KSR v. Teleflex: Supreme Court on Obviousness

KSR Int'l v. Teleflex, Inc., 550 U.S. ___ (2007).

In a unanimous decision, the Supreme Court rejected any notion that the concept of obviousness in patent law can be rigidly or narrowly defined -- holding that "the obviousness analysis cannot be confined by a formalistic conception."  However, the opinion does not radically change the notion of obviousness or immediately invalidate a wide swath of already issued patents.

The question of nonobviousness comes-up in Section 103 of the Patent Act. That section declares that a patent shall not issue if "the differences between the 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."

But what is "obvious"?  Certainly, this amorphous term has continuously stumped engineers and scientists for the past 50+ years.  One particular issue involves combination inventions that take various existing elements and combine them in a new way.  When is such a combination obvious?  In an attempt to provide improved notice and regularity, the Court of Appeals for the Federal Circuit (CAFC) introduced a test that holds a combination invention is nonobvious absent some teaching, suggestion, or motivation (TSM) to combine the various parts together.

In KSR, the Supreme Court began by rejecting the CAFC's test for obviousness:

"We begin by rejecting the rigid approach of the Court of Appeals. Throughout this Court's engagement with the question of obviousness, our cases have set forth an expansive and flexible approach inconsistent with the way the Court of Appeals applied its TSM test here."

At this point, I would have expected the Court to obliterate the past twenty-five years of obviousness jurisprudence and begin again with a clean slate. It did not do that — rather, the opinion appears to simply refine the particulars of how prior-art can be combined and when a "combined patent" will be seen as obvious.  Without explicitly saying so, the Court's opinion appears to affirm the CAFC's more recent pronouncements of a flexible test of obviousness. Dystar, Alza.

Patent Value: In the short-term, this case reduces the average value of patent holdings. Courts should find it easier to invalidate patents based on expert testimony and the jury's concept of obviousness. The story also becomes more important -- and attorneys who can tell an "invention story" will be in demand.  During prosecution, inventors and experts should get their pens ready to sign declarations of patentability.

Preliminary Gems:

• PHOSITA is Creative: A person of ordinary skill is also a person of ordinary creativity, not an automaton.
• Obvious to Try: When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.
• Hindsight Bias: Rigid preventative rules that deny factfinders recourse to common sense, however, are neither necessary under our case law nor consistent with it.
• No Presumption of Validity: We need not reach the question whether the failure to disclose Asano during the prosecution of Engelgau voids the presumption of validity given to issued patents, for claim 4 is obvious despite the presumption.
• Patents Halt Innovation: Granting patent protection to advances that would occur in the ordinary course without real innovation retards progress and may, in the case of patents combining previously known elements, deprive prior inventions of their value or utility.
• Common Sense: Mentioned glowingly five separate times. 

Notes:

• Download KSRvTeleflexOpinion.pdf
• Joe Miller
• David French
• Aaron Barkoff
• Michael Madison
• Patent Hawk
• Michael Barclay
• Solveig Singleton
• Larry Ebert
• Quizlaw
• 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]

Comments

[PatLaw]

"However, the opinion does not radically change the notion of obviousness or immediately invalidate a wide swath of already issued patents."

I wouldn't be too quick to jump to this conclusion. Time will tell how the DCs and CAFC apply this case, but the dicta at least goes far beyond TSM to discuss obviousness in general, in a way inconsistent with the CAFC's historic approach.

[Jose Mata]

"However, the opinion does not radically change the notion of obviousness or immediately invalidate a wide swath of already issued patents."

But, as noted, the Court does approve invalidating at least some patents based on an "obvious to try" approach. That alone appears to be a major change in the obviousness landscape.

[KaadBaak]

"However, the opinion does not radically change the notion of obviousness or immediately invalidate a wide swath of already issued patents."

It may be that the CAFC uses its post-cert language as a springboard to argue that KSR doesn't really change its notion of obviousness, but there are numerous quotes from the Supremes that suggest otherwise. You cited some of them, others include:

"For over a half century, the [Supreme] Court has held that a patent for a combination which only unites old elements with no change in their respective functions ... obviously withdraws what is already known into the field of its monopoly and diminishes the resources available to skillful men."

"The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results."

"The [Supreme] Court [in earlier cases] recognized that when a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result."

"[In another earlier case], the [Supreme] Court derived ... the conclusion that when a patent simply arranges old elements with each performing the same function it had been known to perform and yields no more than one would expect from such an arrangement, the combination is obvious."

"[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill."

"[A] court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ."

"Granting patent protection to advances that would occur in the ordinary course without real innovation retards progress and may, in the case of patents combining previously known elements, deprive prior inventions of their value or utility."

I suspect there are wide swaths of patents out there that could be accurately described as falling into one of these descriptive categories.

[Doug]

pure hypothesizing here...

I wonder whether this could be an impetus for harmonization of obviousness law between the U.S. and E.U. For all of the flaws discussed in the previous thread, the possibility of a statutory "inventive step" rule in the U.S. might be a happy medium between strict TSM and Black Rock/Sakraida, not to mention normalizing the test between the two jurisdictions (...at the same time that the EU may be implementing an IDS requirement...)

This is not an end to the value of patents, as some have declared. If anything, it simply means the burden of proof for showing nonobviousness has practically (although not legally) shifted to the patentee during prosecution, and the importance of the Graham factors and secondary indications of nonobviousness gain importance in litigation. Its at most a wash for innovation: for the increased difficulty facing every company seeking a patent on their new invention, there is also now an increased barrier to all the patent holders (legitimate or illegitimate) on surrounding technologies threatening their business model.

[David Boundy]

This is as mangled a decision as Justice Thomas' decision in Warner-Jenkinson - he stated opposite positions on so many things, and got the rest so fouled up, that the Court had to revisit almost identical issues and clear them up only a few years later in Festo. The same thing will happen here - almost-identical cases will be back at least once, perhaps twice in the next five years. There are a number of points of obviousness law that are well-developed and well-understood by the Federal Circuit and patent bar, and completely consistent with what the Court holds here. Yet the Supreme Court criticizes the Federal Circuit for views that the Federal Circuit does not hold. But the fine points were lost on the Supreme Court clerks, probably because the distinctions couldn't be elaborated within the brief page limit.

This is an unfortunate consequence of the way we do appeals - a "good" appellate brief is really offensive to anyone that knows anything about the case, because it's always simplified and "dumbed down" to the point that it bears no real resemblance to the real issues. It's also the consequence of a "dumbed down" Federal Circuit opinion that was not written for publication.

But elaborating all the bollixes in KSR will take more time than I have today.

[Malcolm Mooney]

I agree with Dennis in every regard except this one:

"During prosecution, inventors and experts should get their pens ready to sign declarations of patentability."

Ouch! Is someone expecting the Supremes to hand down an inequitable conduct decision soon?

Such declarations are the primest red meat for litigators seeking to expand the putrid fumes of inequitable conduct. I avoid decs unless absolutely necessary. With my prosecutor hat on, my job is to articulate the reasons for allowability in such a way that declarations are no longer necessary. I sign my office actions and am duty-bound to tell the truth, a truth which is ideally self-evident from the faces of any extrinsic documents I provide to the Examiner.

[Inventor]

I think this previously posted comment may also fit here (and it adds to Doug's comment):

On Nov 29, 2006, Dennis wrote:

“The new key to avoiding invalidity will be secondary indicia of nonobviousness. Look for a 9–0 decision ...”

and it bears remembering and repeating.

[Anon E. Mouse]

So...does this mean synergy is back (or that it never left)?

[Joe Smith]

"Yet the Supreme Court criticizes the Federal Circuit for views that the Federal Circuit does not hold."

In Dystar the CAFC complained that they had been widely misunderstood. If they were misunderstood it is their own fault. IMHO the CAFC got off extremely lightly today.

[anon coward]

Hey, I agree with Dennis and would go even farther. I don't see how this KSR ruling changes anything regarding TSM analysis. While it is true it will be interesting to see what the future holds insofar as PTO and Fed. Cir. response, the Supreme Court firmly stands behind TSM analysis and only criticized the Fed. Cir.'s implementation in this particular case. Basically, the S.Ct. said, "we like this new test you created, you just applied it wrong here." Specifically, the Fed. Cir. failed to give weight to motivation derived from market forces and commercial trends. This motivation always existed and Examiners could have previously applied such logic in making a rejection if they were sufficiently creative to conceive of it. The fact that they generally weren't sufficiently creative (not surprising since they are trained as engineers and not lawyers) does not mean that such factors should be excluded from a proper obviousness analysis.

[Anonymous]

"However, the opinion does not radically change the notion of obviousness or immediately invalidate a wide swath of already issued patents."

Crouch, what the hell are you talking about? This is precisely the bombshell everyone's been waiting for. Not only did the Court completely emasculate the TSM test, it also brought back from the dead the "obvious to try" standard. And as for the "recent decisions" (Dystar, Alza), I think it's plainly obvious these were a preemptory strike from the CAFC knowing the Supreme Court would own them on remand. And, above and beyond the holding of the opinion, you'd have to be deaf to ignore its tone. "We begin by rejecting the rigid approach of the Court of Appeals." Plus, let's not forget Kennedy's little song and dance at the end, reminding the CAFC that they are not the emperors of Title 35. And, to top it all off, it was a 9-0 obliteration, a touchdown and a safety or two field goals. If the Court's wording didn't convince you that there's a "new sheriff in town" when it comes to obviousness, absolutely nothing will.

[me]

Seconday indicia? Most patents are never on a product, most are filed during research. Are you saying we can't file early becuase of the need for secondary indicia, but we can't file late because first to file is coming?

[anon coward]

Anonymous, we must have read two different Opinions. The TSM remains completely in tact. Where does it state otherwise? With regard to the "obvious to try" question, the S.Ct. says only that that just because something is obvious to try, doesn't mean it is unpatentable. When hasn't that been the case? Go back and read MPEP 2145.X.B. Agreed as to the tone, but face it, the "new sheriff in town" tone is bluster. The S.Ct. knows they don't have the bandwidth to review every Fed. Cir. decision, and the Fed. Cir. will take from this decision only what it wants.

[Lazerus L.]

Since I am on the examining side & not litigation, I can not compentently give an opinion on how it will effect issued patents & litigation/infringement cases (though, based on what I've read here, it sounds like it will be a little easier to invalidate & prove obviousness).

Personally, I am more concened in how it will effect teh examination process. There, I think it will help for some cases, but not all. The SC did not throw out TSM. THey just said that a strict reading & need for it is not needed in every case. hAnd that obviousness can be shown in other ways.
I think that for good examiners, things won't change too much. It will just make those stupid claims (e.g., "where the output is a printer", "where the output is a display", etc.) easier to deal with (I know you lawyers need these claims for litigation; for examiners they are a pain because we need to find details that are really not what the invention is about. If we don't treat them just as completely as the main claims, we can hit with an error. We have to waste time & read, find art & reject things that are common (limiting the # of claims examinered will help this :) )
Conversly, for bad examiners, this may become something to use as a crutch (like some do with official notice or design choice) to just reject things and argue it's all out there so it's obvious or it's obvious to try all possible things so your claims are obvious. It is here where I think there will be a problem in prosecution. Anyone have similar or differeing opinion for prosecution (other than "all examiners are bad")?

LL

[Malcolm Mooney]

"Are you saying we can't file early becuase of the need for secondary indicia, but we can't file late because first to file is coming?"

I think he's saying only that applicants aren't going to be able to get away with whining "Hindsight! Hindsight! Hindsight" when the examiner points out that any rube in the art would have proposed the claimed solution to address the recognized problem.

So what's left? The old "teaching away" approach or the Graham factors.

My opinion is that, other than "long-felt need" (when correctly applied) some of the Graham factors are rather dubious ways of determining non-obviousness. It is likely that we will see some CAFC cases addressing the shortcomings of these factors in the near future ...

[Malcolm Mooney]

"Anyone have similar or differing opinion for prosecution "

LL -- my opinion is similar to yours.

[me]

I think we ll agree that this will lead directly to uneven prosecution. I guess now I want the less educated Examiner as he/she won't think as much is obvious.

[anon coward]

Laz, I agree with you. Incidentally, why not just take judicial notice for those cumbersome, "output is a printer" etc. claims? Surely, it would not be an error to take judicial notice that printers were well known output devices.

[Lawrence]

". . .any rube in the art would have proposed the claimed solution to address the recognized problem."

One question always comes to mind when I hear this - if a present applicant's invention is so obvious, how come the rubes in the art didn't think of it first? If patentees of patents cited as 103 art did not include what now appear to be obvious combinations in their patents, maybe such combinations were not obvious to them, only to someone reviewing the present application.

[Lazerus L.]

Re "anon coward", you could take judicial/official notice for something like that, though some SPEs, etc. don't like it as it has been abused a lot with people taking notice of significant items & not miscelaneous & common items. And, maybe I could have used a little better example. The main point was a lot of dependent claims are just tack-ons for litigation and not really intended to define over the prior art (relatively common things, but not always things you can take notice of using MPEP 2144.03 as a guide). Also, too often, even when we properly take official notice of very standard things (like above), the lawyers still challange us to show a reference that shows that it would have been obvious to "make an output a printer". Can't win either way.

thansk,

LL

[Lazerus L.]

Re: "Lawarence", maybe (particularly if the reference is NPL) they thought it was not necessary to say something so obvious? Or that they thought it would dumb-down their paper (or patent). It is not necessary to say that water @ 100F & 1 atmosphere is wet, either. If my reference does not say it is wet, do you think you should get a patent on it? I always hated it when a lawyer made this argument "that if it was so obvious why didn't the reference already do it". At that point I knew he/she either didn't have a clue or was really desperate & grasping at straws.

It seems that at least some people here think there shouldn't even be a 103 (which is what the Fed Ckt & the TSM test kept pushing towards). Afterall, if it was known, make the 102. If it's not explicitly out there, allow it. Afterall, the TSM test kept getting so rigidly used as to try to make the standard "102 or make it blue" (for you oldtimers). Saying there must be an explicite teaching, suggestion and motivation in the references was basically trying to say don't make a 103. Just allow it. It needed to be pulled back, at least for examination.

thanks,

LL

[Malcolm Mooney]

"One question always comes to mind when I hear this - if a present applicant's invention is so obvious, how come the rubes in the art didn't think of it first?"

Who says that they didn't?

Who says that the rubes didn't think of it but balked at the idea of spending the time and money to file an application because they didn't have the time or had something better to do or simply felt that such things were too obvious to patent?

And here is where the rubber meets the hard unforgiving road: the point of having an "obviousness" test is to weed out deserving innovation from patent office exploitation.

Patents should not be granted simply for having the time and energy to scan the horizon and file a bunch of crap generically drawn to The Next Thing That It Would Be Nice to Have a Patent On. The CAFC's strict TSM test, however, would have encouraged that sort of low-level activity.

[Lawrence]

"Who says that the rubes didn't think of it but balked at the idea of spending the time and money to file an application because they didn't have the time or had something better to do or simply felt that such things were too obvious to patent?"

Pure speculation. Maybe this happens here and there. But if encompassing the "obvious" combination would only be a matter of adding text to a specification you're already planning to file, the better explanation is that the patent drafter didn't think of the combination. The drafter has an economic incentive to include as much coverage as possible, no? And if the drafter didn't think of the combination, that's a fairly good indication that rubes in the art would not have thought of it, either.

Then again, since the standard is the hypothetical person of skill in the art, it could just be that this hypothetical person is not a very good representation of the standard rube in the art.

[John Darling]

I love the old "it's so obvious nobody ever bothered to disclose it" argument. It's the perfect "evidence" of obviousness for the examiners and accused infringers. How exactly does that fit into the "determine the scope and content of the prior art" prong of Graham?

[Malcolm Mooney]

"The drafter has an economic incentive to include as much coverage as possible, no?"

Let's take a complex chemical composition. With the help of computers and e-filing and a lot of time, it's "possible" to expressly describe every possible species of every generic element in every claim, and every possible industrial or therapeutic application conceivable. When printed, such an application might require several forklifts and a large building to house.

Is that sort of a document "economically feasible" to produce?

The argument that "if the drafter didn't think of the combination, that's a fairly good indication that rubes in the art would not have thought of it" simply does not hold water. Moreover, it does not address the very real (nothing "purely speculative" about it) exploitation by many so-called "innovators" of the US patent system. Again, that practice is the mining of newspapers, trade magazines for "trends" and quickly filing applications to grab a piece of the elusive pie. Is that "innovating" when hordes of other "innovators" are doing the same thing at the same time?

An interesting research project would be to simply look at big news releases re disease outbreaks and see how many applications referring to that area are filed in the days and weeks afterwards. SARS might be a good example. Undoubtedly some of the applications are worthy of protection on their merits but as anyone who has prosecuted a patent knows, much of what turns up in an analysis of this sort will simply be boilerplate with "SARS" added to the list.

But the prepared applicant or applicants ready to file the application within a moment of hearing the breaking news ("Hey, lawyer, file an application just like the last once except refer to detecting this particular mutant") has a better shot at gold. Note that there is no public downside to discourage the filing of this sort of application. Everyone in the community will be aware of the implications in due time, long before the application is published. In fact, by the time the application is published, the community may well have moved on to bigger and better things.

The public downside to filing these sorts of applications (much less allowing patents on them) should be obvious to everyone by now. Certainly it was obvious to the Supremes! ;)

[anon coward]

In my discussions of this case with colleagues, there are two issues that keep coming up. The first is whether "obvious to try" is changed. I am not sure it has. Review, for example, the recent decision in Pfizer v. Apotex, Inc., which has a lengthy discussion of "obvious to try" starting at page 27 . The Federal Circuit strikes a balance between "obvious to try"/undue experimentation and the fact that absolute predictability is not required. The Federal Circuit held in Pfizer that a claim was obvious since motivation was present and there were limited number of options available. This seems to mirror the Supreme Court in this case, although no one has yet indicated how many options or parameters you need before the result is non-obvious.

The second is whether there is any test of analogous vs. non-analogous art left after this KSR decision. The mention in KSR, page 13 of field of endeavor: "When a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one," seems to imply that regardless of the field of endeavor of the references, if motivation is present, the result is not patentable. I find this language in KSR extremely confusing. They do not directly address the analogous art requirement (which is based in 35 U.S.C. 103(a): "A patent may not be obtained . . . if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious . . . to a person having ordinary skill _in_the_art_ to_which_said_subject_matter_pertains_"). I am not sure the Justices were aware of this requirement, and its reference in KSR to the field of endeavor sounds like dicta to me.

[Lazerus L.]

At least in the pre-PG-Pub world, what if someone DID disclose and claim it in a patent application & the case went abandoned? No one would ever know & it would not be available as prior art. There can be a lot of good reasons why there is not explicit disclosure for something very obvious.

thansk,

LL

[Malcolm Mooney]

"How exactly does that fit into the "determine the scope and content of the prior art" prong of Graham?"

You still need to find all the elements of the invention in the prior art. If you can find all six elements of the claim in two references (with, say, 5 of the elements in one reference) you are in worse shape than if you need to rely on five separate references.

I don't believe the fundamentals have changed here, nor would I argue that the "soft" TSM test is dead. It's just that the CAFC's *strict* application of the test -- where the suggestion to combine must be express in the prior art and narrowly drawn to the claimed combination -- has been shot down with a vengeance.

[Malcolm Mooney]

"When a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one," seems to imply that regardless of the field of endeavor of the references, if motivation is present, the result is not patentable."

Well, if the argument for motivation based on allegedly "non-analogous art" does not offend one's common sense or the teaching in the art itself, then a result of unpatentability seems entirely appropriate.

If an Examiner tells me that a method for dissolving compound X in a high salt solution is obvious based on an article describing a kid taking a bath in the Dead Sea, we're probably going to have a discussion about the issue of analogous art.

[Steve M.]

...and patent confusion continues to reign...

[Anon E. Mouse]

MM,

And you will lose. Because it is common sense that a bath in the Dead Sea is a high salt content solution element, a "familiar item[] [with] obvious uses beyond [its] primary purposes." I'm sure even PHOSITA has taken a bath in the ocean. It is common sense.

The problem for applicants (and their attorneys) is that it is always awfully hard to prove a negative, and the burden shifts right over to the applicant as soon as the Examiner asserts that it is "common sense" to combine those elements.

Heck, if there's a "market demand" -- can that supply an element under this opinion, or just motivation? I first thought just motivation, but after re-reading, I'm not so sure.

Moreover, the Examiner can just state that it is common sense. Now what? The TSM test lives on, but only to show obviousness, not nonobviousness.

What's left? Teaches away and unexpected results are the only arguments I see that are left to show *during prosecution* that something is nonobvious.

[AgentG]

I believe that many potential invention disclosures in the pipeline could be adversely affected if 'obvious to try' gets established in case law, even in a restrictive form. Particularly in the software arts, the majority of inventions would likely remain below this new obviousness threshold. What to recommend clients -- keep filing as if nothing happened, or preempt a more restrictive obviousness? Note that the patent bar has been paid handsomely over the last dozen years for generating enormous numbers of patent that are now worthless.

Perhaps what we need is an entire new class of patents for software rather than including them with utility patents...

[Malcolm Mooney]

"it is common sense that a bath in the Dead Sea is a high salt content solution element, a "familiar item[] [with] obvious uses beyond [its] primary purposes." I'm sure even PHOSITA has taken a bath in the ocean. It is common sense."

Well, it beats arguing about hindsight. ;)

[AgentG]

"Granting patent protection to advances that would occur in the ordinary course without real innovation retards progress and may, in the case of patents combining previously known elements, deprive prior inventions of their value or utility."

Unless I am missing something, I believe the symantic argument around obviousness has now shifted to establishing legal meaning for the following terms:
1) 'the ordinary course'
2) 'real innovation'
3) 'combining previously known elements'

Of course, we are also now confronted with their evil twins: 'unordinary course' 'fake innovation' and 'previously unknown combinations'.

These terms are ambiguous and open to inconsistent interpretation. Is that any better than a rigid TSM test? In a very real sense the SCOTUS has only increased the amount of uncertainty all around, in prosecution, in litigation and in the case law, without providing a sufficient and practical replacement for the TSM test.

Ultimately, what remains elusive is the fundamental nature of the inventive act. It is a legal phantom only recognized by its shadows. So as of today, we know less about what constitutes a non-obvious inventive act--truly an interesting inflection point for patent law.

[stuart]

An applicant who submits declaration from PHOSITA(s) to the effect that the claimed invention is not, as of the filing date, obvious to them, should always prevail against subsequent expert testimony that the invention would have been obvious to the expert at such earlier time.

Any court admitting such hindsight expert testimony does so in violation of the clear command of 103.

103 was drawn to preclude vague "rules" such as 'flash of genius' which the US SCT now seeks to revive. The value of the fact-finder being guided by what a PHOSITA says is that it's not argument or speculation.

KSR weakens the U S patent system because it represents a failure to understand why PHOSITA is in 103. Stability and common sense have been sacrificed--for what?

Finally, it is immensely galling that those of us who are registered patent attorneys continue to be ruled by judges who typically are scientifically illterate and don't understand the patent act.

[mayor for life]

Galling indeed.

I think we are exiting the shock phase and entering the anger phase.

Next comes dispair (for example, after reviewing the first wave of actions post KSR).

Then, we must buckle down and become very creative if a patent is to be had for those combination inventions.

Just trying to spread some positive waves.

[Malcolm Mooney]

Don't get down, folks. Sheesh, I haven't had my nip of scotch yet and I'm still feeling good about this case. It's a better decision than Festo, I'd say, by a long shot. Frankly, I don't expect that much will change.

But the hand-wringing: geez, what would happened if the Supremes actually had "started from scratch" and come up with a truly new test for obviousness? There would be even MORE ambiguity than there is now. The CAFC practically *begged* to be shot down with their KSR decision. So the Supremes happily obliged. Sure, maybe some old guy in the line of fire got hit in the face. After he is released from the hospital, I'm sure he'll apologize to everybody.

[R. Dailey]

I don't see that KSR changes too much. Through the late 1980s, the CCPA and CAFC applied the TSM test in light of whether the combination demonstrated a reasonable expectation of success. In the 90s, the TSM test became decoupled from the REOS inquiry. SCOTUS appears to have reawakened this older form of the TSM test. This is probably for the better.

I suggest that the opinion contains one further gem: SCOTUS clearly has given a nod to Judge Newman's concerns regarding the PTO's tendency to make 103 rejections accompanied by nothing more than conclusory statements. Under KSR, the PTO will need to state why PHOSITA would find a particular combination obvious.

[MaxDrei]

With this (unwitting) endorsement of PSA (EPO Problem and Solution Approach) the way is open, for PSA to become de facto world standard for determination of obviousness, with huge benefits for legal certainty and patent law harmonisation. Three cheers for SCOTUS. Up to now, PSA has been ignored, outside EPO circles, because no judge needs to take account of EPO caselaw, and no litigator needs to bother to try to understand it. But, fact is, obviousness takes very little time out of a typical day long trial at the EPO, yet losers seldom grumble with any conviction (unless their advocate has been incompetent). That's because PSA is clinically efficient and rigorously excludes anything subjective, or written with hindsight. The tragedy is that it is so little understood, outside EPO circles, even I might add, and to my greatest disappointment, by English litigators.

Key is the identification of a single starting point, call it D1, from the prior art ocean. With the TWO fixed points of the claim and the D1, we have a GAP. Now we can have a focussed debate about bridging that precise unique gap, at the date of the claim.

Of course the starting point must be fair to the inventor and realistic. That's why PSA restricts D1 to what would have been a realistic starting point for a PHOSITA on the filing date, in the tech field announced by the inventor in his/her specification, and addressing the prior art deficiency announced by the inventor in his/her specification, written of course before the filing date. PSA gives full faith and credit to the inventor. In the words of the CAFC "Be careful what you ask for". SCOTUS speaks of starting from Asano, or taking a pedal like Rixon.

Pointless it is to ask "Is it obvious". The answer would be "It all depends". Better is to ask "Obvious for what?". PSA deals with that by defining what it calls an "objective problem" meaningful ONLY in relation to the pre-defined gap between the claim and D1. Again, no hindsight, nothing subjective, and no post facto.

PSA is like riding a bike. Impossible till you have worked out how to do it, afterwards so ridiculously simple you wonder how you could ever have had a problem with it. Watching somebody else riding a bike you cry "Easy. I can do that". But, you can't, can you. Not until you have learned. PSA is the tool to unlock the obviousness puzzle, in less time than it takes a locksmith to open a very old lock. SCOTUS has cleared the way for the US to adopt PSA, if it finds it helpful.

[BabelBoy]

What is really obvious is that a whole new, out-of-the-box approach to obviousness is needed. Something not obvious. Like variable length patents, say in 5 year increments. Applications claiming unequivocal, huge leaps forward opening up a whole new field of endeavor get 25 years of protection. Those annoying combination applications that we all make our livings writing and prosecuting that claim bugger-all improvement in a vastly crowded field, may get only 5 years of monopoly if the precise combination can't be cited. The client could even apply for different length patents, pay increasing filing fees, and get increasingly greater levels of scrutiny in examination. Also, as a part of the initial filing, the applicant should have to state on the record which of his 53 claims he considers to be worthy of a 25 year patent. Speaking of the record, when will Americans finally wise up and join the rest of the world in prohibiting the file history from being used in court, so a meaningful dialog with examiners is possible during prosecution over complex issues such as obviousness?

[John Spevacek]

So to make an analogy using terminology borrowed from mathematical proofs, TSM used to be necessary AND sufficient to prove obviousness. After KSR, it is necessary BUT NOT sufficient. The definition of sufficiency is now the issue.

[Spevacek got it backwards]

After KSR, TSM is sufficient but not necessary. If there is a motivation/teaching that can invalidate a patent claim (it would be sufficient), but the million dollar holding of KSR is that there need not be TSM.

So, sufficient but necessary.

[Specacek got it backwards]

So, sufficent but NOT necessary...more coffee.

[small inventor (aka "patent troll")]

sufficient, necessary... blah blah blah

This SCOTUS creates more and more legal uncertainty with each patent ruling.
And legal uncertainty is a BAD thing if you are a small party asserting your rights in court.
Now what? If I want to assert my patent against some tech behemot what happens at the patent trial ? There is no TSM found anywhere. But they can certainly find each and every element in some non-patent references scattered across several different fields of study.
Will they bring legions of paid "experts" to testify that this "thing" would be obvious for them to try? I guess they will...
It is already a good tradition for those big tech infringers to have some "independent" experts faking tech demos for them (remember Eolas case and Pei Wei testimony)
With this new uncertainty the whole patent trial thing automatically becomes a hugely expensive and never-ending mess..
But I guess this is precisely what they want ...

[CaveMan]

This ruling casts obviousness jurisprudence back to the stone age (hey, I should know) - or at least 40 years or so.

Let me translate this ruling into simple English.

In the begining, the world was formless and void. Everyone is grousing about "patent quality" and "bad patents." Reasearch in Motion got sued and the Blackberry driods shivered in their knickers. Programmers were afraid to write a line of code and spent all their time blogging. Nothing was getting done. Patents were taking 3 and 4 years to get examined.

And the PTO says, "hey we're doing the best we can, but its hard to meet our production numbers AND deliver quality when we have to spend time actually analyzing the references we find by plugging all the claim terms into our multi-billion dollar computer search system."

Good patent attorneys can fairly easily pick apart our 103 rejections by actually reading the applied references and finding inconsistencies between them that would support NOT combining them"

It would be nice if we could just finish our latte, do our computer search, cob a couple of references together, make up silly reasons to combine the art, as we usually do anyway, e.g. 'Smith fails to teach B, but Jones teaches B, therefore it would have been obvious to combine Smith and Jones to make the world a better place' and then be home in time for Judge Judy..."

and the Supreme Court said "OK great, just look at page 16 of the KSR opinion, toward the end of the second paragraph. Consider it done."

Under this ruling virtually ANYTHING can be found obvious.

Consider now that the "creativity" of a person of ordinary skill can be considered along with the "predictability" of the creative step. Well, my friend, if creativity is the spark of invention, and now it can become a factor in determining obviousness, well, you can figure out the rest.

Since even the most profound inventions are often lurking just a small creative step away from the prior art, this ruling is (as probably intended) going to have a huge chilling effect on patents.

Given the reasoning in this opinion, for example, it is a predictable creative step that levels of integration of circuit chips will increase, therefore I guess there will be no more patents for VLSI inventions that increase integration scale.

I predict a free-for-all period in manufacturing, which, given the sinking dollar, is probably not a bad thing for industry. Unless of course you have some great technology, in which case you are probably NOT going to patent it.

So much for promoting progress.

Of course when those PTO fees stop rolling in, Congress may have something to say about the whole thing.

[step back]

Small inventor (patent troll) has it right. KSR v. Teleflex is a full employment act for the "experts". They will be providing us with psychological profiles of PHOSITA --What was going through PHOSITA's mind? Who exactly is PHOSITA at that precious moment in time? What paradigm is stuck in his mind due to the industry fad of the moment and why is the invention a bold new "paradigm shift"?

Small inventor won't be able to afford the big ticket experts. That puts small inventor at a huge disadvantage. But since when did the big whigs on the bench care about the small guy? What's in your wallet?

[Joe Smith]

How can anyone be surprised at this decision? It seems to me that the patent bar had become too inward looking and too self satisfied and as a result had become disconnected from the broader law and the underlying purpose of a patent system. Now the Supreme Court has taken a modest step to get the CAFC and the patent bar reconnected with reality.

The statement in the decision likely to have the biggest impact in the long term is:

"Granting patent protection to advances that would occur in the ordinary course without real innovation retards progress ..."

[RPP]

Could an EPO PSA approach come back to bite a U.S. applicant based on section II.C? ("Under the correct analysis, any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.").

[Mark Nowotarski]

KSR is a non event at least from a patent value standpoing.

Why do I say that? If you look at the Ocean Tomo Patent Index you will see that patent rich companies actually outperformed the S&P 500 when KSR was announced.

http://finance.yahoo.com/q/bc?t=5d&s=%5EOTPAT&l=on&z=m&q=l&c=&c=%5EGSPC

[anoynmousAgent]

Mark,
The KSR announcement itself is a non-event because everyone knew it was going to happen.
Thus the bad effects were already priced into the stocks before it was announced.
This does not negate the overall anti-patent trend that's been going on for at least 5 years (Festo, ebay, Medimune, Dystar, In Re Kahn, the dreaded 'new rules', the BSA-sponsored legislation that keeps being re-proposed, etc etc etc).
KSR just confirmed this.
I agree that KSR by itself seems like a non-event since the CAFC has already taken this approach in more recent cases.

[Derrick and the Dominoes]

Here, I can sum up the case in two sentences.

If you have an e-commerce patent or e-commerce technology your IP rights in the patent area are useless-at least if you have an e-commerce patent you have a great wall decoration.

If you have a patent, or technology, wherein the ordinary skill in the art is a Phd in Chemistry, a Masters in Electrical Engineering or a Phd in biotechnology plus two years post doctoral experience, you are pretty much good to go and can use the old analysis.

[steve]

While I am not fond of this decision, does anyone think that the Federal Circuit's Liebel Flarshiem case is really more devastating. I mean that case seems to really restrict the interpretation of claims due to the enablement of the full scope language. I am coming from the mechanical side where disclosing one embodiment was typically all that was required.

[Anonymous]

For consistency, I am the "anonymous" poster at 4/30 6:31. I've just got to clarify my comments that the Supreme Court "emasculated the TSM test." It seems like everyone here keeps reminding me, as Crouch suggests, that the Supreme Court didn't GET RID of the TSM test. I narrowly agree: they didn't GET RID of it, but they have certainly forced the Fed. Cir. to make it an afterthought as opposed to a primary concern. If the opinion on this board is that the CAFC did not previously apply the TSM test in a narrow, wooden fashion, and therefore, this opinion changes little, then I stand opposed in the minority.

As for the resurrection of the "obvious to try" standard, I'll clarify again: "obvious to try" from "non-analogous" prior art. Perhaps "obvious to try" from analogous prior art has been kicking around (although, very, very weakly in my opinion)...but it's been dead as a doornail with respect to nonanalogous prior art.

Again, it seems I am in the extreme minority thinking that (1) this does, at least formalistically, have a big effect (even though, the CAFC probably thinks, "Who the hell does Scotus think it is in reversing us?") and (2) the tone and the growing resentment towards the inconsistency of the Fed. Cir. (although, I understand Scotus is much to blame for patent inconsistency after Markman) gives this opinion more weight as a "political gunshot" than your average Scotus patent case.

On an entirely separate note, would anyone like to comment on the idea that the decision, by "expanding" obviousness, reaffirms the "Winslow's tableau" idea: anything you can "stick on the wall" gets in?

[inventor]

Many of the comments miss the point of patents: DISCLOSURE.

The patent system is a system for incentivizing inventors to disclose.

What's happening is that we have a Supreme Court that feels that protecting the wealth of big companies is more important than incentivizing disclosure.

In the long run, we will simply have less disclosure and more of a might-equals-right marketplace, where the big companies appropriate the technologies of small companies with impunity.

[Zeke]

MaxDrei:

Nicely said. The problem-solution approach is a rock in a sea of hand waving. It's too bad that few people really understand this methodical and elegant solution to the obviousness problem.

[small inventor (aka "patent troll")]

"What's happening is that we have a Supreme Court that feels that protecting the wealth of big companies is more important than incentivizing disclosure"

yeah..

This SCOTUS was repeatedly praised for being "pro-business", not just in patent-related cases: look at the Kelo (real estate) decision and the outrage that followed it.
Pro-business indeed...

From now on, Trade Secrets rule ! To hell with patents and disclosure...

[Nathanael Nerode]

"One question always comes to mind when I hear this - if a present applicant's invention is so obvious, how come the rubes in the art didn't think of it first?"

In the computer software field, they usually *did*, but thought it was so obvious that they didn't bother to file a patent, write a paper, or indeed leave any documentation of their actions outside the (copyrighted) software itself.

The independent appearance of the same "invention" repeatedly by dozens or hundreds of people who'd never seen the patent -- and in software, almost *nobody* reads patents -- is a pretty good sign that it was obvious.

"Particularly in the software arts, the majority of inventions would likely remain below this new obviousness threshold."
This is largely desirable -- software patents which are obvious have been issuing at a phenomenal rate -- and it is clearly the intent of the Supreme Court to restore the prior, higher, obviousness standard. If you're filing software patents, they'd better be at least as original as wavelet compression techniques for sound files, not xor for cursor display.

It's funny watching the patent lawyers complain. Nobody else will. The entire problem with CAFC is that it has been run for the benefit of patent lawyers, always erring towards overissuing patents. Erring on the side of overissuing is more dangerous to the public interest than the reverse, and the Supreme Court just said as much. The Patent Office may finally be able to catch up on its backlog, if the masses of obvious business method and software patents stop appearing to clog up the queue.

Since software patents usually make no useful disclosures, their loss is only a net benefit (except to patent lawyers). The only ones whose disclosures are useful are almost certain to survive under the Supreme Court standards -- perhaps the patents on sound compression techniques which are based on observed properties of human hearing, for instance.

I think Derrick's summed up the practical effects pretty well. If you're in a slow-moving field where research is expensive and difficult, a field where people scour patents for new disclosures, your combination patents are probably mostly going to go through no problem. If you're patenting "business methods" or software, you will have to show something really original, not the usual crap.

[small inventor (aka "patent troll")]

"The only ones whose disclosures are useful are almost certain to survive under the Supreme Court standards "

Oh, yeah, they (patents) will eventually survive, but you (small inventor or undercapitalized startup) certainly will not... when patent litigation drags on for years, with legions of paid "experts" hired by big tech infringers testifying about the obviousness of e.g. apllying wavelets to sound compression ("obvious to try" I guess)

[MaxDrei]

Keep 'em coming folks. I mean the cries of "We are all doomed, doomed, doomed". Pure entertainment for anybody practising in the European area, where concepts of novelty, obviousness, sufficiency, clarity, priority date entitlement, new matter, after 27 years of EPO jurisprudence, are all pretty well done and dusted, and the USPTO and the CAFC are rowing towards EPO legal certainty as hard as they can. I admit that national pride in Europe still blocks a European standard for claim interpretation, a solution to the translation scandal and the creation of a pan-European CAFC, but readers will surely agree that national pride as a factor to be reckoned with is by no means exclusive to Europe. I await now wholesale adoption within the USPTO of EPO-style PSA. It might take some time to emerge though. Training all those Exrs will be a formidable and very lengthy task.

[Nathanael Nerode]

If I remember correctly, wavelets were invented for sound analysis by (employees of the) holders of the core patents, who if I remember correctly are universities and big corporations.

Currently litigation drags on for years in software cases and most defendants settle *even if* the patents involved are mind-numbingly obvious, thanks to uncertainty as to whether these obvious patents will be upheld. From the POV of software, this case increases certainty (that they won't be).

I think the actual source of the problem was the Federal Circuit's orders forcing the Patent Office to issue patents it didn't want to issue, based on the overly strict definitions of "obviousness" repudiated by the Supreme Court in this case. This has led the Patent Office to over-issue. If the Patent Office stops overissuing, it should make it possible for the presumption of validity to return to its proper place.

I suspect what's really wanted for "certainty" is a better definition of the POSITA. It's clear that the threshhold for patentability should be very different in different fields, because they have different POSITAs. Perhaps the best thing to do would be to have the patent office create a formal classification of all known fields with their POSITAs (perhaps based on the industry or job classifications already existing?), and update it regularly. Only a tiny minority of patent applications will be in a brand new field, and those will be almost certain to be nonobvious. There's a new proposal for you. :-)

[the unknown patent lawyer]

KSR and Liebel Flarsheim are two long-overdue steps toward sanity. The fundamental principal of the patent system must be that the rights (if any) that you obtain are commensurate with the what you have done (if anything) to advance the state of scientific / techical knowledge. Both move us closer to something like that.

Of course the hard part is creating an examination and court system that screens out the junk and only lets the legitimate inventions stand. How are we doing? Applicants clog the PTO with applications drawn to anything and everything they come up with. Attorneys / agents, who often do not have the expertise or real-world experience to tell what is new from what is conventional, write the applications to be as generic and non-commital as possible. The applications are examined by examiners who often have no real-world context to draw upon, who refer primarily to prior US patents that, besides being out of date, represent only a fraction of what is known in any given field (not to mention often being poorly written and even intentionally vague), and who too often demonstrate zero grasp of the legal principals that they are charged with applying (or the ability to express a cogent thought in writing, or reasonable English language skills... ). And then once the patent is granted, its value derives from how much a jury of bumpkins can be persuaded to award in damages for its infringement.

There is very little justification for a presumption of validity, given the current ham-fisted system (speaking from the EE perspective anyway).

[anoninventor]

I've read through the SC's decision on this 4 times now, and the more I read, the happier I become with this one. As an inventor, this decision pretty much says that when I invent something that represents a "new paradigm", the run of the mill engineers in my industry can no longer claim my work by throwing prior art phrases at the end of each of MY independent claims and encapsulate my work with OBVIOUS IMPROVEMENTS!!!!

The cool thing about KSR is that there was a motivation to combine the specific limitations claimed, at the time their application was submitted, STATED IN THE PRIOR ART in reference to "analogous means". I don't see this killing the "Hindsight" arguement at all, but rather that the supreme court thinks that 103 should actually mean something, and that one of ordinary skill in the art is NOT presumed to be completely brain dead.

Regarding the effects of this on existing patent applications and recently issued patents, I can tell you that this really impacts a ton of apps pouring out of the biggest companies in my industry. In my industry at least, engineers working for large companies do not invent (projects that require invention are avoided at all costs as the risk of failure, and therefore the risk of termination for cause, is incredibly high), and while they are generally quite intelligent, they are not creative in the sense of being able to concieve of something that is unanticipated by the prior work of inventors.

At the end of the day, I see this as a real step forward for creative folk re patents - those who are merely intelligent and knowledgable, yet lacking in extreme creativity, have just been given their walking papers by the supreme court.

[anoninventor]

I see this as a real step forward for "real" inventors (those of extraodinary insight AND creativity)as opposed to "variation on a known theme" inventors (those who simply improve product design based on previously identified technology) - in essence, people who are simply intelligent and knowledgable, but not creative and insightful, have just been handed their walking papers by the Supreme Court in the arena of patents.

[small inventor (aka "patent troll")]

"If I remember correctly, wavelets were invented for sound analysis by (employees of the) holders of the core patents, who if I remember correctly are universities and big corporations."

Sorry, my friend.. your memory is deficient..

Wavelets were not invented for sound analysis
http://en.wikipedia.org/wiki/Wavelet

And the primary application of wavelets is actually image compression, not sound compression

But, hell, what's the difference ? Image compression, sound compression...

Obvious to try

[anoninventor]

Sorry 'bout repetitive posts, my 'pooter hiccupped.

[SF]

As I read the KSR opinion again, I don't see any rejection of the TSM test, merely the rejection of the rigid application of that test.

The Court said, "The obviousness analysis cannot be confined by a formalistic conception of the words teaching, suggestion, and motivation, or by overemphasis on the importance of published articles and the explicit content of issued patents."

The Court added, "Rigid preventative rules that deny factfinders recourse to common sense, however, are neither necessary under our case law nor consistent with it."

Finally, the Court left it up to the Federal Circuit to determine whether its more recent TSM cases "describe an analysis more consistent with our earlier precedents and our decision here."

I expect the Federal Circuit to continue to use their less rigid TSM test, which has been recently articulated in Dystar, Alza, etc.

[Malcolm Mooney]

"As I read the KSR opinion again, I don't see any rejection of the TSM test, merely the rejection of the rigid application of that test."

Yes. Exactly as many of us predicted.

[Buck Foss]

Contrary to "inventor" and "MaxDrei", and with all respect, I believe this is the death of the Problem Solution approach for US Patents, not a reaffirmation of it. On page 16 of the opinion the Court states:

"Under the correct analysis, any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed."

Simply put, if you state a problem and then solve it with known elements, your solution is obvious (unless teaching away or unexpected results).

Any patent drafter that offers a problem solution approach is an easy target to be taken down by this quote.

I'd appreciate someone telling me that I'm wrong, because I've come to love the problem solution approach over the years, and now I think I have to go back to the "flash of genius" story.

[Malcolm Mooney]

"Simply put, if you state a problem and then solve it with known elements, your solution **may be** obvious (unless teaching away or unexpected results)."

Same as it ever was, tho' I fixed the unecessarily rigid tone of your description.

There may be combinations of disparate known elements that are inventive without any express "teaching away" or "unexpected results." It's hard to say.

[small inventor (aka "patent troll")]

"Under the correct analysis, any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed."

This is the most idiotic sentence about patentability I ever read...

Let's see...

You want to compress photographic image files - a well-known problem for years

Let's try something that nobody tried before - a well-known wavelet transform ..
Wow ! It works, let's patent it !!!

Not so fast, because your novel and original solution *may be* obvious in light of KSR:
"An obvious to try method from a finite set of available techniques"

Here we go, JPEG image compression...

Want me to continue ?

I am about to invalidate all MP3 patents, then I can proceed to other standards...

[MaxDrei]

Hi Buck Foss. Clarification please. You write about the Applicant (A) who "states the problem". What of the Applicant (B)who carefully does not mention in his/her application the deficiency in the state of the art status quo. Suppose that at the relevant date the evidence shows that the PHOSITA is already well aware of that deficiency. On your interpretation, will B (the Flash of Genius writer) get a US patent, but A(the narrator of the problem and its solution) not? Bit subjective, no? Bit unsatisfactory, no? Objective EPO PSA deals elegantly with the invention characterized by perception of a problem (the solution to which is banal, once the problem has been named). PSA would also shoot down a claim which solves a known problem using a means to do so that has already been identified within the published art as the bringer of the needed technical effect. Seems to me that SCOTUS has been reading the 100 year old English case Williams v. Nye, the "sausage machine" case. When you collocate two elements from the same technical area and as a result get nothing more than what you would expect, you haven't yet got a patentable invention. What goes around comes around. I shall continue to enjoy myself, writing to PTO Examiners a nice story, how my client's invention represents a nice little contribution to the field,with reference to the realistic prior art starting point, and hope to seduce the Examiner into rewarding my client with a nice little enforceable monopoly that has a scope of protection commensurate with the contribution.

[CaveMan]

What many of you folks are missing is the reason why the TSM test needs to be a bit "rigid." Here's why.

An examiner can plug the claim terms from your application into his/her search engine and come up with a host of patents from any one of a host of random arts that quite literally disclose your claim features. Without TSM, the Examiner can simply take the top two or three references from the search, *without even reading them* and paste them into a 103 rejection and go take a 4 hour lunch. KSR now makes it easier to draw from non-analagous arts.

With TSM, and in particular, with a rigid TSM, the Examiner has to at least read the references in order to make sure that he/she could come up with at least a plausible (straight face) reason to combine them.

Now, the Examiner will just do a computer search using the claim terms as keywords; take the top two or three references regardless of the arts from which they are classified; write a 103 rejection and call it a day. Since the KSR opinion states that the combination can be for any reason and not for reasons related to arriving at your invention, the Examiner can, in order to justify the combination, come up with any lame excuse for the combination - as they often do - like the combination of Smith and Jones would improve efficiency.

Basically KSR legitimizes the lame 103 examination practices that everyone here knows occur with unfortunate frequency...

[CaveMan]

With all due respect Max Drei: when a European cheers the U.S. Supreme Court for moving closer toward harmonization, its a bleak day for property rights and capitalism.

Also, I can hardly believe that anything conflict involving anything worth while can be adjudicated in a day as you claim is the practice in the EPO. My guess is that since property rights are meaningless in most of socialist Europe, and since "lawyers" in Europe are, with all due respect, largely bureaucratic clerks and not zealous advocates of private rights, a patent case can be handled in a day since nothing much is at stake anyway.

Please cite for me an example of an industry shaping patent court case or judgement originating in the European courts.

I won't hold my breath.

[MaxDrei]

CaveMan makes a good point. I also wonder about Examiners from now on taking KSR as carte blanche to reject every claim. That's the charm of EPO PSA. An EPO Exr has to find IN THE PUBLISHED ART the necessary HINT OR SUGGESTION before he can blow away your claim on a combination of D1 and D2. Without that check on the USPTO Exr, he can run amok through all your claims, if he feels so inclined. Balance and reason is needed here, like in so many things. Shame that SCOTUS, ignorant of PSA and day to day patent prosecution, never told us how AS A PRACTICAL MATTER to deal expeditiously, consistently and fairly with obviousness, in the 990,000 applications pending. In the EPO, they had to invent PSA to get consistent examination of obviousness from Exrs drawn from the national Patent Offices of the 15 member States. It's not so different today, in the USPTO with its mega pendencies, vastly greater than anything the EPO has to deal with.

[CaveMan]

And Max, as you know, I have absolutely nothing against you personally. I'm absolutely sure I'd enjoy having a beer with you.

[CaveMan]

Buck Foss, is that like Duck Fuke? (little something for all you Duke fans out there)

[Malcolm Mooney]

"Now, the Examiner will just do a computer search using the claim terms as keywords; take the top two or three references regardless of the arts from which they are classified; write a 103 rejection and call it a day."

A testable prediction from CaveMan!

If I forget, please remind me to report on the accuracy of this prediction vis a vis the biotech art group in 6 months. My prediction is that CaveMan is wrong.

[matt]

At the very least, I think it is reasonable to assume that a PHOSITA would be able to read the prior art, recognize a problem, and apply known solutions to that problem. After all, if this PHOSITA requires a specific teaching, suggestion, or motivation to combine two references, what skill does he really have? His skill is reading published documents and regurgitating exactly what they say? At the very least, this person is aware of the world outside of a single primary reference, and can seek solutions and improvements without being beaten over the head and told to do so. This is one of the major issues I've had with the current state of the TSM Test. I feel that it is improved reasonably, and in a way that still requires actual disclosure of the invention to formulate a rejection.

[Malcolm Mooney]

"property rights are meaningless in most of socialist Europe"

Glenn Beck is right! And if Al Gore succeeds with his Hitler-esque tactics, the United Nations is going to rule the world!!! KSR is just another step towards liberal fascist globalization. Who could guess that the Supremes would be so clever as to use patent law to wedge their Soviet-style agenda into the discourse of world business??

It's diabolical, I tell you. Now, at last, I understand why I so many patent attorneys weeping in the streets of Palo Alto this morning.

[CaveMan]

I predict that people will continue to ignore you Mooney.

[CaveMan]

Muck Fooney

[not my name]

"If you look at the Ocean Tomo Patent Index ..."

Please.

Go on, base any argument you want on data provided by the future Enron of the IP world ...

I'll laugh.

[CaveMan]

By the way Fooney, my statement is not a prediction, its a description of the way the PTO really works. I understand that you wouldn't know anything about that subject.

[CaveMan]

matt: The TSM test is not for the benefit of the PHOSITA, the TSM test is designed to establish an objective basis for the Examiner or a trier of fact to combine the teachings from several references to obviate a patent claim.

In case you haven't been reading my posts above, absent a TSM type test, the Examiner or trier of fact can (and will) simply do a computer search using the claim terms to "find" art that obviates the claim by containing references, however obscure or irrelevant, to the exact claim terms. Despite Mooney's idiotic predictions to the contrary, this is how the Examining Corps now search a case. They plug in the claim terms and search the art. Absent a TSM type requirement, they can just cob together the search results in a 103 rejection without even looking at the references or thinking about them - kind of like when Mooney posts here.

[Malcolm Mooney]

"Despite Mooney's idiotic predictions to the contrary, this is how the Examining Corps now search a case."

CaveMan, you have a bad habit of making statements that do not reflect what many of us know as "reality." Such statements remind me, sadly, of the sort of thing that gets spewed out of cable news networks trying to appeal to latter day members of the Confederacy.

I've have recent Office Actions on my desk and they don't fit your description. The references cited by the Examiners in these cases were certainly "looked at" and the Examiner's arguments were thoughtful.

So you're wrong, CaveMan. Sorry to break the bad news. Managing the anger would probably lead to more accuracy.

[Lionel Hutz]

Malcolm,

You operate in the chemical or biotech arts, I believe. These are known as unpredictable arts. Examiners in your field cannot as easily find three references and say their combination would be obvious because in many cases until you combine the elements, the usefulness is unpredictable.

On the other hand, for people who work in the electromechanical and software arts, Examiners often believe it is acceptable to simply do exactly as CaveMan recited. I have received numerous bogus 103 rejections where realistically nobody would have combined those references other than to create my clients' inventions. Not to say that any of the inventions were particularly profound (although some were pretty cool), just that the combinations were particularly bad.

There are significant differences between biochem practice and non-biochem practice.

[Lionel Hutz]

Also, Malcolm, in view of some comments by others, you do often come across as a troll on the board. I am not trying to insult you, just pointing it out. You often post with nothing more than a sarcastic comment or glib condescension. I find it terribly ironic that you accuse others of ad hominem attacks when many times they are simply responding to you. Having traded a few words with you on another board, I have no desire to continue to do so, especially seeing as how I probably agree with you more often than not (although your views on Flarsheim still baffles me). Just wanted to point this out in case you really could not see it.

[Derrick and the Dominoes]

There is no reason to fear corporate nazi-fascism. Remember what Somalia and Iraq has taught the corporate brass: half crazed, starving illiterates, using rusy 40 year-old weapons, can bring down the most hardened and well trained shock troops in the world (Somalia).

Ordinary citizens of an ancient culture can stop even the most sophisticated armor in the words with home made devices and a cellular telephone (IED). (Iraq). Now just imagine what well educated, well fed citizens can do.

[Aaron Moore]

How is this ruling likely to effect the Verizon vs. Vonage case where multiple claims of prior art keep appearing? It seems as if the name translation for a telephone number would be obvious for using VoIP which was already invented.

[matt]

CaveMan:
I know the TSM test is not made to benefit an imaginary person. I was actually referring more to the original PHOSITA doctrine, and what this "skill" in the art really is. I was trying to convey the fact that examiners are effectively able to do a 103 rejection using the skill of a person in the art who is able to read publish documents effectively, not someone who is knowledgeable of the art.

And I don't care how disenchanted you are, the doomsday situation you keep complaining about is going to require more than just the recent SCOTUS decision to come to existence. Abuses of the rules will occur just as often as without the decision, they will just be different now. Nobody is going to feel bad for you if you don't adapt.

[Robert Syputa]

A ruling on what is obvious will never be cleanly resolved by a court ruling imo: software that uses millions of lines of inter-related code developed across multiple borders or hardware that uses thousands of patents shifts the nature of the beast: the simplicity of the value of patents is, like it or not, relative. And that makes it much less possible to clearly define what is obvious and what is true invention. If it is difficult for a handful of patent attorneys to agree, it is much less so for the courts imo.

I think that this ruling is more important in shaping future opinion more generally, such as in cases dealing with patents used in standards developments. The nature of the issues in this case will never be resolved to a formula. That may make this indecisive and open to interpretation and field of use context... irksome for attorneys who prepare patents and examiners who revue them. The KSR ruling undoubtedly will have an influence on 4G wireless IPR.

[Malcolm Mooney]

"I think that this ruling is more important in shaping future opinion more generally"

I agree, Robert. And to be clear, the Supremes are hardly sticking their necks out. The seed for this decision was planted when Amazon sued Barnes and Noble back in ... what? 1999? Between now and then the CAFC did little more than waffle back and forth and then there was the huge waste of time and angst that was Festo.

In a nutshell, the Supremes simply told the CAFC: "What are you nuts?! Don't make it *more* difficult to invalidate these crap patents. Sheesh."

[Patent Guy]

> An examiner can plug the claim terms from your application into his/her search engine and come up with a host of patents from any one of a host of random arts that quite literally disclose your claim features. Without TSM, the Examiner can simply take the top two or three references from the search, *without even reading them* and paste them into a 103 rejection and go take a 4 hour lunch. KSR now makes it easier to draw from non-analagous arts.

CaveMan, if a patent discloses all of your claim features, that is a 102 rejection. No obviousness analysis required.

[Malcolm Mooney]

"On the other hand, for people who work in the electromechanical and software arts, Examiners often believe it is acceptable to simply do exactly as CaveMan recited."

Well, it seems to me that the Examiners are probably right, particularly where the combination is simply what any one in the "electromechanical arts" (or not) would do if she wanted to make, e.g., a computer-assisted doormat that rings your phone when it's stepped on and tells you the weight of your guests. Oops, I just gave away another of my inventions!! Now I'm down to only 4,999,993! I'll have to come up with a few more in the shower tomorrow morning.

Seriously, though, I think that my invention may be patentable but it's pretty darn stupid, ain't it? Novel and non-obvious, maybe ... but undoubtedly stupid.

That's not the sort of invention that anyone really cares about. And it's not the sort of invention that people who want to make bunches of money file applications on. I think it is reasonable to expect that most applications which are filed to generate or protect substantial sums of $$$ and which are prosecuted tooth and nail represent very slim advances over the art. Think for a moment about why that is. This is why KSR is an important (and correct) decision.

[MaxDrei]

Three cheers for Malcolm Mooney, always good for a penetrating insight, and the envy of many a lesser contributor to this blog. I would certainly drink a beer with him. CaveMan surmises that in 450 million rersident Europe, patents are of little value, which is why obviousness takes up so little time at the EPO. Well, the EPO revokes 'em, for all Europe, including US-owned blockbusters such as the one on the VIxxxx drug I can't type here. That one was worth a few shillings, I dare say. Contributors here are predicting much filing at the USPTO of declarations from the PHOSITA. Not needed in the EPO, where the civil law system deems the Examining Division (3 people) a PHOSITA. Maybe CaveMan that's one explanation how the EPO can dispose of obviousness so quickly. Sure saves time, when one files only "Facts and Arguments" and where the system dispenses with witness evidence created after the fact of filing the patent application. No witness evidence means no depositions and no X-exam. The European system puts the onus on good salesmanship, to a PHOSITA EPO Examiner customer: of the invention, and of the reasons why the claim is obvious.

[Marc Münzer]

PSA is not the answer. Working with PSA on a daily basis shows its strengths but also its weaknesses. It is very seldom that I see the PSA used correctly by attorneys. I think a good solution is a combination of the PSA and the TSM. PSA is a good way of finding a good TSM argument, but the PSA is not an argument by itself, something that I think most EPAs don't understand... Most EPAs forget the last step of the PSA, would/could approach. All the other steps of the PSA are built up on hindsight...

I think as mentioned by others above, obviousness will never have a clear cut definition. Each case will have to be looked at on its own merits. It is not possible to define an objective test.

/Marc

Malcolm Mooney, are you a law professor? Most law professors know the law but know very little regarding how that law plays out in practice.