KSR v. Teleflex: In Support of the Status Quo

 KSR v. Teleflex (Supreme Court 2006).

By Dennis Crouch [dcrouch@gmail.com]

Background: Teleflex and its supporters have now filed their briefs in defense of the Federal Circuit’s methodology for determining whether a patent is “obvious.” [Copies of briefs are provided below]. The doctrine of nonobviousness is fundamental to our patent system.  In order to be eligible for a patent an invention must be both novel and non-obvious.  Novelty is generally narrowly applied to cases where the invention is identical to something already in the public domain.  Obviousness, however, is a more difficult beast and is intended to ensure that patent rights are only granted to inventions that move us a significant distance past the prior art. 

Obviousness has always been a “squishy” term, but over the past twenty-five years, the Court of Appeals for the Federal Circuit has developed a somewhat objective nonobviousness doctrine using a teaching/suggestion/motivation (TSM) test. According to the test, when various pieces of prior art each contain elements of an invention, the prior art can be combined together to invalidate a patent on the invention only when there is some motivation, suggestion, or teaching to combine the prior art. One problem with any obviousness test is hindsight bias. It is all-to-easy to look-back and assert that an invention would have been obvious. One purpose of the objective TSM test is to avoid this type of hindsight bias.

KSR has asked the Supreme Court to rethink that approach and take a fresh look at the obviousness standard for patentability. The petition questions whether obviousness should require any proof of some suggestion or motivation to combine prior art references.

Question Presented: Whether the Federal Circuit erred in holding that a claimed invention cannot be held "obvious," and thus unpatentable under 35 U.S.C. sec. 103(a), in the absence of some proven "'teaching, suggestion or motivation' that would have led a person of ordinary skill in the art to combine the relevant prior art teachings in the manner claimed"?

Interestingly, the Supreme Court has not heard an obviousness since well before the founding of the Federal Circuit. In that case (Sakraida 1976), the Court held that a combination which only unites old elements with no change in their respective functions is precluded from patentability under 103(a).  Under the Sakraida standard, the Teleflex patent is arguably obvious.  In an article several years ago, Professor John Duffy identified this obviousness issue as one that should attract the Supreme Court’s attention.

[The Federal Circuit’s suggestion] test, which tends to make even seemingly trivial developments patentable, is entirely the Federal Circuit’s product.  It has no basis in the Supreme Court’s case law and may, in fact, be inconsistent with the Court’s most recent pronouncement on the subject (though that precedent is now more than a quarter century old).

Duffy, The Festo Decision and the Return of the Supreme Court to the Bar of Patents, 2002 S.Ct. Rev. 273, 340-41 (2003).  Now, Duffy, a former clerk of Justice Scalia, is part of the KSR team that is trying to change the rule of law. The KSR case itself concerns a patent covering a gas pedal for an automobile. KSR makes pedals for GM & Chevy trucks and was sued for infringement of the Teleflex patent.

A discussion of briefs in support of the petitioner are found here: Discussion of Breifs Supporting Petitioner.

What follows is a discussion of briefs in support of the respondent: (i.e., in support of the status quo).

Respondent Teleflex: Brief on the Merits

Settled Law: Respondent begins with a compelling exposition on the power of stare decisis. “Millions of patents” have issued based on the suggestion test, and modifying that test would in Hal Wegner’s words, “threaten the validity of literally hundreds of thousands of existing patents still in force.”

Non-Rigid Test: Respondent defines the suggestion test as a “flexible [test that] looks to any available indication that a practitioner in the art would have had some reason to select the elements of the invention from among the prior art and combine them in the manner claimed by the invention.”  Relying heavily on the CAFC’s very recent obviousness pronouncements of Dystar and Alza, the brief points out that a suggestion does not need to be found in prior art, but rather can be implicit in the nature of the problem, customer demand, similarity between references, knowledge of PHOSITA, wide knowledge of value of feature to be combined, etc.  [DDC: Query whether the broad application of implicit suggestions would constructively eliminate the rule.]

The suggestion test can be contrasted with the “synergy” test proposed by petitioner and the “extraordinary level of innovation” test from the Solicitor General. Those approaches essentially mirror the pre-103 requirement of an “invention.” According to Judge Rich, “The first policy decision underlying Section 103 was to cut loose altogether from the century-old term ‘invention.’”

Intellectual Property Owners Association (IPO) in Support of Respondent:

The IPO is an organizatoin of intellectual property owners. MBHB (where I am of counsel) filed the brief on behalf of IPO. IPO’s brief supports the motivation requirement as an objective but flexible and practical approach to the obviousness problem.  IPO hits on the hindsight problem:

[The test must rely on] objective evidence, not mere unsupported opinion or argument. Otherwise, the inevitable use of hindsight will tend to render meritorious inventions "obvious" by using the inventor’s own teachings as a roadmap to piece together prior art references in ways that would not have been obvious at the time of the invention.

IPO also takes-issue with any “synergy” requirement. Synergy occurs when the "the interaction of elements that when combined produce a total effect that is greater than the sum of the individual elements." There are many patent-worthy inventions, however, that lack true synergy. In addition, the Solicitor General’s proposed "extraordinary level of innovation" requirement goes too far. “Nothing in the patent statute suggests that patents should only be awarded to Nobel laureates.”

Paul Berghoff, Jeremy Noe, and Aaron Barkoff (of OrangeBookBlog) are on the brief.

American Intellectual Property Law Association (AIPLA) in Support of Respondent:

AIPLA’s brief is a fun read — it starts off with quotes from Billy Wilder and King Solomon, both of which give us pause on the question of hindsight.

What has been is what will be,
and what has been done is what will be done;
there is nothing new under the sun.

According to AIPLA, King Solomon wasn’t so wise — perhaps because his vision of the past was colored by hindsight. The CAFC’s test of obviousness is useful because it helps avoid hindsight.

TSM is a well-established, thoughtfully-analytic framework that provides certainty and uniformity in obviousness determinations while allowing proper flexibility. By requiring a showing of why someone of ordinary skill in the relevant art would think the invention obvious, it functions as a critical evidentiary device that prevents arbitrary decisions driven by hindsight.

As is typical of opposition briefs, the AIPLA correctly notes that the CAFC’s suggestion test does not require that the suggestion be explicit or written.

I can concieve of a strong [and thus far unstated] argument that it would be sensible to require that the suggestion be written and explicit.  At this point in history, we have more people writing than ever before and those people are each writing more than earlier writers. At the same time, search costs are dropping dramatically and will continue to drop. In this scenario, why would we need to allow the evidentiary nightmare of giving weight to previously unstated suggestions to find an invention obvious?

Professor Thomas Field of Franklin Pierce in Support of Respondent:

Professor Field looks at the CAFC and its role in the patent process.  Unlike its predecesor CCPA, the CAFC hears both administrative patentability and litigation based cases. That means that the CAFC must “confront the consequences of unwaranted grants.” 

If the problem is the grant of too-many patents, the CAFC has little to say there because the court has no role in granting patents except to occasionally rule that the BPAI’s bases for rejection are unsupported.

Pre- and post-grant opposition proceedings may be the answer, but those decisions are for Congress.

ABA in Support of Respondent:

ABA amicus briefs are always difficult to obtain becauase they need the support of both the IP Section and the entire ABA House of Delegates.  Here, the way to consensus was not to argue that the TSM test is the best test, but rather to note that it is useful, objective, and deeply rooted in the Supreme Court’s John Deere jurisprudence. In addition, the test is well settled, and messing with the test would have a far-reaching and complex impact on the economy and state of innovation.

If some elusive method not based on evidence were to be substituted for the present inquiry, hundreds of thousands of patents granted under the teaching-suggestion-motivation methodology would be immediately placed under a cloud.

Harold Milton in Support of Respondent:

Harold Milton drafted the claims being asserted by Teleflex and has filed a very interesting brief in support of Teleflex.  Interesting because he begins with a statement that the suggestion test is illusory, or at least a misnomer. There is no requirement that there be any specific statement of suggestion in the prior art. Nonetheless, the test is important to maintain an “objective standard of patentability” and “consistent evaluation.”  It also prevents chaos:

Without an objective standard, chaos would be multiplied across thousands of patent examiners, judges, juries, attorneys, etc. and would result in inconsistent decisions on patentability.

According to Milton, the Court should reject the suggestion test and stick to its prior decisions that obvious is found when there is a “mere selection of prior art elements combined to perform the identical function as they did separately in the prior art.”

Lee Thomason in Support of Respondent:

Thomason is a Kentucky-based patent attorney. One interesting aspect of his argument involves the law/equity distinction.  According to Thomason, challenges to validity are equitable in their origins as evidenced both by the recited equitable factors of 103(a) (“as a whole”) and by Blackstone’s recitation of the writ fo scire facias. As such, any changes to the rule should be to review obviousness decisions “according to the standard applied to equitable rulings.” Equitable review requires a full discussion of the record and results in more predictability.

[Please e-mail briefs in support of respondent to me at dcrouch@gmail.com]

Documents:

• On the Merits
• In Support of Petitioner
  • Petitioner's Brief on the Merits; [UPDATED WITH CORRECT VERSION]
  • Government's Brief in Support of Petitioner;
  • Law and History Professors (Sarnoff) in Support of Petitioner;
  • Law Professor (Strandburg) in Support of Petitioner;
  • Electronic Frontier Foundation in Support of Petitioner;
  • Judge Colianni in Support of Petitioner;
  • Intel and Micron in Support of Petitioner;
  • Progress and Freedom Foundation in Support of Petitioner;
  • Cisco and GM in Support of Reversal (Petitioner);
  • CCIA in Support of Petitioner;
  • Business Software Alliance in Support of Petitioner;
  • Time Warner, IAC, and VIACOM in Support of Petitioner;
  • AARP.
• In Support of Neither Party
  • IBM in Support of Neither Party;
  • Ford & DaimlerChrysler in Support of Neither Party;
  • DC Bar Assn (Eccelston);
  • Professor Hollaar.
• In Support of Respondent
• Respondent’s Brief on the Merits;
• Intellectual Property Owners in Support of Respondent;
• AIPLA in Support of Respondent;
• ABA in Support of Respondent;
• Automotive Suppliers in Support of Respondent;
• Big Innovative Companies (3M, et. al) in Support of Respondent;
• Technology Properties Limited in Support of Respondents;
• United Inventors Association in Support of Respondent;
• Intellectual Ventures and other Small Companies with Large Patent Portfolios in Support of Respondent;
• Law Professors in Support of Respondent;
• Professor Tom Field (Franklin Pierce) in Support of Respondent;
• IPLAC in Support of Respondent;
• Harold Milton (attorney who drafted the claims in the Teleflex patent) in Support of Respondent;
• Tessera, Qualcomm, and Amberwave in Support of Respondent;
• Science Professors in Support of Respondent;
• Lee Thomason in Support of Respondent.
• [Briefs also available at SCOTUS BLOG]
• Petitions Stage
  • Party Briefs
    • KSR’s Petition for Cert (Including the CAFC and District Court decisions in Appx. A & B);
    • Teleflex’s Brief in Opposition;
    • KSR Reply Brief (314 KB);
    • Teleflex Supplement.
  • Amicus Briefs
    • Government in support of petition;
    • 24 Law Professors in support of petition;
    • Progress Freedom Foundation in support of petition;
    • Microsoft, Cisco, Hallmark, et al. in support of petition.

Links:

• Discussion of Petitioner and Supporting Amici’s Briefs on the Merits;
• Discussion of Government's Brief in Support of Certiorari;
• Discussion of Microsoft’s Amicus Brief;
• Discussion of the CAFC decision;
• Discussion of Law Professors Brief;
• Discussion of In re Kahn;
• Discussion of Petition for Certiorari;
• Prediction Certiorari;
• Professor Wagner and Strandburg debate obviousness in Penn’s new online law reivew:PENNumbra;
• Prof Miller: KSR Lift-off!
• Prof Miller: Discussion of Gov’t Brief;
• Patent Hawk: Becoming Less Obvious;
• Patent Hawk: Hindsight Problem;
• Buchanan: "[O]nce again, patent reform has left the Capitol and walked across First Street to the Supreme Court." [Link];
• Petherbridge & Wagner Empirical Article [link]
• Cotropia Article: [link].
• Shane Popp Article on Section 103 background [link]
• The Patent at issue: [link]

Cite as Dennis Crouch, “KSR v. Teleflex: In Support of the Status Quo,” Patently-O, available at http://www.patentlyo.com.

 KSR v. Teleflex (Supreme Court 2006).

By Dennis Crouch [dcrouch@gmail.com]

By Dennis Crouch [dcrouch@gmail.com]

Background: Teleflex and its supporters have now filed their briefs in defense of the Federal Circuit’s methodology for determining whether a patent is “obvious.” [Copies of briefs are provided below]. The doctrine of nonobviousness is fundamental to our patent system.  In order to be eligible for a patent an invention must be both novel and non-obvious.  Novelty is generally narrowly applied to cases where the invention is identical to something already in the public domain.  Obviousness, however, is a more difficult beast and is intended to ensure that patent rights are only granted to inventions that move us a significant distance past the prior art. 

Obviousness has always been a “squishy” term, but over the past twenty-five years, the Court of Appeals for the Federal Circuit has developed a somewhat objective nonobviousness doctrine using a teaching/suggestion/motivation (TSM) test. According to the test, when various pieces of prior art each contain elements of an invention, the prior art can be combined together to invalidate a patent on the invention only when there is some motivation, suggestion, or teaching to combine the prior art. One problem with any obviousness test is hindsight bias. It is all-to-easy to look-back and assert that an invention would have been obvious. One purpose of the objective TSM test is to avoid this type of hindsight bias.

KSR has asked the Supreme Court to rethink that approach and take a fresh look at the obviousness standard for patentability. The petition questions whether obviousness should require any proof of some suggestion or motivation to combine prior art references.

Question Presented: Whether the Federal Circuit erred in holding that a claimed invention cannot be held "obvious," and thus unpatentable under 35 U.S.C. sec. 103(a), in the absence of some proven "'teaching, suggestion or motivation' that would have led a person of ordinary skill in the art to combine the relevant prior art teachings in the manner claimed"?

Interestingly, the Supreme Court has not heard an obviousness since well before the founding of the Federal Circuit. In that case (Sakraida 1976), the Court held that a combination which only unites old elements with no change in their respective functions is precluded from patentability under 103(a).  Under the Sakraida standard, the Teleflex patent is arguably obvious.  In an article several years ago, Professor John Duffy identified this obviousness issue as one that should attract the Supreme Court’s attention.

[The Federal Circuit’s suggestion] test, which tends to make even seemingly trivial developments patentable, is entirely the Federal Circuit’s product.  It has no basis in the Supreme Court’s case law and may, in fact, be inconsistent with the Court’s most recent pronouncement on the subject (though that precedent is now more than a quarter century old).

Duffy, The Festo Decision and the Return of the Supreme Court to the Bar of Patents, 2002 S.Ct. Rev. 273, 340-41 (2003).  Now, Duffy, a former clerk of Justice Scalia, is part of the KSR team that is trying to change the rule of law. The KSR case itself concerns a patent covering a gas pedal for an automobile. KSR makes pedals for GM & Chevy trucks and was sued for infringement of the Teleflex patent.

A discussion of briefs in support of the petitioner are found here: Discussion of Breifs Supporting Petitioner.

What follows is a discussion of briefs in support of the respondent: (i.e., in support of the status quo).

Respondent Teleflex: Brief on the Merits

Settled Law: Respondent begins with a compelling exposition on the power of stare decisis. “Millions of patents” have issued based on the suggestion test, and modifying that test would in Hal Wegner’s words, “threaten the validity of literally hundreds of thousands of existing patents still in force.”

Non-Rigid Test: Respondent defines the suggestion test as a “flexible [test that] looks to any available indication that a practitioner in the art would have had some reason to select the elements of the invention from among the prior art and combine them in the manner claimed by the invention.”  Relying heavily on the CAFC’s very recent obviousness pronouncements of Dystar and Alza, the brief points out that a suggestion does not need to be found in prior art, but rather can be implicit in the nature of the problem, customer demand, similarity between references, knowledge of PHOSITA, wide knowledge of value of feature to be combined, etc.  [DDC: Query whether the broad application of implicit suggestions would constructively eliminate the rule.]

The suggestion test can be contrasted with the “synergy” test proposed by petitioner and the “extraordinary level of innovation” test from the Solicitor General. Those approaches essentially mirror the pre-103 requirement of an “invention.” According to Judge Rich, “The first policy decision underlying Section 103 was to cut loose altogether from the century-old term ‘invention.’”

Intellectual Property Owners Association (IPO) in Support of Respondent:

The IPO is an organizatoin of intellectual property owners. MBHB (where I am of counsel) filed the brief on behalf of IPO. IPO’s brief supports the motivation requirement as an objective but flexible and practical approach to the obviousness problem.  IPO hits on the hindsight problem:

[The test must rely on] objective evidence, not mere unsupported opinion or argument. Otherwise, the inevitable use of hindsight will tend to render meritorious inventions "obvious" by using the inventor’s own teachings as a roadmap to piece together prior art references in ways that would not have been obvious at the time of the invention.

[The test must rely on] objective evidence, not mere unsupported opinion or argument. Otherwise, the inevitable use of hindsight will tend to render meritorious inventions "obvious" by using the inventor’s own teachings as a roadmap to piece together prior art references in ways that would not have been obvious at the time of the invention.

IPO also takes-issue with any “synergy” requirement. Synergy occurs when the "the interaction of elements that when combined produce a total effect that is greater than the sum of the individual elements." There are many patent-worthy inventions, however, that lack true synergy. In addition, the Solicitor General’s proposed "extraordinary level of innovation" requirement goes too far. “Nothing in the patent statute suggests that patents should only be awarded to Nobel laureates.”

Paul Berghoff, Jeremy Noe, and Aaron Barkoff (of OrangeBookBlog) are on the brief.

American Intellectual Property Law Association (AIPLA) in Support of Respondent:

AIPLA’s brief is a fun read — it starts off with quotes from Billy Wilder and King Solomon, both of which give us pause on the question of hindsight.

Harold Milton drafted the claims being asserted by Teleflex and has filed a very interesting brief in support of Teleflex.  Interesting because he begins with a statement that the suggestion test is illusory, or at least a misnomer. There is no requirement that there be any specific statement of suggestion in the prior art. Nonetheless, the test is important to maintain an “objective standard of patentability” and “consistent evaluation.”  It also prevents chaos:

Without an objective standard, chaos would be multiplied across thousands of patent examiners, judges, juries, attorneys, etc. and would result in inconsistent decisions on patentability.

Lee Thomason in Support of Respondent:

Thomason is a Kentucky-based patent attorney. One interesting aspect of his argument involves the law/equity distinction.  According to Thomason, challenges to validity are equitable in their origins as evidenced both by the recited equitable factors of 103(a) (“as a whole”) and by Blackstone’s recitation of the writ fo scire facias. As such, any changes to the rule should be to review obviousness decisions “according to the standard applied to equitable rulings.” Equitable review requires a full discussion of the record and results in more predictability.

[Please e-mail briefs in support of respondent to me at dcrouch@gmail.com]

Documents:

• On the Merits
• In Support of Petitioner
  • Petitioner's Brief on the Merits; [UPDATED WITH CORRECT VERSION]
  • Government's Brief in Support of Petitioner;
  • Law and History Professors (Sarnoff) in Support of Petitioner;
  • Law Professor (Strandburg) in Support of Petitioner;
  • Electronic Frontier Foundation in Support of Petitioner;
  • Judge Colianni in Support of Petitioner;
  • Intel and Micron in Support of Petitioner;
  • Progress and Freedom Foundation in Support of Petitioner;
  • Cisco and GM in Support of Reversal (Petitioner);
  • CCIA in Support of Petitioner;
  • Business Software Alliance in Support of Petitioner;
  • Time Warner, IAC, and VIACOM in Support of Petitioner;
  • AARP.
• In Support of Neither Party
  • IBM in Support of Neither Party;
  • Ford & DaimlerChrysler in Support of Neither Party;
  • DC Bar Assn (Eccelston);
  • Professor Hollaar.
• In Support of Respondent
• Respondent’s Brief on the Merits;
• Intellectual Property Owners in Support of Respondent;
• AIPLA in Support of Respondent;
• ABA in Support of Respondent;
• Automotive Suppliers in Support of Respondent;
• Big Innovative Companies (3M, et. al) in Support of Respondent;
• Technology Properties Limited in Support of Respondents;
• United Inventors Association in Support of Respondent;
• Intellectual Ventures and other Small Companies with Large Patent Portfolios in Support of Respondent;
• Law Professors in Support of Respondent;
• Professor Tom Field (Franklin Pierce) in Support of Respondent;
• IPLAC in Support of Respondent;
• Harold Milton (attorney who drafted the claims in the Teleflex patent) in Support of Respondent;
• Tessera, Qualcomm, and Amberwave in Support of Respondent;
• Science Professors in Support of Respondent;
• Lee Thomason in Support of Respondent.
• [Briefs also available at SCOTUS BLOG]
• Petitions Stage
  • Party Briefs
    • KSR’s Petition for Cert (Including the CAFC and District Court decisions in Appx. A & B);
    • Teleflex’s Brief in Opposition;
    • KSR Reply Brief (314 KB);
    • Teleflex Supplement.
  • Amicus Briefs
    • Government in support of petition;
    • 24 Law Professors in support of petition;
    • Progress Freedom Foundation in support of petition;
    • Microsoft, Cisco, Hallmark, et al. in support of petition.

Links:

• Discussion of Petitioner and Supporting Amici’s Briefs on the Merits;
• Discussion of Government's Brief in Support of Certiorari;
• Discussion of Microsoft’s Amicus Brief;
• Discussion of the CAFC decision;
• Discussion of Law Professors Brief;
• Discussion of In re Kahn;
• Discussion of Petition for Certiorari;
• Prediction Certiorari;
• Professor Wagner and Strandburg debate obviousness in Penn’s new online law reivew:PENNumbra;
• Prof Miller: KSR Lift-off!
• Prof Miller: Discussion of Gov’t Brief;
• Patent Hawk: Becoming Less Obvious;
• Patent Hawk: Hindsight Problem;
• Buchanan: "[O]nce again, patent reform has left the Capitol and walked across First Street to the Supreme Court." [Link];
• Petherbridge & Wagner Empirical Article [link]
• Cotropia Article: [link].
• Shane Popp Article on Section 103 background [link]
• The Patent at issue: [link]

Cite as Dennis Crouch, “KSR v. Teleflex: In Support of the Status Quo,” Patently-O, available at http://www.patentlyo.com.

Documents:

On the Merits

In Support of Petitioner

Petitioner's Brief on the Merits; [UPDATED WITH CORRECT VERSION]

Government's Brief in Support of Petitioner;

Law and History Professors (Sarnoff) in Support of Petitioner;

Law Professor (Strandburg) in Support of Petitioner;

Electronic Frontier Foundation in Support of Petitioner;

Judge Colianni in Support of Petitioner;

Intel and Micron in Support of Petitioner;

Progress and Freedom Foundation in Support of Petitioner;

Cisco and GM in Support of Reversal (Petitioner);

CCIA in Support of Petitioner;

Business Software Alliance in Support of Petitioner;

Time Warner, IAC, and VIACOM in Support of Petitioner;

AARP.

In Support of Neither Party

IBM in Support of Neither Party;

Ford & DaimlerChrysler in Support of Neither Party;

DC Bar Assn (Eccelston);

Professor Hollaar.

In Support of Respondent

Respondent’s Brief on the Merits;

Intellectual Property Owners in Support of Respondent;

AIPLA in Support of Respondent;

ABA in Support of Respondent;

Automotive Suppliers in Support of Respondent;

Big Innovative Companies (3M, et. al) in Support of Respondent;

Technology Properties Limited in Support of Respondents;

United Inventors Association in Support of Respondent;

Intellectual Ventures and other Small Companies with Large Patent Portfolios in Support of Respondent;

Law Professors in Support of Respondent;

Professor Tom Field (Franklin Pierce) in Support of Respondent;

IPLAC in Support of Respondent;

Harold Milton (attorney who drafted the claims in the Teleflex patent) in Support of Respondent;

Tessera, Qualcomm, and Amberwave in Support of Respondent;

Science Professors in Support of Respondent;

Lee Thomason in Support of Respondent.

[Briefs also available at SCOTUS BLOG]

Petitions Stage

Comments

[Fredric Goldstein]

Mooney: pds doesn't need defending but I will anyway. Malcolm, your writings simply reek of someone who really REALLY doesn’t like his job, I suppose that’s your prerogative though, who knows maybe you’re just venting. Maybe you’re just unlucky, that you think every Rube Goldberg with some stupid invention has shown up on your doorstep, that he calls you every month asking for progress on his application since he is awaiting his MILLIONS on his SAVE THE WORLD invention, and you have to put up with it all. If the patent system were on trial, as it seems to be, you’d be a hostile witness (and a few others here).

You have already been gently advised by Tom Barniak, Jr (great post, Tom, by the way)to tone down the rhetoric but up it goes anyway. It is unfortunately bearing down upon your credibility, a shame since you seem to be a smart guy, and who doesn’t love your sarcasm? I see the toe to toe you’ve been doing with pds but I have to tell you that if I were looking for a patent attorney, I would gladly give pds, not you, a call. Your comments seem to tell us all that you could barely care less when the final rejection comes and your client is denied his patent on his silly idea. The small inventor client, that is. Different for the big guys? Certainly, the Framers weren’t thinking of multi-national corporations when they conceived of the patent system, so why is the small inventor so insignificant all of a sudden? So hint again- take a hint and disagree if you wish but stay on point.
Well, whatever. We all wish you and your clients the best. And I am sure we all wish the patent system the best. It IS an important part of our society.

[Tony]

I will go out unless it rains (after I finish writing or examining these accursed applications, take your pick).

The default is I will go out.

As this is the most usual interpretation of phrases using unless, and there is no evidence that the legislature intended otherwise when writing 102 (or other sections), the default is that a patent should be granted.

[Malcom Mooney]

" I see the toe to toe you’ve been doing with pds but I have to tell you that if I were looking for a patent attorney, I would gladly give pds, not you, a call."

Oh yeah? Well if you were looking for a patent attorney and you wanted me to represent you, I wouldn't accept you as a client anyway, so nyah nyah nyah!

Give me a break. Yes, pds long-winded "arguments" and goalpost moving would no doubt wear down the will of many of the PTO's finest. Hooray.

But let's face it: it's ludicrous to imply that anyone writes Responses to Office Actions like they write my blog comments.

"Your comments seem to tell us all that you could barely care less when the final rejection comes and your client is denied his patent on his silly idea."

I don't recall ever referring to "my client" or my client's "silly idea." I do recall referring to the many bogus patent applications which are shoved under Examiners noses by attorneys at the behest of their clients.

Do you think those clients and those applications and those attorneys don't exist? I find the hostility towards any discussion of these applications and these clients and these attorneys confusing. It's almost as if some people post their "PTO was unfair to my client" screeds here in an attempt to generate business for themselves.

I don't need to do that.

"why is the small inventor so insignificant all of a sudden?"

The small inventor is no more or less signficant than he or she was before pds brought up the alleged discriminatory "harm" to the small inventor as an ARGUMENT that patents should not be harder to obtain.

It's a bogus argument. Small inventors already get breaks at the PTO.

[anon]

Tom,

Good point, but strictly speaking, TSM is not a standard for obviousness. It is simply a evidentiary requirement before the standard for obviousness ever sets in.

Current Fed. Cir. law is this: (1) the applicant is presumptively entitled to the patent; (2) the examiner must establish a prima facie case by proving TSM; (3) the applicant rebuts the prima facie case by showing secondary considerations; and (4) the case dissolves and obviousness is assessed using a standard that nobody has yet really figured out.

My view simply cuts out (1) and (2), which were the additions that the Fed. Cir. grafted onto Graham.

[Tom Kulaga]

anon,

You're right, I should have been more precise. TSM is but one of the three elements of a prima facie case of obviousness.

My problem with shifting the burden is how to prove a negative. What of the inventions where no prima facie case of obviousness can be made by the examiner. Many obviousness rejections fail to satisfy the prima facie case for reasons other than TSM (usually by not having all the elements and/or limitations). Those rejections disappear after 2) without requiring your 3).

I guess my real question is what are the elements of a prima facie case of not being obvious? What happens with your 3) if the Graham factors do not apply because the invention is just now being marketed and does not have a history, or the problem being solved was never recognized as the problem, etc?

Secondary considerations are, well, secondary. What are the primary considerations for the applicant to prove non-obviousness if that is where the burden lies?

[Fredric Goldstein]

Gee, Mal, so you won't take me as a client (nyah, nyah, nyah??). And I was able to give you a call about patenting my new wet toilet paper drier. You are one piece of work, I'll give you that.

You write of "those" and "these" attorneys forced to file bogus patent applications, but not you of course. You weed out the "bogus" ones yourself, naturally. But the way you describe the patent scene today, 9 out of 10 potential clients of yours are sent packing.

And right you are, you didn't use the word "silly idea", your favorite is "bogus". Sorry for the mix-up but again, watch the quotation marks. I never attributed "silly" or "your client" to you.
Surely you don't vent at the PTO as you do here, as you say and I believe you. Would you care to provide a patent number for one of your works?

And "small inventors already get breaks at the PTO"? Oh, right, the small entity fee, that's a real saver.

[Tom Kulaga]

Malcom,

Several hundred lines above you called me to task to show you "a concrete example" of a case in which the examiner provided an improper rejection. I was reading the briefs of the KSR case and looked at the file wrapper for 6,368,277. This is a 'silly' patent cited in many of the briefs. (Thanks to pds for referencing the Inventors brief as one of his favorites. 10/18 @ 02:58pm) The claim included hanging a swing from a tree branch. The examiner located art that was very close, but the swing was hung from a horizontal member, which the examiner said was not explicitly the same as a tree branch. The examiner said using a tree branch was obvious "since such a modification would have provided a more natural environment (under the trees)." Huh? What does nature have to do with the TSM for using a tree branch instead of a horizontal member?

The examiner, hopefully, could have very easily said that the horizontal member had a function that was also performed by a tree branch and a PHOSITA would readily recognize the equivalency of function, particularly considering that tree branches were known to be used as horizontal members for swings and the real problem being solved (providing for side-ways swinging) was not affected by the type of horizontal member being used. Such a rejection would have provided a much firmer basis for rejection instead of saying that motivation comes from wanting a natural environment.

In your last post you say that there are "many bogus patent applications." I do not dispute that bogus apps exist (the patent listed above is a good example of one), but I do dispute that there are a great number of them relative to the 7 million plus patents issued. I see many more improper rejections of the above-type than I do silly or bogus patents. Which is the bigger problem? I would much rather address the issues of what standard to use to determine patentabilty and how it should be applied and enforced than how to eliminate a few bogus applications that have a questionable affect on society.

[anon]

Tom,

The "prove a negative" objection is the most common objection to shifting the burden of proof. But as I said before, the Supreme Court cases generally palce the burden on the patentee/applicant, and those cases suggest several objective ways to prove nonobviousness. First, you could prove that your combination is particularly useful versus the elements in isolation (i.e. synergy--a slight misnomer--or new and useful function for the individual elements). The Federal Circuit even has a variation of this used in one particular context: genus-species, where you have to prove "new and unexpected results". Second, you can prove that the prior art in the field was focused on some other particular problem. Third, relatedly, you can prove that the prior art taught away from your solution. Other objective indicia of nonobviousness abound (e.g. failure of prior attempts).

Is there a category of inventions that are intuitively nonobvious even though you can't point to specific reasoning and evidence to prove it? Probably. But that is the exact same problem that there is a category of inventions that are intutively obvious even though you can't point to specific reasoning and evidence. What TSM right now is award that entire gray zone to the applicant by default. There are two alternatives, (1) award it entirely to the government by default, or (2) allow the examiner/court/jury to judge it, with a lip-service effort to be objective and non-hindsight influenced but with no way to police that gray zone. I don't see why the TSM default rule of favoring the applicant makes sense, as I've said before, we don't usually err in favor of applicants by default in any other context.

[Malcolm Mooney]

"Gee, Mal, so you won't take me as a client (nyah, nyah, nyah??)."

Right. You can dish it out, Frederik, but when it gets dished right back at you, you pretend that I went petty on you first. Brilliant plan! Except the comments are all archived and its plain that you launched your petty attack at my professional qualifications first. Why did you bother to do that, Frederik?

You also wrote, clearly to me:

"you could barely care less when the final rejection comes and your client is denied his patent on his silly idea."

And when I explained to you why your conclusion was off-base, you respond by accusing ME for misquoting you. Get real, Frederik.

"And "small inventors already get breaks at the PTO"?"

Yeah, they do. I'm terribly sorry if the fees are still too high in your mind, Frederik. Really, I'm all choked up about it.

[Malcom Mooney]

Tom

"The examiner located art that was very close, but the swing was hung from a horizontal member, which the examiner said was not explicitly the same as a tree branch. The examiner said using a tree branch was obvious "since such a modification would have provided a more natural environment (under the trees)." Huh? What does nature have to do with the TSM for using a tree branch instead of a horizontal member?"

Frankly, the fact that the Examiner felt compelled to make ANY argument to support the idea that a tree branch was an obvious species of a horizontal member is a sad testimony to the games being played at the patent office.

Tree branches are horizontal. Period. There is no unexpected advantage that flows from using a tree branch versus a metal pole versus a two-by-four or a giraffe's backbone. That's the end of analysis.

But the Examiner decided to go further and say, well, yeah it's nice to swing outside under a tree so the skilled swing designer would know that a nice sturdy TREE BRANCH would suffice to achieve that effect. That's how I understand the Examiner's very reasonable and PROPER (albeit inarticulate) argument.

The question for the strict TSM promoters is: does the Examiner need to spend ANY time finding a citation in the prior art to support this sort of trivial assertion?

As a patent prosecutor, I say: "Let's not insult the human race by pretending we're all morons."

I thank you, Tom, for providing this great example of how ridiculous the strict TSM test really is in practice.

[Fredric Goldstein]

Malcolm, since you asked, it's not your professional qualifications at issue for me but your professional attitude. Yes, read some of the archived comments you made and ask if it's worthy of an officer of the court, the distain you do show for inventors, even the system. You were the one who wrote "Prosecuting patent applications is a game of throwing wet toilet paper up against the restroom wall to see how much of it you can get to stick". Is this your view of how thousands of patent attorneys practice their trade? And bizarrely you complain about the state of patent prosecution today.
You mock inventors whose applications may be rejected as in effect delusional ("would be saving the world and making everybody rich in the process"). It dilutes some otherwise rather coherent musings you've made (even if not everyone agrees with your arguments). I am certainly not the only one who has had that impression here.

It'd be nice to maintain some degree of decorum here, it's not a high school chat room.

[Malcolm Mooney]

"Yes, read some of the archived comments you made and ask if it's worthy of an officer of the court,"

My god, man, give it a rest.

[Joe Smith]

I see arguments ad hominem are alive and well among the American Patent Bar.

[exam]

Frederik:
"And admit it, it was directed at inventors seeking a patent."
I am not going to admit to something that's absoultely untrue. Maybe you should admit that deep down, some of the "caustic" remarks are relevant to you. BTW, Mooney and pds were doing fine in their interesting discourse without your butting in.

"The application itself is supposed to explain in the spec why the invention is novel and useful, how it solves a particular problem, as well as how to practice it. Often it will address particular known prior art and argue how the invention is novel and non-obvious. Isn't this an argument that right out of the starting block the patent applicant has to persuade the examiner that he has something patentable?"
I agree that's how the current process starts and it can perhaps be improved by having applicants provide better background and IDSs. But my question is why not have the process then continue with the examiner finding the prior arts; have the presumption of PHOSITA to judge obviousness; and shift the burden of proof to the applicant in disproving obviousness? Isn't that how it was with the secondary considerations before TSM erased PHOSITA out of the picture?
I wonder if there are statistics of how many applications have secondary considerations submitted before and after TSM.
Isn't it much easier for attorneys to take ten minutes and argue about motivation of hanging a swing from a tree branch (thanks to Kulaga for demonstrating the ludicrosity) than having to work a bit longer and come up with proof of why the invention is not obvious and deserving of a patent worth potential millions?
Another thing about the swing patent, can you honestly say that examiner's time would be better spent in searching for the motivation of using a tree branch? I know you don't agree with Mooney's point of view, but be open minded about this and consider whether focusing prosecution on such things would take examiner's time away from other searches.
Bottom line is, I don't think we would be debating this issue today if some attorneys didn't argue that it would not be obvious to hang a swing from a branch, resulting in the TSM being applied stringently in the issuance of obvious patents that have made the public question the quality of patents.

[Fredric Goldstein]

Exam: Oh sure, Mooney and pds were having a great time. "Butting in"? I thought that was the purpose of this site, otherwise they have their respective email links listed for a private little chat. Of course I wasn't the only one to weigh in his sometimes wacky comments, but the others didn't have a go at you as well, did they?

Why digress to discussing government grants if it were not relevant to the isue of inventors getting these alleged obvious patent grants? Maybe using inflammatory "incompetent idiot" instead of, say, "undeserving grant applicant" was intentional, perhaps innuendo didn't cross your mind? We are discussing here inventors allegedly getting undeserving grants, are we not?

I'll ignore (again) your "you're talking about yourself!!!" swipe like we used to do as kids when ranking out each other.

Here is my bottom line, including agreeing with your final comment. No one wants invalid patents in force. It dilutes the value of valid patents by calling in question the credibility of patents in general. As such, a would-be infringer will infringe and take his chances in court where he can hope on obtaining the "correct" result, e.g. that the patent is obvious and never should have been issued. A patent should elicit the respect it deserves. If anything,it keeps the litigation down, while also provides the patentee the best chance for fully exploiting his patent via licensing.

Having said all this, what is the issue here? This is not some new law just concocted that has caused this recent near hysteria about trolls, bad stupid patents, and such, all ranting and rambling interspersed between some great comments in this board. TSM has been the standard for the past 25 years, therefore every patent now in force was granted under that standard. 25 years of TSM jurisprudence, so what, are there suddenly mountains of obvious patents during this time as compared to before then? Seems to me that every Blackberry wielding fan, who faced losing their connection due to that case, is now taken up arms against patent trolls and obvious patents (of which NTP was considered both)and has fixated on the TSM standard. But again,its a legitimate viewpoint and no disrespect should be shown that side nor to any side, including inventors and their patent attorneys

If you look at the Congress Patent Reform report from last year. there is absolutely nothing in this report to Congress which addresses or even discusses any deficiency or defect in the current Fed Cir test for § 103. Had there been any need, surely Congress would be a great place to go for change. That doesn't mean the system is perfect but why not perfect the PTO first by starting with their budget? If you really want a mess, give more subjective power to examiners without empowering them with more resources, experience, etc

You offer some very good suggestions to improve the system but I don't see them as really on point with the KSR case and TSM.

[Tony]

Fredric, exam,

To reiterate my posting of 10/18 4:19...

Give the PTO more $ so that:
1) More examiners are hired,
2) The examiners have more time to find good art/provide better rejections (for those that are not presently well supported), and
3) There is more time for better oversight of the rejections (i.e. quality review for all rejections by primaries and/or review boards).

These are not new ideas and have been raised time and time again. As noted above, the solution may be centered around more adequate funding of the PTO and less time pressure on the examiners rather than changing the statute/patentability requirements/burden of proof.

In a country as economically important and viable as the US, surely there must be a way to fund the PTO to dispose of applications (whether to issue or reject them) relatively quickly without compromising the quality of issued patents.

As it is clear, I have a great deal of respect for the examiners and the difficulty of their jobs. I have less respect for crappy rejections or allowances caused by lack of time, training, and oversight.

[SF]

As Malcolm Mooney apparently recognizes, the client must make the business decision whether to file application: "I do recall referring to the many bogus patent applications which are shoved under Examiners noses by attorneys **at the behest of their clients**." (empahsis added)

If ideas are bogus because they're likely obvious, patent attorneys should have a candid discussion with their clients. The patent attorneys should explain the risk that the patent examiner may repeatedly reject the patent claims as obvious, which may be time consuming (and thus expensive) to respond to. The patent attorneys should also explain that preparing the patent application may cost significantly more because the application may need more detail to provide backup claiming options and to provide arguments for patentability.

The great thing is that, after being so counseled by their patent attorneys, clients can make their decisions using a cost-benefit analysis. And this cost-benefit analysis will deter many clients from filing applications for borderline obvious ideas. After all, patent applications are not cheap to draft, prosecute, or maintain.

Of course, there are exceptions. For example, I believe the "swing" patent was prepared by a patent attorney to cover his child's allegedly novel method of swinging. In that case, since the attorney had very little costs (only the USPTO fees), there was little deterrent. Also, some business are very profitable and are willing to file patent applications on any new idea (obvious or not) because there's a chance that some borderline cases may be allowed. Finally, some patent attorneys will prepare a cheap, bare-bones patent application for a much lower price, which is less likely to deter clients.

In any event, if the client ultimately wants to agressively seek patent protection, I say let them. It's their right. But don't be surprised that patent examiners agressively look for (or brainstorm) a TSM in response.

[pds]

"pds, why won't you answer anon's question?
Why should the government be burdened with proving that you deserve a patent?"

The government is NOT "burdened with proving that [applicants] deserve a patent."

Applicant is burdened with providing "a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains" (i.e., 35 U.S.C. § 112). This is the disclosure portion so as to meet the Constitutional requirements "to promote the progress of science and useful arts." The quid pro quo for that disclosure is the "securing [of] for limited times to … inventors the exclusive rights to their … discoveries."

Patent applicants meet their initial burden by providing the disclosure. It is up to the government to say why applicant should not be entitled to the patent, e.g., by establishing a prima facie case of novelty and/or obvious under 35 U.S.C. §§ 102, 103. In other words, the government is saying that applicant's ivnention isn't really inventive.

If anybody doesn't like that the government has the burden of proving novelty and or obviousness, they should take it up with Congress.

[pds]

"So government grant rules stipulating: "a person shall be entitled to a million dollar grant unless he is an incompetent idiot" means there is NO burden on the applicant to prove that he has the qualifications to not be certified as an incompetent idiot?"
This question reflects so much misunderstanding of the constitutional basis for patent law, patent law itself, and the commercial realities surrounding patents that it will be very difficult to answer this question.

Read Article 1, Section 8 of the U.S. Constitution regarding the basis of patent law. As I alluded to above, the basis for providing an inventor exclusive rights to his/her discovery is based upon the inventor disclosing the discovery so as "to promote the progress of science and useful arts."

As for your interpretation of the government rules, I have no idea how you derived them and they don't seem to be even marginally related to the code/rules I know of.

BTW: The government doesn't give the inventor any monetary grant. In fact, all the government does is give applicant the right to buy a lottery ticket. Moreover, even if applicant does "win the lottery," applicant either needs to be really lucky or spend a considerable amount of time and/or money to have that lottery ticket pay off.

[pds]

Tom:

Thanks for the compliment.

With regard to your question as to: "In the event of an infringement or an attempt at an invalidation of my patent by an infringer, is my patents weakened by this fact and in case a new subjective TSM is adopted in this pending court case is there any chance all patents granted before the judgement will be 'grandfathered' in under the current TSM, after all, they recieved a pass under that rule?"
I am no litigator, but the answer to that question is probably yes. If you read the briefs in support of the respondent, many of them suggest that any substantial change to the TSM test will put all the issued patents at risk for subsequently being invalidated.

Just a suggestion regarding drafting and prosecuting your patent pro se. I completely understand an inventor's reluctance to pay a patent attorney many thousands of dollars to draft a patent application, particularly when there is no guarantee that the patent will issue. That is a lot of money to just about anybody, and one of the reasons why I really get irritated when certain posters dismiss the impact these proposed changes will have on small time inventors because I believe small time inventors will be disproportionately be affected.

Anyway, just a suggestion, and this is a suggestion I have given to many inventors who want to save money, which is to do a search on the PTO website site for patents similar to the technology of your invention. What you see is basically what you have to write, so try to get a feel for how the drawings look and how the invention is described. Do your best to draft a written description of the invention and then go to a good patent attorney and see if you can have the attorney draft the claims for a set fee (which is hopefully much less than it would take to draft the whole thing).

The reason I say it is because the issued claims are the most important part of the application and the hardest part to do right. If your invention does have value, a potential licensee/infringer is going to go over those claims with a fine tooth comb, and if the claims aren't really good, it is very possible that they will find away to get around your invention.

Every word of a claim is important, so it is crucial that the claims truly claim your invention as broadly as possible instead of just painting a word picture of one embodiment of your invention.

As to an examiner writing the claims, my experience is that although examiners provide very good suggestions with regard to claim language that is able to overcome the prior art, the proposed claim language is usually very, very narrow. So narrow that in most instances I don't take the suggestions because the application could be easily designed around.

Anyway, best of luck with your ventures!!!

[pds]

"Another thing about the swing patent, can you honestly say that examiner's time would be better spent in searching for the motivation of using a tree branch? I know you don't agree with Mooney's point of view, but be open minded about this and consider whether focusing prosecution on such things would take examiner's time away from other searches."

One of the hallmarks of our constitutional system is the concept of "equal protection." This concept also applies to equal application of the law. As a result, there should be no discrimination as to how the law applies regardless of whether the invention is frivolous, just an average invention, or an invention that allows for the easy implementation of fusion reactors.

[anonymous]

pds,

Great comments, but at the end I have to add two nits about equal protection.

First, "equal protection" does not refer to "equal application." It actually refers to equal protection of people, not things. The full phrase is that no state may "deny to any person within its jurisdiction the equal protection of the laws." Inventions have no rights under the constitution. Different emissions standards for cars and light trucks wouldn't raise a 14th Amendment issue.

Second, the government treats people "unequally" all of the time. Prisoners have less liberty than the rest of us. Women aren't subject to the same draft registration requirements as men. Children can't vote. Mentally incompetent people can't make valid wills. Etc.

Once you get beyond race and gender-based classifications (and possibly some others I've neglected), courts only ask whether there's a rational basis for the disparate treatment. Whatever your views on patents, I think it would be difficult to convince a court that there is no rational basis to distinguish between the law that applies to a patent for swinging and a new cancer drug (or the requirements imposed on their respective inventors).

[pds]

"First, 'equal protection' does not refer to 'equal application.' It actually refers to equal protection of people, not things."

I got my info from: http://www.law.cornell.edu/wex/index.php/Equal_protection

The notion that the law is equally applied (at least seems to me) easily flows from the concept that people are equally protected.

"Second, the government treats people "unequally" all of the time. Prisoners have less liberty than the rest of us. Women aren't subject to the same draft registration requirements as men. Children can't vote. Mentally incompetent people can't make valid wills. Etc."

We are getting into constitutional law. The court will review the law, subject to a level of scrutiny, based upon how someone is classified. If the law makes a classification based upon race, national origin, and religion, for example, the law will be subject to strict scrutiny, which requires that the challenged classification serves a compelling state interest and that the classification is necessary to serve that interest.

Anyway, although the laws may discriminate based upon some classification (i.e., treat people differently), there must be, at the very minimum, a rational relationship between a legitimate state purpose and the classification.

As far as treating patents differently, the PTO can go to Congress and ask for the ability to discriminate based upon particular classifications. However, one shouldn't expect the Supreme Court to bless such a discrimination without evidence of express intent from the Congress to do so.

Also, this is a point that I was thinking of adding to my prior point (but decided not to), but this point is salient now … which is simply that I believe that it is very difficult to classify patents, for example, as to their relative worth. Using the pumpkin trash bag patent as an example, given the whims of the consumer, this "invention" could have blossomed into a multi-million dollar market, in which case, I would classify this invention as important. On the contrary, there may be some patents directed to computer software or semiconductors, for example, which although looking, on their face, as being very important, may, in fact, be frivolous. These are very difficult classifications to make and I believe that having the Patent Office making these classifications would only add another (unwanted) burden to the already overburdened patent examiners.

Moreover, I would imagine that even the classification itself would be appealable for reasons of due process, which would further add additional work to both the patent examiner and applicant.

I'm not going to disagree that treating more important patents different is a bad idea (but I'm not going to agree that treating patents different is a good idea either … I'm neutral). However, the devil is in the details of the implementation of such classification, and I think that will be the downfall of that idea. Unless, of course, as suggested by the Patent Office recently, applicants may able to pay for different levels of examination.

[Michael Slonecker]

Does anybody really think that whatever words are reduced to paper by the Supreme Court will change current practices in any meaningful way? Inventors will still file applications. The PTO will still review and object to claims much as it is doing now. Potential infringers will still be upset that they might actually have to deal with the business impact a patent may pose.

Personally, I believe that whatever comes out of the Court will have little real world impact. I daresay it will be a long-winded opinion that when examined will prove to be underwhelming.

[Fredric Goldstein]

Michael, very insightful. I think there's a very good chance you'll be proven right.
And maybe that's that.

[Malcolm Mooney]

Michael

"Personally, I believe that whatever comes out of the Court will have little real world impact. I daresay it will be a long-winded opinion that when examined will prove to be underwhelming."

No doubt. As was the case with Festo, many patent prosecutors will wring their hands and gnash their teeth and claim that the sky is falling on their clients. Then when the decision comes down, these prosecutors will continue to do exactly what their clients demand: submit overly broad claims to the PTO and pray for a generous Examiner.

[Tom Barniak jr]

One more question for any attorney out there: Would'nt the Doctrine of Equivalents asked for by a patent holder in an infringement case (judgement to enforce or implement it) and the infringers obviousness arguement( to invalidate or degenerate the patent)- would'nt these two posturing procedures by the warring factions completely clash in a courtroom-that is, would'nt the judge have to throw one out and rule on the other or could he make a ruling on both-either way somebodys going to loose. As a layperson,this scenario seems complicated but maybe this kind of thing happens in infringement cases all the time already. Anyways,answer if you'ld like. Thanks.

[Fredric Goldstein]

"these" prosecutors, again, Malcolm?

[Fredric Goldstein]

Quick answer as I understand your question- infringement and invalidity are two separate inquiries and therefore don't clash. Obviously, though, if the patent is found invalid (or unenforceable) for whatever reason, there cannot be infringement, e.g one cannot infringe as a matter of law an invalid or unenforceable patent. Bear in mind, though, there are more ways a patent can be declared invalid than obviousness.

If the patent is however valid and enforceable, the infringement claim, whether literal or under DOE, will go forward. Because however affirmative defenses of invalidity and/or unenforceabilty are near universal in patent litigation today, it is rare indeed when the two issues are not litigated together at some stage of the action, even if one or both parties seek summary judgment on both or either.

[Malcolm Mooney]

The link up top re "Professor Wagner and Strandburg debate obviousness in Penn’s new online law review:PENNumbra" is worth clicking on. I think all the relevant issues discussed in this thread are touched on. Professor Strandburg's utter destruction of Professor Wagner's arguments is truly a beautiful thing to behold. Break out the chianti, pour yourself a glass, and enjoy.

It's worth noting one subject where these two advocates find common ground: "The problem of bad patents is real."

[Joe Smith]

"Personally, I believe that whatever comes out of the Court will have little real world impact."

Personally I think that SCOTUS is going to administer a bitch slapping to CAFC and CAFC knows it which is why they tried to do a pre-emptive strike with their recent whining that everyone is misinterpreting their TSM decisions. TSM as practised by the CAFC is unconstitutional and SCOTUS is going to have to step in and set them right in a meaningful way - which means real world impacts at the PTO and in the trial courts.

[pds]

"Professor Strandburg's utter destruction of Professor Wagner's arguments is truly a beautiful thing to behold. Break out the chianti, pour yourself a glass, and enjoy."

Honestly, after reading both Professor Wager and Professor Strandburg, I thought both arguments were unfocused and somewhat divorced from the realities of the practice. For anybody wanting to read a better discussion of the issues, I would recommend reading some of the briefs that were filed.

Since Professor Strandburg purportedly opposes the position I've been advocating, I'll pick on her (if she reads this … please, no offense meant).

She writes:
"The Federal Circuit's demand for evidence of these suggestions and its restrictive view of PTO "official notice" belie the apparent breadth of the TSM test. Patent examiners' limited ability to seek nondocumentary evidence will force them to rely primarily on documentary evidence, even though a broader range of evidence is available in principle."

Could someone explain to me what is "nondocumentary evidence" and where can I find it? Are we looking for DNA evidence? But seriously, what is the "broader range of evidence" the refers to? [after reading other writings of hers, I have a better idea]

The following is her proposal in place of the TSM inquiry:
A TSM inquiry could provide a "first cut" to weed out the most obvious claims. Since the TSM inquiry would no longer bear the brunt of the obviousness determination, it would not have to be stretched beyond its reasonable meaning, but could focus on what the prior art itself suggests about combining references. Beyond such a "first cut," Graham provides a workable structure for the obviousness analysis. The analysis should encompass a robust inquiry into the PHOSITA's skills, the tools used in the field, and the kinds of experiments performed and problems solved as a matter of course. The Federal Circuit should continue the task it abandoned after TSM took center stage and develop a structure for determining the level of skill in the art. Unlike the search for a suggestion to combine particular prior art references, defining the level of skill in a particular art is a recurring question about which the PTO could develop reusable expertise. A focus on the baseline innovative activity in a particular field provides for consistency while at the same time being sensitive to differences between practices in different fields. Expertise as to the level of routine problem solving could then inform the legal determination of what degree of effort in coming up with a particular combination renders that combination obvious.

Professor Strandburg appears to be advocating placing greater emphasis on the "resolving the level of ordinary skill in the pertinent art" factual inquiry described in Graham. In particular, I find the following comment very interesting: "The analysis should encompass a robust inquiry into the PHOSITA's skills, the tools used in the field, and the kinds of experiments performed and problems solved as a matter of course." This comment is indicative that Professor Strandburg really doesn't understand how much time the average patent examiner has to examine a patent application and how much time (and resources) it would take for this robust inquiry. I don't want to put too much into this, but IMHO this robust inquiry is not workable at the Patent Office. If one thinks the complaints by the Corp of examiners are bad now, I would imagine that the number of complaints would increase substantially if they had to make the inquiry advocated by Professor Strandburg.

"My patent citation network study, for example, evidences the issuance of increasingly trivial patents at around the same time as the TSM test became "standard" in evaluating obviousness (reversing a previous trend in the opposite direction)."

Patent citation network study??? I have no idea what that is … actually I just did the research, and this is what it is:
We find that, since the late 1980s, the disparity in likelihood of citation between the most “citable” and least “citable” patents has grown, suggesting that the least citable patents may represent increasingly trivial inventions. One possible explanation of this increasing stratification is increasing reliance by the Federal Circuit Court of Appeals on the widely criticized “motivation or suggestion to combine” test for nonobviousness, which is at issue in the case of KSR v. Teleflex, currently pending at the Supreme Court. We also discuss how network science may be employed to address other issues of patent law.

I just read a PowerPoint presentation on her theory. What I take from her presentation and from her writings is that she needs to prosecute about 100 patent applications and perform about 20 face-to-face examiner interviews. If she had, I think she would be singing a much different tune.

I just read the brief she submitted in this case. Of the 28 page brief, she only spends a smidgen more than 2 pages describing her proposal, which is best summarized by the title of the section "This Court Should Mandate a Return to the Graham Approach, Asking Whether the Claimed Invention Could Be Made By Routine Application of the Level of Ordinary Skill in the Art."

She also writes:
The factual determination of the level of ordinary skill in the art should not be limited to the content of prior art references, the common knowledge of those in the art, and any suggestions to combine the art that are found in those references or knowledge. It should also encompass the PHOSITA’s ordinary inventive skills, the tools and methods routinely applied in her field, and the kinds of experimentation she does and problems she solves as a matter of course. As with the determination of analogous arts, the determination of level of ordinary skill should evolve with the technology itself, incorporating, for example, the extent to which research and development in a particular field routinely draws on interdisciplinary teams.

Perhaps one of the examiners that post (ANON?) could share his/her opinion as to the feasibility of the examiner performing this factual inquiry at the Patent Office?

[John]

pds:

"Applicant is burdened with providing "a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains" (i.e., 35 U.S.C. § 112)..."

Any person skilled in the art... so examiners will have to put on the PHOSITA hat in determining whether applicant has met his/her burden when the application does not describe how to put a bolt through a nut. BUT examiners have to take the PHOSITA hat completely off when determining whether it would be obvious to put a bolt through a nut? Seems like the burden is a bit skewed in favor of the party that is "entitled" to potential millions.

[John]

P.A. wrote:

"How about section 102: "A person shall be entitled to a patent unless --"
If CAFC, CCPA caselaw and MPEP rules are not good enough of an argument for you, how about congress? If a person is presumed entitled to a patent unless the examiner can prove otherwise in a 102 context, then it makes no sense to place the burden on the applicant for a 103..."

103 is NOT written the same way.
102 is about finding/verifying facts such as prior art, filing dates, etc.
103 is about judgement of whether the incremental addition to the prior art found under 102 would be obvious to PHOSITA.
In effect, Congress' different writing of 103(a) allowed SCOTUS to expressly shift the burden of nonobviousness to applicant with lisiting of secondary considerations.

[Michael Slonecker]

In a most insightful manner 100 informs us: The term “invention” means invention or discovery.

In pertinent part 103 informs us: ...subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.

The phrase "subject matter" is nowhere defined, though in keeping with the casualness of 100 it would likely read: "Subject matter" means subject matter or matter pertaining to a subject.

Small wonder there is such a wide range of opinions on issues such as nonobviousness exemplifies. Look at the definition of invention. An "invention" means a, well, "invention". Look at 103. It uses "subject matter" and "invention" interchangably.

In high school, no make that elementary school, I would have flunked English if I wrote like this.

Try a game. Substitute the word "invention" wherever the phrase "subject matter" appears in 103.

The acronym GIGO comes to mind. You start with meaningless definitions and what follows will likely be largely meaningless as well.

[Michael Slonecker]

Doubt definitions as being a problem? Compare 100 of Title 35 to 101 of Title 17.

The latter is hardly a paragon or virtue and clarity, but at least an attempt has been made to give meaning to terms.

[Fredric Goldstein]

As to "subject matter" and "invention", it seems to me that the different use was deliberate and not really interchangable- one creates an invention but that is not necessarily, per se, what one seeks a patent for but rather the subject matter that is the improvement.

In other words, you invent a better mouse trap. The subject matter you seek to patent is that which is novel, useful and non-obvious over the prior art, for example a better way of disposing of the trapped mouse. I would think "subject matter" references the claims, as opposed to the specification which can have a good part of the text describing aspects of the invention which are not in the claims, hence not the "subject matter" of the patent, e.g. what's important is that what you are claiming was not obvious otherwise you are not entitled to any legal title. Of course it doesn't help when phrases also exist referring to the "invention as a whole".

This is just a guess.

[Michael Slonecker]

One of the reasons I suggested the "game" is that people seem to get wrapped around the axle when it comes to relating the terms "art" and "subject matter".

So, one makes a better mousetrap. Who is this mythical person we call one of ordinary skill in the art against which obviousness is measured? The question that none of the many participants in the wealth of KSR briefs has answered is "What art?" Mousetraps? Pest control? Mechanical or structural engineer? Physicist? Rodent anatomist? Someone else?

Therein lies the problem. Define the relevant "art" one way and the invention is obvious even to one in that art with less than ordinary skill. Define it another way and the invention is still not obvious to one with extraordinary skill.

In Sakraida, for example, would the outcome have been different if the art had been defined as people who worked within the industry dealing with farm animals? Viewed from the perspective of a "tsunami" researcher, what was used to caused the desired result would have been obvious. From the perspective of one trying to solve the unsavory task associated with removing "cow chips" from a dairy barn might have had an entirely different view.

Precedent, briefs, academic publications, etc. all wax poetic on how this Solomon-like question should be approached. As yet, however, none of them have suggested what I view as the most pressing need of all: Define terms with specificity before launching into an argument about what is the proper construction of 103.

It goes without saying that inventors seek to patent inventions, and not subject matter. Perhaps it would help if all of the "experts" flinging paper on the desks of the Justices would try and keep this in the back of their minds.

[Fredric Goldstein]

Michael, I didn't disagree with you and in fact tried your game as you asked. That was the first impression I had afterwards. It would appear as a reasonable interpretation that the issue is what do the claims cover and is that the subject matter of the invention at issue in such an analysis? "Invention" is an extremely broad term, especially when one throws in "inventive step" when discussing a particular invention, clearly denoting the broad term invention as opposed to that which the inventor seeks patent protection for. As we all know, some inventors cannot even practice their own invention without infringing on another patent. In that regard, is it their invention that is patented or the subject matter of that invention? It's less than straightforward, I think, as we are talking sub-sets here.

I don't recall statutory semantics being any central issue in the KSR case and even if it were, surely that's something for Congress to address. This could be an interesting point for SCOTUS to discuss but I am not sure it has escaped everyone's attention until now.

On some other posting a couple weeks ago, I wrote quite a bit about the same problem vis-a-vis PHOSITA, and touched on the same problem as well as you do now on the determination of which art is involved. Clearly, until you know what the art is, how can one determine who the person of ordinary is in the art? It's a very valid point.

Even with semantic precision in 103, the TSM debate remains as it is. It will just be better when it's in play post-SCOTUS decision.

[Fredric Goldstein]

Found my prior post 4 October re: the Dystar case, apropos Michael's above post on needing to better define the art (and,it follows, the person of ordinary skill in that art):

Key issue is who the real adjudicator of obviousness is, e.g. the man of ordinary skill in the art. The problem is who is he, meaning what exactly is that level of skill? And how do you find that guy so he can make these judgments (allow attorneys to speak for him? I think not). And worse, that this make-believe guy changes for every patent.
You can argue to kingdom come that he has to have this or that degree, x years experience in this or that field (can any party ever agree?), etc but how do you decide then what he may or may not find obvious? For example, you put a cover on a container to keep the contents in- obvious. You make some modification so that something else also occurs, for instance only some contents fall out- well, is it obvious or not. And is it really obvious vis-a-vis the problem to be solved or is it obvious for some ancillary problem. What is "obvious" to anyone- it's a judgment call, hence calling for that most precious and oft missing commodity in patent litigation- common sense and fair play.

The law also states that for simple mechanical devices, the man of ordinary skill in the art is, in effect, dumbed down with lower qualifications, so he's not expected to find most anything obvious. Easy to second guess someone not as smart as all these lawyers and paid experts,I guess. Little wonder the poster child for all these motive to combine whinings, including the KSR case, are mostly patents covering simplier devices.

I say fix the PTO budget shoplifting, stop taking their revenue away from them, and hire more examiners with more resources. Anyone can see the Dystar decision is an appeal (pun intended) to the Supreme Court to leave well enough alone. If it ain't broke... And if it is, don't take it apart if you have no clue how to fix it.

Posted by: Fredric Goldstein | Oct 04, 2006 at 12:21 PM

[Joe Smith]

As you debate the meaning of PHOSITA reflect on how low a standard it is to say that an invention can be patented unless it is obvious to a PHOSITA if we are to take those words literally. Such a test for patentability is inconsistent with the limited constitutional authority for congress to confer monopolies.

[Michael Slonecker]

Acme Novelty Company makes balloons, the kind that people dressed as clowns blow up at kids' birthday parties and form into dogs, bicycles, crowns, etc. for the kids. The people who use these balloons, whether bought from Acme or its competitors, Bubba and Campy, have very recently started complaining that way too many of them are bursting, so much so that many kids are suffering from the emotional trauma that comes with the balloons bursting and preventing them from getting their very own balloon freebies.

Acme's head of balloon R&D, Lester, is told about the problem and asked to find a fix. Now Lester is not the brightest bulb in the lamp, but he knows balloons, so much so that even Bubba and Campy (Acme's only two competitors) have been tempting him with offers to join their balloon teams.

That night Lester retreats into his garage, turns on his favorite CD (Lynrd Skynrd's Christmas Album), grabs a brew, and then goes to work trying to figure out what can be done. After a couple of weeks he comes up with a design solution that will make Acme's balloons virtually "un-burstable".

Acme is so pleased with what Lester has done, and believing this new design will stand the "clown balloon blowing" market on its head, it decides to try and get a patent to get a leg up in the clown balloon market over Bubba and Campy.

A fully compliant (per Title 35) application for this new balloon is prepared and submitted. Some months later Peter (the PTO examiner in the clown balloon arts) takes the application up for action. Peter takes a look at every clown balloon reference he can find going back to 1790, but nothing brings 102 into play. Even references for regular balloons are of no help. Peter then has a bright idea! Why not look in the aeronautical arts and see if any dirigibles might have faced a similar problem. Lo and behold, Peter finds a paper published in Luxembourg many years ago that talks about the problem Lester faced. Bang! Rejected under 103, citing a Bubba patent about clown balloons and the dirigible publication. Acme's lawyer argues that a clown balloon maker would never think about seeing what dirigible people were up to, much less a paper published in Luxembourg (if you wish pretend that the paper was published in Akron, the dirigible capital of the world).

Peter will not budge on his 103 rejection. The Board of Appeals affirms the rejection. Acme goes to the local federal court and loses again. Acme, which has just started selling these new balloons, hears about the CAFC and figures "what the heck, go for it."

Question for the CAFC: What is the "art" to which the "subject matter relates"? Mind you, all Acme applied for was "an improved balloon for clowns to blow up and twist into various shapes to keep otherwise whinny kids at birthday parties happy." Should the Luxembourg paper somehow fit into the scheme of things insofar as 103 is concerned? Remember, Lester is not exactly Albert Einstein, but he is pretty good when it comes to these kind of balloons. As for dirigibles, Lester believes they are a rock group, or something like that. The same goes for his counterparts at Bubba and Campy.

Based upon these entirely silly facts, what would the rationale propounded by KSR supporters, if adopted by the Supreme Court, do to poor Acme at the CAFC? Without the patent any competitive edge it might later enjoy in the clown balloon market would evaporate instantly. What about the rationale propounded by those supporting the respondent in KSR? Clown balloons are a part of a distinctive commercial market. Should innovation in this market be encouraged, or is this just a silly market not comprehended by Article I?

To make things a bit more interesting, what if secondary considerations could not as yet be shown by Acme (no commercial success as yet; no long felt want since the problem only recently came to light; no way of showing that the "etc." in Graham is involved)?

Should Acme's balloon bubble be burst, or should Acme get the patent so that it can achieve the commercial edge that it knows lurks on the horizon?

Stripped of all the academic gobbledygook that proliferates in KSR, isn’t this really the question: what is worthy and what is not?

[Malcolm Mooney]

pds asks

"Could someone explain to me what is "nondocumentary evidence" and where can I find it?"

Let's see an invention includes a "ribuzak with a falling genekdezoink." Applicant argues that "nowhere in the art has anyone shown a ribuzak with a falling genekdezoink."

The Examiner does have art showing a ribuzak with a falling ziberdonk. The Examiner argues that "since a genekdezoink and ribuzak are not different in any relevant way and one of skill in the art would understand that a genekdezoink is subject to gravity just as a ziberdonk is, the invention is obvious."

If the Examiner's argument is REASONABLE and LOGICAL then why in the world would anyone demand that such an argument be judged improper on a technical evidentiary basis? Other than simply wanting more patents to issue, of course.

[Tom Kulaga]

Malcolm said:
"Examiner argues that "since a genekdezoink and ribuzak are not different in any relevant way and one of skill in the art would understand that a genekdezoink is subject to gravity just as a ziberdonk is, the invention is obvious."

If that was the case, I agree, who would argue it. But, what if the Examiner's argument is REASONABLE and LOGICAL, but FLAWED? For example, the figures show the two have a similar shape, but there is an important functional or other characteristic that differentiates a genekdezoink from a ribuzak that the examiner fails to consider in his argument.

If a genekdezoink and a ribuzak are enough different that they have different names and I believe that there are relevant differences (as shown by evidence), then I would expect the examiner to provide documented evidence to support a continued rejection.

[mel b]

aren't business method patents great?

/*** from a recent news article ***
As the American tax law gets more and more complicated, lawyers have come up with one more way to make life difficult for taxpayers: Now you may face a patent infringement suit if you use a tax strategy that someone else thought of first.

"I can't even imagine what it will be like in 5 or 10 years," said Dennis Drabkin, a tax lawyer with Jones Day in Dallas, "if anytime a lawyer or accountant gives tax advice, they have to find out if there is a patent on this." He notes that researching patents, and then licensing them, would just make tax compliance more costly.

Drabkin is chairman of an American Bar Association task force on the issue. He said that at one conference where tax strategies were discussed, participants later got a letter warning that using one idea mentioned would be in violation of a patent.

Why would Congress pass a law allowing such a thing? The answer is that it did not. But a U.S. appeals court ruled in 1998 that business methods could be patented, and since then the U.S. Patent and Trademark Office has issued 50 tax- strategy patents, with many more pending.

There is even one case pending in U.S. court in Connecticut, in which an organization called the Tax Strategies Group complains that John Rowe, the chairman and former chief executive of Aetna, infringed on its patent by using a certain type of trust to minimize taxes on profits from stock options. The group wants Rowe to be barred from using that strategy unless he buys a license from it.

To patent lawyers, all this makes some sense. Others might see it as an example of judicial absurdity.

But if it is legal, the mind boggles at the possibilities. Could I get a patent on taking a deduction for dependents, so that every parent in America would have to pay a royalty to me to take advantage of the tax law passed by Congress? I presume the patent office would find that obvious, and thus not patentable, but there are plenty of slightly more complicated strategies that might be patentable, particularly considering the fact that patent examiners may not be tax experts.

Indeed, Cheryl Hader, a partner in Ropes & Gray representing Rowe, argues that a strategy she uses is clearly authorized by the tax law and that no patent should have been granted.

One can imagine lawyers and accountants rushing to the patent office as soon as a new tax law is passed, seeking to claim credit for dreaming up ideas that were made possible by the new tax law. Lobbyists who get tax breaks inserted into such bills would be in a preferred position to win the race to patent them.

In an article in Legal Times this week, Paul Devinsky, John Fuisz and Thomas Sykes, who are lawyers with McDermott, Will & Emery, suggested that a company might figure out a tax strategy that would save it a lot of money and then patent it. Then the company could refuse to license the patent to its competitors, thus raising their cost of doing business.

Tax patents, the lawyers wrote, amount to "government-issued barbed wire" to keep some taxpayers from getting equal treatment under the tax code.

In an ideal world, Congress might pass tax laws so simple that clever strategies would be impossible and tax lawyers would need to find other employment. But until that happens, it would seem obvious that Congress would want to assure that tax benefits are not walled off from some.

After all, as Devinsky and his colleagues wrote, "the successful patenting of tax strategies now limits Congress's ability to shape economic policy through legislation and places that power in the hand of individual patent holders." But in Washington, such things are seldom simple. Asked what he thought Congress would do, Fuisz said action was possible, recalling that six years ago doctors got Congress to protect them from patent infringement suits over surgical techniques.

[Malcolm Mooney]

Tom

"But, what if the Examiner's argument is REASONABLE and LOGICAL, but FLAWED?"

Uh .... what planet is this?

[Malcolm Mooney]

I note that Daily Kos has weighed in on the subject:

http://www.dailykos.com/storyonly/2006/10/23/133748/25

There will never be enough money to throw at the PTO to fix the problem of crap patents. And giving patent attorneys another tool (i.e., the explicit/strict TSM test) to bash Examiners over the head with is simply throwing napalm on a wildfire.

The bogeyman of "unpredictability" is just that: a bogeyman. I'm not afraid. Why are some patent prosecutors afraid?

[Tom Kulaga]

Malcolm asks "Uh .... what planet is this?"

I live on the planet whre the PTO exists. At least, I work on that planet. I see reasonable and logical reasons from examiners, but then, I ask myself, what does that reason have to do with the invention?

The reason I cited the swing patent was to provide such an example. The examiner said the motivation to use a tree limb was to have a natural setting. The reason, by itself, made sense and was logical, but it had nothing to do with the invention. In that case, the examiner got the right result, but the wrong way. Examiners are not infallable.

[Michael Slonecker]

"Why would Congress pass a law allowing such a thing? The answer is that it did not. But a U.S. appeals court ruled in 1998 that business methods could be patented, and since then the U.S. Patent and Trademark Office has issued 50 tax- strategy patents, with many more pending."

Actually, Congress set the stage when it enacted 35 USC 101, and its breadth, as noted by the Supreme Court in Diamond v. Chakrabarty (1980), was intentional.

[Fredric Goldstein]

Well, well, seems those who scream for patent reform as if some mugging victim of trolls with pumpkin bags sing a different tune when it suits them.

Today's article NY Times by Steve Lohr, on the new patent suit IBM filed on Amazon, so recent that Amazon claims not to even have seen it yet.

"Recently, I.B.M. has been a strong supporter of overhauling patent law with the aim of making it more difficult to get “junk” patents that tend to make sweeping and vague claims but do not represent real technical innovation. And I.B.M. has been critical of some business method patents as being broad descriptions of ideas, without technical specifics."

Without looking at the merits of the case, at first impression it certainly looks like odd timing in view of their amicus briefing in the KSR case.

By the way, it's entirely possible to make a reasonable and logical argument but still have it flawed if the facts upon which this argument is based are wrong. Which planet, Malcolm? Not a nice way to question an obviously very skilled patent attorney like Tom, but at times I'd like to ask you which planet you are coming from. Perhaps the seventh?

[Malcolm Mooney]

"it's entirely possible to make a reasonable and logical argument but still have it flawed if the facts upon which this argument is based are wrong."

Oh, you're so clever, Frederik! Too bad that "wrong facts" were obviously not part of my hypothetical. Can we try sticking to the subject?

Nobody on either side of this debate is suggesting that an Examiner should be able to make up their own facts and it's simply misleading to represent otherwise.

You are aware, of course, that coining a new term (not found in the art) is one way to give an applicant an early advantage ...

[Malcolm Mooney]

"The reason I cited the swing patent was to provide such an example. The examiner said the motivation to use a tree limb was to have a natural setting. The reason, by itself, made sense and was logical, but it had nothing to do with the invention."

Please explain why the Examiner's reason had "nothing to do with the invention."

"Examiners are not infallable."

Nobody is and nobody is claiming otherwise. It's "infallible," by the way.

[Tom Kulaga]

Malcolm asked:
'Please explain why the Examiner's reason had "nothing to do with the invention."'

The claim was for a method requiring suspending a seat between two chains hung from a tree branch. The examiner said using a tree branch was obvious "since such a modification would have provided a more natural environment (under the trees)." Neither the claim nor the spec addressed the environment for practicing the method. A natural environment has nothing to do with supporting a seat in the manner claimed. In the world I live in, I fail to see what a "more natural environment" has to do with practicing the claimed method or rejecting the claim.

Maybe you can explain why the examiner's reason was relevant to the claim and provided a reason for finding obviousness.

[Malcolm Mooney]

"Maybe you can explain why the examiner's reason was relevant to the claim and provided a reason for finding obviousness. "

I did that last week, upthread.

By the way, you just asserted that a "natural environment" has "nothing to do" with a claim which recites a swing hanging from a tree branch (as opposed to a "horizontal member" taught in the prior art).

If you think that is an intellectually honest position to take, then we really have nothing further to discuss. On the other hand, perhaps instead of "nothing to do" you really meant to type in the factually correct phrase, "something to do."

[Tom Kulaga]

Malcolm's previous post said:

"Tree branches are horizontal. Period. There is no unexpected advantage that flows from using a tree branch versus a metal pole versus a two-by-four or a giraffe's backbone. That's the end of analysis." 10-19-2006 @ 06:40am

I think that would be good grounds to reject the claim. But, where did you discuss a more natural environment in your post?

"But the Examiner decided to go further and say, well, yeah it's nice to swing outside under a tree so the skilled swing designer would know that a nice sturdy TREE BRANCH would suffice to achieve that effect. That's how I understand the Examiner's very reasonable and PROPER (albeit inarticulate) argument."

You say the examiner's response was inarticulate. I say he sidestepped the issue entirely. Again, I fail to see how a more natural environment relates to a horizontal member.

I believe that the test is that the art, at the time of the invention, includes some motivation to combine references to make the invention. The art cited by the examiner was for a horizontal member. Hmm. Nothing about a horizontal member suggests the outdoors.

Oh, wait, you want me to use the teachings of the claim to find obviousness. Take the claim limitation, find some implied/inherent characteristic that has no bearing on the purpose of the limitation, and say anyone wanting to do that unrelated characteristic would, of course, find motivation to combine.

Why should the examiner pick a characteristic that has nothing to do with the purpose of supporting the seat and make up some reason for finding obviousness? You said that the important characteristic was being horizontal. The rejection should have been on that basis.

Granted, the tree branch is typically found in a natural environment. So what. Branches are also brown. The color brown does not clash with rusty chains, but does that provide motivation to use a tree branch to support a seat hung with chains? Such a reason would make as much sense to me as what the examiner said.

[Malcolm Mooney]

"Again, I fail to see how a more natural environment relates to a horizontal member. "

The claim recited a TREE BRANCH, Tom. You remember trees? Those planty things that we see in ... nature.

"Take the claim limitation, find some implied/inherent characteristic that has no bearing on the purpose of the limitation"

Hmm. So, uh, what WAS the purpose of reciting a "tree branch" in the claim as opposed to reciting a "horizontal member" as the prior art did?

"Granted, the tree branch is typically found in a natural environment."

Ah, so "a natural environment" DOES have something to do with the claim after all! In fact, "a natural environment" has a LOT to do with swings that hang from tree branches. Personally, I can recall dozens of swings that I played on as a child (including swinging back and forth, by the way) and guess what: every single one of them that hung from a tree branch was outdoors, many of them in natural surroundings. Other swings that I was on which were indoors were hung from "horizontal members". Of course, some swings that were outside were also on horizontal members. Mix and match. A swing is a swing is a swing. Everybody KNOWS that even if the literature on the subject is not widely read and archived.

So if you've got art that recites a swing hanging from a "horizontal member" then it's pretty darn obvious to anyone who's ever been on a swing that the swing could be indoors or outdoors, on a tree branch or not.

Period.

"So what. Branches are also brown. The color brown does not clash with rusty chains, but does that provide motivation to use a tree branch to support a seat hung with chains?"

Seats hung with chains from trees are old in the art, I'm betting, and easy to find.

But how about a seat hung from a chain from a steel pipe where the seat is a big circular section cut from a tree and the chain goes through the middle of the seat and you stand on the seat with your feet on either side of the chain and swing in a elliptical orbit. I'm pretty certain that my invention (swing composition and/or method of use thereof) is not anticipated.

If you're an Examiner, do you need really need multiple references with explicit "suggestions" for every limitation in order to tank my application? Should it matter if I'm a "small inventor"?

[pds]

Reject claim 1 based upon Beltzig, U.S. Patent No. 4,943,046 in view of https://www.motherearthnews.com/Homesteading_and_Self_Reliance/1992_August_September/Swing_Into_Fall by John Vivian, and further in view of U.S. Patent No. 1,493,913.

Referring to column 6, lines 40-51 of Beltzig, "FIG. 16 shows a swing 400 in which a rigid ground mounted frame 401 in the form of an inverted "U", with the cross-piece of the "U" being straight is used with sections of the suspension chain described earlier to mount a swing seat 402. Here the sections of suspension chain are used not only to provide a pair of vertical suspensions 403, 404 between the top of the frame and each side of the seat 402 but a further section 405 is attached between the center of the underneath of the seat and the ground. The seat 402 is thus mounted for resilient displacement up and down, clockwise and counter-clockwise, side to side and back and forth." Since Beltzig discloses side to side motion on a swing, Beltzig inherently teaches that user would have to pull alternately on one vertical suspension to induce movement of the user and the swing toward one side, and then on the other vertical suspension to induce movement of the user and the swing toward the other side.

Vivian discloses a method of swinging on a swing, the method comprising the steps of:

suspending a seat for supporting a user between only two ropes that are hung from a tree branch; and positioning a user on the seat so that the user is facing a direction perpendicular to the tree branch. It would have been obvious to modify the swing of Beltzig to suspend the swing from a tree because a tree swing obviates the problem of "flimsy metal frame sets."

The combination of Vivian and Beltzig fail to disclose that two chains are used to support the seat. It would have been obvious to one having ordinary skill in the art to use chains instead of ropes because chains are stronger than ropes and are less likely to break. U.S. Patent No. 1,493,913 discloses the use of a chain to support a baby swing. The replacement of ropes with chains has been well known for the last couple hundred years.

The hardest part of this rejection was to find a description of side to side motion on a swing. However, all I did was use the following search parameters on paid, and I came up with it: spec/"side to side" and spec/swing and spec/rope
Could I have come up with better prior art and a better rejection? Sure, but for 45 minutes and being the very first rejection I ever made, it isn't bad (I wish I could get away from the inherency argument, but I think it would stick), and it wasn't necessary to provide me with any tools that aren't currently available to today's examiner.

"If you're an Examiner, do you need really need multiple references with explicit 'suggestions' for every limitation in order to tank my application?"
Yes because if you don't need suggestions for every limitation (your requirement for "explicit" suggestions isn't consistent with Federal Circuit case law), then you don't need suggestions for any limitations. As I have written time and time again, replacing the TSM standard with a subjective test is the loophole to impermisslbe hindsight reconstruction that will essentially eliminate impermisslbe hindsight reconstruction as an argument by applicant.

If I (as an examiner) don't have to worry about providing a suggestion for the modification while not having to worry about impermissible hindsight reconstruction (my "reasonable and logical argument" could be identical to applicant's reasoning for the combination), then I can easily reject any claim.

If the intent is not to issue patents, then while we are at it, let's rename the name of the agency to "the Rejection and Trademark Office."

[Fredric Goldstein]

Malcolm, a few things spring to mind from your post (thanks for the compliment, by the way).
First, the issue of “facts”, right or wrong, IS a part of your hypothetical. One can get the facts right but draw the wrong conclusions or, simply, get the facts wrong yet proceed on to a reasonable and logic argument which is nevertheless erroneous. This was the hypothetical Tom offered but which only elicited your sarcastic colloquial response.

An examiner may decide two structures perform the same function and/or do that function in the same way, but get it wrong- this is a fact based inquiry. The very nature of subjective determination allows for drawing fact based conclusions and then running with them. The examiner decides, then states as fact, it would be obvious to use the well known ribuzak as a substitute for a whamisham and viola, the patent is obvious. He then explains why. The ribuzak moves the rhombom as does the whamisham. Sounds great until you find out the ribuzak uses suction in a reciprocating action to draw in the rhombom while the whamisham uses centrifugal force to push it. And the former does it for cooling while the latter does it for advancement through the device. Yet the examiner says it is “not different in any relevant way”. But suppose it is. Then he would have to explain why one of ordinary skill in the art would find it obvious to use it.

This is sticking to the subject. Typo hunting, as you did in a post to Tom, is not sticking to the subjekt (oops, spellcheck went off). Perhaps no one on either side is suggesting examiners make up their own facts but remove the TSM standard and allow for more subjective conclusions, then that is exactly what the result will be at times. It already can be dodgy. I once had an examiner reject claims solely due to a non-numbered part of a drawing less than the size of a dime in a Japanese prior art which lacked a single reference to it in the specification, meaning it took a guess as to what it actually did (if anything). It took an appeal to overcome that rejection. Is this an issue of law or is it an administrative one? Who would disagree that the PTO should get a bigger budget?

As to coining a new term to “give the applicant an early advantage”, firstly I would think that giving an advantage to a client is part of a patent attorneys advocacy, and secondly, as you are aware of course, an inventor can be his own lexicographer. You were the one who coined “ribuzak with a falling genekdezoink”, which actually was clever.

[Malcolm Mooney]

Frederik

"This was the hypothetical Tom offered"

No kidding. I thought we were discussing the hypothetical I offered. My bad. You don't want to discuss my hypothetical? I can understand that. It weakens your position to discuss it honestly.

So let's discuss this irrelevent and uninteresting hypothetical where the Examiner gets his facts wrong. It seems to me that if the Examiner gets the facts wrong you inform the Examiner that his facts are wrong and perhaps provide some proof that his facts are wrong. You know, EXACTLY LIKE YOU DO NOW.

As I said, this hypothetical is uninteresting.

[Malcolm Mooney]

"As to coining a new term to “give the applicant an early advantage”, firstly I would think that giving an advantage to a client is part of a patent attorneys advocacy, and secondly, as you are aware of course, an inventor can be his own lexicographer."

Uh, yeah. Did I say otherwise?

[Malcolm Mooney]

pds

"As I have written time and time again, replacing the TSM standard with a subjective test is the loophole to impermisslbe hindsight reconstruction that will essentially eliminate impermisslbe hindsight reconstruction as an argument by applicant."

Nobody is proposing replacing TSM with a "subjective" test. The proposal is simply that the Examiner need not provide an explicit art-based citation suggesting the combination of every element in the claim when a REASONABLE LOGICAL ARGUMENT BASED ON WIDELY RECOGNIZED FACTS will suffice.

"If I (as an examiner) don't have to worry about providing a suggestion for the modification while not having to worry about impermissible hindsight reconstruction (my "reasonable and logical argument" could be identical to applicant's reasoning for the combination), then I can easily reject any claim."

How about a novel recombinant protein that I created, selected, identified and isolated whose sequence was unknown prior to my characterization of it and whose useful and valuable properties are not clearly related to its sequence in a presently understood way?

You can easily reject that as obvious? Really?

Because that seems to me to be a patentable non-obvious rejection.

As for the other sorts of alleged inventions you believe can "easily" tank with your imaginary arguments, I suspect most of them fall into two categories: the ones you are dead wrong about and aren't easily tanked, and the ones that are garbage and deserve to be tanked.

[Malcolm Mooney]

I wrote

"Because that seems to me to be a patentable non-obvious rejection."

Correction: should be "invention," not "rejection."

[Fredric Goldstein]

Malcolm, it "weakens my position to discuss [your hypothetical] honestly"? What the hell are you talking about?

You earlier had wrote:
"If the Examiner's argument is REASONABLE and LOGICAL then why in the world would anyone demand that such an argument be judged improper on a technical evidentiary basis? Other than simply wanting more patents to issue, of course."

Tom and I then disuss the critical issue IN YOUR HYPOTHETICAL of when the examiner's argument is nonetheless erroneous. And you call it "irrelevant" and "uninteresting". You jest, surely. An examiner draws incorrect factual conclusions, leaving the applicant to argue basic facts (most likely again)to show that the patent is non-obvious, and that's "uninteresting"? Petulance. Like the class clown on this site, you never cease to amaze and amuse.

And please, stop taking everyone's remarks and denying YOU ever made them. When you make a comment, even I think you have some purpose for it and clearly the remark about gaining an early advantage by coining a phrase was alluding to it as a false tactic of trying to differentiating two structure which are in reality the same. Make your remark and stand by it, even if it's hammered.

[Malcolm Mooney]

"Tom and I then disuss the critical issue IN YOUR HYPOTHETICAL of when the examiner's argument is nonetheless erroneous."

Except the examiner's argument is not erroneous in my hypothetical. My hypothetical was (clearly and plainly) directed to the relevant and interesting question: whether tangible prior art support MUST be presented for EVERY assertion in an Examiner's obviousness argument in order for that argument to suffice to deny a claim's patentability.

You don't get to add friendly facts to someone else's hypothetical and then claim to be addressing their hypothetical, particularly when those facts ("examiner was wrong") render the hypothetical pointless and irrelevant.

Geez, it's like when you ask a fundie if they would rather save a frozen embryo or a baby from a burning building and they say "the baby because the embryo is already thawed."

That's called "a cop out".

By the way, since some folks here love anecdotes, here's a fresh one. I just got the phone with a fellow attorney and we were discussing the brilliance of another colleague whose dead-on-arrival claims were suddenly deemed allowable when, after years of dodge and delay and obfuscation, the "old Examiner" was replaced with a fresh recruit. The client was ECSTATIC.

But nothing about that strategy resembles throwing toilet paper up against a bathroom wall until it sticks, right? Does anyone want to argue that this strategy (aka "The Client's Dream") for achieving patentability is not employed routinely when nothing else is working?

[Malcom Mooney]

"And please, stop taking everyone's remarks and denying YOU ever made them."

Huh? Syntax error.

"When you make a comment, even I think you have some purpose for it and clearly the remark about gaining an early advantage by coining a phrase was alluding to it as a false tactic ..."

Really? "Clearly"? Hmm. Let's see. I said it was to the applicant's advantage to coin a new term for some element of his invention. Then you said, "Hey you said it was to the applicant's advantage to coin a new term." Then I said, "Yes, I said that."

And now you accuse me of "taking everyone's remarks and denying I made them"??

I think you imploded last Friday with your "officer of the court" nonsense. My expectations are pretty low but I think I will give up trying to parse these non-sequiturs.

[pds]

Mr. Mooney:

After reading your many posts, I have a deep concern for your well being. Since you've described yourself as having prosecution clients, you are undoubtedly forced to work with a patent system that you believe should be dismantled or at least drastically revamped. To zealously represent your client, you have to make arguments before the USPTO you don't believe in. I must imagine that you absolutely hate having to practice before the USPTO because every time you make a winning argument before the USPTO, in your heart, you know that your argument probably shouldn't have carried the day and the client didn't deserve to receive the patent.

Now that I've looked at your situation with fresh eyes, I can see where your hostility comes from. I think you would be much happier if you were true to your heart instead of working to obtain junk patents. I'm sure the USPTO would value someone with your talent and enthusiasm for advocating that the job of rejecting patent application should be made easier for examiners. If not the USPTO, perhaps some law school or legal think tank (they must exist somewhere) would value your teachings as to how the world can be rid of bad patents. Who knows, perhaps you can make your name as the man who successfully leads the effort in getting a constitutional amendment that eliminates all forms of intellectual property (or at least patents). Regardless of what path you pursue, I'm sure you'll be much happier if you leave patent prosecution altogether and are able to publicly express your true feelings about the patent system.

I know you are trying to stick it out for client's sake, but sometimes, for your own sanity, you have to be selfish. You are like a song bird trapped in a sound proof cage … you need to be set free.

I wish you the best of luck, and remember, you have the full support of everybody here.

[Malcom Mooney]

pds, thanks for the awesome advice. I'm a huge fan of Dr. Phil, too.

[Fredric Goldstein]

pds, you're right about our pal Mal (as usual I might add, as you're right in your other postings on patent issues as well). Malcolm's burnt out, at least on this issue (he actually wrote a coherent post on the Halliburton patent so he can function when he wants to). But what is it here that sets him off like someone who has his foot caught in a bear trap? When he starts writing about burning babies, we all know he's more than "imploded", he's gone nuclear, and there's something off about his rantings on this issue like two week old unrefrigerated take-out food.

Both our ripostes to him have had their own sting, I admit, but always justifiably so in response. It's beyond academic disagreement. Here again he's back in his yesterday's 8:53 post with his "toilet patent" analogy. Are we supposed to be happy that now the toilet paper is no longer wet? (question Malcolm, how then is it going to stick to the bathroom wall?).

I would also like to hear Malcolm explain the "strategy" of changing examiners in order to get a more compliant one? "Client's dream"? Boy, would Freud love this case.

There no point in trying to discuss issues with him since it deteriorates into a obsessive compulsive interchange. To me, these postings just reek of disrespect for his own profession. It reflects very badly on legal profession and I dare say it's an embarassment. Perhaps Tom and others have the same impression?

To be sure, there will be some, if not many, who see these as ad hominem attacks on such a site and as unfortunate, and it is unfortunate. Listening to Mooney, is this is the state of patent prosecution today?
I agree, perhaps a career change, perhaps the fast food industry beckons if one hates patent prosecution (including patents, examiners, patent attorneys, clients, CAFC, etc) as much as he apparently does.

Hopefully he'll follow your advice and give it a long rest, at least in this debate.
By the way, regarding his post reply to you, Dr.Phil can't help him so I don't see the point in him watching anymore.

[Tom Kulaga]

Fredric asked:
"Perhaps Tom and others have the same impression?"

Yes, I've noticed that Malcolm has trouble responding in a reasonable and logical manner. He seems to focus on one idea or thought to continue his rants.

[Malcolm Mooney]

Tom

"Yes, I've noticed that Malcolm has trouble responding in a reasonable and logical manner. He seems to focus on one idea or thought to continue his rants."

In the future I'll try to dedicate every other comment to psychoanalyzing you, Frederik and pds.