NonObviousness: Analogous Arts Test Still Strong

Anderson v. Pella (Fed. Cir. 2008)(non-precedential)

Anderson sued Pella and WL Gore for infringement of its window screen patent. Apparently, the patented screen allows ventilation and blocks insects, but is easier to see through than traditional screens. The claims focus on the diameter and strength of the screen wires and as well as on the screen's "transmittance" and "reflectance" properties.

Prior to KSR, the district court had rejected the defendant's summary judgment motions on obviousness – finding that the prior art references lacked a motivation to combine. After KSR, the district court reversed course – this time granting summary judgment of invalidity based on obviousness of the claimed screen. In its analysis, the district court asked and answered the following question: "would an insect screen manufacturer of ordinary skill have found it obvious to use the [prior art] screening material, decrease its reflectance value, bond it, and place it in a window frame? The answer, plain and simple is 'Yes.'" According to the lower court, the prior art mesh was the "heart" of the claimed invention, and it was a "simple act of common sense" to slightly modify the mesh and apply it to a window. Although secondary factors of nonobviousness were shown, the lower court found they were not enough to rebut a strong showing of obviousness.

Analogous Arts: On appeal, the Federal Circuit vacated – finding material facts that prevent summary judgment of obviousness. In particular, the appellate panel found that the prior art mesh might not count as nonobviousness type prior art because it "outside the scope and content of the prior art." The court based its decision on three issues: (1) the prior mesh was not in the same "insect screen manufacturing field"; (2) there was some evidence that the prior mesh would not be useable for an insect screen (teaching away); and (3) the PTO specifically considered the reference before granting the patent and should be given some deference.

Upon our review of the record in the light most favorable to Andersen, we find support adequate to overcome summary judgment on the question of whether the TWP mesh was outside the scope and content of the prior art. Andersen put forth evidence in the record that, one, the TWP mesh was not part of the insect screen manufacturing field, and, two, an insect screen manufacturer would have read the prior art to teach away from using a mesh with the characteristics possessed by the TWP mesh. This field-of-invention and teaching-away evidence, combined with the deference owed to the PTO's issuance of this patent after reviewing the same prior art references that form the basis of this obviousness challenge, raises a genuine issue of material fact as to whether an ordinarily skilled insect screen designer would have found the combination of the TWP mesh with the other prior art references obvious.

Teaching away and price feasibility: One of the 'teaching away' arguments accepted by the Federal Circuit was that of price infeasibility. Anderson had argued that the prior mesh would not have been considered by a designer because it was quite "extraordinarily expensive." In its holding, the appellate panel gave backing to the notion that a high price would discourage consideration of a potential prior art reference.

As to the third characteristic, pricing, Andersen's expert, Laurence Armstrong, stated that the TWP mesh was "extraordinarily expensive in comparison with traditional insect screen material, costing about $75.00 per square foot." It is not unreasonable to suggest that a significant difference in cost could discourage an insect screen designer from using the more expensive mesh. . . . On the whole, we think, the record creates a genuine issue of material fact as to whether the durability, transparency, and pricing of the TWP mesh would have discouraged an ordinarily skilled artisan from incorporating the mesh into an insect screen.

Summary judgment vacated.

Comments

[SF]

There are lots of obvious modifications that are infeasible because of price, but well within the ability of one of ordinary skill to recognize and make if they wanted to blow the cash.

Until the USPTO starts rejecting applications based on price infeasibility, the prior art should be citable without respect to price.

[6000]

"(2) there was some evidence that the prior mesh would not be useable for an insect screen (teaching away)"

Let me get this straight. A mesh. That someone of ordinary skill would not think to use as an insect screen. RIIIIIGHT. I guess the fact that it is a mesh escaped the CAFC in this particular instance. I can understand the pricing, deference, and teaching away, but still. Just because they got summary judgment overruled doesn't mean this one still isn't going down. Bottom line is, it appears from D's analysis all that the applicant has done is make a simple combination, where there was an overwhelming motivation to combine.

It's decisions like these that most make me question the CAFC. Secondary considerations, analogous art, teaching away, all that mess is very much secondary to making a straight up simple combination to achieve a very well known goal. The question that needs to be asked more often is not whether the skilled artisan would like to MAKE such an item that results from the combination, but whether the combination is obvious to make. There are infinite things which it is obvious to do, but which would not seem to be the best way of doing. And they're still just as obvious to do.

I hope in reality the references fit together less well than this analysis leads one to believe.

[Malcolm Mooney]

SF "Until the USPTO starts rejecting applications based on price infeasibility, the prior art should be citable without respect to price."

First off, this Opinion deserves to be non-precedential. Geez, what a pile of crap. Do I want to look at the claims? Just reading about this lame invention makes me sad.

There is only question that needs to be asked with respect to this "price infeasibility" baloney and we all know the answer. The question is: do the claims recite a limitation that the window screen can be manufactured below a recited cost? If they do not, then the fact that the prior art mesh is "expensive" is irrelevant as a matter of law.

[Malcolm Mooney]

"The court based its decision on three issues: (1) the prior mesh was not in the same "insect screen manufacturing field";"

It's hard not to laugh at this pathetic "reasoning" that could be used against any art cited in an obviousness argument. "Those prior art wheels were made for AA-scale model airplanes, your honor. They are not in the same "plastic toy helicopter manufcturing field" as our invention!"

[Analogous Arts Test Still unknown]

"Analogous Arts Test Still Strong"

Eh, maybe when appealing an adverse summary judgment (inferences drawn in appellant's favor) of obviousnes based on PTO-cited art (burden of proof in appellant's favor). Yes, I think this case is 100% procedural posture ...and it only got a remand. Same facts after trial = affirmed.

[Mark Mann]

An utter travesty. The Supremes should summarily reverse. As to the above comments that "it only got a remand" -- I don't think you know much about litigation and the business realities of a remand. The likely result will be a big settlement that the patentee will then get to use, in combination with the CAFC's finding that this patent can get past summary judgment*, to get everyone else to pay big money for licensing. If you don't think that is what is going to happen, I have a couple of bridges I will sell you.

*And yes I know technically that the CAFC's findings are not binding on a court in the future with different parties, especially if there is different art, but the reality is that the patentee basically has a finding of validity from the "highest court" he can use against the industry.

[JohnDarling]

Whether a reference is analogous prior art is a question of fact. Andersen (the patentee) presented evidence that the prior art material was not analogous to the claimed invention. Thus there was a genuine issue of material fact. Summary judgment denied.

What's so hard about that?

"The question is: do the claims recite a limitation that the window screen can be manufactured below a recited cost? If they do not, then the fact that the prior art mesh is 'expensive' is irrelevant as a matter of law."

What part of the requirement to consider the subject matter as a whole do you not get?

[Malcolm Mooney]

"As to the third characteristic, pricing, Andersen's expert, Laurence Armstrong, stated that the TWP mesh was "extraordinarily expensive in comparison with traditional insect screen material, costing about $75.00 per square foot." It is not unreasonable to suggest that a significant difference in cost could discourage an insect screen designer from using the more expensive mesh"

I'm still reeling. Would it also be "not unreasonable" to suggest that a skilled "insect screen designer" knowing of the TWP mesh and its desirable properties would be motivated to develop a cheaper version of the mesh? I mean, if there is an invention here, that's where it lies: the cheaper mesh. But let me guess: it's not in the claims and "a claim to that invention is not valuable."

[JohnDarling]

"It's decisions like these that most make me question the CAFC."

Right. Because your mastery of civil procedure is so much more advanced than the judges.

LOL

[Malcolm Mooney]

JD "What part of the requirement to consider the subject matter as a whole do you not get?"

The subject matter as a whole includes a very expensive insect screen, JD. Do you get it?

[MG]

The court found there was no material issue of fact as to the differences between the claimed invention and the prior art, but there was a material issue of fact as to the scope and content of the prior art. I don't see how that is possible. How can you determine the differences between the claimed invention and the prior art, but not know what the prior art is?

[smashmouth football]

Quote from the slip opinion at 6:

"Andersen argues that the district court erred in granting summary judgment of invalidity by reason of obviousness because it raised genuine issues of material fact with respect to whether one of ordinary skill in the art (here, “someone who manufactures insect screens with no understanding of optics and physics,” Andersen, 500 F. Supp. 2d at 1195) seeking to design an insect screen with reduced visibility would have looked to the TWP mesh."

Am I the only one who thinks this definition of the PHOSITA is bizarre? (I hasten to add, this definition was set forth by the District Court, although the CAFC appears to adopt it.)

Why should we expect a PHOSITA here to know nothing about optical physics? Simply because an insect screen apparently is regarded as a mundane, low-tech consumer commodity? I think Anderson, Pella, etc. probably can afford to consult with a Ph.D. in physics or electrical engineering. To recognize such a low bar for the PHOSITA here is perverse. (Aside: the definition of the PHOSITA reminds me of the crucial role played by the definition of the relevant market in an antitrust analysis, or for that matter, the cost function in an optimization problem. Setting forth the performance measure largely determines the allowable solutions to the problem.)

[Leopold Bloom]

Oh, come on. Anderson did a good job of creating fact issues. The fact that you geniuses (and the judge) can all create this product with perfect hindsight is irrelevant. And, (Mr. Mann) suggesting that anyone who disagrees with you doesn't know anything about litigation is an illegitimate argument.

Does anyone dispute the accuracy of this statement: "The fact that TWP’s use for the mesh was electromagnetic shielding and that TWP, a company that manufactures insect screens, did not employ this particular mesh as an insect screen suggests that common sense and the nature of the problem to be solved MIGHT NOT have made it obvious to an insect screen designer to try using the mesh as an insect screen."

The judge isn't an insect screen designer; TWP was - is he supposed to answer this question using just "common sense"?

How about this: "Andersen also submitted into the record prior art references that taught away from using the TWP mesh as an insect screen. Several prior art references in the record teach that the TWP mesh possessed many characteristics that an ordinary skilled insect screen designer would have viewed as undesirable for an insect screen. Specifically, the record at least raises the question of whether the TWP mesh lacked the durability, transparency, and price feasibility preferred by an insect screen manufacturer designing a reduced visibility insect screen."

Anderson's attorneys did a good job at raising fact issues. The defendant now has to prove obviousness. Maybe they can. But it doesn't sound to me like this was appropriate for summary judgment.

[smashmouth football]

Another dubious assertion from the slip opinion at 11:

"We also note that, in ruling on summary judgment, the district court was required to view the evidence with an eye towards the burden on Gore and Pella to overcome the deference due to the PTO."

Ordinarily, I think this would be a sound consideration for an appellate court under general principles of administrative law. Here, however, the PTO clearly acted under a significantly different legal standard (i.e., pre-KSR) when it examined and allowed the claims. I think that fact should neutralize any deference otherwise owed the PTO.

[JohnDarling]

"Do you get it?"

I do. What I don't get is why you've gotten your briefs in such a bunch over a routine remand.

[Big Guy]

"Here, however, the PTO clearly acted under a significantly different legal standard (i.e., pre-KSR) when it examined and allowed the claims."

Not according to the CAFC - they say that they always meant what KSR said.

[broje]

A clear, plastic window screen with an anti-reflective coating? That has wow factor. Even without the clever idea of adding the anti-reflective coating, it sounds to me like a new use for a mesh material ordinarily used for a different purpose. But, to some people, everything is obvious.

[smashmouth football]

"Anderson's attorneys did a good job at raising fact issues. The defendant now has to prove obviousness. Maybe they can. But it doesn't sound to me like this was appropriate for summary judgment."

I'll concede this point, and other similar points raised by John Darling. In fact, that was my principal beef with KSR. I still don't understand how that case could have been resolved under summary judgment.

I guess the real problem is policy/practical. Remand here is probably tantamount to prohibitive expense for the defendants, as pointed out by Mark Mann. So there probably will be no resolution of the validity of this patent, just a licensing deal.

(BTW, I certainly don't claim genius status.)

[smashmouth football]

Posted by Big Guy at 11/19 2:28 p.m:

""Here, however, the PTO clearly acted under a significantly different legal standard (i.e., pre-KSR) when it examined and allowed the claims."

Not according to the CAFC - they say that they always meant what KSR said."

That's pretty funny. I think you're right, but does anyone really believe the CAFC on this point?

[smashmouth football]

BTW (please forgive me for this irrelevant aside), I'm planning to take the patent exam sometime in the next few months. (Right now I work as a law clerk in a state appellate court, and just found out I passed the bar exam for my state.) What review course do you recommend, and how much time did it take some of you when you prepared for the exam? Thanks in advance for any suggestions.

[Leopold Bloom]

"(BTW, I certainly don't claim genius status.)"

Oh, I didn't mean you when I said "you geniuses..." :-)

"Remand here is probably tantamount to prohibitive expense for the defendants, as pointed out by Mark Mann."

This won't be the first time that a defendant has had to proceed past summary judgment. Is Mr. Mann suggesting that every case should be disposed of with summary judgment? Perhaps it's true that I don't know anything about litigation...

[6000]

"What part of the requirement to consider the subject matter as a whole do you not get?"

LOL, you're right, apparently I'm only better than you. The requirement to consider the subject matter as a whole is referring to the subject matter in the claim. Not the "subject matter" of the references. Jebus JD, you call yourself a lawyer. As MM just pointed out for you, the subject matter under consideration includes the screen in the prior art. How much do your clients pay you to be wrong on the basics?

And yes, I understand why they remanded it to the lower court, but presenting it the way they did is likely going to cause the DC to go the other way, which would be folly. All this whohah about pricing and mesh being not analogous. As SF noted above, until we start rejecting based on pricing then we shouldn't start excluding references based on pricing.

Go ahead, take a look at the claims. I dare you. After you finish loling at claim 1 get back to me. Even better, with respect to the deference to the PTO, why don't you take a look at the reason for allowance.

[Malcolm Mooney]

""The fact that TWP’s use for the mesh was electromagnetic shielding and that TWP, a company that manufactures insect screens, did not employ this particular mesh as an insect screen suggests that common sense and the nature of the problem to be solved MIGHT NOT have made it obvious to an insect screen designer to try using the mesh as an insect screen."

BZZZZZZZT!!! Again, this is pure baloney. It sounds nice but it's a classic example of head-in-the-sand reality-denying horsehockey. TWP's failure to use the mesh in an insect screen says nothing at all about the obviousness of the combination. All it says is that TWP did not commercialize an insect screen that would anticipate the claimed screen. So what? Like the patentee's own expert said: TWP's mesh is expensive. The reasonable inference is that TWP had more profitable products to make and sell. What does this have to do with the non-obviousness of Anderson's claim? NOTHING, because the claim is not limited to inexpensive insect screens. It covers expensive insect screens, too.

[Leopold Bloom]

"What review course do you recommend, and how much time did it take some of you when you prepared for the exam?"

Congratulations on passing the state bar. I used patbar.com, because it was by far the cheapest. however, it's been a few years. It wasn't the best organized course I've ever seen, but practice tests are what you're really after.

Time to spend? Until you get a passing grade on the practice tests. But don't worry about getting much better than a barely passing grade.

[Anon E. Mouse]

6000,

No, all the court said is that there was a question of fact to be decided by the trier of fact (e.g, jury or judge in bench trial).

That isn't a very high bar. If it was, there would be no need for the jury system.

JD is a lawyer and he knows what he's talking about here. You don't.

[Malcolm Mooney]

Just to beat this "price feasibility" garbage into the ground, everyone realizes that this argument (if it actually held water) would theoretically renders non-obvious any otherwise "cheap" product comprising an expensive modification.

But it also reveals the bogusness of the commercial "secondary-factors" generally. Here's the typical scenario: patentee makes novel product by adding expensive "space age" doohickey. Patentee files application on modified product. Patentee then beings marketing campaign and manages to convince gullible people to buy the modified product. Then, when the claim is challenged as obvious, applicant points to their "commercial success" and notes that "the makers of the expensive doo-hickey didn't think to manufacture our product to meet the consumer demand" (of course, if the makers of the expensive doohickey had done that, then the application would never have been filed in the first place).

[smashmouth football]

"This won't be the first time that a defendant has had to proceed past summary judgment. Is Mr. Mann suggesting that every case should be disposed of with summary judgment? Perhaps it's true that I don't know anything about litigation..."

Leopold, you certainly raise a good point here, and it highlights just one reason we should be cautious about some proposals for patent reform. IIRC, some provisions in the 2007 Patent Reform Act (Please don't let them resurrect that next year) extended the trend against jury trials supposedly guaranteed by the 7th Amendment by re-casting some factual issues as matters for the court. And we know how the Europeans regard juries. Although of course summary judgment is even more extreme than forcing all patent cases to be tried in bench trials.

And thanks for the suggestions.

[6000]

"Does anyone dispute the accuracy of this statement: "The fact that TWP’s use for the mesh was electromagnetic shielding and that TWP, a company that manufactures insect screens, did not employ this particular mesh as an insect screen suggests that common sense and the nature of the problem to be solved MIGHT NOT have made it obvious to an insect screen designer to try using the mesh as an insect screen." "

Yes, I dispute it. It's not obvious to "try" to use it as an insect mesh because it's 100% certain to work as an insect mesh. There is 0 need to "try" it. The question still remains: Would it be obvious to combine the elements within the references to create an insect screen? And the answer, as the DC notes, is apparently "yes". This is what is known as a "strong" showing of obviousness. That's where bs doesn't change anything. If it is a weak showing, then meh, maybe obvious, maybe not.

[JohnDarling]

"The requirement to consider the subject matter as a whole is referring to the subject matter in the claim. Not the 'subject matter' of the references."

Wrong. 35 USC 103(a) clearly distinguishes between the subject matter sought to be patented and the subject matter as a whole. The subject matter as a whole includes the subject matter sought to be patented and the prior art.

You're regressing.

Grade: F

[JohnDarling]

"The requirement to consider the subject matter as a whole is referring to the subject matter in the claim. Not the 'subject matter' of the references."

Wrong. 35 USC 103(a) clearly distinguishes between the subject matter sought to be patented and the subject matter as a whole. The subject matter as a whole includes the subject matter sought to be patented and the prior art.

You're regressing.

Grade: F

[JohnDarling]

"The requirement to consider the subject matter as a whole is referring to the subject matter in the claim. Not the 'subject matter' of the references."

Wrong. 35 USC 103(a) clearly distinguishes between the subject matter sought to be patented and the subject matter as a whole. The subject matter as a whole includes the subject matter sought to be patented and the prior art.

You're regressing.

Grade: F

[EG]

Leopold,

I agree with you 100% that Anderson did their job in raising "geneuine issues of material fact" and the Federal Circuit did their job in reversing the SJ grant by viewing all inferences in favor of the non-moving party (Anderson). Like I've said before, I see far too many "itchy" SJ trigger fingers by district courts in granting SJ motions without giving the non-moving party the benefit of the doubt. Here, the non-moving party (Anderson) at least bothered to raise genuine "factual doubt." Once genuine "factual doubt" is raised, the SJ motion must denied.

[6000]

"6000,

No, all the court said is that there was a question of fact to be decided by the trier of fact (e.g, jury or judge in bench trial).

That isn't a very high bar. If it was, there would be no need for the jury system."

What part about this is inconsistent with what I said? Nothing. Although I did note that the court went a bit beyond merely saying there was a question of material fact in their analysis of why it is a material fact and that this would likely cause a DC to reconsider obviousness in a light favorable to the patentee. They practically laid out a reasoning to find non-obviousness in determining that the fact was material. That was hardly called for. In any event, I'd go through this for you step by step, but alas I am pressed for time and I'll save the easy stuff for you to figure out.

"JD is a lawyer and he knows what he's talking about here. You don't."

Often so, today apparently he decided to ignore which subject matter is under consideration. He does this from time to time, I figure it is probably because he's old. I can think of no other reason for it.

[JohnDarling]

"I figure it is probably because he's old."

Now you're using the same lame jokes as that three-initials-mid-level-(mis)management stooge?

Come on, 6k, you're better than that. He's already admitted that you're better.

Keep leading over there. Don't follow.

"Although I did note that the court went a bit beyond merely saying there was a question of material fact in their analysis of why it is a material fact and that this would likely cause a DC to reconsider obviousness in a light favorable to the patentee."

It's a material fact because the patentee produced evidence.

The court did not say that the evidence would likely cause the trial court to reconsider in a light favorable to the patentee.

Subject matter as a whole includes 1) the claim(s), 2) the prior art, 3) the differences between the claim(s) and the prior art, and 4) any secondary considerations.

Learn it. Know it. Live it.

[Mark Mann]

Anon E. Mouse -- JD is a lawyer???? Oh, I guess he must know what he is talking about. . . . Ignore everything I said before and everything anyone else said in this thread.

[GGF]

I wish examiners would consider the field of the invention more often when selecting art. The number of office actions I've had to handle where the examiner cited art very far outside the inventions' field is laughable.

[JohnDarling]

"Ignore everything I said before and everything anyone else said in this thread."

Not a bad suggestion.

Like maybe this one:

"I don't think you know much about litigation and the business realities of a remand. The likely result will be a big settlement that the patentee will then get to use, in combination with the CAFC's finding that this patent can get past summary judgment*, to get everyone else to pay big money for licensing. If you don't think that is what is going to happen, I have a couple of bridges I will sell you."

So the resources of Pella and WL Gore are so meager that they can't defend one infringement suit involving one patent? A patent that the trial judge has already pre-judged as invalid.

How big is this settlement gonna be that it's going to cause all of the other hundreds, if not thousands, of insect mesh screens to line up, check books in hand, and pay Andersen even more huge settlements?

Where do I pick up my bridge?

[Anon E. Mouse]

Mark Mann,

ack, that's not what I meant. My apologies. I was trying to address what 6000 said ("Jebus JD, you call yourself a lawyer.") when I wrote "JD is a lawyer."

My whole point is that this case turned on the procedural posture. Even though I (and probably JD) agree with 6000 on the merits--if we were the trier of fact, we'd go they way 6000 is going.

But because there is a GIMF it needs to go to trial. The jury (or judge if ends up a bench trial) need to make this determination.

[6000]

"(a) A patent may not be obtained though the invention is not identically disclosed or
described as set forth in section 102 of this title, 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. Patentability shall not be
negatived by the manner in which the invention was made."

Note here JD, "subject matter sought to be patented" is seperate from "and the prior art". The prior art does not contain "subject matter", the prior art is what it is, you do not designate small portions of it as "subject matter" as you need to with the information contained within a claim. The only reason the term "subject matter" is ever used in the statutes 112 and 103 is to denote what the applicant regards as his invention.

Sorry, but you definitely lose that discussion. Giving me an F where you plainly cannot read is telling of your own ignorance.

[6000]

"But because there is a GIMF it needs to go to trial. The jury (or judge if ends up a bench trial) need to make this determination."

Even I don't disagree with this. The problem is, the CAFC was leading the way with the analysis. IMO more than what was needed. And simple jury persons especially will be susceptible to the suggestion by a "higher" court I would think. And the part about the cost was seemingly made up on the spot and is nearly completely, if not completely, bogus.

My previous post was made hours ago and I didn't get the code right as I minimized.

[Malcolm Mooney]

"Sorry, but you definitely lose that discussion."

Well done, 6K. If there's any justice, the lower court will do what it can to make the final determination as to invalidity as quick and painless for the patentee as possible.

[JohnDarling]

From MPEP 2141.02 - Ascertaining the differences between the prior art and the claims at issue requires interpreting the claim language, and considering both the invention and the prior art references as a whole.

Note that 103(a) says "are such that the subject matter as a whole would have been obvious at the time the invention was made" and does NOT say "are such that the subject matter sought to be patented would have been obvious at the time the invention was made".

Get it?

"The problem is, the CAFC was leading the way with the analysis. IMO more than what was needed."

Noting that the patentee (i.e. the non-movant) produced evidence sufficient to establish a genuine issue of material fact is not "leading the way." Whatever that means.

"And simple jury persons especially will be susceptible to the suggestion by a 'higher' court I would think."

I seriously doubt that the jury is going to understand, or care, that an appeals court decided that the defendant (i.e. accused infringer) was required to prove its invalidity case. They will listen to the evidence and decide if the defendant made its case.

"And the part about the cost was seemingly made up on the spot and is nearly completely, if not completely, bogus."

Wrong. Read the decision.

[Paul F. Morgan]

This decision seems consistent with a comment by the CAFC's Chief Judge that they could continue even after KSR to reverse [and thus not have to actually decide] 103 obviousness summary judgement decisons on the usual grounds of mere existence of "disputed facts", in spite of the fact that KSR itself was a summary judgment decision!!

[6000]

"Subject matter as a whole includes 1) the claim(s), 2) the prior art, 3) the differences between the claim(s) and the prior art, and 4) any secondary considerations."

Love to take your word on it, but I'm afraid that I've never heard this from anywhere else, and I've read a few handbooks on drafting and analysis now. I would think it funny they haven't mentioned such a basic thing if it were so. The term "subject matter" is used in our present context only in reference to one thing. The subject matter which the applicant regards as his invention. Sure, you could use it to apply to the rest of those catagories (perhaps not the secondary considerations, where do you get that from?) but why confuse the matter? Call the prior art the prior art, and call the subject matter in the claims the subject matter in the claims. There is no need to bring the "subject matter" term along with the term "prior art". The term "prior art" is inclusive of the subject matter of the prior art.

Searching the entire listing of the patent laws for "subject matter" reveals only instances where it is used to refer to the subject matter of the application/claims. Even if I'm wrong, which it appears I most certainly am not, looking at 103 we clearly see the word used twice in the following: "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. ". And it can be seen that even if we presume your subject matter in the first instance to mean "subject matter sought to be patented and subject matter of the prior art", then the second instance combined with this would be as follows: "if the differences between x (the subject matter of the claims) and y (the subject matter of the prior art) are such that x and y (the subject matter as a whole) would have been obvious". That is downright ludicrous. And that's leaving out what you said about secondary considerations etc. Congress would not mandate to see if the subject matter of the prior art is obvious as well as the subject matter of the claims. Why would they say such a ridiculous thing? The only thing we're interested in is the obviousness of the subject matter of the claims.

I understand why you make the argument that it should be included in the analysis, but it isn't in the patent laws, plain and simple. I do seem to recall some cases where they mentioned that a combination must have been obvious to have made in order for it to be considered prior a valid combination for the purpose of rendering a claim obvious. I could be mistaken on that last point however.

You can find statements such as:

"The combined teachings of the prior art must render the claimed invention obvious at the time the invention was made. The claimed invention as a whole, not just its individual elements or steps, must be considered. "

all over. But I have yet to find anything that suggests your position to be true.

I'm through arguing about it though, either definition works fine for me now, and I'll keep in mind that there are those who feel as you do about it.

[Malcolm Mooney]

JD you are simply wrong about this "subject matter as a whole" business and the passages you cited do nothing except show that the MPEP can be vague and misleading. Consider the prior art as a whole? Sure. We all know what that means. No prob.

But the clause "subject matter as a whole" in the passage you cited refers to the subject matter **of the claim or claims** at issue. You'd have to be insane to argue otherwise. I don't think you're insane. I do think you're stubborn.

Let it go.

[6000]

"Get it?"

They have already introduced which subject matter they are talking about. That which is sought to be patented. Basic reading comprehension is ftw. This is like attorneys arguing about the constitutional right to bear arms, those guys were doomed to failure before they even began talking. The plain meaning of text is readily apparent.

In any case, I've got to go, so like I said, I've gotta be through arguing about it.

[pds]

Stu-pid 6K writes:
"LOL, you're right, apparently I'm only better than you. The requirement to consider the subject matter as a whole is referring to the subject matter in the claim. Not the "subject matter" of the references. Jebus JD, you call yourself a lawyer."

You call yourself an examiner? Have you ever read the MPEP ... scratch that ... as an examiner, there isn't a requirement that you even know what the initials MPEP stand for.

However, if you care to find out, just take a gander at this:

http://www.uspto.gov/web/offices/pac/mpep/documents/2100_2141_02.htm

Here is a little tidbit for you:
A prior art reference must be considered in its entirety, i.e., as a whole, including portions that would lead away from the claimed invention. W.L. Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 220 USPQ 303 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984).

[Malcolm Mooney]

Okay, this is officially the stupidest thread ever. Can we put at least put a stop to it before 6K starts guessing what sex we are?

The business started when JD blew it with his question to me about "considering the **subject matter** as a whole" and I correctly understood him as referring to the claims, thereby turning his argument into cinders like so many plasma beams reflecting off the Millenium Falcon back into a stormtrooper's filthy helmet.

[SF]

"A prior art reference must be considered in its entirety, i.e., as a whole, including portions that would lead away from the claimed invention."

The key is whether:
(1) it would lead away because it wouldn't functionally work
versus
(2) it would lead away because, although it would work functionally, it wouldn't economically work.

If one of ordinary skill would recognize that something would be obvious to combine and would functionally work, the analysis is done. It's irrelevant that one of ordinary skill in the art would also determine that the obvious combination lacks economic feasibility.

[AllSeeingEye]

The thread got stoopid as soon as you stepped in Mooney with your sweeping glib generalizations masquerading as real knowledge. Every day you prove that you don't know what you're talking about. Like I said before, the gulf between you and a class act like Mr. Darling is staggeringly wide.

[Lionel Hutz]

SF,

The question is would it be obvious or obvious to try? Would one skilled in the art need to experiment with the combination to see if it wold work?

[AllSeeingEye]

Teaching away based on cost is a perfectly legitimate fact for consideration. The fact that Mooney can't fathom that there might actually be significant differences in something as "mundane" as a screen just confirms his insufferable pompousness and increases his chances of being crowned king of the flat earth society (to which he has been a life long member apparently)...

[Malcolm Mooney]

SF "If one of ordinary skill would recognize that something would be obvious to combine and would functionally work, the analysis is done. It's irrelevant that one of ordinary skill in the art would also determine that the obvious combination lacks economic feasibility."

Haven't you heard, SF? The "reasonable expectation of success" includes the "reasonable expectation of COMMERCIAL sucess"! BWWHAAAHAAAAH!

In other news, AllSeeingEye is revealed to be John Darling's sockpuppet.

[Malcolm Mooney]

News flash "Wisconsin-based Trek is introducing two models this holiday season that are chainless, instead using technology most often found in things like motorcycles and snowmobiles. While some smaller custom bike makers have used them before, Trek is the first to use the technology for mass-produced bicycles."

So ... who wants to check the USPTO database to see if Trek patented the "mass-produced bicycle with belt technology"? I mean, it's totally non-obvious, right? Or else someone else would have mass-produced it first, right?

[6000]

Oh, look at that, upon dropping by right fast I find PDS busy proving I'm right. Thanks PDS, it seems that no matter what, you always come through for me in the end!

I'm a little confused though PDS, are you not smart enough to see that you just proved my entire point? Maybe you just haven't read the whole thread yet, or maybe you haven't read that MPEP section that states exactly what I've been arguing the entire time. Oh well, you'll come around.

[teach me]

SF,

I don't find the distinction you wish to make in "the portions". Other than your wishing, how is economics not a part of the equation?

One of the very real constraints for an engineer (at least the good ones)is cost. Engineers I know have never been given free reign to take as much time or spend limitlessly or even ignore processing costs. Pure and simple, it is a part of the considerations a PHOSITA would have in the "portions". Every bit as real as material strength or melting point or other inherent characteristic. Also, I do not find "leading away" constrained to non-financial objectives. Is it written somewhere? Is this a 'legal' qualification in 35, 37 or the MPEP? I cannot seem to find it in case law either.

[SF]

"Teaching away based on cost is a perfectly legitimate fact for consideration."

... perhaps if the claim had recited cost as an element, but it didn't;

by the way, the art didn't "teach away" from anything based on cost; the stuff just cost more; I don't believe the company's website/literature said, "don't use this stuff, it's too expensive"

I love how the court also raises durability, as if that had been claimed too. It's a freakin' insect screen. Are we to believe it wasn't durable enough to stop a single insect?

[SF]

teach me: How can you determine that a combination is too expensive to manufacture without first recognizing that the combination could be made? If you recognize that it could be made (and it would work), it's still obvious, even if you later realize that its expensive.

There's a good reason this case is not precedential, folks.

[patent.drafter]

as we all know, the most valuable granted patents are those that _aren't_ particularly startling for their innovation ... just startling to competitors.

regarding preps for the patent bar, Mr. Bloom is correct. practice problems are what you want, along with the .pdf version of the MPEP E7R8 - since that is what you'll get at the testing center.

get 1000 - 2000 practice problems, find the answers to all the practice problems, and you (probably) will be able to pass the patent bar first try.

this stuff ain't rocket science.

rocket science makes sense and follows laws superior to human policy whims.

[pds]

"Oh, look at that, upon dropping by right fast I find PDS busy proving I'm right. Thanks PDS, it seems that no matter what, you always come through for me in the end!"

Reminds of the comment made by a former VP candidate ... "Well, I'm very, very pleased to be cleared of any legal wrongdoing ... any hint of any kind of unethical activity there."

It also reminds me of the quote from Joseph Goebbels ... "If you tell a lie big enough and keep repeating it, people will eventually come to believe it."

Too funny 6K ... too funny.

Must be the quality 'edjucamation' you received.

[pds]

"teach me: How can you determine that a combination is too expensive to manufacture without first recognizing that the combination could be made?"

You don't have to ask an automobile engineer if they could make the frame of an car out of solid gold. Once it is readily apparent that the price of the proposed combination is too expensive to be worthwhile, one skilled in the art doesn't care whether it will work or not.

Similarly, the FC relied upon a finding that the screen material cost $75 ft2. For a full-size screen door, you are probably looking at rought 20 ft2 or about $1,500 in material for just the screen door.

Current screen door materials run from around $0.25 to $2 ft2. http://www.popularmechanics.com/how_to_central/home_clinic/1394652.html

The simple question to be answered is "would the combination be obvious to one skill in the art."

As a former engineer (although not working in the screen door art), I would feel safe in saying that if an engineer said let's try this $75/ft2 material for out screen door, he would be laughed out of the company.

This is a problem that I see in many proposed combinations from examiners. They assert that a particular combination would be obvious when no sane person of ordinary skill in the art would ever combine the art in the manner suggested. I've seen combinations that would have brought Rube Golberg to tears.

The fact that a combination is feasible doesn't make it obvious.

[teach me]

SF,

I am not following the jump in logic.

If I understand your thinking, the following also follows:

Anything is possible, ergo, everything is obvious and nothing is patentable.

Also, your logic precludes the use of "teaching away" - nothing can be taught away that hasn't been thought of - no? Yet, "teaching away" is used and can be effective. What I am missing?

[test advice]

patent drafter,

Be careful of the advice you give - the manual I had access to during my patent bar exam (2007)was NOT a pdf version. The testing center used a different version with far inferior search capability, basically rendering searching useless (no count of hits, no surrounding words and a purely sequential walk through of hits from the beginning of the manual through the end). Unfortunately, someone else gave me the same advice and I trained on being able to search any topic quickly (in PDF). When the poor man's version was sprung - my strategy was destroyed and I missed passing by 2 points - it may as well have been by 50.

best advice I did receive was run through the practice exams. run through them some more. run through them some more. If you can get consistently in the 90's, then you are ready.

[Malcolm Mooney]

"The simple question to be answered is "would the combination be obvious to one skill in the art."

The simple question is: at the time of filing, can a reasonable motivation to combine the elements be gathered from the prior art to make the claimed invention, and would there be a reasonable expection of success that the combination would work for its intended purpose.

The answer to both questions is yes. The fact that some expert can be found to testify "Well, it would be really expensive so we wouldn't make a profit on it" can not be possibly sufficient to rebut a prima facie case of obviousness. Talk about impermissible hindsight! We might as well throw KSR out the window if courts allow that garbage in.

The element of "cheapness" MUST be recited in the claims or, at the very least, be listed as a primary objective of the invention in the disclosure. A reference will teach away when it suggests that the developments flowing from its disclosures are unlikely to produce the objective of the applicant's invention. In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).

Surely the objective can't be universally assumed to be "a profitable product" or "an inexpensive product."

What remains unclear to me is how did Anderson get around the expense of TWP's mesh and why isn't that "solution" the non-obvious invention here instead of the frigging window. The answer, I assume, is that a claim to that solution was deemed "not valuable" or "too narrow" or maybe even (uh-oh) "unpatentable."

Go figure.

[6000]

PDS can't read either. What you're reminded of is getting pwnt in the face for the umpteenth time. Just keep arguing, I'll keep charging for RCE's from you and yours.

"nothing can be taught away that hasn't been thought of - no? Yet, "teaching away" is used and can be effective. What I am missing?"

You are missing that "teaching away" is at its most effective when the prior art says in one reference, that must be combined with another reference: Oh for gods sake do not do what claim limitation no. 3 says it would totally ruin the process! The sliding scale of effectiveness of the teaching away argument trails off to 0 when you get to a reference that says: "Meh, it wouldn't be good to use claim limitation 3 because it might have some small, but likely neglible negative effect." And that's that.

[AllSeeingEye]

That's right Mooney just giving credit where it's due. I know that is a concept(whether giving or receiving credit) that is foreign to you, with the exception that I do give you credit for being an annoying m0r0n.

BTW Mooney, what have you been doing (besides blogging all the time) now that you don't have any real work to do?

[AllSeeingEye]

Like a true poseur, Mooney is making it up as he goes along. Gurley has no specific requirement vis-a-vis the claims. A teaching away can be general or specific.

I've said it before and I'll say it again, you need a clue my white wine drinking little friend.

But keep up the good work. I suppose if enough people get completely confused from listening to you, it will improve the market considerably for those of us who actually know what we're doing.

[Paul Cole]

Those who practice before the EPO are well aware of the utility of field of endeavour arguments and the need to define in the specification and claims the field of endeavour in which an inventor is working and in which the technical problem underlying the invention arises. Such a practitioner might well feel motivated to support the present decision.

However, there is much to feel uneasy about in this opinion. The invention is very simple, and while the usual arguments about simple inventions apply that does not mean that a simple invention should not be held obvious when the surrounding matrix of facts requires. The commercial availability of the mesh is a "bad fact" for the patentee and an argument that a skilled person would not look at all the links on a mesh manufacturer's website is unconvincing. The argument about price is also unconvincing - the invention might well start at the high price end and move downmarket, as has happened many times in the past. The concept of a skilled window designer who wishes to achieve better transparency, but knows nothing of optics is sufficiently bizarre to deserve highlighting - a European practitioner would say that the technical problem has moved into the optical field and therefore that an expert in optics should bercome involved as part of the team.

This may well be a case for a full trial before the district court, followed by an unequivocal determination of obviousness which on the facts so far seems the most sensible outcome notwithstanding the present decision.

[MaxDrei]

Paul, when I saw your name I was expecting to read in your contribution something about technically obvious versus commercially obvious, and the English caselaw on corkscrews. The issue is surely not whether it is obvious to bring an insect screen product to market as whether the concept defined in representative claim was obvious as such, that is, an insect screen with good resilience, good transparency and low reflectivity. Adding parameter numbers to the claim gives it a spurious patina of selection invention validity and renders it harder to knock it out on prior patent disclosures. But suppose there was no more of the proprietary insect screen in stock but plenty of the e/m screen material, and the Olympic job just had to be finished before the day the President opens the Games. Would it have been obvious to use the available e/m screen. Of course it was.

[scribo]

I saw Anderson's new window mesh at a trade event. It actually seems invisible as you look through the window and focus on objects some feet away from the outside - a real "wow" effect. If the disputed patent covers structures that achieve that effect then there is some great secondary evidence of nonobviousness available. (And, BTW, I do not represent them).

[pds]

"The element of "cheapness" MUST be recited in the claims or, at the very least, be listed as a primary objective of the invention in the disclosure. A reference will teach away when it suggests that the developments flowing from its disclosures are unlikely to produce the objective of the applicant's invention. In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994)."

Next time, read the case before you proceed to mischaracterize it. http://www.precydent.com/citation/27/F.3d/551

"Surely the objective can't be universally assumed to be 'a profitable product' or 'an inexpensive product.'"
Says someone who is obviously divorced from the "design incentives and other market forces" of the real world. SCOTUS, in KSR, continually harps upon "common sense." Common sense says that one doesn't build a $1,500+ screen door.

Then again, when dealing with 6K and MM, why would "common sense" ever have any traction?

[BigGuy]

"Next time, read the case before you proceed to mischaracterize it."

I'm with pds on this issue - that was a gross mischaracterization of In re Gurley. It seems to me that this MUST be the result of either gross incompetence or intellectual dishonesty. Which is it, Malcolm?

[pds]

6K

I can only respond to what you actually write -- not what you wish you had written, but didn't because of bad writing and/or bad grammar.

I understand that the best use of "teaching away" is an explicit teaching of "don't use Y," when "Y" is being claimed.

However, my comments weren't about "teaching away," but about your assertion regarding the "as a whole" concept (i.e., you wrote: "[t]he requirement to consider the subject matter as a whole is referring to the subject matter in the claim. Not the 'subject matter' of the references.)

My response to you was ... you are WRONG -- considering the subject matter as a whole also includes the subjct matter of the reference (i.e., "prior art reference must be considered in its entirety, i.e., as a whole").

An issue I see all the time is where an examiner takes a isolated portion of the reference, incorporates it into the primary reference, and "voila ... the claimed invention." However, when the secondary reference, as a whole, is looked at: the obvious combination is something that isn't close to the claimed invention or one skilled in the art would not make such a combination for various "common sense" reasons.

[JohnDarling]

"In determining whether the invention as a whole would have been obvious under 35 U.S.C. 103, we must first delineate the invention as a whole. In delineating the invention as a whole, we look not only to the subject matter which is literally recited in the claim in question... but also to those properties of the subject matter which are inherent in the subject matter and are disclosed in the specification. . . Just as we look to a chemical and its properties when we examine the obviousness of a composition of matter claim, it is this invention as a whole, and not some part of it, which must be obvious under 35 U.S.C. 103." In re Antonie, 559 F.2d 618, 620, 195 USPQ 6,8 (CCPA 1977) (emphasis in original).

The price of the mesh does not have to be recited in the claim. The consideration of the subject matter as a whole, however, requires it to be considered as probative of non-obviousness if the applicant (or patentee) introduces it into the record and argues that it weighs in favor of non-obviousness.

Pretty simple. Maybe too simple for some to grasp.

[MaxDrei]

I can understand why e/m screen is sold at high prices per sq ft. Its purchasers judge its performance to exacting standards, I imagine, and its per sq ft price is a trivial part of the system into which it is built. A piece of humble staple GORETEX is horrible expensive, when it is destined to be a vascular graft. But pds I don't understand why you say it costs USD 1500 to make an insect screen having the numerical parameters of representative claim 1. After all, all it has to do is keep insects out. Now if the patent in suit were to start out from the problem that mesh is horrible expensive, and teach how to make it an order of magnitude cheaply, then the claim would be differently formulated, no?

[humble pie]

6K,

Here is a great opportunity for you to suck it up and just admit how wrong you were in this particular instance, rather than to keep digging by showing lousy search skills and wildly contorted misapplied MPEP section analysis when the MPEP is plainly provided.

Malcolm,

While you may not care what people care about what you say, your eagerness to jump on 6K's bandwagon impacts the validity readers attest to you in general and that includes those things that you are correct about. A slice of pie for you too.

[SF]

"I am not following the jump in logic."

What's there not to understand? Before you can conclude not to use the prior art mesh because it's too expensive to be used as a window screen, you've already recognized that it could be used as a window screen.

pds recognizes an interesting twist: one of ordinary skill in the art wouldn't know whether it would work. we don't have those facts articulated here. (keep in mind, of course, that one of ordinary skill need only recognize that it could work for purposes different from the purpose of the inventor)

"Also, your logic precludes the use of "teaching away" - nothing can be taught away that hasn't been thought of - no?"

No. There are plenty of complex claims that have several elements that are spread out over several references. You can have a claim that recites ABC, a first reference that teaches AB and a second reference that teaches C and away from B. That works. In this case, the question is whether the mesh C could be added to a generic door AB. If one recognized that it could be done, the analysis is over.

[edstirling]

consider a person of ordinary skill in the art with an insect problem and he is stuck in the African bush with only tent poles and a huge ream of this magnetic shielding mesh. wouldn't be obvious to use the mesh to make a tent. because it's not FOR mosquitoes, and it might ruin his radio reception, IF he had a radio. Plus, it would be totally worth it if he didn't ruin it so he could sell it for $75/sq ft when he gets back to civilisation.

[pds]

"Before you can conclude not to use the prior art mesh because it's too expensive to be used as a window screen, you've already recognized that it could be used as a window screen."

A 500lb anvil could be used as a hat (i.e., it will protect your head from the elements (e.g., rain, sun, wind). However, it's use as a hat would not necessarily be obvious.

Turning to the case at hand, the following was written:

Andersen submitted evidence that durability is a desirable characteristic of insect screens because they experience wear and tear from exposure to daily weather conditions and interactions with humans and pets. Appellant’s Br. at 36-37. In that regard, the TWP website called the electromagnetic-shielding mesh used by Andersen the “world’s most delicate metal fabric” and specified that it requires “great care in handling.” The Sims Patent, a prior art reference also before the PTO examiner, teaches that fine mesh should only be removed from the glass panes if it will not be subject to accidental damage and contact. U.S. Patent No. 5,012,041, col.3 l.51-56 (filed Jun. 22, 1989). According to Andersen, the delicacy of the TWP mesh, its need for special care, and its vulnerability to damage upon contact could discourage an insect screen designer from using it.

===========

Thus, evidence was also produced that screen was likely to be considered, by one skilled in the art, as unsuitable for use with a screen door.

Heck ... one could use chicken wire as the mesh material. However, I don't think its use would have been obvious.

There is a distinction between "what one having ordinary skill in the art would have considered as capable of being combined" and "what one having ordinary skill in the art would consider obvious to combine."

The ultimate determination of patentability is based on the entire record, by a preponderance of evidence, with due consideration to the persuasiveness of any arguments and any secondary evidence. In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992).

This means that you weigh the evidence provided for obviousness against the evidence provided for non-obviousness. The fact that the mesh had some certain desirable property is evidence of obviousness. The fact that the mesh was EXTREMELY expensive (particularly when compared to the currently-used materials) is evidence of non-obviousness.

To grant summary judgment, there must be no genuine issue of material fact to be resolved. However, since there was evidence of obviousness versus non-obviousness to be weighed, this decision was a no-brainer by the FC.

[pds]

"You can have a claim that recites ABC ... the question is whether the mesh C could be added to a generic door AB. If one recognized that it could be done, the analysis is over."

You need to tighten up your analysis. You write "[i]f one recognized that it could be done," but who do you refer to? I.e., which "one" are you referring to?

Ultimately, the inventor recognized that it could be done. However, that isn't particularly relevant to patenability.

If the evidence shows that, prior to the invention, someone else recognized that C could be used for door AB or even door GH, then you have the basis for a successfuly obviousness analysis.

However, what if nobody recognize that C could be added to AB? Then we are left with are artificial construct of "one havng ordinary skill in the art at the time of the invention." Certainly, one "could" use this screen material, chickwire, or rebar for the mesh material. However, that is only one side of the equation. The second side requires us to consider why one wouldn't use these materals for the mesh of the screen door.

To establish a prima facie case of obviousness, the examiner can certainly make a finding that C could be used with AB. Once a prima face case had been made, this would pass the burden to applicant of rebutting the examiner's findings. For example, applicant could present evidence that use of these materials would not be desirable for various reasons (e.g., cost, not suitable for the purpose of an insect barrier, etc.)

In "theory," the examiner would weigh the evidence and come to a conclusion of obviousness. However, in actuality, the vast majorities of examiners, once establishing a prima facie case of obviousness believe that no additional analysis need be made and ignore applicant's rebuttal.

[MaxDrei]

As you remind us, pds, this is a Summary Judgement case, with all that that implies. All the same, your comments and those of others create another great thread for revealing how superior is the EPO Problem and Solution Approach to obviousness (Boring, boring, I hear you all cry, but I will continue, nevertheless). That's because PSA works by ascribing some "specific technical purpose" to the notional PHOSITA notionally contemplating the State of the Art without benefit of hindsight.Just as you can't tell whether a trademark is "descriptive" till you know the goods, so you don't know whether something is factually "obvious" till you have specified "obvious for what?". And the "for what" emerges (inevitably, ie there's nothing you can do, after filing your app, to stop it) from the app as filed, which was written before the date of the claim. Some day, the whole world will use PSA, and wonder how they ever managed without it.

[JohnDarling]

"...you don't know whether something is factually 'obvious' till you have specified 'obvious for what?'."

Max, under PSA, would it have been obvious to use the prior art mesh as an insect screen?

Please also explain how you arrive at the answer. In other words, how do you determine that it would, or would not, have been obvious to use the prior art mesh as an insect screen if you do not take account of considerations such as the need for durability and low price?

Or is the answer simply that the prior art mesh COULD be used as an insect screen?

And if that's the answer, how do you deal with evidence to the contrary, i.e. evidence (or arguments) introduced by the applicant that the prior art mesh COULD NOT be used as an insect screen?

[Malcolm Mooney]

"According to Andersen, the delicacy of the TWP mesh, its need for special care, and its vulnerability to damage upon contact could discourage an insect screen designer from using it."

Do the claims require that the insect screen be placed in a weather-exposed area children are playing?

No, they don't. Here's an exemplary claim:

"An insect screening material in a frame removably attached to a fenestration unit that permits ventilation therethrough and having reduced visibility, comprising a plurality of screen elements having a diameter of 0.007 inch or less, the screen elements having a tensile strength greater than 5500 psi, wherein the screening has a transmittance of light of at least 0.75 and a reflectance of light of .04 or less."

All this baloney is just wanking over what an insect screen "has to be". But it's just that: wanking. Bogus. Lies.

[SF]

pds:

The "one" is one of ordinary skill in the art, not Neo or Obama.

"what if nobody recognize that C could be added to AB?"

-- that's different. Here, there aren't any facts to suggest that one of ordinary skill, after recognizing that the mesh could be combined with an opening, would not function as a fly screen.

If one of ordinary skill finds that it would be obvious to use the mesh to function for some purpose (i.e., a fly screen), it's obvious. Regardless of whether one of ordinary skill would instantaneously recognize that the mesh would be too expensive to allow one to make money. Obvious, profitable concepts are a subset of obvious concepts as a whole.

Since durability and price are not claimed, the patentee would be free to assert its claims against all competitors regardless of durability and price. Thus, it doesn't make sense to (ahem)screen the prior art on the basis of durability and price.

[SF]

correction: there aren't any facts to suggest that one of ordinary skill, after recognizing that the mesh could be combined with an opening, would not also recognize that the mesh could function as a fly screen.

[Malcolm Mooney]

Interesting but not unsurprising fact: none of the terms "durable," "resistant," "inexpensive," "cost," or "price" appear anywhere in the patent.

Where did the lawyers for the patentee come up with all that stuff? Answer: they pulled it out of their butts.

Here's a phrase that does appear in the patent: "The insect screening of the invention can be used in the manufacture of original
screens and can be used in ... ***many other structures where screening is used***."

Of course, "many other structures" includes structures where bogus ad hoc considerations like "durability" are irrelevant.

This is the end of the analysis. If you don't understand why, you are clueless or a liar. Go ahead. Embrass yourself. I mean, the attorneys for the patentee weren't afraid to embarass themselves. Then again, they got paid to kick up dust and find experts to offer irrelevant testimony.

This case sickens me.

[pds]

"Interesting but not unsurprising fact: none of the terms "durable," "resistant," "inexpensive," "cost," or "price" appear anywhere in the patent."

You keep forgetting that SCOTUS, within KSR, absolutely LOOOOOVE the use of "common sense."

Common sense says that if you are going to build an insect screening door it should be durable, resistant, and inexpensive. BTW -- if it is going to be exposed to insects -- odds are that it will be exposed to the elements as well.

You simply cannot put "common sense" on a pedestal when it works in the favor of a conclusion of obviousness and hide "common sense" in the backroom when it doesn't favor a conclusion of obviousness.

[JohnDarling]

The totality of the record must be considered when determining whether a claimed invention would have been obvious to one of ordinary skill in the art at the time the invention was made. Therefore, evidence and arguments directed to advantages not disclosed in the specification cannot be disregarded. In re Chu, 66 F.3d 292, 298-99, 36 USPQ2d 1089, 1094-95 (Fed. Cir. 1995) (Although the purported advantage of placement of a selective catalytic reduction catalyst in the bag retainer of an apparatus for controlling emissions was not disclosed in the specification, evidence and arguments rebutting the conclusion that such placement was a matter of "design choice" should have been considered as part of the totality of the record. "We have found no cases supporting the position that a patent applicant's evidence or arguments traversing a § 103 rejection must be contained within the specification. There is no logical support for such a proposition as well, given that obviousness is determined by the totality of the record including, in some instances most significantly, the evidence and arguments proffered during the give-and-take of ex parte patent prosecution." 66 F.3d at 299, 36 USPQ2d at 1095.). See also In re Zenitz, 333 F.2d 924, 928, 142 USPQ 158, 161 (CCPA 1964) (evidence that claimed compound minimized side effects of hypotensive activity must be considered because this undisclosed property would inherently flow from disclosed use as tranquilizer); Ex parte Sasajima, 212 USPQ 103, 104 - 05 (Bd. App. 1981) (evidence relating to initially undisclosed relative toxicity of claimed pharmaceutical compound must be considered).

The specification need not disclose proportions or values as critical for applicants to present evidence showing the proportions or values to be critical. In re Saunders, 444 F.2d 599, 607, 170 USPQ 213, 220 (CCPA 1971).

[pds]

"there aren't any facts to suggest that one of ordinary skill, after recognizing that the mesh could be combined with an opening, would not also recognize that the mesh could function as a fly screen."

The standard is "WOULD have been obvious," not "COULD have been obvious."

We could blast the Empire State Building into space with sufficient rockets.
A house could be built out of gold.
Pigs could fly by a number of various means.
MM could practice intellectual honesty.
6K could write a cogent sentence.

Any number of things could be possible, and one having ordinary skill in the art would recognize the possibility of these things.

However, before you get to ask the question of "could C be combined with door AB," you must first explain why one having ordinary skill in the art would even ask the question.

A likely question one having ordinary skill in the art would ask beforehand is what are candidates of materials that could be used for AB? It is with that question and for reasons already discussed (i.e., cost, durability, etc.) that one having ordinary skill in the art would likely reject C before even considering whether "could C be combined with door AB?"

This is the "as a whole" analysis that was discussed above. One needs to look at the all the teachings of the applied prior art and not selectively cull from the prior art those teachings that support obviousness while ignoring those that support nonobviousness.

[Malcolm Mooney]

I'm going to put it right under your noses again, my patent peddling friends:

"The insect screening of the invention can be used in the manufacture of original
screens and can be used in ... ***many other structures where screening is used***"

Do you understand what an admission is? Do you understand that the claims aren't limited to a "durable" or "cheap" insect screen? Do you understand that the specification expressly states that the insect screen includes a screen that does not need to be durable or cheap?

I hope you do. Because if you don't understand that, you are either clueless or dishonest. I'll let you pick.

My work is done here. I'm sure the district court judge's clerk will understand even if you don't.

[6]

"However, my comments weren't about "teaching away," but about your assertion regarding the "as a whole" concept (i.e., you wrote: "[t]he requirement to consider the subject matter as a whole is referring to the subject matter in the claim. Not the 'subject matter' of the references.)"

Your response is that I was wrong, and I say I was right, and still am. I already said that there is a requirement FROM CASELAW NOT from the LAW that supported JD's position. However, I did have my examples of the caselaw wrong, as I specifically noted I might. But here is where the requirement comes from straight out of your MPEP citation:

"A prior art reference (NOTE HERE THERE IS NO SUCH ANIMAL AS "THE SUBJECT MATTER OF A PRIOR ART REFERENCE) must be considered in its entirety, i.e., as a whole, including portions that would lead away from the claimed invention. W.L. Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 220 USPQ 303 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984)"

In any event, as I have said from the beginning, there is no requirement to review the SUBJECT MATTER of the PRIOR ART as a whole. This being because 1. there is no such monster as "the subject matter of the prior art", there is only "the prior art". This has zero relevance to the discussion on whether or not the prior art must be reviewed a a whole.

So, I then bring up that JD's position is supported by caselaw, IF we consider his calling prior art "the subject matter of the prior art".

"I understand why you make the argument that it [the prior art as a whole] should be included in the analysis, but it isn't in the patent laws, plain and simple. I do seem to recall some cases where they mentioned that a combination must have been obvious to have made in order for it to be considered prior a valid combination for the purpose of rendering a claim obvious. I could be mistaken on that last point however."

And as I've noted already, I was wrong about the specifics of the caselaw, but there is no requirement in the actual law.

And notice here that even after all this there is no statement in the MPEP about considering the "subject matter of the prior art as a whole", there is a statement about considering the "prior art as a whole, i.e. including statements that teach away". The reason this is important in this case is that the cost of the screen, as already mentioned many times here, is not a "teaching away" a mere mention of factors that might lead to one embodiment not being optimal compared to another embodiment is not teaching away, it is simply information. And it is not information that is relevant to the obviousness determination under TSM, since motivations, short of actual teaching away, to not use something are not relevant, what are relevant are motivations to use something. It might would be relevant under KSR's common sense approach if we were discussing if it would be or would not be obvious to make an insect net manufacturing line from the combination. However, we are not discussing making a manufacturing line, we are discussing making the combination itself. And as already posted here, making a simple combination is not impacted by cost considerations until after you have already concieved of the idea to combine and figured out it would work and have made the combination, though you may not have decided if it was worth making products from.

If there is any remaining ambiguity, I'm sorry, that's the best I can try to do to explain it to you. And it seems that short of calling you and discussing it in your language you're not going to get it if you don't get it from the above.

"My response to you was ... you are WRONG -- considering the subject matter as a whole also includes the subjct matter of the reference"

And there again, you use the terms wrong. You say considering "the subject matter as a whole". There is no requirement, ANYWHERE to consider "the subject matter as a whole". There is a requirement to consider ONLY "the subject matter of the claims as a whole" which is quite different from "the subject matter as a whole". AND there is a requirement to consider the prior art as a whole, NOT to consider the "subject matter" of the prior art as a whole.

The fallacious use of the terms in your sentence is relevant because if we actually had to consider the subject matter of the whole case, claims, prior art, and etc. as a whole, the considerations like cost and etc. would need to be evaluated, not necessarily as teaching away, but would just need to be factored in to an obviousness determination, and they most certainly do not.

To use your example, a .5lb bowl shaped anvil that costs ten million dollars can be used as a hat, and it is obvious to do so if there is a reference teaching .5lb bowl shaped anvils that cost ten million dollars and another reference that teaches using anvils as hats. The cost involved doesn't detract from the want to use a bowl shape to help the anvil stay on ones head. Thus, all prior art elements are there, and there is a motivation to combine, reasonable expectation etc. That is all which is required. End of analysis. There is no requirement to factor in the 10 million.

"However, in actuality, the vast majorities of examiners, once establishing a prima facie case of obviousness believe that no additional analysis need be made and ignore applicant's rebuttal."

It may appear that way from the outside, but in reality we discuss these things quite often and at great length. Often however, I do find the attitude amongst primaries is to not put any of this discussion on paper, because if you do then you might lessen your chances at the board. It's the same as you not saying certain things for the record so that you don't hurt your clients case PDS, just in reverse. If you don't like it, then start being open and honest about the fact that 99% of the combinations made will involve all old parts/methods and are mere combinations and tell us this up front so that we can determine if there was a motivation to combine. I'm sure your case will get taken care of much faster that way, and they may even take into consideration your secondary factors more often and etc. If you don't want to do those types of things, then live and let live, we have an adversarial proceeding taking place, because of your decision.

[6]

"The consideration of the subject matter as a whole, however, requires it to be considered as probative of non-obviousness if [one side brings it up and argues it weighs one way or another]"

Hardly. The only thing that must be considered if a fact is brought up and argued to be material, and is also argued to weigh in one direction or another, is first whether or not the fact is indeed material. And the judge must decide if the fact is material or not. And in this case iirc it seems he already did, and it was not. And he was right. Your arguing that the fact that the sky is blue is relevant to our case about bicycles doesn't make your fact material just because you brought it up and argued that it weighed in one direction or another JD. Welcome to the wonderful world of reading comprehension. Hope you enjoy your stay.

Also, to reiterate the above, there is no mandated "consideration of the subject matter as a whole" there is only mandated "consideration of the subject matter of the claims as a whole" and mandated (by caselaw) "consideration of the prior art (not the subject matter of the prior art) as a whole".

All that said, there were other issues of material fact which technically should have been addressed by a trial so yes, it was proper to remand. But the grounds on which the remand was based included many improper portions.

[Leopold Bloom]

"'The insect screening of the invention can be used in the manufacture of original
screens and can be used in ... ***many other structures where screening is used***'

Do you understand what an admission is? Do you understand that the claims aren't limited to a "durable" or "cheap" insect screen? Do you understand that the specification expressly states that the insect screen includes a screen that does not need to be durable or cheap?"

Perhaps I'm clueless, but the relevant question is whether it would have been obvious to use the "prior art" electromagnetic screen as an insect screen. Not whether it would have been obvious to use the invention as something else. This supposed "admission" doesn't admit anything.

"I hope you do. Because if you don't understand that, you are either clueless or dishonest. I'll let you pick."

Didn't Big Guy challenge you above regarding honesty/competence? I don't think you've answered his question.

[6]

A helpful insight into the CAFC's error is right here.

"Recognizing that the Supreme Court in KSR cautioned us to not be too rigid in applying the TSM test, we may still consider evidence of teachings to combine (and, presumably, not to combine) because, according to the Supreme Court, they “capture[ ] a helpful insight” into the obviousness inquiry."

The "presumably not to combine" part is completely made up off the cuff and for no reason. The part about cost is a reason not to combine but it is not a teaching away, and those are the things which need to be considered in determining See Para-Ordnance Mfg., Inc. v. SGS Imps. Int’l, Inc., 73 F.3d 1085, 1088 (Fed. Cir. 2005) (“[W]hether [the prior art] teaches toward or away from the claimed invention [[which is]] also is a determination of fact.”). And that is at least one place where this analysis goes all to heck.

Anyway, back to my smacking down such ridiculousness irl.

[JohnDarling]

"The only thing that must be considered if a fact is brought up and argued to be material, and is also argued to weigh in one direction or another, is first whether or not the fact is indeed material. And the judge must decide if the fact is material or not. And in this case iirc it seems he already did, and it was not."

Unfortunately, you recall incorrectly. As I advised you before, you may want to actually read the decision. For example, in the second sentence of the first full paragraph of page 11, the court states unequivocally that the patentee's evidence and arguments, including the pricing of the TWP prior art mesh, created a genuine issue of material fact.

BTW, as I clearly stated, the determination of obviousness requires the consideration of the subject matter as a whole, i.e. consideration of 1) the subject matter sought to be patented, 2) the (pertinent) prior art, 3) the differences between the two, and 4) any secondary considerations.

"Welcome to the wonderful world of reading comprehension. Hope you enjoy your stay."

I'm enjoying my stay tremendously. You know what the best part of my stay is? You're not here.

[JohnDarling]

"...the court states unequivocally that the patentee's evidence and arguments, including the pricing of the TWP prior art mesh, created a genuine issue of material fact."

BTW, the court states that the evidence and arguments creates a genuine issue of material fact as to whether the prior art teaches away from the claimed invention.

Again, page 11, first full paragraph, second sentence.

"The 'presumably not to combine' part is completely made up off the cuff and for no reason."

Uh, no. This is simply what many of us familiar with logic call a corollary. If the court is required to consider evidence that tends to show it would have been obvious to combine, the corollary is that they are also required to consider evidence that tends to show that it would not have been obvious to combine.

Simple logic. Amazing how it manages to escape so many.

[JohnDarling]

"...the court states unequivocally that the patentee's evidence and arguments, including the pricing of the TWP prior art mesh, created a genuine issue of material fact."

BTW, the court states that the evidence and arguments creates a genuine issue of material fact as to whether the prior art teaches away from the claimed invention.

Again, page 11, first full paragraph, second sentence.

"The 'presumably not to combine' part is completely made up off the cuff and for no reason."

Uh, no. This is simply what many of us familiar with logic call a corollary. If the court is required to consider evidence that tends to show it would have been obvious to combine, the corollary is that they are also required to consider evidence that tends to show that it would not have been obvious to combine.

Simple logic. Amazing how it manages to escape so many.

[JohnDarling]

"...the court states unequivocally that the patentee's evidence and arguments, including the pricing of the TWP prior art mesh, created a genuine issue of material fact."

BTW, the court states that the evidence and arguments creates a genuine issue of material fact as to whether the prior art teaches away from the claimed invention.

Again, page 11, first full paragraph, second sentence.

"The 'presumably not to combine' part is completely made up off the cuff and for no reason."

Uh, no. This is simply what many of us familiar with logic call a corollary. If the court is required to consider evidence that tends to show it would have been obvious to combine, the corollary is that they are also required to consider evidence that tends to show that it would not have been obvious to combine.

Simple logic. Amazing how it manages to escape so many.

[JohnDarling]

"...the court states unequivocally that the patentee's evidence and arguments, including the pricing of the TWP prior art mesh, created a genuine issue of material fact."

BTW, the court states that the evidence and arguments creates a genuine issue of material fact as to whether the prior art teaches away from the claimed invention.

Again, page 11, first full paragraph, second sentence.

"The 'presumably not to combine' part is completely made up off the cuff and for no reason."

Uh, no. This is simply what many of us familiar with logic call a corollary. If the court is required to consider evidence that tends to show it would have been obvious to combine, the corollary is that they are also required to consider evidence that tends to show that it would not have been obvious to combine.

Simple logic. Amazing how it manages to escape so many.

[Malcolm Mooney]

"this MUST be the result of either gross incompetence or intellectual dishonesty. Which is it, Malcolm?"

It's neither. Incompetent blog commenting? LOL. Nice attempt at distraction, though.

Maybe you can try dealing with those very unfortunate facts that (1) I predicted in my first comment and (2) eventually retrieved from the patent to put to bed any notion that baloney like "expensive" or "durability" was a relevant consideration in this case.

The pro-patent peddlers always love to stick their heads in the sand and act dumb as rocks. Why? Because that is what they do for a living: they act like they have no idea what patent law is or what the claim actually says. They pretend they are patenting something in the specification with all kinds of "properties" and "advantages" that are not inherent to the actual claim at issue but are inherent only to some preferred embodiment (or none at all).

It is dishonest but dishonesty is a way of life for many lawyers (or agents in the case of patent prosecution where one does not even need to pretend be a lawyer to engage in wordplay for the purpose of defrauding the public).