Supreme Court: Current Test of Obviousness is "Gobbledygook"

KSR v. Teleflex (Supreme Court 2006, Oral Arguments).

The doctrine of nonobviousness is the cornerstone of American patent law.  I was reminded today by Phil Swain that our nonobviousness statute, section 103(a) of the Patent Act, was drafted by Judge Giles Rich.  Judge Rich is the most celebrated patent judge of this century.  His statutory masterpiece eliminated the amorphous concept of a “flash of genius” and replaced it with our now ubiquitous objective standard of a person having ordinary skill in the art.  In Graham v. John Deere, the Supreme Court reinforced 103(a) with its concept of case-by-case consideration of secondary indicia of nonobviousness as a way to avoid potential hindsight bias. 

Later, as the Federal Circuit developed its own patent jurisprudence, the court hit upon the teaching-suggestion-motivation test as another anti-hindsight rule.  That test requires evidence of some reason to combine various references that each teach part of an invention.  Thus, if there is no evidenced reason to combine the references, then the invention will be deemed nonobvious. The test, known by acronymists as “TSM,” has been labeled as a poster-child for bad patent behavior.  According to opponents of the test, the bright-line test makes patents too easy to obtain — resulting in a glut of patents covering trivial improvements. Those patents, in turn, hold-up industry research and greatly increase transaction costs and legal fees. 

In KSR v. Teleflex, the Supreme Court is questioning whether the TSM test should exist as the sole determinant of obviousness.  Question presented:

Whether the Federal Circuit has erred in holding that a claimed invention cannot be held ‘obvious’, and thus unpatentable under 35 U.S.C. § 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.”

Until a few months ago, the common myth of the TSM test was that it required at least some hard evidence that provided at least a minimal reason to combine various prior art references.  It is that myth that provided the impetus for Supreme Court review. In recent months, however, we have learned that the CAFC’s version of the test allows for evidence that is implicit, based on common knowledge, found generally in the prior art as a whole, based simply on the nature of the problem or simple logic, or concluded by experts. See Kahn, Dystar, Ormco, Alza.  This jitterbug by the CAFC actually gives KSR much of what it wanted and smears the edges of the mythical bright-line rule.  Justice Scalia picked up on transition during oral arguments — noting that the recent cases leave the test “meaningless. [The CAFC] essentially said ‘our test simply reduces to what [KSR seeks] in this litigation.’ . . . this is gobbledygook. It really is, it’s irrational.” Justice Alito had a similar concern with the “new” TSM test:

J. Alito: “But what is the difference between asking whether something is implicit in the, in the prior art and simply asking whether it would have been obvious to a person of ordinary skill in the art?:

As discussed earlier on Patently-O, all the major patent bar associations filed briefs that support the current TSM test.  In a brilliant move, KSR neutralized those briefs by implying bias based on “the enormous fees that litigation of invalid patent claims can generate.” KSR Reply Brf. CJ Roberts appeared to buy-in to that analysis, joking that the filings “just indicate[] that this is profitable for the patent bar.” KSR Oral Arg.

One concern of the Court is whether modification of the obviousness doctrine would spoil long-settled rights.  The Justices, however, mentioned on several occasions that over the past year, the CAFC may have already upset any settled rights.

Mr Goldstein [for Teleflex]: “[The CAFC has had decades to look at this to try and elaborate a standard.”
J Breyer: “And it so quickly modified itself.”

Decision in February: Reports from the hearing noted that Justice who used the term “TSM” spoke with disdain and were highly critical of the test.  Although oral arguments are always full of counterfactuals and wild theory testing, the level of criticism supports the conventional wisdom that the TSM test is likely to be eliminated as “the exclusive” test.  Cases will rather be decided on a case-by-case basis using the standards of Graham v. John Deere. Already issued patents will still be given a presumption of validity, although it will be difficult for some courts to do this with a straight face.  The new key to avoiding invalidity will be secondary indicia of nonobviousness. Look for a 9–0 decision in early February.

TSM is not Dead: Much of the oral argument was filled with an attempt to simply understand the TSM test, and to figure out what is meant by a “motivation.”  If they cannot figure-out the test, they would likely completely trash-it as unworkable. Of course, by the time the opinion is penned, they will understand the current test and the test will not be scrapped as a whole. Rather, they will follow the Government’s suggestion that TSM continue to be used as a “valid means of proving obviousness.” In addition, however, flexibility will be added to allow for other ways of determining nonobviousness.

Here are some quotes from oral arguments:

CJ Roberts: “[T]the Federal Circuit’s approach focuses . . . on prior art — as opposed to, I would say, common sense.” 

J Scalia: “And in the last year or so, after we granted cert in this case after these decades of thinking about [the obviousness doctrine, the CAFC] suddenly decides to polish it up.”

J. Breyer: “I’ve read it about 15 or 20 times now, I just don’t understand what is meant by the term ‘motivation.’”

Mr. Hungar [for US Gov’t]: “Construed as the sole means of proving obviousness the teaching suggestion motivation test is contrary to the Patent Act, irreconcilable with this Court's precedents and bad policy. It asks the wrong question and in cases like this one, it produces the wrong answer. It should be rejected and the judgment of the Court of Appeals should be reversed. . . . It’s just foreign to this Court’s precedents as a mandatory prerequisite for obviousness.”

Mr. Dabney [for KSR]: “[T]here is no legal regime that is a greater generator of patent litigation than the teaching suggestion motivation test that is urged by the respondent.” [DDC: Is this true?].

Documents and Links:

• Oral Argument Transcript;
• Commentary from the Gallery on the Oral Arguments:
• Zura;
• Armstrong;
• Miller;
• Kerr;
• ScotusBlog (Run by Teleflex’s Counsel)
• Gordon Smith;
• Patent Baristas;
• LawFont;
• Hawk;
• Brooks;
• Leo Stoller;
• Ebert;
• Law School Innovation;
• DragonFly
• KSR Shifts Obviousness Debate to "Mere Aggregations" and Presumptions of Non-Obviousness;
• Discussion of Response Briefs;
• 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]
• Mark Smith, a student at Santa Clara Law has these three posts in SCU’s great new Tech Law Forum:
  • http://www.techlawforum.net/blogs/a-precursor-to-obviousness/
  • http://www.techlawforum.net/blogs/per-se-or-not-per-se/
  • http://www.techlawforum.net/blogs/hey-teacher-leave-our-test-alone/
• The Patent at issue: [link] [link]

Cite as Dennis Crouch, “KSR Gobbledygook,” Patently-O, available at http://www.patentlyo.com.

Comments

[John Roethel]

While the decision may be 9-0, I'm sure there will be more than one opinion. I agree that the Court will hold that TSM is just one way of showing obviousness, but that each case must be analyzed in the context of Graham.

Hopefully the Court will remember that it is the "invention as a whole" and whether it would have been obvious "at the time the invention was made." Since each claim is a separate invention, the analysis can be cumbersome.

It never hurts to start with reading the claim in light of the disclosure and remember that the claim is supposed to set out "what the applicant regards as his invention", not what some patent owner's lawyer thinks the claim could cover.

Patent Examiner's used to be taught to do a claim sketch to determine what is set out in the claim and what is not. There was some advantage to doing things that old way.

[MaxDrei]

Dennis, can you tell me how can SCOTUS can reconcile an opinion that secondary indications are of decisive importance with the social need to reduce legal transaction costs in the field of patent validity? In fact, secondary indications widen and deepen the trough where lawyers feed, and will raise transaction costs to yet higher levels. "Enormous fees" We ain't seen nothing yet.

[stepback]

IMHO, those of the Supremes who openly mocked decades of legal development by learned judges on the CCPA and CAFC were not only showing disrespect to the US Congress (the signatories to section 103) and to its original author (J Giles Rich) but they were also making a mockery of themselves by not adhereing to basic principles regarding statutory construction.

The very language of section 103 requires an analysis that casts itself into the mindset of "a person having ordinary skill in the art to which said subject matter pertains" where that mindset exists only "at the time the invention was made" and where that analysis asks, what were "the differences between the subject matter sought to be patented and the prior art"; and given that, is "the subject matter as a whole" obvious to such a hypothetical PHOSITA who lives only in the past?

Because PHOSITA is a fictitious character who lives only in the past, he (or she) must be treated as an action figure, a toy, a puppet that comes alive only when fictitous strings of "motivation" are pulled to make the puppet dance one way towards seeing the obviousness of the final outcome or the other, towards failing to see the obviousness due to various technical reasons. One is permitted to make the puppet dance along paths other than that chosen by the inventor because 103 further states: "Patentability shall not be negatived by the manner in which the invention was made."

Section 103 is pregnant with questions of fact: What is "the art"? What is the critical time? What is the "ordinary" level of skill at that moment? What thoughts would enter into the mind of a skilled practitioner at that time when the practitioner does not have benefit of hindsight?

Yes, the idea of aggregating or fusing things together is commonplace in the arts of general manufacture. And yes people generally know that summers are hot while winters are cold. But do these concepts allow a skilled practitoner to arrive at an operable and practical "cold" "fusion" device or method? So far the answer appears to be no. But obviously the Supremes see things from a wholly different perspective; from the perspective of a scientifically illiterate lay person. And thus they can easily envision the obviousness of cold and fusion.

[stepback]

--In other words, fools easily tread where wise men dared not go once the fools have the footsteps of the pioneer conveniently laid out before them.

[John Doe]

It is not surprising that TSM is “Gobbledygook” to Justice Scalia.
Justice Scalia appears to be very much confused about basic concepts of patent law. Just take the following quips from the oral arguments:

JUSTICE SCALIA: But why Asano?
MR. GOLDSTEIN: You'll have to ask them, Justice Scalia. They filed a motion that it was obvious.
JUSTICE SCALIA: You're the one that's standing up here making that argument. They're not doing it.

JUSTICE SCALIA: But the claim doesn't require that.
MR. GOLDSTEIN: Yes it does. It does. I promise.
(Laughter.)

JUSTICE SCALIA: Excuse me. You keep coming back to Asano. Why do you keep
coming back? Your claim here does not say anything about Asano.

JUSTICE SCALIA: I think they happened to use Asano simply because that's what you stuck it on…
MR. GOLDSTEIN: Well, that is not -- we did not stick it on Asano. Nobody stuck it on Asano. They picked Asano because it was the prior art of adjustable pedal designs.

Throughout the oral arguments Justice Scalia insists that Claim 4 is obvious with Asano or without Asano. With prior art or without prior art. Claim 4 is just so strikingly obvious. Anyone can think of it

Asano is gobbledygook. TSM is gobbledygook. Patent law is gobbledygook.

IGNORANCE + ARROGNACE is a frightening combination.

[Ordinary mechanic]

This morning, I noticed that squirrels have chewed a hole in the lid of my plastic garbage can. I realized that someone should make the lids out of plastic that tastes offensive to squirrels. Therefore, claim 4 is obvious. QED

[joe patent]

No way it is a 9-0 decision.

[mmmbeer]

I'm willing to bet that the decision is unanimous, but that there will be something like 3 separate opinions. The test will ultimately be "TSM+any other objective evidence of obviousness," which I think probably already IS the test.

Frankly, I'm not at all surprised by the reaction of the justices. Some of the mocking is much deserved, especially given CAFC's own backtracking all over its precedents. A good majority of the keep-the-TSM argument cited cases AFTER the CAFC decision in this case.

Also, I think most lawyers from other practice areas see patent law as something out of step with the general practice of law. I was speaking with a friend that works in medical malpractice and he noted that PHOSITA isn't that different than the standard of the "reasonable doctor". Indeed, he said that a significant portion of what they argue is subject to exactly the same sort of hindsight bias (would a reasonable doctor, at the time of the incident, done this?). I'm not sure I'd advocate making patent law like medical malpractice, but there are certainly analogies.

I think most i.p. lawyers (myself included) tend to think that there is some special problem, but that's not at all the case.

I think that the biggest failing of the anti-TSM folks is the failure to "precisely" (I can't believe that they actually said that they may have phrased their language in an "imprecise" manner) articulate a test. Granted, that's probably not a requirement of their position (and maybe not even their place), but it would certainly have been helpful.

[Mark Perdue]

Great post and analysis, stepback. While the Federal Circuit probably deserves some abuse for backtracking or going back and forth in all areas of patent law, TSM is not one of them.

It was made clear to me in my IP survey course in law school, taught by an economics-background professor (Lemley's predecessor), that TSM sprang directly from Graham, with teaching and suggestion generally being part of the analysis of the scope and content of the prior art, and motivation being part of the ordinary skill in the art.

Motivation, vel non, has historically gotten little play from the Federal Circuit until recently, but is very alive in the form of expert testimony (it has always been ironic to me that "experts" testify as to ordinary skill in the art) in the trial courts.

Hope this decision doesn't really screw things up.

[stepback]

I wait with baited breath to see what Scalai wiil do today with the EPA and CO2:
http://blogs.usatoday.com/oped/2006/11/californiatryin.html

Is he going to say it's just some gobble-dee-gook you exhale out naturally every day? Don't be surprised. After all, this is the court that couldn't tell the difference between manganese and magnesium.

[Taurig Patent Grunt]

I'm surprised there wasn't more criticism of the secondary indicia of non-obviousness. Aside from being absolute litigation machines, the indicia aren't precise or even acurate. Non-enablement, a lack of licensing power, or poor marketing can all trigger one of the indicia, regardless of the obviousness of the invention.

The justices also seemed convinced that there was a raging debate about the TSM test, but I believe this is one of the tamer disagreements in patent law. Claim construction and deferrence to lower courts' construction rank much higher (at least in my sphere); am I oblivious or are the justices?

I've long been considering a change from patent prosecution to patent litigation; perhaps now is the time.

[SF]

Motivation rejections are thriving at the USPTO because thinking up a motivation is more efficient than searching for an explicit teaching or suggestion.

Motivation arguments are much less popular in litigation because they tend to be less clear and convincing than explicit teachings or suggestions.

If the Supreme Court clerks want to look for motivation-focused caselaw, I expect they won't find much more than the recent Federal Circuit opinions.

[Uncle]

People had the same doomday scenario about the patent system with Festo. But years later, the patent system is still alive and well. Even with the demise of TSM, I don't think that much will change. Companies who spent millions in R&D and may people who believe in their ideas will still want protection. Just remember, there was a time when TSM didn't exist and patents were still granted!

[Malcolm Mooney]

Uncle

"People had the same doomday scenario about the patent system with Festo. But years later, the patent system is still alive and well."

It's very much alive, anyway. I'm not sure if it's "well" or not.

"Even with the demise of TSM, I don't think that much will change."

Agreed. All that will change is that a patent prosecutor's cries of "hindsight bias" when a reasonable Examiner tanks a crap claim as obvious will become increasingly high-pitched and faint. Eventually only dogs will hear those cries.

"Companies who spent millions in R&D and may people who believe in their ideas will still want protection. Just remember, there was a time when TSM didn't exist and patents were still granted!"

That's right -- there were just a lot less of them. And somehow Americans were still motivated to innovate. Go figure.

[mmmbeer]

Here's the issue, I think, some of the justices have with "motivation." If motivation is taken on it's face to mean "motivation" as motivations arising from things like pecuniary, efficiency, and endurance interests, then that will swallow up almost every "invention." It renders almost everything "obvious."

For a simple example: a lubricant and a gear. Regardless of what else was out there, lubricating a gear would be obvious--though that may not at all have been true. It reminds me of an episode of "Sliders" where they visited a dimension that never discovered penicillin since they thought all mold was bad despite knowing some of it's properties. It should have been "obvious" to try. Don't yell, we all know "obvious to try" does not mean "obvious", but that may be where the interpretation of "motivation" is headed.

[Malcolm Mooney]

"I think that the biggest failing of the anti-TSM folks is the failure to "precisely" (I can't believe that they actually said that they may have phrased their language in an "imprecise" manner) articulate a test."

But the issue is that, for the purposes of determining whether an invention is obvious to one of skill in the art, a "precise" test is not desirable. It's the idea of a strict precise test -- requiring an Examiner to show an explicit teaching somewhere in the prior art suggesting every aspect of an obvious invention -- that was being fought against here. And it's that idea that seems to have clearly lost, regardless of what else the Supreme's come up.

Good riddance.

So when are we hosting a bake sale for "small inventors"?

[Malcolm Mooney]

Taurig Grunt

"The justices also seemed convinced that there was a raging debate about the TSM test, but I believe this is one of the tamer disagreements in patent law. Claim construction and deferrence to lower courts' construction rank much higher (at least in my sphere); am I oblivious or are the justices?"

I think you're correct.

"I've long been considering a change from patent prosecution to patent litigation; perhaps now is the time."

I wouldn't try to talk you out of it.

[Fredric Goldstein]

Dennis, I'm trying to understand your position. You wrote:
"In a brilliant move, KSR neutralized those briefs by implying bias based on “the enormous fees that litigation of invalid patent claims can generate.”

Brilliant move? Is implying that every patent bar association wants an allegedly contorted patent system because they will earn more litigation fees a brilliant move? When even lawyers rag on other lawyers as an argument in front of the Supreme Court, I think we've hit a low in the legal profession (whether it's deemed a brilliant move or not).

Still, if implying bias were all that's needed to neutralize every qualified opinion or argument, then we'd have some interesting litigation ("Their expert was PAID, so he's biased!" "Don't listen to opposing counsel, he's getting LEGAL FEES!")

[Malcolm Mooney]

Is implying that every patent bar association wants an allegedly contorted patent system because they will earn more litigation fees a brilliant move?

Perhaps somebody (you?) can provide us with a convincing alternative explanation for why every patent bar association believes that burdening Examiners with a rigorous test for showing obviousness (which undoubtedly leads to more issued patents with broader claims) is such a great thing for the American public?

Seems like the Supreme's weren't terribly concerned about American innovation going down the toilet if they didn't accept the patent bar's arguments ...

[tom dickey]

That's exactly right, the TSM test makes patents just too goldarned easy to get -- like that "pumpkin" patent Anita Dembiczak got back in ... back in... When exactly did Dembiczak actually get her patent? Let me look that up real quick. Her patent number started with a 4, I think, or was it a 5? Maybe Dembiczak's patent number started with a 6? Definitely Dembiczak's patent number starts with either a 4, or a 5, or a 6 ... maybe a 7? Let me look that up again ... How do you spell Dembiczak? D-E-M-B-I-C-Z-A-K? That's funny, I can't find a utility patent issued under that name....

[anon]

"How do you spell Dembiczak? D-E-M-B-I-C-Z-A-K?"

Are you saying TSM does not apply in design patents? Look up the appealed case and tell me the court was not talking about TSM for all patents.

[Malcolm Mooney]

"That's exactly right, the TSM test makes patents just too goldarned easy to get"

Yes.

And everybody's favorite examples of obvious patents are just that: favorite examples. Why are they favorites? Because the bad smell is palpable to anyone, regardless of whether they have a Ph.D. in the "relevant art".

Folks without Ph.D.s (like the law students who took that "hindsight" test and thought that using a tool to bring two strings together was "nonobvious") are lucky. They don't have a clue how bad some of the claims are that issue with more, uh, "technical" language.

[Fredric Goldstein]

Gee, Malcolm Mooney, champion of all Examiners, guardian of the American Public, keeper of the Obviousness flame. Talk about buying into something that is, let's see how Mooney would put it, weepy nonsense that brings tears to his eyes.

Shame you use your nom de plume, or you'd be scoring real points with all these examiners whose judgment you so very much trust and whose jobs you want to make so very much easier, i.e. reject patent applications based upon their own subjective determination sans some objective test.

How you went through the trouble of graduating from law school but didn't go into patent litigation is puzzling, since (1) you so love contentious discourse, and (2) you so loath prosecution and the clients you represent.

Hosting a "bake sale for small inventors"? No one has yet to swallow anything you've thus far had to offer.

[Malcolm Mooney]

How you went through the trouble of graduating from law school but didn't go into patent litigation is puzzling

HA! Carnac the Magnificent puts his bloated head under the truck's wheels once again. Can you tell me what I had for breakfast, Frederik?

"Hosting a "bake sale for small inventors"? No one has yet to swallow anything you've thus far had to offer."

But you take the bait every time. ;)

[pds]

Frederic:

What you have written is likely what many people feel. However, I think it would be best if MM is left to rant away without intervention.

[stepback]

Fredric,
The discussions were going so well. Please let us not fall into the tempting but forbidden zone of troll-sightedness.

What did you think of Justice Roberts not understanding that the expert testifies, not as to the expert's "lack of insight", but rather as to the state of mind of one of ordinary skill at the critical time?

And moreover, if patent owners are allegedly hiring lacky experts who will prostitute themselves by testifying under oath that everything is nonobvious, isn't it equally arguable that infringers will hire lawyers who will prostitute themselves by arguing that everything is obvious, and if that's the case, why even bother having oral hearings? Everyone is a crook and a liar even before the evidence is gathered and evaluated for its probative merit. Just flip a coin. Heads it's nonobvious. Tails, even the crazy person at the insane asylum would know to let the air out of the tires so that the stuck truck can get out from under the low overpass. :-)

[Fredric Goldstein]

Very mature posting, Mal. Should I have asked how you even graduated from law school is puzzling? The practice of law does require some form of restraint in one's temperment.
Yes, by the way, Carnac knows what you ate for breakfast this morning: humble pie.

[Fredric Goldstein]

Stepback, I think you might have missed where I am coming from so your question seemed to be a bit friendly-fire.

And to answer your question, in some instances it can be somewhat counterintuitive to have an expert opine on what a PHOSITA might find obvious when the PHOSITA's level of skill in that art is so below the expert's, as is often the case in the less complex mechanical inventions (less so in the software and biotech patents). In that regard, "expert" testimony should be made by one stipulated as a PHOSITA in that art. Experts otherwise have to dumb themselves down in order to get into the skin of that person and who knows of any PhD expert who is clever at that?

[Malcolm Mooney]

"Very mature posting, Mal. Should I have asked how you even graduated from law school is puzzling? "

YES! Your dull-witted personal attacks and silly conjectures about my life history have earned you fans among the best and brightest here. Keep it up, my friend!!!

[John Doe]

Even with the TSM test and In re Dembiczak as law, too often I see newby examiners merely state that combing A, B, C & D is obvious (or a "design choice"), without anyhing more. How can one argue against this, in prosecution or lit, if the arbitrary (Roberts) "common sense" standard of one who is not a PHOSITA becomes the law?

The Onion nailed this issue well back in Sept. with its article "Any Idiot Could Have Come Up With a Car", where it was pointed out that a car is just a combination of a couch on wheels with an engine. http://www.theonion.com/content/node/52328. "It's sure as heck no cotton gin." Id.

[Paine]

"Even with the TSM test and In re Dembiczak as law, too often I see newby examiners merely state that combing A, B, C & D is obvious (or a "design choice"), without anyhing more."

If you indeed claim something that's a design choice, I would think that's an appropriate rejection. But believe it or not, some attorneys will challenge the TSM as in Dembiczak and get a patent out of it. You should not get a patent for switching an SRAM to a DRAM, unless you provide support via secondary considerations on why you deserve that patent because of what a PHOSITA would consider to be a trivial change.

"Any Idiot Could Have Come Up With a Car"

I think PHOSITAs can put wheels on couches and call it a "car". But do they deserve a patent? If they really think they do, they can use the secondary considerations to show why they deserve it. Simply put, secondary considerations help the patent system maintain its objective of "promoting progress..." and reward those that truly deserves the governmental protection.

[Malcolm Mooney]

"If you indeed claim something that's a design choice, I would think that's an appropriate rejection."

I agree. And if you haven't claimed a mere design choice, then explain clearly and persuasively why the choice is not an obvious design choice.

I am still waiting for a coherent explanation as to why "burdening" patent applicants with providing such explanations will harm innovation in America.

I suspect I will be waiting forever, for a good reason, and I suspect the Supreme's feel the same way (even if they appear confused about everything else).

[Malcolm Mooney]

"I think PHOSITAs can put wheels on couches and call it a "car"."

The Chevy van I drove in high school had a couch in the back. Good times.

[Paul Cole]

Was anyone as inspired as I was by the quality of the debate?

[Paul Cole]

Was anyone as inspired as I was by the quality of the debate?

[Malcolm Mooney]

"Was anyone as inspired as I was by the quality of the debate?"

(cues up synchronized audience members)

How inspired were you?

[John Doe]

"something that's a design choice ... that's an appropriate rejection"

"You should not get a patent ... switching an SRAM to a DRAM, unless you provide support via secondary considerations"
----

Isn't the burden as stated here backwards, at least under the current text of 101/102/103? (A person shall be entitled to a patent ... except). IMHO this is exactly the problem of hindsite analysis without an objective test.

Even for a claim substituting one element in a known combination, the PTO needs to explicitly show that the two items are interchangable (i.e., a design choice) to make a prima facia obviousness case under 103. This should be easy to do with the SRAM/DRAM example, in most cases, by using EE literature, other patents, or a declaration from a PHOSITA (for which the examiner may or may not qualify). Should the PTO be able to reject a (Festo-like) piston with non-magnetic rings just because both metal piston rings and non-ferrous metals were previously known? If the claimed combination is unknown in the prior art but a "trival" improvement (although useful under 101), then the invention is easy to design-around and is not worth much, but it should be patentable under 103 (without an explict showing otherwise BY THE PTO).

Further, if two known items are combined (couch and wheels -> car) there is no mere "design choice" substitution of equivalent elements. Why is the the burden on the inventor to show any secondary stuff rather than on the PTO to make a prima facia case of obviousness?

Without some objective test (such as TSM) this common sense burden-reversal, which is used by many examiners, could easily reject inventions such as: the car, Edison's lighbulb (improvement only because of new filament material), or even new element 155 (just like element 154 with one more proton and maybe a few neutrons).

[Malcolm Mooney]

Without some objective test (such as TSM) this common sense burden-reversal, which is used by many examiners, could easily reject inventions such as: the car

You mean the invention of adding an engine, known to power wheels, onto an old wagon, known to have wheels which need power to turn them?

A broad claim to a wheeled object powered by an engine would have been rejected as obvious, in view of wheeled wagons and wheel-powering engines?

Sounds very reasonable to me. I have no idea why anyone would question the denial of such a patent under the circumstances.

[Joe Miller]

John Doe makes an interesting point:
"Isn't the burden as stated here backwards, at least under the current text of 101/102/103? (A person shall be entitled to a patent ... except)."
What's interesting about it, to me, is that the quoted language about entitlement to a patent is in section 102, but not in section 103 at all. Section 103 is phrased quite differently. Indeed, as KSR argued in its Reply brief before the Supreme Court just a week or two ago, the text of the statute itself indicates that the applicant, not the PTO, should have the burden of showing that an invention would not have been obvious. I blogged about this argument at my own patent law blog the other day, here: http://www.thefireofgenius.com/2006/11/18/benefit-of-the-doubt/

[Michael Slonecker]

MM...

You will probably find this interesting:

http://www.bpmlegal.com/wselden.html

Re burdens, why not just stick it all on the applicant. "I hereby aver that my invention is not old, is not unuseful, and is not obvious, all as shown on the attached list of all documents cataloged by the Library of Congress, etc." Nothing like having to prove negatives. Much like showing what 1+1 does not equal.

[Malcolm Mooney]

Michael writes

"Re burdens, why not just stick it all on the applicant. "I hereby aver that my invention is not old, is not unuseful, and is not obvious, all as shown on the attached list of all documents cataloged by the Library of Congress, etc.""

Traditionally, that averment is fulfilled by the background and description of the invention sections of the application, whereby the applicant describes what existed previously and how his contribution represents a new (and surprising!) advancement, filling one or more "long-felt needs" of the community.

[Malcolm Mooney]

"You will probably find this interesting:"

LOL! Thanks, Michael.
I did a bit of google searching re "who invented the car" before writing my earlier comment but didn't stumble across that gem. Some things never change! ;)

[Fredric Goldstein]

Malcolm,

"The Chevy van I drove in high school had a couch in the back. Good times."??

Oh yeah, you were some cool rockin' dude way back. Riightttt.

You also blathered:
"YES! Your dull-witted personal attacks and silly conjectures about my life history have earned you fans among the best and brightest here. Keep it up, my friend!!!"

Firstly, my fans pale in comparison to the ones you've earned here. Shall I count how many have commented on how you rant? They're just rushing to your defense now.

Secondly, don't make yourself a target by writing rubbish and then complain that someone is shooting at you. Stop the contemptous attacks on others' comments and stick to the issues. Then we'll leave you alone.

Now that you offered some of your own "silly conjecture on your life history", here's my take. You use a pseudonym (I also loved Can's music back in the '70s). You are an ex-examiner who hacked his way through 2-3 years at the PTO, then went into private practice but it didn't quite turn out to be all you thought it'd be.

As an examiner, you highly resented when prosecuting attorneys questioned your summary rejections based solely upon your "judgment",therefore your defence of the right of an examiner to just reject claims outside any test and your disdain for prosecuting attorneys even though you now are one, as you claim.

As a prosecuting attorney, you feel every Rube Goldberg has turned up on your doorstep plaguing you with his ridiculous invention, hence your loathing of small inventors who you never miss an opportunity to make snide remarks about.

How am I doing? Shall I also offer conjecture on what you were doing with that unpatented couch of yours in the Chevy? You see, Mal, this is not Bridget Jone's Diary where you can spew out any snippet of provocation towards different opinions simply for your own amusement. Just in the past few postings alone you managed to sneer at not just me but also Paul Cole,and Michael S, who is clearly an intelligent patent attorney. Earlier it was Stepback. And these pale in comparison to your earlier tirades on other obviousness topics. And you refer to me earning fans? Pds, another intelligent attorney you've butted heads with, suggests we let you rant yourself out, perhaps you'll take a nap on that couch of yours when exhausted by the sneering, but I think you'll just go on and on. So surely will come another patented MM retort...Give the swagger a rest, why don't you. It's pointless.

[John]

"What's interesting about it, to me, is that the quoted language about entitlement to a patent is in section 102, but not in section 103 at all. Section 103 is phrased quite differently."

I made the same observation a while back in a comment on this site. To me, the following makes perfect sense:

1. examiner makes the initial fact findings regarding 102 -- already a car out there?
2. examiner makes judgement as PHOSITA about whether it's obvious or not -- a car with no roof obvious?
3. if examiner makes obvious determination, burden shifts to applicant to prove via secondary considerations why he/she deserves a patent.

Bottom line: patents are authorized in the constitution to "promote the progress of science and useful arts..." It's clear that the secondary considerations, allocated to the applicants, are extremely important in this objective.

[anon]

Fred, back off Mooney. His contributions provide the balance that this site needs. His directness adds spice to this forum just as yours does from time to time.

[stepback]

John,

102 says "shall"
103 says "may"
Those words have different meanings, different forces of compulsion. "Shall" implies that there is no wiggle room. It's got to be this way. On the other hand, "may" is a more ambiguous word with lots of wiggle room. You "may" choose to look at 103 one way or another. (Did I just give you permission or a capability, which was it?) But you "shall" agree that 102 unequivocally creates a statutory entitlement, albeit a rebuttable one. Look here for an example of a definition of may:
http://www.m-w.com/cgi-bin/dictionary?book=Dictionary&va=may

[David]

Could eliminating TSM actually create a greater need for inventors, corps. to hire patent attorneys to prosecute applications for patents because obtaining a patent may be considered more "difficult?"

[Paul F. Morgan]

The opening question, by Justice Ginsburg, was not as far out in left field as some may think. If the pending and indisputedly neeeded legislative reforms of inter partes reexamination were not being held up by other hotly disputed and draconian proposals, this kind of patent dispute COULD be resolved at low cost in the PTO, instead of with millions of dollars and years of delay in litigation.

[anon]

It just goes to show, that even in institutions that are supposed to represent the pinnacle of intelligence in our nation, we have a collection of idiots. What a freakin' circus.

Where is Learned Hand when we need him most?

By the way, just the concept represented by the phrase : "...TSM continue to be used as a “valid means of proving obviousness.” " should make the patent practitioner of ordinary skill smirk.

The so-called TSM "test" [or knowledge generally available] is simply an element of evidence the PTO has the burden of providing to support a combination of references used to establish a prima facie case of obviousness without improper hindsight.

If not for the need for the PTO to provide a TSM, any remote references could be cobbed together after a close (hindsight) review of the claim terms. More accurately, evidence of a LACK of TSM is a valid means of proving NON-obviousness - which is what happend in KSR.

To depart from TSM is to depart from reality. Then, as noted in the oral arguments, everything is obvious, because as we all should know, there is nothing new under the sun - every innovation is necessarily a combination of old elements.

The beauty of the TSM test is that it prevents overly expedient examiners from relying too greatly on keyword searches to cob together references for 103 rejections.

To some of the previous posters, TSM is not, in itself, a manner of proving obviousness. TSM is the glue that holds REFERENCES together, the references containing teachings that tend to prove obviousness. If there is no glue, the PTO's obviousness case should not stand.

[Bob Jacobsen]

The problem with TSM is that it is based on a complete misunderstanding of what engineers "of ordinary skill" actually do.

When solving a new problem, designing a new devices, etc, a mechanical or electrical engineer is usually thinking about a complex issue with multiple aspects. We're trained from day one to consider how to combine solutions from different areas into a coherent whole. A very large part of engineering practice and education is about improving our ability to do just that.

So a "person of ordinary skill" does _not_ require an explicit "suggestion" to combine elements as a routine, obvious step. The suggestion to combine is inherent in what we do! What might be non-obvious are details of the combination, surprising behavior of a combination, etc; even there, I think most of the time a competent engineer would already be thinking about those questions.

Perhaps the CAFC is now moving away from _requiring_ an explicit "suggestion"; if so (and I'm not convinced this is a permanent change), that's a good thing. But it wouldn't hurt for the Supreme Court to drive some nails in the coffin of this particular idea.

[anon]

Pfaff, Festo, and now KSR!? I'd say the Supremes are 0 and 3 for patent cases. They're turning out junk, or should I say gobbledygook. Where's the accountability? Like I said, where's Learned Hand when you need him...?

[anon]

To Mr. Jackson,

The process you describe is all well and good. If we could subpoena your thought processes nothing more would be needed. However, the PTO must PROVE what you just said (TSM) if they are to prevail in a finding of obviousness. I think we should drive some nails into the coffin of your desire to opine on matters of patent law. Just like a freakin engineer, always thinking they can comment outside thier area, always tinkering with what ain't broke...

[anon]

Mr. Jacobson that is...

[anon]

"Could eliminating TSM actually create a greater need for inventors, corps. to hire patent attorneys to prosecute applications for patents because obtaining a patent may be considered more "difficult?""

That's a very possible outcome. Attorneys will have to become more knowledgeable about particular arts and make persuasive arguments about why their clients' claimed invention contributes to advancement. But the outcome are patents that hopefully, will not be the likes of swings, sticks, or bags.

[2L]

Two comments:

1)I'm not sure how rigorously the PTO is applying the TSM test. I received many 103 rejections where there was no TSM in either of the references. If the two references were in the same field, we learned that it was fruitless to argue TSM and so we simply reworked the claims.

2)The TSM test may be problematic, but scrapping the test will generate just as much if not more litigation since it will be easier to challenge all existing patents. I don’t think the perceived need to scrap TSM is serious enough to risk destabilizing the expectations of all current patent holders.

[Bob Jacobsen]

"The process you describe is all well and good."

Thank you.

"If we could subpoena your thought processes nothing more would be needed."

Perhaps I wasn't clear. I'm not arguing that there's something specific about "my" thought processes or those of any other specific engineer. I'm arguing that a "suggestion to combine" is _inherently_ present in the thought process of "ordinary" mechanical and electrical engineers, and probably all of the other types of engineers (I can't really comment on biochemists and people who create design patents).

Given that the vast majority of the practitioners of those "useful arts" would agree about this (an experimental question, I guess, but I'm pretty sure how the experiment would turn out), the _legal_ presumption should align with that. When TSM required a _written_ "S" component, it clearly didn't.

"However, the PTO must PROVE what you just said (TSM) if they are to prevail in a finding of obviousness."

And here we're back to my point: This is the part of the current legal structure that's most broken. The PTO is not given the tools to make that proof. Posters on prior threads have already made the point by arguing that examiners are "too eager" to say that combinations are trivial, hence obvious. But, to the people who actually work with those technologies, they are. And, in turn, this gives rise to people saying "But I made that combination years before you patented it!", which gives the entire system & the lawyers practicing within it a bad name.

(At this point, some will point out that the prior implementation is prior art, and the "real problem" is that the patent was issued despite that. But such patents +do+ issue, and the only way to challenge them is via an expensive court fight, uphill against the presumption of validity. Even showing that the patent applicant knew of the prior implementation, hence failed in duty to disclose, can take years. Yes, I do have specific examples in mind)

"Just like a freakin engineer, always thinking they can comment outside thier area, always tinkering with what ain't broke..."

I'm not sure who has complete proprietary rights to the patent system. It might be society as a whole, or it might be the communities who create and exploit new technologies (inventors, academia and industry), or some other combination. But if you want it to be relevant at all, I very much doubt that the patent system is the exclusive domain of patent lawyers.

We're all better off if we can find a way to improve the system that works for the people who understand law, who understand technology, who understand business, who understand politics, etc.

[Joe Smith]

"Without some objective test (such as TSM) this common sense burden-reversal, which is used by many examiners, could easily reject inventions such as: the car, Edison's lighbulb (improvement only because of new filament material)"

It seems to me that Edison should have gotten a patent on using a particular material as the filament but not the invention of the light bulb per se - there had been other, earlier attempts using an incandescent filament. So far as the car goes, it was invented in theory hundreds of years ago and the first working road vehicle was built and operating by 1770:
http://inventors.about.com/library/weekly/aacarssteama.htm

Once the internal combustion engine became available it would have been obvious to try the new, lighter, form of motive power in road vehicle.

It is precisely because so many patent attorneys think that swapping one type of engine for another would be patentable that there are people like me (with a technical background) who think the patent system has gone seriously wrong. Whether it is Congresses fault or the CAFC's fault or SCOTUS's fault does not in the end matter as much as the fact that the system needs to be overhauled before it does not damage to the economy.

[Tom Kulaga]

Jacobsen said:

"The problem with TSM is that it is based on a complete misunderstanding of what engineers "of ordinary skill" actually do."
and
"The suggestion to combine is inherent in what we do!"

This is true only for the areas in which engineers have knowledge or experience.

I spent 20 years working as an engineer. You are right, engineers, particularly successful ones, try to "think out of the box" to solve problems. But, that box has limits. As an engineer, I could only combine those things that I was familiar with or could easily find. When working on a steam turbine, I would never think of looking at toasters for an answer to a problem because I did not know anything about toasters (or whatever). I may have an ego, but even I recognize that I do not know everything about everything. In order to "inherently combine" elements, I have to first know about the elements.

Now, as a patent attorney, I get obviousness rejections based on references in wildly differing arts. Sure, if at the time of the invention, someone had given an engineer both references and identified the problem to be solved, he may have been able to do so. (That is the problem with hindsight - show me everything I need and I will come up with the answer.) But, oftentimes, no engineer would be looking at both references to solve the problem unless there was some link (TSM) to point that engineer to look at those references outside the engineer's normal knowledge base. The PHOSITA is skilled in THE art, not skilled in ALL arts.

I am confused about everyone harping on a requirement of an explicit showing of TSM. The MPEP has long stated that that TSM can be found implicitly. Also, the MPEP has procedures in place for the examiner to take official notice of common knowledge.

[david]

Bob:

I read your post and agree that perhaps we should be looking at the way a PHOSITA operates. Setting aside your position that a suggestion to combine is inherent in what you do. How do you feel about an inventor being charged with knowing all prior art (whatever scope that may be)? Does that seem "real world" or how a PHOSITA actually operates? What are your thoughts?

[Malcolm Mooney]

"I am confused about everyone harping on a requirement of an explicit showing of TSM. The MPEP has long stated that that TSM can be found implicitly. Also, the MPEP has procedures in place for the examiner to take official notice of common knowledge."

Correct. My understanding was that one of the issues in KSR was whether the MPEP was consistent with "the law" in this regard.

Fyi, saw this news tidbit this morning

http://ip.law360.com/Secure/ViewArticle.aspx?id=14212

Nothing surprising or new, but I expect to see more of that in the weeks and months to come. Blood in the water ...

[David]

Tom:

It seems are thoughts are somewhat on the same page. I responded to Bob just about the time you did.

As you probably know, defining the "scope" of the prior art can give patent practitioners arguments to do-away with a possible reference when an Examiner picks a reference out in left field, which happens to disclose some feature of the claim.

I think that your input as an engineer/inventor and how your mindset operates is useful. As a patent practioner, I do not have that firsthand knowledge, however, I still struggle with reconciling a PHOSITA being charged with knowing all prior art (whatever scope that is) and starting from the premise that we should look at a PHOSITA's perspective. While I can appreciate the reasons for doing so (i.e., charging knowledge), it is not real world...so.

I happen to be a person who does not want TSM to be eliminated.

[Fredric Goldstein]

Anon, point taken about backing off Mooney. We'll call a truce, was only looking to guide him to focus on the issues and not confuse sarcasm for wit.

[Dan Dobkin]

If you really want to solve this problem (rather than argue interminably in the absence of data -- appealing to attorneys but not to engineers), require that patent applicants empirically test obviousness. This is not that hard but it must also be combined with a test of enablement. It is done by hiring one or more folks the applicant decides are of ordinary skill in the relevant art(s), giving them the problem the patent purports to solve*, providing access to the prior art, and appropriate resources and time, and letting them try to solve the problem. When the time is up, give the SAME folks the SAME resources and the SAME time but add ONLY the patent specification and let them try again. (NO fair talking with inventors, getting supplementary help, added recent art, etc.) Document the results and make them part of the prosecution history. Participants should be subject to deposition and testimony (with compensation) in the event of litigation.

The combined test prevents the applicant from selecting idiots to prove inventiveness and geniuses to prove enablement. The test forces the applicants to unambiguously define what constitutes a person of ordinary skill, and will tend to discriminate against patents that are nothing but completely obvious application of textbook-standard solutions to a new area [I've read a lot of these!]. "Ordinary experimentation" also gets defined by the extent of tests that are actually performed. The record of the work performed provides a factual basis for what should be a determination of fact (obviousness). In those cases where the invention is expensive to practice -- too bad! This is the grant of a monopoly. It's a privilege, not a right.

*Admittedly a challenging task in itself -- one must be careful to properly frame the problem without suggesting the 'inventive' answer. But at least the problem as stated is available to the court, which can make its own judgment on whether the statement thereof is legitimate. The participants will no doubt also have opinions to state if they find that the patent spec addresses a problem different from the one they were given.

[pds]

"It is precisely because so many patent attorneys think that swapping one type of engine for another would be patentable that there are people like me (with a technical background) who think the patent system has gone seriously wrong."

Classic straw man argument. I don't know any patent attorney that that think that the mere swapping of one type of engine for another would be patentable. In fact, the next time I speak to a client and try to explain the concept of obviousness, that might be the example I use.

However, while working with the same example, if an inventor were to somehow come up with a clever way of adapting the new engine to be used in place of the old engine, then that may be patentable, and that is how I would counsel a client who came in with that idea.

It is easy to attack the TSM test by parading out "bad" patents; however, as I often argue with examiners regarding the proposed modification and the asserted benefit … there must be some nexus between the two.

Has anybody provided definitive proof that the exclusive application of the TSM has led to these bad patents? Has that nexus been proven?

In my experience, the more likely culprit is the diversion of funds away from the USPTO; the lack of training provided examiner; and the lack of sufficient time that examiners are provided to examine patent applications. For those that aren't in the "business," don't mistake the USPTO as a carefully deliberative body turning over every stone to determine whether or not a patent should be granted for a particular patent application. The USPTO is an assembly-line. There are quotas to be met, there are consequences if those quotas are not met, and the examiner's are very cognizant of this. Moreover, unless the application is appealed, only one or two sets of eyes will look at the application, and if the second set of eyes is present, it is usually just for a rubber stamp.

My position is these issues should be addressed before looking at the legal framework the Examiners are using to reject claims based upon obviousness.

[Tom Kulaga]

David said:

"I still struggle with reconciling a PHOSITA being charged with knowing all prior art (whatever scope that is)"

I agree with Bob Jacobsen that an engineer (or PHOSITA) knows a lot in his field. I think it is a reasonable fiction that a PHOSITA is presumed to know all prior art within one art. It is not unreasonable for an engineer to search and study within his area of expertise (art) to find an answer to a problem. The fiction that the PHOSITA knows all prior art in that art is not really too far from the mark. But, the further one gets away from the art, the less likely the PHOSITA will have knowledge of it unless it is common or ubiquitous.

This is reflected on how I do patentability searches. Because the inventor is most familiar with the subject matter and typically works in that field, I often have the inventor search for non-patent literature and report to me what he finds.

[Bob Jacobsen]

"How do you feel about an inventor being charged with knowing all prior art (whatever scope that may be)? Does that seem "real world" or how a PHOSITA actually operates? "

Searching for relevant information is inherently part of an engineers job; ABET now even includes it as an aspect of the required engineering curriculum. With modern tools, searching existing information is becoming a more and more powerful resource, likely to find lots of relevant things. So you don't have to _know_ all prior art; you just need to be able to find it, to understand it, and then apply it.

Just about every engineering school I know of proudly claims "We teach our graduates to learn and think for the long term, not just today's technologies". In part, they're talking about just this issue.

Perhaps we could devise an explicit test out of this: If a patent examiner can find the components via search, then it's assumed that the inventor could have also, and (within some limits as to date, etc) should have.

[Joe Smith]

"Has anybody provided definitive proof that the exclusive application of the TSM has led to these bad patents? Has that nexus been proven?"

Why should that be the test. It is enough that it is obvious that the TSM test is too patent friendly and would tend to contribute to bad patents.

The people who attack patents tend to cite examples. My favorite example of patents which should not have been given are the NTP patents on wireless email which basically combined aspects of then old technology relating to wireless telex, email and cellular communications with a touch of networking thrown in. I like this example because the patents are not trivial and because the monetary consequences were huge. Another example would be the Eolas patent on browser plugins.

The defenders of the status quo come back and say, yes, yes that patent was bad but there are lots of other patents which are good. It is not good enough to say that that patent slipped through the system - to defend the system you have to explain why it slipped through and why the system was not able to fix the problem in a timely and cost effective manner.

[Tom Kulaga]

Bob Jacobsen said:

"Perhaps we could devise an explicit test out of this: If a patent examiner can find the components via search, then it's assumed that the inventor could have also, and (within some limits as to date, etc) should have."

The premise is flawed because it is based on hindsight. You are saying: I know the answer to the problem and I know how to build it. If I can find the elements (now that I know what they are) anywhere, then the invention is obvious.

An engineer knows the problem. He does not know how to solve it until he actually solves it. When an engineer is trying to solve a problem, he is not looking for elements, he is looking for something that says "Aha" to him so that he can modify something he does know in order to solve the problem.

[anon]

A few thoughts:

1. "Has anybody provided definitive proof that the exclusive application of the TSM has led to these bad patents?"

Classic lawyerly strategy, impose an impossible burden of proof. Since when was overturning TSM a matter of strict scrutiny? No one seriously doubts that TSM (the pre-Khan version) was a demanding test, just compare it to the post-Dystar version. It stands to reason that given a demanding test, more "bad" (i.e. obvious) patents would issue. For example, the Khan, Alza, and Dystar patents would all have probably survived under the version of TSM that was applied in KSR, and now they have been judicially determined to be "obvious."

2. The PHOSITA is not charged with knowledge of all prior art for obviousness purposes (he is for anticipation purposes). He is charged with knowledge of "analogous arts." Lovell Mfg. Co. v. Cary, 147 U.S. 623 (1983).

[Malcolm Mooney]

Echoing Joe Smith's comment: from the public's perspective, the problem is the absolute NUMBER of BAD patents, not the "percentage" of bad patents per se.

The cycle that has been put in place is for companies to file on just about everything, especially in an area that is perceived to be "hot" or "developing." Out of that deluge come a bunch of worthless patents, some good, some bad, and -- if the company is lucky -- a few good patents that are worth something and maybe a piece of crap that they can use to cause their competitors a whole lot of pain.

That's how the game is played and the current perception for the last couple years is that getting that crap patent is not terribly difficult if you keep trying. That perception has to change. How to change is not entirely clear but making it harder for Examiners to reject claims as obvious is certainly not a step in the right direction.

The Supremes understand this.

Fyi, I read a great history of Section 103 and its relation to big pharma written by Bill Kingston at Trinity College in Dublin. It appeared in Greg Aharonian's PATNEWS this morning. I highly recommend. In a nutshell, the article points out how the current 103 regime was created for the benefit of pharmaceutical companies who were "inventing by investment." And the article explains why the current regime makes it more difficult for (surprise!!!) small inventors to compete.

[John Doe]

The perception you get when reading most discussions on TSM is that TSM is nothing more than a “test” for “validating” 103 rejections. In other words, when a challenger presents two references and argues obviousness of combining the two, he may essentially be right or wrong. TSM validates an obviousness theory, much as if a blood test validates the diagnosis of a disease.
However, reading CAFC precedents on TSM it is clear that TSM is much more than a simple test.
When a challenger presents two references and argues that it would be obvious for a person skilled in the art to combine the two, the question to be asked is always: “granted, when shown the two references the PHOSITA may find it obvious to combine the two, but that doesn’t mean that it would obvious for the PHOSITA to pick out the two references from a forest of references in the first place?”. Obviousness should always start out with “one” reference “leading” to the other reference. You cannot start with two references as a first step for obviousness. That’s where TSM comes into play. It’s the “leader” from the first reference to the second.
The problem is that TSM has throughout this cert been totally distorted. By all means Teleflex has done a terrible job in properly explaining the logic behind TSM.

[anon]

TSM, like I said earlier, is the glue that holds a combination of references together. But, whether or not a TSM is proved, there are other elements that can be shown that would tend to discredit the combination that good patent attorneys (like me, I hope) make all the time. Such as teaching against. If reference 1 teaches A+B+C and reference 2 teaches D an explicit teaching against will mitigate against the combination acting as an ANTI-TSM. But the geniuses hearing and presenting arguments at 1st and E.Capitol didn't appear to raise this point even as a significant illustrative contrast to TSM.

[Malcolm Mooney]

If reference 1 teaches A+B+C and reference 2 teaches D an explicit teaching against will mitigate against the combination acting as an ANTI-TSM.

Yes and we all love it when that happens, especially when that "teaching away" appears in *numerous articles and is widely recognized and cited and the inventor clearly discusses how he overcame this prejudice in the specification, thus arriving at the claimed invention. Hardly ever happens.

But you know what sometimes does happen? The attorney argues that the "blatant omission" and "palpable failure" in the cited art to *explicitly* teach the claimed combination represents an "implicit teaching away."

Does this argument ever work? Occasionally. If you're "lucky."

Should it work? There is case law saying it should not work. Should patent attorneys care about that case law? I guess it depends on how often patent attorneys get sanctioned for failing to cite or misrepresenting relevant case law.

[anon]

Mr. Mooney, you appear to be one of these pompous non-patent attorney boobs who is responsible for the reprehensible state of the culture with regard to patent law. Some people listen to people like you and become woefully misguided. Meawhile you are just spouting pure garbage.

Hardly ever works?! Sir, I make successful "teaching against" arguments with stupefying regularity. For someone like you who is certainly not now a member of the patent bar and probably never has been, how can you make such a claim?

Blatant omission?! Palpable failure?! Please take another Xanax. My hypothetical clearly included an explicit teaching of A+B+C and then D in the art combination - with no TSM and an explicit teaching against.

Get real.

[Malcolm Mooney]

"Hardly ever works?! Sir, I make successful "teaching against" arguments with stupefying regularity."

Wonderful!

Now, can you show me where I said that teaching-away arguments "hardly ever work"?

That's a rhetorical question.

[anon]

Mooney is a troll. No he isn't. Yes he is.

Hardly ever works, hardly ever happens, whatever. Did not. Did so.

[pds]

"Why should that be the test. It is enough that it is obvious that the TSM test is too patent friendly and would tend to contribute to bad patents."

It is easy to attack the TSM test after you already concluded that it is "too patent friendly." Any test that places a burden on an examiner could be considered as "patent friendly." Should we throw those out as well?

"to defend the system you have to explain why it slipped through and why the system was not able to fix the problem in a timely and cost effective manner."

To attack the system, you have to explain exactly how the patent slipped through and why you believe it was the application of the TSM test that led to the patent being issued and not something else.

It is easier to explain what actually happened than what should have happened.

[Malcolm Mooney]

"Any test that places a burden on an examiner could be considered as 'patent friendly.' Should we throw those out as well?"

Ray Bolger called. He wants his straw back.

[pds]

"Classic lawyerly strategy, impose an impossible burden of proof. Since when was overturning TSM a matter of strict scrutiny?"

Let me rephrase, "has anybody provided any proof that application of the TSM has lead to these bad patents?"

[Joe Smith]

"To attack the system, you have to explain exactly how the patent slipped through and why you believe it was the application of the TSM test that led to the patent being issued and not something else."

With respect no I don't. You defend the status quo. I say it should probably be subject to root and branch reform eliminating patents on business methods, and replacing "obviousness" with a test that says you cannot patent something if its discovery would have occured within a reasonable period of time even if there had been no patent system. The literal meaning of obviousness leads to a construction of the statute which is not within Congress's power to grant.

I point to RIM and NTP as proof that the status quo is seriously deficient. If you want to defend the status quo you need to explain how RIM and NTP occurred.

[Malcolm Mooney]

http://www.cnn.com/2006/TECH/space/11/30/astronomy.calculator.reut/index.html

The Antikythera Mechanism is the earliest known device to contain an intricate set of gear wheels. It was retrieved from a shipwreck off the Greek island of Antikythera in 1901 but until now what it was used for has been a mystery.

"Our recent work has applied very modern techniques that we believe have now revealed what its actual functions were."

[David]

anon:

2. The PHOSITA is not charged with knowledge of all prior art for obviousness purposes (he is for anticipation purposes). He is charged with knowledge of "analogous arts." Lovell Mfg. Co. v. Cary, 147 U.S. 623 (1983).

Just to clarify my previous point, I did qualify "all the prior art" by stating "whatever scope that is" (i.e., analogous)

Notwithstanding, the above statement/quote you make is interesting because I can't think of an instance where a 102 reference that disclosed the invention would be considered not "analogous."

[David]

Tom:

You wrote:

"The fiction that the PHOSITA knows all prior art in that art is not really too far from the mark. But, the further one gets away from the art, the less likely the PHOSITA will have knowledge of it unless it is common or ubiquitous."

I guess the point I was making was directed to the "breadth" of analogous/prior art. Since this can be fuzzy at times, as illustrated by the case law, the applicable art may be broader than what one expects. :)

[Alan]

This is a jump to another country. I reviewed 48 infringement rulings made this year in Japan at the District and IP High Court levels. The most frequent ruling against patent holders is invalidation due to obviousness.
=========
Cases in District Court 35

In favor of patent holder 11
Against patent holder 24
Reasons:
Obviousness 12
Lack of novelty 2
Noninfringement 7
Other 3
=========
Cases in IP High Court 13

In favor of patent holder 2(1 reversal)
Against patent holder 11(1 reversal)
Reasons:
Obviousness 6
Lack of novelty 2(1 reversal)
Noninfringement 2
Other 1
=========
All cases 48

In favor of patent holder 13
Against patent holder 35
Reasons:
Obviousness 18
Lack of novelty 4
Noninfringement 9
Other 4

[stepback]

It's fun to see how many commentors here feel they are discovering a "new world" as they rush head first off their personal Nina, Pinta or Santa Maria and into the 103/TSM debate.

All this fuss reminds me of how almost every new teenager thinks he or she is the first one on the planet to discover, you know, s-e-x. It doesn't dawn on these teenagers until many years later, after the flames of first passion have subsided, that the ancients struggled with the very same issues.

So it is with the obviousness issues. Many a smart judge have tackled the very same questions from the start (with the 1952 Act or even before) regarding what the proper balance is of hardships to be imposed on inventors/patent owners versus the allegedly infringing sectors of the public. On the one hand you don't want an invalidation system that is totally arbitrary and capricious (IOW, it's "obvious" simply because "I" the judge or Examiner says so.) On the other hand you don't want a system that is so tilted in favor of inventors that those with even the most trivial of contributions are encouraged to pursue a patent because they know the burdens on the Examiner and/or Judge will be so onerous that from a practical-pragmatic standpoint it will be virtually impossible to "prove" the claimed invention obvious.

At the end of the day there has to be some sort of articulated test that makes all involved feel the system is "fair". My suspicion is that TSM will be recast as something under a different name (i.e. let's call it the "casting-one's-mind-back" test, the COMB test --ha ha) but it will basically be the same thing under the sun that it is today.

[Fredric Goldstein]

Anon, I backed off Mooney, as you suggested, but bumped right into you having a go at him. Get back in line.
Irrespective of your comments to him, and I will not enter bizarro world and have me defending him, Mooney has previously on numerous ocassions represented himself as a patent attorney who does prosecution (and some litigation). It has been taken as true.

Meanwhile, back to reality, John Doe's Nov 30, 2006 at 02:05 PM post was excellent and deserves more discussion. It's not HOW the two references would work together to solve the problem at hand which meets the obviousness inquiry but WHY would a PHOSITA be motivated to combine specifically those two references/elements. It's undeniable that even given the two references, a PHOSITA still may not be able to come up with the answer (after all, all references have several elements).

But that's not the test. He first needs to find and expend efforts to use those two (or more) references together. WHY he would find/choose that particular reference among all the existing prior art (which should be known and available to him) is the heart of the matter.

That some of the Justices could not understand what "motivation" means in this context is downright scary. On a Duh scale, it'd be an 8.2. And then there's the aftershocks...

[Geoff Cooper]

In the Bush administration, everything is for sale. The Bushites don't like the idea that the law can help the less wealthy stand up to the more wealthy, as they exist only to serve the wealthy. Therefore, a weakening of patents is very much on the agenda for the Bushite right wing, as we see in the comments of Roberts and Scalia. Make it more difficult to support the validity of a patent, and pure economic power will win out over justice every time. The Constitutional protection for patents are a Jeffersonian ideal of the Enlightenment, and if there is anything the current fascist (and I do not use the term lightly) government hates, it's enlightenment, Jeffersonian ideals, and the concept that justice is not just another commodity to be bought and sold.

[anon]

Fred, "anon" appears to be a popular name. Distinction can be made by the associated email addresses.

[Tony]

Stepback,

Excellent comments. I don't know whether the ultimate outcome will merely be a renaming of TSM, but I have a gut feeling that once all of the dust settles after the SC decision, things will go back to business as usual. This is excepting, perhaps, the CAFC using new jargon and perhaps indicating a willingness to invalidate more patents for less concrete/written reasons.

In the meantime, there will be a least somewhat more litigation due to the now-more unsettled aspects of patentability.

I also concur with pds (Nov. 30, 1:04pm) regarding stopping more patents at the PTO level by increasing the quality of examination and oversight. I think that this, and maybe an opposition period, may ultimately prove to be more helpful and serve the public interest better than changing TSM.

[Fredric Goldstein]

Anon (real one), you're right of course, I should have noticed the distinctly different tone and content, even apart from the non sequitur postings vis-a-vis that prior one of yours. Apologies.

In this light, shouldn't it be discouraged from using another's nom de plume, considering the confusion as to who one is listening/talking to? Hence, I assume, your abbreviated version of anonymous, already taken by someone contributes here ocassionally.

[Geoff Cooper]

I'd think that anyone who would post here would have the integrity to use their real name and not hide behind a screen name. This isn't an AOL chat room, but supposedly a collegial discussion group for attorneys and other professionals, or at least those who have the courage of their convictions.

The spelling ability of some of the posters is pretty poor as well--"ocassionally"? This thread is a step down in quality from the usual Patently-O discussions, I must say.

[Tom Barniak jr]

Wow, get a load of Geoff-well, smell me We're all human(MM excluded) and make speeling errors. Get over it. If the Supreme Ones modify TSM (they didn't really say gobblygook-correct spelling Geoff-did they-good Lord) then I hope the total patent text in a patent app. will become more an important factor coinsiding with the claims. Secondary factors(long felt need-some commercial success) will carry more weight in prosecution and infringement hopefully also. Just a thought.

[Michael Slonecker]

Advise, Propound, Exhort (APE for short) will likely be the new test. It incorporates all the consituent elements of TSM, but uses new words to avoid its negative connotations.

I give all the credit to Roget's for its invaluable assistance in crafting this new "test".

Alternatively, APEETC might be another candidate. It captures the "APE" test, as well as the "etc." that formed such an important part of defining secondary considerations articulated in Graham.

[the real anon]

Stepback,

I too like your comments. But especially about all the pundits or other so-called expert commentators who come out from under rocks (or out of closets - Mooney) as if they are the only ones who are capable of forming an idea about the topic or who ever have formed an idea about the topic. The blogosphere is full of them.

Speaking of gobbeldygook. Did you read the Bush brief? I like Cooper's take on the Bush administration. Some conservative he has turned out to be...

Once again, where is Learned Hand when we need him. We need more solid dispassionate apolitical justices on the bench who are not afraid to delve headlong into a complex patent case and come up with the right answer. The current motley crew of political hacks hasn't done a thing for the patent law in decades. Pfaff?! Festo?! now KSR!?, give me a break.

We need someone like Rader on the Supreme Court bench.

[Geoff Cooper]

I guess Mr. Tom Barniak, Jr. can reach a depth of discourse that is beyond me. Clearly this site is being invaded by the usual cyber-scum. I suppose it's useless to try to have an adult discussion among educated people without them slinking in.

[Paul Cole]

I would just like to take a few moments to reinforce and amplify what Geoff Cooper has said about contributions to this site.

Firstly, if you wish to reply to any of the contributions that I have posted you will find my real name and a real e-mail address (which I use for private and academic correspondence, not business correspondence). There may be people who for business reasons need to make anonymous posts but this should be done only when it is essential. If you do not have the courage to say who you are, then your opinion is more likely than not to be worthless.

The second point is, if anything, even more serious. On this site we are guests of Dennis Crouch. He runs a superb and scholarly site. On KSR, for example, we have access immediately to all the briefs and much of the academic writing on this important subject. If Dennis did not do this hard work, we would have much more investigation to do to keep ourselves up to date.

The ability to post comments is important. We can generate debate. But it should be serious, informed and thoughtful debate. If you do not have adequate scientific and legal knowledge, and if you do not have something to say that makes use of that knowledge and advances scholarship concerning patent law, you should NOT be posting here. I do not think Dennis will tolerate turning his site into a mere chat room, and if restraint is not shown, then we can all expect postings to become more difficult.

We are, or should be, all friends of Dennis. In future we should make sure that our postings respect his hard work and are commensurae with the quality of what he procduces.

[Fredric Goldstein]

Geoff Cooper, you can't be serious. These aren't briefs but quick memos unedited and certain to occassssionally have a typo (gee, I guess in my excitement I pressed too long on that pesky "s" again). The issue is the quality of the content and if you're going to comment on that, pick some reasoning other than a typo, reminding me of my fourth grade teacher.

If you work in the legal field, you'll see many emails between attorneys and attorney/clients (sans secretary) with the occassssional typo (oops, again). Does that reflect on the quality of the thoughts? Is "nitpick" spelled with one t or two?

Yes, you're right, this is supposed to be a higher level discussion than AOL chat rooms but that's not reflected in your own meaningless post.

Without having to defend myself or any of the other typos in others' postings, I've contributed literally dozens of postings (with nary a typo, I dare say). Where are your contributions? Stop playing the o'school ma'am and get in on the fun. But be careful, your spell check won't work on this website...

[Michael Slonecker]

Mr. Cole.

I do believe that some lighthearted banter is appropriate, but also believe that as a forum it should reflect decorum and courtesy at all times. Persons will always hold opposing views, but propounding a view while belittling the view of another is not professional.

[Malcolm Mooney]

"I also concur with pds (Nov. 30, 1:04pm) regarding stopping more patents at the PTO level by increasing the quality of examination and oversight. "

I also agree with pds. I think everybody does.

The problem is that the likelihood of a sea change in Patent Office administration and management is close to zero. Have you noticed IBM and Big Pharma lobbying to increase the way in which the PTO is managed and funded? I haven't. I think there is a likely explanation for why we haven't seen such lobbying behavior on the part of the big players. Maybe somebody can read my mind. ;)

[Malcolm Mooney]

"The spelling ability of some of the posters is pretty poor as well--"ocassionally"? This thread is a step down in quality from the usual Patently-O discussions, I must say."

If you stick around long enough, you might get some friendly psychiatric advice.