innovative?
Thinking of slope changes, is it my imagination, or does the slope increase again almost exactly in sync with the advent of Bilski/AIA? That seems odd, but in any event it is clear that the slope definitely does not decrease from Bilski/AIA/Mayo/Myriad/Alice.
One final observation about inflection points: the advent of the CAFC appears to make much more of a difference than does the advent of the 1952 act. If I were to ask a person with no knowledge of U.S. patent law to look at this chart and pick out major changes to the patent law, one might well be able to spot the advent of the AIA, but I doubt that one could spot the 1952 act in these data.
Wandering and Dozens, fair points but we should still see what portion of the grants are from inventions made in the USA and those made elsewhere. And probably China should be separated out.
From my practice where I deal with international companies with inventors all over the world, I think innovation is great all over the world. But at the same time, we should try to break those numbers down to see what is happening in the USA.
The birth of the CAFC was at the time of the malaise. Some of us are old enough to remember. Carter (although came into actin with Reagon) figured out that patents were a way to light a fire under the lazy corporations.
Wandering and Dozens, fair points but we should still see what portion of the grants are from inventions made in the USA and those made elsewhere. And probably China should be separated out.
Like yourself, I am always interested to see such numbers every year when WIPO releases its annual trends report.
“Jason has never seemed fond of criticism.”
Seems reasonable to me when the so called criticism amounts to “posting that accurate chart is unethical.”
There’s a reason we’re not able to comment on that post, and you replied to him.
Wow Ben, might I suggest growing a pair, understanding the aspect of freedom of speech is directly tied to being able to say what others may not want to hear, and developing a little cognitive ability to understand just what might be considered “unethical?”
The better — the FAR better — path would be to counter any such assertions of “unethical” on the merits rather than engage in a de facto ban on dialogue.
Only a total cl0wn like you would think that Jason deciding he doesn’t have to or want to listen to the inane ramblings of this site’s biggest PAB’s has anything to do with “freedom of speech.” (Hint: It doesn’t.)
And you are obtuse to the ability of you to express your opinion (no matter how inane it is).
That you
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to recognize that this proves my point is — no doubt — lost on you.
Seems reasonable to me when the so called criticism amounts to “posting that accurate chart is unethical.”
This isn’t the first time that comments have been turned off on one of his comments. As such, your single reference point doesn’t hold a lot of weight.
My comment was specifically in regards to this post, which is the latest in a series that presents data largely without comment that has attracted quite brainless commentary.
“has attracted quite brainless commentary”
^^^ Ben, being ironically self-referential.
It was made abundantly clear (in the link that you provided), that omitting the context and choice of data presentation.
If one is made aware why a choice of presentation is indeed misinformation, and one chooses to 1g n0re these valid points, then one is most definitely open to criticism.
Your name-calling (as off as it is), or rather, your ability to engage in errant name-calling is a fruit that you are defending being taken away.
Stop hiding behind your sensitivities.
The “omitting” sentence was clipped, and the choice of omission — especially from a teacher — is and must be subject to critique.
This does fall to my prior (and larger) comments on legal ethics.
Attorneys – due to their position of influence within the legal system – have a higher standard of ethics than normal people (Ben has been made well aware of this, repeatedly).
How is it not that those with direct influence over attorneys — and also often with direct attempts to influence the law — are not subject to even more stringent ethical rules?
Ben, please stop. What I said was the way Lemley presented a chart was unethical and it was.
Re-read the Constitution.
Try to figure out what the marketplace of ideas means.
The only big failure on this blog is Dennis permitting people writing comments to defame other people.
I tend to be less concerned about any particular “defaming,” and more concerned with the type of drive-by repeat nonsense that
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to account for counter-points presented.
Certainly, the more “rough and tumble” can be taken to be an irritant when those persons also refuse to engage on the merits.
I believe the following quote is the most appropriate response here.
At no point in your rambling, incoherent response were you even close to anything that could be considered a rational thought. Everyone in this room is now dumber for having listened to it. I award you no points, and may God have mercy on your soul.
In case anyone doesn’t remember, this is what Night Writer wrote during the 2020 iteration of this post: “given the context of how this chart has been used and its implicit meaning, one can say that without further information that it is unethical to present this chart.”
There we have it, the champion of the constitution and marketplace of ideas, declaring the presentation of accurate information to be unethical.
To be fair, he further qualified it with: “Jason’s use of the chart in a celebratory fashion to indicate the health of the patent system is suspect at best.”
link to patentlyo.com
That was an awesome link and trip down memory lane — and the lessons to be learned are very different from your (STILL) thin-skinned feelings being bruised.
Your sense of “factual” still needs caveats (and RonK’s explanation also remains ‘factual.’
The takeaway may be that attorneys should advocate for the broader, unified view of the invention during early prosecution to avoid being boxed into a narrow element-by-element approach.
This is what is done, but it’s improper. This a statement that if you just write and argue the correct way you can take the same thing and make it nonobvious. But patentability is defined by the objective reach of the claims and does not depend on the scrivener’s art.
If the art knew of touch input (which has been common for decades now) and knew that input could trigger locally-stored commands (which is even older) the feature is obvious, and it’s obvious whether you call it one element or two elements or you separate part of it with a comma or separate part of it with a semicolon or you figure out a way to write it as one long run-on. An argument against improper bifurcation (which is what was made by the patentee here) should never survive on its own – if improper bifucation exists there is an articulable reason the bifurcation is relevant.
Ex: There’s no point in arguing over whether “a blue bus” or “a bus painted blue” or “a bus, wherein the bus is colored blue” or even “X” where the spec specifically defines X as a blue bus is an atomic element in the system or not, since one is not required to point to an anticipatory blue bus unless they are making an anticipation argument. For obviousness, a blue bus is obvious over a yellow bus and a can of blue paint when the art was motivated and enabled to use the paint to recolor the bus regardless of how you scriven the scope of a blue bus. You can’t win an obviousness argument by demanding the prior art anticipate a blue bus, nor can you win an obviousness argument by arguing that the examiner divorced “blue” from “bus” or even literally split up the singular letter “X” and therefore improperly bifurcated the claim term. You can’t ever force the obviousness of the claim to turn on the anticipation of a blue bus because its not an anticipation rejection. All you can do is present an argument that makes the combination invalid – provide a reason that destroys the motivation or enablement for the combination. It’s true that reason would evidence “improper bifurcation” but the argument is academic – if the motivation-destroying evidence is true the claim is nonobvious regardless of whether the element is atomic or not.
Improper bifurcation is properly understood as a characterization of a valid argument against a combination, it is not a freestanding violation of obviousness. To that end I find the suggestion of advocating for the “unified” view of the claim harmful. It suggests a route to victory that does not exist. The claim is obvious when its objective reach extends to at least one obvious embodiment. Arguing that an element is “unified” or “atomic” does not modify the objective reach of the scope, and therefore does not make a claim more or less obvious.
But as this case shows, it can be difficult to overcome once piecemeal elements are embedded in the record.
This line suggests a misleading view of obviousness. A single document never discloses everything the art knows about something – first, no person has the full range of knowledge that the PHOSITA has, and second no document is written in full detail because it intends to leave out unnecessary information vis-a-vis the improvement.
Every proper obviousness analysis considers and relies upon “piecemeal” knowledge. Otherwise the obviousness analysis would collapse into the anticipation analysis. The correct thing to do is provide reasoning and evidence that the piecemeal knowledge is insufficient to render a claimed feature obvious, not to try and write 103 out of the statutory scheme by suggesting the only proper analysis on the element can be a 102 analysis.
RG: “The claim is obvious when its objective reach extends to at least one obvious embodiment.”
Too bitter a pill for some to swallow but also true as ever.
“ Every proper obviousness analysis considers and relies upon “piecemeal” knowledge. Otherwise the obviousness analysis would collapse into the anticipation analysis. ”
Yup.
IF IT WAS SO OBVIOUS HOW COME NOBODY EVER DID IT BEFORE? <—- definition of “missing the whole point”
Malcolm’s whine of, “<—- definition of “missing the whole point”
Is itself
<—- definition of “irony” (given how often HE misses the whole point).
I actually found the same point that Random explicates to be more than a bit odd.
The good prof misses out on a teaching moment vis a vis art that is prior and how that distinguishes between proper anticipatory prior art, proper anticipatory prior art, or neither.
The school bus and the color blue as an example is a bit, well, obvious; but it does remind me of past discussions of a blue squash ball that the proffered reasoning would not reach because of “unexpected results.”
A tad surprised that in MaxDrie’s haste to shill for EPO Uber Alles, that he did not at least ale reference to ‘the blue squash all.’
Random is a true believer in obviousness per se. Many examiners are.
I do get that (and noting Ben and Kyle chiming in), I did pause prior to posting, but he is not too deep into the weeds here.
Of course the blue squash ball case came to mind, anon, but I did not mention it because it brings nothing to the debate. My attitude to obviousness is conditioned by the knowledge that the word “obvious” comes from the Latin “ob Via” meaning “lying in the road”. Allowing patents for stuff that is lying in the road of technological progress is tantamount to erecting road blocks and so hindering rather than helping technology to progress. As it happens though, the blue squash ball was not lying in the road, was it?
“but I did not mention it because it brings nothing to the debate.”
That actually made me laugh — given as most all of your posts fall to that category.
“As it happens though, the blue squash ball was not lying in the road, was it?”
And yet, a bus was; as was a can of blue paint.
So, the topic DOES in fact directly add to a rather sharp contrast to Random’s post.
Odd that you seem to want to double down in error and think it not pertinent (after omitting something — of yours — that actually could bring something to the debate.
You think it could add something? OK, here goes.
The game of squash is played with a small rubber ball that, prior to the invention of the blue ball, was always matte black. Black because the game is played in an enclosed space with plain white walls. Nobody had any reason to suppose that giving the ball a different colour would improve the game. To the contrary: what better choice of ball colour is there than black, when the background colour is always white?
But then the inventor found out, to their astonishment, that the human eye/brain picks up the flight of a squash ball against white walls faster if the ball is blue not black. Results don’t come any more “unexpected” than that.
Buses are different. They have to be painted. Choosing a clour is an unavoidable decision. What colour to paint your bus is a matter of arbitrary choice. There is no prejudice against the colour blue (unlike in the game of squash). A blue bus performs neither better nor worse than a bus of any other colour. No invention needed, to opt for a blue bus. Giving exclusive rights to the blue bus painter hinders rather than promotes progress of buses down the road. Conversely, the invention of the blue squash ball raised playing standards to hitherto unachieved levels (and likely triggered all sorts of research projects into visual acuity and rapid response technologies.
Is that the sort of thing you had in mind as tinder for debate?
Thanks – but your rather bald assertion that busses are different cannot be accepted at face value.
Is there a reason why school busses are typically in yellow?
Why do you dismiss as “bald” my assertion that buses are not the same as squash balls? No less than seven sentences follow my opening assertion that they are different, and they all explain why that is so. Isn’t that enough? What more do you want?
As to the reason why school buses are typically painted yellow, I guess that the reason is that the one paying for the paint job decrees that it shall be so. Why that then? I guess because i) by now the public has come to recognise as a school bus one that is painted yellow all over, yellow has, through long use, become distinctive of school buses, ii) pink or green or indigo would have served just as well but it wasn’t to be, and iii) those who choose the colour of their new school bus think it a good thing that their bus shall instantly be recognised by all and sundry as a school bus. None of this has anything to do with patent law though. Buses are different.
“Isn’t that enough? What more do you want?</i<“
It is not enough and I want you to be logically consistent.
You just finished discussing the “surprising result” of “mere color,” and this addition of insight should inform any “mere color,” and one’s choice of “blue” [in particular] cannot be dismissed out of hand as you have done.
THAT is the point of the blue squash ball.
Third miss for you. Return to the bench.
+1000
Excellent comment. The obviousness analysis should be more realistic, even if that cuts in favor of the plaintiff sometimes and against him other times.
If the art knew of touch input (which has been common for decades now) and knew that input could trigger locally-stored commands (which is even older) the feature is obvious, and it’s obvious whether you call it one element or two elements or you separate part of it with a comma or separate part of it with a semicolon or you figure out a way to write it as one long run-on.
Not necessarily. You are looking at the claimed invention as merely a collection of individual elements without considering the claimed invention as a whole. Perhaps two “known” and seemingly obvious elements can be combined in a manner that produces something unexpected. In this situation, it may be useful to emphasize how these elements interact with one another in the claim.
You can’t win an obviousness argument by …
Except that you can.
Arguing that an element is “unified” or “atomic” does not modify the objective reach of the scope, and therefore does not make a claim more or less obvious.
This observation ignores the impact of indicia of non-obviousness.
Arguing that an element is “unified” or “atomic” does not modify the objective reach of the scope, and therefore does not make a claim more or less obvious.
This observation ignores the impact of indicia of non-obviousness.
I agree with you, but I also agree with RG here. You appear to be talking past RG.
Prof. Crouch’s post suggests that perhaps the prosecuting attorney could have drafted the claims here in a manner that would have achieved the same scope, but made it easier for the patentee to maintain that not all elements were accounted. RG was responding (to my mind, correctly) to that suggestion by dismissing it as unrealistic.
You are surely correct that it might be possible still to save such a claim if there are unexpected results, but that is neither hear nor there for the dispute between RG and Prof. C. If the patentee has unexpected results, they should be arguing those results, instead of wasting both their time and everyone else’s in the useless discussion of whether (e.g.) “blue school bus” is one (“blue school bus”), two (“blue” + “school bus”), three (“blue” + “school” + “bus”) elements that need to be accounted in the prior art.
You are surely correct that it might be possible still to save such a claim if there are unexpected results, but that is neither hear nor there for the dispute between RG and Prof. C.
Yes, I suspect he agrees with me but he does not know it. The fact that he identifies a reason (unexpected results) suggests he implicitly recognizes “unification” is insufficient.
Perhaps two “known” and seemingly obvious elements can be combined in a manner that produces something unexpected.
Sure, sometimes, but not here.
You can’t win an obviousness argument by …
Except that you can.
You absolutely cannot win an obviousness argument in any of the manners I stated.
Arguing that an element is “unified” or “atomic” does not modify the objective reach of the scope, and therefore does not make a claim more or less obvious.
This observation ignores the impact of indicia of non-obviousness.
Indicia of nonobviousness goes toward whether a given scope is obvious or not. Arguing an element is atomic does not go toward claim scope. They are separate issues, the former of which is relevant to obviousness, the latter is not.
Sure, sometimes, but not here.
Your comment was seemingly written not just for the facts in this case but in general.
You absolutely cannot win an obviousness argument in any of the manners I stated.
There are all kinds of ways to win an obviousness argument. I’ve seen great arguments lose and terrible arguments prevail. Obviousness is not an “objective” test. Rather, it is an ‘eye-of-the-beholder’ test. As such, if you can persuade the beholder (Examiner or judge) of the nonobviousness of the combination, then it really doesn’t matter what kind of arguments you presented. Personally, I like to make arguments that I believe are based upon the law, and I cringe when I see (typically in prosecution histories) bad arguments being made. However, sometimes those bad arguments are winning ones.
Indicia of nonobviousness goes toward whether a given scope is obvious or not. Arguing an element is atomic does not go toward claim scope. They are separate issues, the former of which is relevant to obviousness, the latter is not.
You are really overthinking things. Most decision makers I’ve experienced aren’t looking at things like that. They’ve got a gut instinct that tells them obvious or not obvious and then they massage the analysis to support their gut feeling.
‘Most decision makers I’ve experienced aren’t looking at things like that. They’ve got a gut instinct that tells them obvious or not obvious and then they massage the analysis to support their gut feeling.’
This. Based on my experience on both sides of the ball, in hundreds of cases, in all common patent validity tribunals, all too often, t h i s.
But one can argue that the problem is not with our tribunals, but with our doctrines. As someone who does his best to read all obviousness decisions that are handed down, it sure seems to me that obviousness doctrine is broken, and the only question is whether it is broken beyond repair. Because the cases, if they are taken seriously, even if restricted only to the binding precedents below the Supreme Court level and not the countless nonbinding decisions, simply cannot be coherently reconciled with each other. No matter how strongly Random believes it’s all so simple and clear.
The problem with Random’s analysis is not that it does not say some perfectly true things about obviousness, but that it is too reductive. I’m reminded of Professor Pauli’s famous criticism of a student’s paper: “This is not right; this is not even wrong.”
It is true that obviousness is by definition the combining of different elements from different places in the prior art. (Even in so-called “single reference obviousness” the “single” reference needs to be modified based on something in the ordinary artisan’s common knowledge in the art at the time). But it is not true that it is always clear how to divide the claim into limitations when answering whether each limitation is known.
Just for one example, suppose a claim recites a method that includes “…C) performing a first freezing of said hepatocytes; D) performing a second freezing of said hepatocytes…..” And the prior art discloses freezing hepatocytes. Does that prior art disclose both limitations? Random would apparently say yes, sure. But is that right? What if all the art of record only performs one freezing step? In other words, literally, the prior art of record never discloses a SECOND freezing of hepatocytes in a process. Why isn’t the “second freezing,” then, a limitation that does not appear in the prior art?
Why don’t we ask the Federal Circuit? Be careful what you wish for. The Federal Circuit has made statements that seem to be in severe tension with each other on this issue. Compare Rapid Litig. Mgt. Ltd. v. CellzDirect, Inc., 827 F.3d 1042 (Fed. Cir. 2016)(holding, albeit in the immediate context of Mayo/Alice step two, that “Repeating a step that the art taught should be performed only once can hardly be considered routine or conventional.”) (the “step” here, by the way, was freezing of hepatocytes), with Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009) (holding, at least according to Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355 (Fed. Cir. 2016), that an instruction to repeat known steps until a particular quantity is processed is obvious).
Could the Federal Circuit purport to reconcile the tension between these statements? Sure, but it is always possible to use sophistry to purport to reconcile two statements, and that does not have much to do with the question at issue here. Which is: when a claim literally recites a “second” performance of a step, what are the limitations? Is it a performance of the step, and a performance of the step? Or is it a performance of the step, and a second (or repeat) performance of the step?
Random’s reductive analysis does not appear to answer that question, or other tough interpretation questions like it. It’s just not as simple as he makes it out to be.
nice comments, SR – thanks.
Stepped, my question is about your statement:
“But it is not true that it is always clear how to divide the claim into limitations when answering whether each limitation is known.”
It is: Where does RG state that such “is always clear”? I very much doubt that he said that.
Here in Europe, the default is the so-called “2-part” claim, with the words “characterised by (or “in that”)” separating the two parts. It is very often not at all “clear” whether a particular claim limitation belongs in the first or the second part.
But that in itself does not invalidate the EPO approach to obviousness nor (to my mind at least) what RG states. The principle RG enunciates is clear, and I don’t see what in it is invalid. The application of it though, to the matrix of fact in any given case of i) claim text and ii)prior art text is, often, anything but. The key to preserving the justiciability of obviousness is to create and maintain a strict framework of argument that both sides are required to use. Only that keeps the argument on point and avoids prolific arm-waving and, in the end, a decision founded on mere subjective judgement.
The EPO Uber Alles of “here, wear my spectacles” and the two-part claim has exactly zero bearing here.
We have a version of that. It’s called “Jepson” format.
And its use is nowhere near default — quite the opposite. The last trend chart of its use (what now around a decade ago?) had its use dropping to under 0.5% of all claims (IIRC). Certainly, under 5.0% of all claims.
“On the other hand, based upon my experience, examiners are much more uncomfortable finding claims obvious where particular elements are not found in the prior art.”
That’s not my experience. Examiners are always willing to cut corners by saying that the missing element is “well-known” via Official Notice, “common sense”, “inherently disclosed”, etc. That, or the Examiner will take a round element from the prior art and try to pound it into the square hole of the missing claim element.
… or they hand waive any notion of art not supplying the (missing) element, with a “motivation to combine” because “better.”
Assuming they even bother to provide any reasoning with a rational underpinning to support the combination instead of just stating a conclusion.
yeah, seen that a lot and only reasonable recourse was push to an Appeal, since mere conclusory statements are insufficient in the absence of at least some articulated reasoning. High chance of winning during conference with s.p.e. and primaries in conference after app. Brief is filed.
“winning during conference with s.p.e. and primaries in conference after app. Brief is filed.”
Early on, most definitely.
Of late? Not so much. The program has lost oversight, and I am seeing gaming often (especially when it is the SPE that does not want to provide a (legitimate) allowance).
The “third member” is often not person willing to ‘rock the boat,’ and often is not a Quality team member, so what once stood as a warning sh0t to do a proper job just does not carry the same weight it used to do.
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