by Dennis Crouch
Today’s post introduces the new decision in Sisvel International S. A. v. Sierra Wireless, Inc., No. 22-1493 (Fed. Cir. Oct. 6, 2023). Here, I focus on two distinct issues. The first part has to do with motivation-to-combine, with the decision offering some good language for patent prosecutors attempting to overcome weakly worded office actions. The second part focuses on means-plus-function language and concludes with my rant about the court’s unduly complicated layers of tests. The case also upholds a single-reference obviousness holding, but I didn’t write about that portion of the decision.
Justifying a Motivation to Combine
In the IPR, the PTAB cancelled some claims of Sisvel’s U.S. Patent No. 6,529,561 based upon a single-reference obviousness determination (Chen; WO 99/26371), but sided with the patentee as to other claims. The Board particularly found no motivation to combine One of the key reasons was because of a lack of motivation to combine Chen with other GSM references.
On appeal, the Federal Circuit affirmed these findings. US patent law has a long history of debate with regard to combination claims, with the Supreme Court’s most recent pronouncement in KSR reaffirming its old pronouncement that a combination of known elements is likely obvious absent some justification for deciding otherwise. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007).
[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill. . . . The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.
Id. Referencing Sakraida v. Ag Pro, Inc., 425 U.S. 273 (1976); Anderson’s-Black Rock, Inc. v. Pavement Salvage Co., 396 U.S. 57 (1969); and Great Atlantic & Pacific Tea Co. v. Supermarket Equipment Corp., 340 U.S. 147 (1950).
Despite this lower bar, IPR petitioners still have the burden of at least explaining why a skilled artisan would have been be motivated to combine various references to form the claimed invention. This is so, even if that explanation is simply a showing of how its case fits the model set out in KSR.
Here, however, the Board concluded that the IPR petitioner had failed that low burden. In particular, in this case the petitioner offered “reasons to combine [that] were merely assertions that the references were analogous art, which, without more, is an insufficient articulation for motivation to combine.” Rather, as KSR suggests, the known elements need to be combined “according to known methods” and yield only “predictable results.” Although the petitioner might have recited these legal conclusions in its petition, the Board found them too conclusory and lacking in clarity. Rather, the Board indicated that a proper motivation to combine analysis would explain how the primary reference is modified by the GSM reference. As I mentioned above, this is a fairly low standard under KSR, but the Board explained that the petition failed to explain: “what reference is the primary versus secondary reference, what elements are missing from the primary reference, what elements should be added from the secondary reference to reach the claimed invention, or why those particular elements would be obvious to add.”
On appeal, the Federal Circuit affirmed the lack of motivation to combine – holding that “we cannot fault the Board for being at a loss in trying to decipher Cross-Appellants kitchen-sink of unclear and confusing motivation-to-combine arguments.”
Sisvel’s ’561 patent, owned by Sisvel, relates to improving channel coding techniques in transmitting data for radio systems. Channel coding adds redundant data bits to a data block before transmission to allow a receiver to better detect and correct errors caused by noise or other interference. The invention particularly employs “link adaptation” and “incremental redundancy” to optimize channel coding. Link adaptation allows the transmitter to adjust the code rate between data block transmissions by changing the number of redundant bits. Incremental redundancy allows the receiver to combine original and retransmitted data blocks to improve decoding.
The Federal Circuit’s affirmance on motivation to combine could be useful for patent prosecutors facing obviousness rejections. While the explanatory burden on an IPR petitioner is higher on the IPR petitioner than on a patent examiner, prosecutors may find Sisvel helpful in arguing an examiner provided inadequate rationale for combining references. Patent applicants could cite Sisvel in contending an office action improperly combines references without particularly explaining: (1) the primary and secondary references; (2) missing elements supplied by the secondary reference; (3) why a skilled artisan would have looked to the secondary reference to fill gaps in the primary reference; (4) why adding the secondary reference’s teaching would yield predictable results; etc. Although Sisvel arose in the context of invalidity allegations by an IPR petitioner, the motivation to combine principles apply equally during prosecution. By requiring examiner explanations meet KSR’s standards, applicants may succeed in overcoming some obviousness rejections.
= = =
The Noah Test as One Layer of Means Plus Function Analysis
The case also includes an interesting discussion about a means-plus-function limitation found in some of the claims, and the question of whether the claim is indefinite. As you know, a claimed means plus function limitation is interpreted as covering the corresponding structures disclosed within the specification along with their equivalents. 35 U.S.C. 112(f). But we have a special null case — if no such structures are disclosed then the Federal Circuit has ruled that the associated claim is automatically invalid as indefinite. This gets a bit trickier for inter partes review proceedings since the petitioner is not permitted to challenge claims based upon indefiniteness. In Intel Corp. v. Qualcomm Inc., 21 F.4th 801 (Fed. Cir. 2021), the Federal Circuit instructed the PTAB to take the following approach to potentially indefinite MPF claims:
- Impossibility: Determine that the claim is indefinite and then decide whether the indefiniteness prevents a prior art analysis (the “impossibility” conclusion); or
- Possibility: Explain why it is able to construe the claim and resolve the prior art issues despite potential indefiniteness.
In either case, the PTAB needs to make some moves toward determining whether the limitation includes sufficient structural support in the specification.
Here, Claim 5 of the ’561 patent requires a “means for detecting a need for retransmission.” The specification does not specify a particular algorithm to accomplish this goal, but does disclose protocols like “ARQ” and “hybrid ARQ.” In situations like this, the Federal Circuit has created an unduly complicated framework to determine whether expert testimony can be used to fill gaps in the structural explanation of algorithmic MPF claims. Noah Systems, Inc. v. Intuit Inc., 675 F.3d 1302 (Fed. Cir. 2012). At step one, the Noah framework specifically asks whether any algorithm is disclosed. If no algorithm then no expert. In Noah step two, where an algorithm is disclosed but arguably inadequate, its sufficiency is judged based on a skilled artisan’s perspective and expert testimony is permitted to support the conclusions. Id.
Here, the PTAB found that references to “ARQ” and “Hybrid ARQ” were not algorithms. On appeal the Federal Circuit found error in that conclusion. In particular, the court held the PTAB erred by not evaluating the protocol names under the step two framework. The court explained that even “brief disclosures” may warrant assessing expert views on their import to a skilled artisan. Because the specification explicitly referenced protocols, it was not wholly devoid of structure. The court vacated and remanded for the PTAB to conduct a step two analysis, including evaluating expert testimony.
This holding provides useful guidance for assessing computer-implemented means-plus-function claims. The Federal Circuit appropriately avoided rigid formalism, recognizing algorithm disclosures need not detail every step and by recognizing that reference to commercially available tools can satisfy the structural requirement of 112(f). Still, I would have simplified this approach and simply held that the claim covered the disclosed protocols. After Sisvel, courts evaluating software means-plus-function limitations must carefully walk the line between Noah’s step one and two.
Conclusions: The means-plus-function doctrine was originally designed to allow patent applicants to claim an element by the functions it performs rather than reciting structure, with the goal of providing a simple and flexible claiming technique. However, as evidenced by the complicated Noah framework sitting atop Williamson and Donaldson, Sisvel’s nuanced analysis of whether disclosed protocols qualify as algorithms, means-plus-function claims have become one of the more complex and controversial doctrines in patent law. The current morass of rules, exceptions, and expert testimony required to assess even basic computer-implemented means-plus-function claims suggests the doctrine has veered far from its original purpose. In my view, courts should seek to simplify the rules and refocus on whether the specification provides sufficient information to allow a skilled artisan to understand the boundaries of the functional claim element.
= = =
- Sisvel International S.A.: Represented by Robert Gajarsa, Timothy Devlin, and Neil Benchell of Devlin Law Firm.
- Sierra Wireless, Inc.: Represented by Kourtney Merrill of Perkins Coie LLP and Amanda Tessar.
- Telit Cinterion: Represented by Guy Yonay of Pearl Cohen and Kyle Auteri.
- Opinion: Authored by Judge Chen and joined by Chief Judge Moore and Judge Clevenger.
One need not focus exclusively on examiner-cited art which is basis of an alleged 103, since the factual inquiry requires determination of the contents of all the prior art, and ex’s just don’t have time to scope it all out.
This means practitioners are free to search further locate and introduce additional prior art during prosecution, in making a showing that the ex had not appreciated all pertinent art, and often newly-found prior art can be used to refute a weak prima facie case.
chrissy – you want applicants to be supplying better prior art for better rejections…?
I don’t want anything, Pamela. It is nice you can’t resist replying in negative fashion, by now everyone expects it. But, you could have made a better spectacle, ugh, you’re slipping. Maybe running low on glutatione ?? Try some B2 and B3 with the NAC next time perhaps 🙂
How sad Chrissy that you fall back to this type of response when I (rightly) question your odd post.
A much better response would have been to address YOUR shortcoming instead of this odd attack ‘on the messenger.’
It’s not as if I always am ‘negative’ as you assert — see , for example,
link to patentlyo.com
You just don’t get a pass – especially when the only appropriate response is one that is negative.
But by all means, try again.
I believe Graham and KSR have all that is needed and are authoritative.
A conclusion of obviousness first requires determining the scope and content of the prior art, ascertaining differences between the prior art and the claims at issue, and resolving the level of ordinary skill in the pertinent art. Graham v. John Deere Co., 383 U.S. 1, 17 (1966). Secondary considerations, such as commercial success, long felt but unsolved needs, failure of others, etc. might be used to enlighten the inquiry. Id. at 17-18. Since a much greater difference exists between the prior art and the claims than appreciated in the Office Action, Applicant asserts that the level of ordinary skill is not sufficient to overcome such differences without undue experimentation.
In determining obviousness, the Office “must ask whether the improvement is more than the predictable use of prior art elements according to their established functions.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). Following this principle may be difficult when, as in the present circumstances, the claimed subject matter involves “more than the simple substitution of one known element for another or [more than] the mere application of a known technique to a piece of prior art ready for the improvement.” Id. Often, the Office must “look to interrelated teachings of multiple patents; the effects of demands known to the design community or present in the marketplace; and the background knowledge possessed by a person having ordinary skill in the art.” Id. at 418. Such evaluations are all involved in determining “whether there was an apparent reason to combine the known elements in the fashion claimed.” Id.
Consequently, the key to supporting any obviousness rejection involves clear articulation of the reason why the claimed invention is obvious. The analysis should be made explicit. Id. “[R]ejections on obviousness grounds 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.” Id. (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
A great piece of old art for our times:
link to youtube.com
^^^ the ending pretty much captures it.
Joe much dies it take to understand B.O.P. R is not working the way the Constitution is written. Imagine the cleaning. If you don’t act Rome has nothing on this country.
So instead of Joe. What the spelling is changed from spell check by evil Google, it a country problem. Spell check should be sued. Here is hoping the complaint against Google will be amended to add spellcheck.
Amend the compliant!
Sure – be like Malcolm and add a gratuitous made-up story of having just buried your daughter of a non-existent disease.
It’s a ‘great’ rhetorical t001….
This is also based on the assumption that the Examiner has properly determined the level of ordinary skill in the art.
How often do you see Examiners actually spell out the Graham Factors in their 103 rejections?
I actually ran across a junior attorney (freshly through his bar registration) share that through his interactions with patent examiners that the Graham Factors were not even required.
I did set him straight.
Patent applicants could cite Sisvel in contending an office action improperly combines references without particularly explaining: (1) the primary and secondary references;
Every rejection does this. You don’t need Sisvel for this, this is part of Graham. You should cite Graham.
(2) missing elements supplied by the secondary reference;
Same as (1)
(3) why a skilled artisan would have looked to the secondary reference to fill gaps in the primary reference;
This is not in the opinion and is not legally correct. The secondary reference is not being asserted for the value of the document itself. The secondary reference is cited as evidence as to what the art knew. Assuming that the secondary reference is analogous art, one is not required to provide a rationale as to why, e.g. the secondary reference would be picked over other references. One is simply required to explain why the disclosed element in the secondary reference would be used.
In other words, if Jones discloses a widget, KSR requires a reason for the hypothetical person of ordinary skill who knows all of the art to try using a widget, not a reason to apply Jones. Nine times out of ten the motivation to use the widget is that the widget performs the same or a predictably similar benefit in the claimed system as it does in the Jones system. Obviousness does not require the widget to be the best element for its use in the system, nor does one have to explain why a person of skill would use Jones as opposed to some more-closely-related Smith reference. All that is required is a reasoned rationale underpinned by evidence. The reasoned rationale is that the art knew of the widget and that the widget could be expected to be used to achieve its conventional purpose. “Jones” is largely irrelevant to the rationale, it is only the evidence that underpins freestanding reasoned logic.
Andersons Black Rock is directly on point here – there the evidence was that nobody had a motivation to combine a known secondary element (a radiant heater) because they did not think it would heat the joints. The court of appeals made much of the fact that the art had no motivation to use radiant heat as being ineffective. (“The patentee, in seeking a solution, turned away from current concepts and harked back to the discarded notion of preheating the old material…The fact that experts in the field received Neville’s disclosure with such skepticism and disbelief strongly indicates that, at the time, a person of ordinary skill in the field would not have sought the answer in the disproven method of heat treatment.”) (Emphasis mine to show Crouch’s logic being in lockstep with the Court of Appeals)
But the supreme court found a radiant heater was known to produce heat, and in the patented system it was used to produce heat. That rendered the addition of a radiant heater to the other elements obvious, not nonobvious as Crouch’s (3) would suggest. When elements perform as they have been known to the result is obvious because of the predictable outcome, not nonobvious because of a lack of a reason to look to the secondary reference or its disclosed element. It *has* to be this way or else any element (here the radiant heater) is going to have its core functionality constantly remonopolized so long as some suspectedly-superior option exists, rather than being dedicated to the public.
(4) why adding the secondary reference’s teaching would yield predictable results; etc.
The actual reading of both KSR and the MPEP do not require the examiner to provide evidence of secondary indicia not present. If the specification or other documentation provide no evidence of unpredictable results the examiner need not consider it. i.e. the Examiner can makes a finding of predictable results based solely upon a lack of evidence of unpredictable results.
“.. one is not required to provide a rationale as to why, e.g. the secondary reference would be picked over other references.”
That is not what is meant by explain why a skilled artisan would have looked to the secondary reference to fill gaps in the primary reference.
Nine times out of ten the motivation to use the widget is that the widget performs the same or a predictably similar benefit in the claimed system as it does in the Jones system.
999 times out of 1000 the widget is going to provide the same function. However, if merely showing that some benefit (i.e., the function) is going to result from the combination, then very few structures (e.g., machines) wouldn’t be patentable since nearly all structures are made up of known components (each providing some benefit).
Rather, the Examiner must show that there was an apparent reason to combine the known elements in the fashion claimed.
The reasoned rationale is that the art knew of the widget and that the widget could be expected to be used to achieve its conventional purpose.
Few things are patentable under that standard.
I’ve seen examiners say that it would have been obvious to modify A to include X because X provides Y benefit and therefore A would now have Y benefit. However, a Y benefit is not necessarily something that someone practicing A wants. For example, Y benefit may only be a benefit when G is used but A does not use G. Or perhaps A already provides Y benefit, and in this situation, X isn’t providing a benefit because that benefit already exist in A. In short, just because an element has some benefit attached to it doesn’t mean that this benefit is sufficient to lead one skilled in the art to modify a reference to include that element.
the Examiner can makes a finding of predictable results based solely upon a lack of evidence of unpredictable results
Factual findings without evidence — so examiner-like of you. It isn’t hard to make that finding — it just takes a bit of work, which is something many examiners are allergic to.
It *has* to be this way or else any element (here the radiant heater) is going to have its core functionality constantly remonopolized.
Uh … no. How examiners can even believe things like this is very troublesome as it pertains to how the USPTO trains their examiners (or at least stamps out old wives tales).
“it just takes a bit of work, which is something many examiners are allergic to.”
It’s just a bit of work bro, remember there’s only 20 claims that need “a bit of work bro”, “you’re liek allergic to work bro”.
Lol.
Got some new attorneys becomin examiners in this year’s haul.
I recommend not drinking and posting at the same time.
6 has aged like a bad wine. At one time he was as cantankerous an examiner as Random (Ben has never made it up to that level), but the beat-downs and his realization of just how wrong his legal positions were have dulled his ‘contributions’ to a faux ‘jive’ and Malcolm-teasing.
Not much of any real legal substance, as he is pretty much coasting there.
“6 has aged like a bad wine.”
He started out as a mixture of MD 20/20, Thunderbird, and Boone’s Farm.
^^^ I chuckled again as you are absolutely correct — and certainly a part of why it was so easy to rebut most everything that 6 had to say on patent law and his role as an examiner charged with examining applications under the law.
All this logic is pretty terrible and easily refutable, but sure I’ll bite:
However, if merely showing that some benefit (i.e., the function) is going to result from the combination, then very few structures (e.g., machines) wouldn’t be patentable since nearly all structures are made up of known components (each providing some benefit).
Yes. That is correct. We don’t give patents for simply re-telling the person of skill of what they already know. If a toaster makes toast, it’s obvious to use a toaster to make toast in a house, or a restaurant, or a motor home. The toaster doesn’t become nonobvious because you nominate a particular context for the toaster to perform its known toasting functionality. The same is true for an engine, a router, a thumb-tack, or any other element you want to include. When you contrive a system whereby you put bread into a toaster and eggs come out instead of toast, then you have a patentable invention.
Rather, the Examiner must show that there was an apparent reason to combine the known elements in the fashion claimed.
Yes, the reason is that (1) the art knew of an element, (2) the art suspected the element would perform some function, and (3) the element does perform that function. It’s obvious to use known things to do what they normally do. That’s why you reach to find a light switch in a darkened room, regardless of whether you’ve been in the room before.
However, a Y benefit is not necessarily something that someone practicing A wants.
That’s an argument about commercial viability, not patentability. Having a structure that causes Y has utility and therefore is more beneficial than the unmodified structure that does not cause Y. I don’t have to make an argument over whether a world where people weren’t allowed to have drinks in cars is more desirable to a world where drinks are allowed in cars. I simply need to point out that if you add a cup holder the car will be able to hold cups. Convincing you that you want/don’t want to travel with cups is the advertiser’s job, not the inventor’s. By the same token, diving into freezing water produces expected results and therefore is obvious. I don’t have to convince a factfinder that they should want to dive into freezing water before it becomes an obvious step. The “motivation” in TSM isn’t commercial motivation, it is inventive motivation. You are motivated to attempt to use a known thing to do the thing it is known to do.
For example, Y benefit may only be a benefit when G is used but A does not use G.
This is stu pidly incorrect. Is it obvious to make a car with a cupholder without also including a cup? Yes, even though the cupholder provides no benefit absent an occupant with a cup. Is it obvious to purchase only hot dog buns with no hot dogs? Yes, because I may be meeting someone who has hot dogs or I may already have hot dogs from elsewhere. When the art knows that X causes benefit Y when G is present, it is obvious to add X to partially generate benefit Y because G may be added elsewhere.
If you change the hypothetical to include (1) an element with a previously known use(s) and (2) a claim that is not silent but by its terms explicitly excludes all of the known use(s) then I would agree that yes, that claim is nonobvious. Presumably this is because the disclosure includes a new beneficial use of the element that was previously unknown. This would be an example of bad attorney drafting though, as there are better ways to get at the inventive aspect and it likely has 101/112 issues to draft in a “I claim this machine for all uses that aren’t previously known” manner.
Or perhaps A already provides Y benefit, and in this situation, X isn’t providing a benefit because that benefit already exist in A.
First, “Why would someone wear both a belt and suspenders???” To have the primary reference already perform the function rarely defeats a motivation. Redundancy and failover are routinely included in devices. That’s why your car has both a foot brake and a hand brake.
Second, simple substitution is explicitly a mechanism for obviousness, see MPEP 2143 and US v. Adams. If Ref A uses something to generate benefit Y, and Ref B teaches X can generate benefit Y, it is obvious to substitute X for the ref A element under the rationale of simple substitution for predictable results, so you wouldn’t need a TSM anyway. The law is explicitly the opposite of what you say it is here.
Third – and here we’re hampered by a lack of claim language but just to be clear – there is no situation where X does nothing. The inventor is using X for some reason, and the question is only whether that reason was known to the art prior to filing. If Y already provided a benefit, its entirely possible X provides another benefit.
In short, just because an element has some benefit attached to it doesn’t mean that this benefit is sufficient to lead one skilled in the art to modify a reference to include that element.
The strongest rationale for making a modification is that the art understood that using a particular element would produce a given benefit. Modifying an otherwise anticipated/obvious invention to include an element that is being used for its known and expected benefit is obvious. It’s not my job to determine if someone has a “good” idea in my opinion – that’s what you want, obviousness to turn on the subjective cost/benefit analysis of the fact finder – it’s my job to determine if the element objectively evidences a nonobvious disclosure with respect to the art’s preexisting knowledge.
All I can say to this is that you need to, you know, read some cases:
this patent simply arranges old elements with each performing the same function it had been known to perform, although perhaps producing a more striking result than in previous combinations. Such combinations are not patentable under standards appropriate for a combination patent. – Sakraida
The mere aggregation of a number of old parts or elements which, in the aggregation, perform or produce no new or different function or operation than that theretofore performed or produced by them is not patentable invention. – Lincoln Engineering
The function of a patent is to add to the sum of useful knowledge. Patents cannot be sustained when, on the contrary, their effect is to subtract from former resources freely available to skilled artisans. A patent for a combination which only unites old elements with no change in their respective functions, such as is presented here, obviously withdraws what already is known into the field of its monopoly and diminishes the resources available to skillful men. This patentee has added nothing to the total stock of knowledge, but has merely brought together segments of prior art and claims them in congregation as a monopoly. – A&P Tea
The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results…a court must ask whether the improvement is more than the predictable use of prior art elements according to their established functions. – KSR
Factual findings without evidence — so examiner-like of you.
The lack of disclosure is evidence. What facts do you think 112a new matter rejections are based on? The failure to disclose in the specification. Regardless, its entirely reasonable to conclude that an element will perform as expected when there is no evidence to the contrary. Expected performance is the default position. That’s why the applicant submits evidence of unexpected results.
Notably absent from your assertions are a rebuttal to Andersson’s blackrock. I don’t fault you for not giving one, as there are only so many supreme court obviousness cases and they all fall the same way…All of the supreme court cases on obviousness reject patentability for simply adding known features for their expected benefit. The cases that show nonobviousness do so by a previous inability to combine, by unexpected synergism (AB combined produces a surprisingly greater benefit than A+B would be expected to generate, see US v Adams) or by unexpected distinction (A generally causes X but in the claimed context causes Y). In each of those cases there is an identifiable disclosure that improves the store of knowledge available to the art (here is how you combine, you’re wrong about how these items work together, etc). You don’t invent by simply walking down a store aisle and throwing a multitude of known things into your cart until an examiner gets tired of citing references, and yet that is how the vast majority of patents are procured today.
You are correct to be incredulous that many of the things currently patented would not be patented under the supreme court’s words. Do you know how few software patents would survive the supreme court’s 103, judicial exception, and 112 cases? That has less to do with the law and more to do with the fact that the office, the attorney, and the client all benefit by not applying the law. As I have repeatedly told people on this board you guys don’t want examination, you want procedural rubber stamping. If you had to win an argument that a specification which provided no technical algorithm teachings was patentable under supreme court precedent you’d be looking into personal injury jobs.
TLDR
Basically, everything is obvious to you.
Basically, he wishes to treat ALL art as piecemeal 102 art.
He really should understand the differences of prior art for 102 and 103 purposes, as that is his job, but he IS a rather typical examiner.
The Graham command is to determine the scope and content of the prior art and to analyze the difference between that and the current invention. The court has spoken multiple times about the situation where the difference is that the art knew of all the pieces but had not previously combined them. They have reiterated time and again that merely having all the pieces known to the art does not make it obvious, but that when all the pieces are known and merely arranged to do what they are expected to do the claim is obvious. This notion that you have to have a reason that a person reading a first document would look at another document is all federal circuit language that is expressly contradicted in KSR.
Just a note, WT, to say Thank You for your 2.2.2. It was a refreshing, even exhilarating, read for one whose main activity these days is following the pleadings in inter Partes post-grant oppositions at the EPO. Good stuff, if I may say so.
That said, I must add a word about that old A&P Tea case. No quarrel with the dictum, just with its judgement that the specific contribution to the art was not an inventive contribution to the progress of technology. Looking back on it with the benefit of hindsight, I think it was a brilliant invention at the time.
So what do we learn from A&P Tea? With a nod to the other thread currently running, perhaps it is that no matter how much the governing law helps you, if you haven’t got a talented trial lawyer arguing your case to the jury you will likely still lose.
“This notion that you have to have a reason that a person reading a first document would look at another document is all federal circuit language that is expressly contradicted in KSR.”
Apparently not, at least according to the PTAB panel in 16/010,229, who said, “Setting forth a prima facie case of obviousness of Appellant’s claim steps … requires establishing that one of ordinary skill in the art would have had an apparent reason to perform those steps. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). That requirement is not met by Examiner’s mere assertions that one of ordinary skill in the art could have combined the steps and that the steps, if combined, would have produced a predictable result.” See page 5 of the 10/10/2023 decision.
“Setting forth a prima facie case of obviousness of Appellant’s claim steps … requires establishing that one of ordinary skill in the art would have had an apparent reason to perform those steps. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
That does not conflict with my statement. KSR requires a reasoned rationale underpinned by evidence. That statement does not say that someone reading one document needs a reason to look at another document. Thinking about the requirement in terms of “documents” or “references” is wrong. What is required is a reasoned rationale based on what the art knew, and the documents are simply evidence of what the art knew. You don’t combine “references” or “documents,” you have disclosures of art techniques and you give reasons to use them.
“Thinking about the requirement in terms of ‘documents’ or ‘references’ is wrong.”
No, it’s not. That’s why Rule 104(c) requires the examiner to find the “best” prior art. And the EPO’s PSA approach requires the examiner to find D1, aka the closest prior art. It’s important where you start the obviousness analysis. Otherwise you get what happened in 16/101,229, the examiner trying to patch together 4 references to reject as obvious a 3 step method claim.
“You don’t combine ‘references’ or ‘documents,’ you have disclosures of art techniques and you give reasons to use them.”
Actually, yes, you do. See above. It’s also why you have to consider the references in their entirety. It is not proper to pick and choose teachings/disclosures/etc. from a reference or other piece of evidence (e.g. an actual prior art device or process) and take the teachings/disclosures/etc. that support your rejection and ignore the things that don’t support your rejection, or actually disprove your rejection.
You should know all this.
Yes he should, as he has often been dis@bused of his “pet theories” (even as he whines that examiners are not lawyers).
You might even adapt his own snark back to him with:
Aww, reading cases and understanding is hard for you, huh? Sorry bout that, kiddo.
Breeze, how much do you know about patentability under the EPC? Not much, it seems, from your comment. Patentability under the EPC falls to be judged relative to the entirety of the state of the art, which includes everything made available to the public by written or oral description, by use or in any other way. Art 54(2) and Art 56 EPC say nothing about “references”. At the EPO, the D1 prior art starting point could for example legitimately be the common general knowledge of the PHOSITA. But Patent Offices have to find a way to examine patent applications rigorously but within the allowed budget. Hence the Examining Division’s D1 is invariably a written prior publication. Doesn’t have to be though, under the EPC and in the courts of Europe. OK? Understood?
Fck off.
Aww, reading cases and responding is hard for you, huh? Sorry bout that, kiddo.
I think it be less “hard” per se and more tedious and bearing little fruit, Random, as you have shown NO proclivity to even try to understand why your pet theories are off.
103 art is simply not piecemeal 102 art.
It just is not.
Motivation to combine is simply not motivation of the singular items of their own accord.
It just is not.
^^^
“Every rejection does this. You don’t need Sisvel for this, this is part of Graham. You should cite Graham.”
Pretty much the only thing you got right.
Perhaps pay more attention when (real) attorneys instruct you on just what this means….
“courts should seek to simplify the rules and refocus on whether the specification provides sufficient information to allow a skilled artisan to understand the boundaries of the functional claim element.”
Complication = Subjectivity
And we all know how much the CAFC and SCOTUS loves subjectivity when it comes to patent cases.
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