By Jason Rantanen
The C.W. Zumbiel Company, Inc. v. Kappos (Fed. Cir. 2012) Download 11-1332
Panel: Prost (dissenting-in-part), Moore, Wallach (author)
Prior to KSR v. Teleflex, the Federal Circuit granted significant deference to the PTO on obviousness determinations; following KSR, that deference has only increased. Zumbiel v. Kappos represents possibly one of the more extreme examples of that deference. This appeal is unusual, however, in that it involves substantial deference to the BPAI/PTAB's finding that a claim is nonobvious, deference that is (in the dissent's view) contrary to other aspects of the Court's holding in KSR.
Graphic Packaging International is the assignee of Patent No. 6,715,639, which is directed to a carton or box that holds containers such as cans and bottles. Zumbiel filed for an inter partes reexamination of the '639 patent, arguing that the claims were obvious in light of various prior art references. The BPAI (now the PTAB) determined that some of the claims were obvious (including claim 1) and some were nonobvious (including claim 2). Both parties appealed the adverse determinations.
Representative Claim 1:
1. An enclosed carton for carrying a plurality of containers in two rows, with a top row and a bottom row, said containers each having a diameter, the carton comprising:
a. a top panel, side panels, a bottom panel, and closed ends, at least one of which is an exiting end;
b. a dispenser which is detachable from the carton to form an opening at an exiting end through which the containers may be removed;
c. the dispenser being a unitary structure comprising a portion of the top panel, portions of the side panels, and a portion of the exiting end, said portions being defined by a tear line extending across the top panel, side panels, and exiting end;
d. means for preventing the end container in the bottom row from accidentally rolling out of the carton after the dispenser has been opened, the height of the means above the bottom panel being less than the diameter of said end container; and
e. a finger flap located along the portion of the tear line extending across the top panel for pulling the dispenser open along the tear line,
f. whereby when the dispenser is opened it may optionally remain attached to the carton
at the exiting end to form a basket at the exiting end of the carton.
Representative Dependent Claim 2:
2. The carton of claim 1, in which the finger flap is located between the first and second containers in the top row.
Prior Art Reference 1 (Ellis):
Prior Art Reference 2 (German '718) (note that there were two additional prior art references):
The Federal Circuit began by affirming the PTAB's determination that representative claims 1 and 13 were obvious. Among other issues, the court employed a "predictable variations" approach to conclude that a claimed limitation would be met. German argued that the prior art did not teach the claimed location of the finger flap; the court, however, agreed with the Board that "providing the finger opening on the top wall of the carton would be a predictable variation that enhances user convenience…and is within the skill of a person of ordinary skill in the art." Slip Op. at 15.
The court next turned to Zumbiel's appeal of the PTAB determination that representative claim 2 was nonobvious. The sole additional limitation added by claim 2 is that "the finger flap is located between the first and second containers in the top row." Thus, "the dispute lies in whether the location of the finger flap between the first and second cans is obvious in light of the prior art." Slip Op. at 20. Applying a substantial evidence standard, the majority affirmed the Board's determination that (1) a third prior art reference did not provide the necessary teaching for moving the tear line and (2) "there was little incentive to relocate Ellis's finger flap to a position between cans in order to provide space for the fingers." Slip Op. at 22. Based on these findings, the majority held that claim 2 was nonobvious.
Judge Prost's Dissent: In a plain language dissent, Judge Prost strongly disagreed with the majority's determination of nonobvious:
"Failing to apply KSR to the facts of this case, the Board has concluded that the invention recited in claim 2 is non-obvious. Because I believe that a common sense application of the obviousness doctrine should filter out low quality patents such as this one, I cannot join the majority in endorsing the Board’s incorrect approach on this question. Thus, with respect, I dissent."
…
[L]et’s be clear what claim 2 is about. The claimed invention takes the opening from Ellis, takes the stacked can configuration from another box, and puts them together. The result is—as one would expect—a box that has the known benefits of Ellis’s opening and the known benefits of a stacked can configuration.
Why is this assembly non-obvious? Because, the Board explains, the patentee has solved a difficult implementation problem, the solution to which was supposedly not obvious to box makers who lacked extraordinary skill. The secret lies in the proper positioning of the tear line. That is, according to the Board, ordinary box makers would not have put the tear line between the first two cans in the top row.
Where else could have they put it? There are just four other options: (1) above the first can, (2) above the second can, (3) in front of the first can, (4) behind the second can. The first two alternatives are just offensive to common sense: With the cans right below, there would be no room to push the flap through (the flap is positioned at the center of the tear line). The third and fourth options are not quite as illogical, but even without expertise in box making, one may intuit that they make awkward designs (the third opens too little, the fourth too much).
More importantly, however, whether some of the alternatives would work just as well or not, the patentee’s choice of tear-line-placement involves no more than the exercise of common sense in selecting one out of a finite—indeed very small—number of options. And there are no unexpected results[.]
The point here is not that the Board got the facts wrong. The point is that contrary to the Supreme Court’s instructions, an “overemphasis on the importance of [teachings of prior art]” has insulated the Board’s analysis from pragmatic and common sense considerations that are so essential to the obviousness inquiry. KSR, 550 U.S. at 419. The Board’s approach relegates one of ordinary skill to an automaton. Should this approach become commonplace, it would lower the obviousness bar and
hence hinder competition and innovation. That is why, unlike the majority, I do not see any room for deference to the Board’s determination in this case.
Don’t you mean smugly Snidely. I’ll never be as smugly as you Ned.
Smuggle?
“Negative consequences for the applicant have to be balanced against negative consequences for the competitors of the applicant.”
IF these balancing factors are actually required by law.
“Please elaborate a bit.”
What . does . “sole . novelty” . mean?
Where . do . I . find . that . in . 35 . USC?
These are simple and straight forward questions needing no elaboration. You are using a term of “sole novelty.” Where is the legal basis for this term, and what exactly does it mean?
I suspect that you are trying to smuggle in a “point of novelty” “policy” view without proper legal foundation, but did not want to accuse you of that because you may have meant something else.
Anon, perhaps I did not understand your point, then. Please elaborate a bit. If I didn't understand you, perhaps others here did not as well.
Negative consequences for the applicant have to be balanced against negative consequences for the competitors of the applicant. Les, half my time is spent getting prosecution amendments in, and the other half dealing with the consequences of my client’s competitor having improved its position illegitimately by smuggling in, during prosecution, an amendment which should not have been permitted.
Absent the EPO’s strict line on “added subject matter” I cannot deliver to my client meaningful clearance opinions on what his competitor has pending in Europe. Strong clearance opinions promote the progress just as much as soft treatment of applicants.
Even more important Les, is whether or not verbatim-ism is supported by the law.
Convenience to the state, if not actually in the law, is no substitute for the law.
Ned,
How is my question a sign of “deliberate refusal to listen?”
In fact, between you and I, it is most definitely you that exhibts this “refusal to listen” – based on your abdication of discussion threads that turn to areas where your third party induced interests do not want to go.
Very intellectually dishonest of you to accuse me of that which you do.
Now then, do you actually care to answer my question, or would you rather kick up dust and hide in the cloud of accusation?
1. I think there are more examiners examining in a second language in the USPTO than there are at the EPO.
2. That was my point, the verbatim-ism is understandable where patents have to be translated and enforced in several languages. However, it does have some negative consequences for applicants.
anon, may I say that the central problem we have, indeed, everyone has when conversing with you is your deliberate refusal to listen.
“from over 30 years of experience of them”
For MaxDrei, that’s actually 6 months of experience repeated over 60 times.
It’s funny that what you consider a silly challenge (and due fully to you reading too much into the post based on the moniker [the Leopold disease]) results in one of the best posts that I have ever seen you write, with you fully owning up to critical differences in the US/ROW states of patent law (something that you alarmingly gloss over in your typical proselytizing mode).
Silly? Not at all – highly successful for obtaining a critical admission from you.
Now let’s see if you can grasp the lesson at your fingertips and actually have a mind, willing to learn (the history of dead horses and penchant for all things EP indicate otherwise, but Hope springs eternal).
You are right anon, it is not a snark question. that’s not because it is not a snark but because it isn’t a question. I see it instead as yet another sad attempt to provoke a response, any response, for then there’s work to do, again.
But, in case other readers are interested, I will say that I have indeed been trying to write perfect patent claims since the early 1970’s. Not quite there yet, but I’m still working on it.
Claims for the world outwith the USA, that is. I simply don’t understand how to write the perfect claim for the USA. The law there keeps changing.
The USA is indeed an exceptional jurisdiction, with special law unique to that jurisdiction. Claim drafting is one of the highest forms of the patent attorney’s skill. Therefore, I leave to others, learned specialists with long experience of the US jurisdiction who are able to express themselves accurately and concisely in the English language, the challenge of writing good claims for the USA.
I might add that great results can emerge from a 3-cornered discussion, sometimes on the phone, between in house at the US corporate client, outside US counsel and outside EPO counsel (me). Because it so seldom happens that the claim optimal for the EPO is also optimal for the US courts (and vice versa) the discussion about what works in each jurisdiction, and what doesn’t, frequently raises the quality of the claims in both jurisdictions.
What I also know, from over 30 years of experience of them, is that such discussions only work when there is mutual respect between US and EPO counsel and when both enjoy the solid confidence of the common client.
Readers, I apologise for indulging myself, replying to the silly challenge to my competence. But I am encouraged by the thought that there have been many dialogues between anon and me which end when he chooses not to reply.
anon, I suggest you turn now to the M+F thread. There you will find a more promising opportunity to comment.
“Drafting in First to File country is on an “onion layer” notion, with many dependent claims of progrssively narrower scope, each delivering a better technical performance than the wider claim, till you get to your Best Mode.”
You don’t draft claims for a living, do you MaxDrei? (Not a snark question)
Ned,
What does “sole novelty” mean? Where do I find that in 35 USC?
The silence for this point has been around almost as long as his [oldstep]+[newthought] chicanery.
The obvious reason he does not address it is because it shines a critical weakness on his pet theory.
demonstrate how a step of thinking about something new can be sufficiently “integrated” with an old (but otherwise patent eligible) process such that a patent-eligible claim results. If you can identify such a claim, …Alternatively, you could simply acknowledge that it’s not possible to draft such a claim”
Then what is the point of posting this abstract hypothetical muck that has no application to actual patent law?
Why not focus on a real set of claims, you know to an actual case in view of Prometheus? ( your favorite case)
Why do you run away from the challenge I gave you for performing “integration” on Ultramercials claims according to the USPTO Guidance on integration?
Nor am I. The “verbatimism” is because the examiners at the EPO are examining in a language (English) which, for them, is not their first language. No other Patent Office is in that predicament.
But as the EPO grants patents in English which are then litigated in EPC Member States (such as Germany) where the language of the court is also not English, it is no bad thing that applicants, during prosecution at the EPO, rehearse making themselves clear to people who are not English native speakers. What then gets issued is more likely to be meaningful to the judges.
anon, the way I viewed this case, and if the facts are different, explain, is that carton openings were known and the location of the tear line, or perforation, between to top two cans was the sole novelty.
As you pointed out, once the patented carton was introduced in the market, everyone adopted the new version. This seems to be the strongest evidence of non obviousness available.
However, if there was no such evidence, I think the location of the tear line was someone of an arbitrary choice given that it could be located at any location that would allow the cans to be withdrawn from the carton. Why one position and not another? To support a patent, the applicant or the patentee should have evidence of an unexpected result.
To me, this case is close. The law suggests that the secondary considerations decide the outcome. But if not for that, I think the claims obvious.
“I suspect you drink too much.”
When you have been defeated, and humiliated on this blog as much as MM, and this blog is your only validation of self esteem and intellect, well you might drink too. Let’s hope the assault weapons ban gets passed before the booze runs out.
“Still waiting for your recognition that mental steps are perfectly valid parts of patent eligible claims.”
Well MM?
Are they?
:: Silence::
” Silence is the thunder of cowards”
Has MM EVER faced and discussed an actual point of law ?
“Yes, your fondness (for the wrong reasons) is by now legendary as you indeed were the first to post the link to the government’s implementation response to that decision, even if you did not bother reading what that link had to say (and the fact that that link reinforced what you opponent 101 Integration Expert had to say and completely ignored your bogus pet theory [oldstep]+[newthought] crrp was not lost on anyone (except you) as you danced continuously in your own special self-defeat way.”
LOL! I had no idea this was still going on and in this thread. Meanwhile in the Carnegie thread MM has run away once again from the challenge to apply the USPTO Official Guidance, on Integration Analysis to Ultramercials, or ANY claims. Even though the use of “integration” is from Prometheus, his favorite case..lol What a joke!
FYI, the US is now a First to File country. I’m not aware of any associated move toward verbatim-ism.
Les I do agree, that verbatim word for word support is too strict. as to the rest, until I can see your EPO file history it is hard to comment further. the reality is though, in First to File country, prosecution amendments that go beyond folding a dependent claim into a claim higher up can be problematic. Drafting in First to File country is on an “onion layer” notion, with many dependent claims of progrssively narrower scope, each delivering a better technical performance than the wider claim, till you get to your Best Mode.
Those are test points, not a definition.
In the present case, there is not 5″ slip on vs. 6″ issue. The inventors created the market by making the invention and showing its advantages and C.W. Zumbie saw its success and wants to jump on board. The patent is necessary to protect the investment in the development. If anyone were free to copy any good idea, then no one would invest in improvements and new ideas, because someone else could undercut the price they need to recoup the investment. Its as true for soda cartons as it is for Lipitor.
I’ve showed why it wasn’t obvious…. its the other side that’s entire argument is eye rolling and belittling.
Why don’t YOU look that up. I think you are confusing tests for obviousness (of which you are latching on to one) with the definition of obviousness, which is the ordinary meaning.
Les, perhaps it helps if you pause and think for a moment who carries the burden of proof. Imagine that the claim under scrutiny is a human being and if the Plaintiff succeeds, then that human is put to death. To get a death sentence, you need more than the mere fact that industry is doing something today that it wasn’t already doing before the claim was born. There are a thousand plausible reasons other than legal obviousness why industry makes one product today that it wasn’t making before. Perhaps a 5″ slip-on cover or a 6″ cover for a mobile phone, when, before, the covers were all smaller. There’s a reason now, isn’t there, which was not there before. it is simply that there’s a market now for such covers which wasn’t there before.
As you know, if you want to invalidate a duly issued claim as obvious you need evidence of obviousness that is clear and convincing. Just arguing “Well it stands to reason, doesn’t it” won’t cut the mustard.
Legal certainty Les. It matters.
We seem to have veered off topic, and it probably my fault. Actually, my suspicion is that the Examiner was being intentionally obtuse. Part of the problem was the spec was written at a very high level and did not walk one of less than ordinary skill in a fairly technical art gently through an explanation of the invention. As we tried to fill in the gaps, the EPO’s penchant for literal word for word support, which is fully understandable in a world where you are dealing with translation issues over several languages, got in the way. If you want to call that applicants fault go ahead. The same application was allowed in several other jurisdictions.
I maintain it is unreasonable to require clairvoyance and a listing of all elements not included in an invention.
LOL – a coke to IANAE.
I think he meant the legal definition (hint: think Graham factors).
The definition of obviousness in patent law, genius.
ob·vi·ous
/ˈäbvēəs/
Adjective
Easily perceived or understood; clear, self-evident, or apparent.
Predictable and lacking in subtlety.
Synonyms
evident – manifest – apparent – plain – clear – patent
If it was clear, self-evident or apparent, then why did I have to disclose it before you were at all interested in doing it?
“Every time I read “the Examiner did not understand” I get sceptical”
You should spend more time reading US office actions then.
“You don’t answer my question Les”
LOL – maybe he got bored with you (or insert one of your excuses).
It’s seems that a judge actively balancing desires is doing the wrong job. He should be applying the law.
Lady Justice wears blindfolds for a reason.
Sorry MaxDrei, Hal’s emails do not have a link.
Feel free to search for him on the web and write to him to be put on his email distribution.
Every time I read “the Examiner did not understand” I get sceptical. At the EPO, Examiners examine only in areas of technology that they do understand.
More likely, I suspect, is the lack of a competent interpreter/representative/attorney getting paid for mediating between two worlds, that of Les and that of the EPO Examiner.
You don’t answer my question Les. In that all-important role, what professional qualifications and experience were at work in your case. Look, I am not trained to represent clients before the USPTO. Neither are US attorneys trained or qualified to represent clients before the EPO. What counts, before each Patent Office, is an accurate appreciation how the Examiner is fitting the facts to the governing law and practice. The cry “the Examiner at the EPO did not understand” is for me the give-away sign that the applicant’s attorney did not understand how things work at the EPO.
If I’m wrong, tell me so!
That is clear evidence that you did not think to do what I showed you to do. That is clear evidence that it was not obvious to do.
It would be clear evidence, if I were a person of ordinary skill in the art. But a market competitor is not a person of ordinary skill in the art, as you demonstrated at 9:32 AM this morning in this very thread. You noted that you(r client?) was not aware of a piece of published prior art, which was undoubtedly within the knowledge of a person of ordinary skill.
Go look up the definition of obviousness, and then we can discuss this matter further.
No, the argument is my patent is not of obvious subject matter. Now that I’ve shown you what do do, you want to copying it. But before I showed you what to do, you didn’t do what I have shown you. That is clear evidence that you did not think to do what I showed you to do. That is clear evidence that it was not obvious to do.
That cancels out all your hand waving and eye rolling and assertions that is just moving a dotted line a half inch. If that’s all it is, then why didn’t you think or bother to do it earlier?
“as you are continually making a fool out of yourself.”
Yet another troll post in the lines of “accuse others of what MM does.”
Y A W N
Yet another troll post of “accuse others of what MM does.”
Y A W N
per MM the motivation to file is enough to deny any filing.
That’s not what I said. Read carefully, anon. I know it’s extremely difficult for someone who is a non-native speaker. But you need to try harder as you are continually making a fool out of yourself.
The statement I was responding to was Les’ statement that there was “nothing to motivate the move.” That’s false. If a manufacture wants to manufacture a product and secure a patent on that product, the manufacture will be motivated to create a product that differs from the prior art. If the prior art is very crowded and/or there are only a finite number of substantial variations available in the prior art, then the novel product will invariably be similar to the prior art. But it won’t be identical. It won’t be identical because the business goal of the manufacturer is not compatible with copying the prior art product exactly. That business goal motivates a change in the design.
btw – you still dodged the actual point of law under discussion.
“As you know, I’m rather fond of that decision.”
Yes, your fondness (for the wrong reasons) is by now legendary as you indeed were the first to post the link to the government’s implementation response to that decision, even if you did not bother reading what that link had to say (and the fact that that link reinforced what you opponent 101 Integration Expert had to say and completely ignored your bogus pet theory [oldstep]+[newthought] crrp was not lost on anyone (except you) as you danced continuously in your own special self-defeat way.
That laughter you hear is not laughter with you.
the reverse is also true – to rephrase as you have done is to define everything as obvious
Anon will never be explain the “logic” here so let’s just call it another chapter in the “Book of Because Anon Said So.”
The mere fact of the re-exam and appeal are all that is needed.
“If my patent was really invalid, you wouldn’t be trying to invalidate it.”
Uh huh. Let me know how far that gets you before the Federal Circuit.
I’ve never tried either. Gathering the data is prohibitive. However, the circumstances here require no data gathering. The mere fact of the re-exam and appeal are all that is needed.
So the carton is a tad shorter OK. But the consequence of that is that it is higher (2 x full diameter). Which arrangement requires the most space Les? Which arrangement wastes the most space? Is there a big “difference”?
What I see in applicants from the USA is the attitude “Hey. Come on. I have paid a heap of money to get to exam on the merits. You are surely not going to tell me now that I get NOTHING for all my investment. What sort of a system is that?”
What I get from clients observing what issues from the USPTO is “THAT not obvious. They cannot be serious”.
….and some people (judges) have to balance those two.
“Les what you are describing is a situation where it ought to have been possible for you to have established patentability under the EPC, without adding matter. ”
I agree, but the examiner did not understand the invention and didn’t understand how the claim language distinguished over the cited art, so we added the language about not including X, as we thought it easier to understand and could be included at no scope penalty to us.
Perhaps I should have said it allows for such a solution. By finding finger room between the first two cans, the claimed carton allows the cans to be stacked one on top of the other, center over center, as opposed to the top layer being nestled in the valley between the cans. The claimed carton allows for a shorter carton lengthwise, which might allow it to fit into more refrigerators.
Les what you are describing is a situation where it ought to have been possible for you to have established patentability under the EPC, without adding matter.
You say “I”. I wonder who was prosecuting your case at the EPO. To qualify as a European patent attorney you must pass a tough examination of your real life ability to draft, file, prosecute and run oppositions at the EPO. The pass rate is poor, even though the persons sitting the exam have science or engineering degrees, languages (at least three), and at least three years of supervised certified on the job training.
I wonder, in your case, was it you pro se, was it a US patent attorney (in Ch I PCT) or was it a European Patent Attorney qualified by examination to prosecute at the EPO?
“You are surely not advancing the case that the less you know of the art, the wider the claims you should be allowed?”
No. But I am advancing the case that if I disclose three embodiments that do not include X I should not have to explicitly point out that they do not include X in order to later help the examiner see that my claim is distinguished from the prior art, even if the examiner does not understand the disclosed math, because the prior art needs X and the claimed invention does not need X to function and accordingly does not include X.
The system should not play a game of “gottcha” with inventors and patent drafters. If I must list every component not included in my invention, then you can’t whine about the length of my application and charge me extra for submitting a long application.
You’ve lost me there Les. Sorry. Do you mean that, until Spivey came along, cans were slopping around in over-sized packages, and no engineer could think how that problem might possibly be solved?
“unless one was being intentionally obtuse.”
LOL – for obvious reasons.
It DOES solve THE wasted space problem of the prior art, which made the package, in some instances, TOO long. A trade off in the solution may be tolerable extra height. With this innovation, the consumer can select the product in the carton best suited to their situation. Coke and Pepsi are free to over their beverages in both the tall boy and long boy styles.
Thanks Les. I do agree that patent practitioners in the USA find the EPO’s thinking bizarre. Would it surprise you if I told you that interested circles in Europe find US caselaw bizarre? One way to help mutual understanding is to talk about it.
You say of your EPO experience that you were unaware of the prior art. But the EPO examines patentability objectively, through the touchstone of the notional PHOSITA, who knows ALL the art but is devoid of any inventive faculty. You are surely not advancing the case that the less you know of the art, the wider the claims you should be allowed?
As a patent attorney, what I see amongst corporate applicants, almost every day, is ambition to amend their pending claims to cover a device from a competitor which they have newly seen. Rival applicants try to amend their patent application to dominate that of their competitors. This is one reason why, in any First to File jurisdiction, the granting authority has to be super-careful not to allow prosecution amendments that invert the filing date heirarchy established by respective original filing dates. Your wished-for EPO amendment is tantamount to a fresh statement announcing in your application “Folks, listen up. Here’s my invention. What you gotta do to enhance performance is to omit component X”. Now that particular invention you certainly did NOT announce in your EPO app as filed but if you could smuggle it in you could then argue non-obviousness on the basis that there is nothing harder to do than to simplify existing technology.
As for Spivey ‘639, under consideration here, my understanding is that he did not invent the “basket” feature. I assume Prost is saying that using a finger to tear the tear line is old and that to use that finger you need a void behind the perforated card. So, putting a finger-operated tear line between C1 and C2 is obvious when your aim is to provide that prior art basket.
Anyway,even with claim 2, I still don’t know exactly where to put the tear line. It depends whether the two rows of cans in the as yet unopened case are staggered (hexagonal close packing) or not staggered (cubic close packing). Once you open the case and lay it down on its long face, of course, the upper row of n-1 cans lie in the valleys between the n cans of the lower row, but that’s irrelevant to the location of the tear line in the as yet unopened case.
Have you had much luck traversing obviousness rejections using secondary considerations, Les? I’m not sure that I’ve ever even tried.
I’m talking about the definition of obviousness allegations of which can be overcome by analysis of “secondary considerations” such as no prior use followed by copying after disclosure. Traversal of obviousness rejections on such a basis is dicussed, for example in the U.S. Manual of Patent Examination Procedure section 716.06 Copying [R-9].
I pointed out that if applicants were required to list every component NOT included in their invention, patent applications would be quite long.
Ah, but imagine if you were entitled to claim the absence of any component not recited in your specification, as a point of novelty/inventiveness.
We were unaware of the other different device.
Which is precisely why “large, successful company didn’t think to do it” is no argument against obviousness. The hypothetical person of ordinary skill in the art was very much aware of the other device, even if no actual person working in the industry had heard of it.
an obvious problem solved by the inventors (of at least claim 2) is that of wasted space and material in the package of the primary cited document
Except that it obviously doesn’t solve those problems. The wasted space is a function of the HCP packing that the art is apparently so fond of (and is largely saved back by having the two rows closer together than in a rectangular stacking), and the spacer is still needed to make sure the top row and bottom row each have the correct alignment. Unless you want to make the box open on both sides, but that’s clearly not the claimed invention.
Hi Max. I’m we’ll aware of the sometime bizarre logic applied by the EPO. For example, the EPO once cited a document against me showing a device that because of it’s different design, required an additional component than disclose in any drawing or discussion in the specification in the application I was involved in. Accordingly, I amended the claim to explicitly recite the exclusion of the additional component to emphasize the difference in the rest of the claimed combination. The EPO asserted that such a claim extended beyond the original specification, even though we showed 3 embodiments without the additional component. The EPO said we were required to specifically state that the component was excluded in the original specification.
I pointed out that if applicants were required to list every component NOT included in their invention, patent applications would be quite long. We disclosed and claimed what the invention was. We were unaware of the other different device. How could we be expected to know to make such a statement?
Anyway, I digress. You say are no cans in the claim. I was using “cans” as a short hand for the recited “containers”
2. The carton of claim 1, in which the finger flap is located between the first and second containers in the top row.
I understand that the containers are not part of claimed package. Nevertheless, the package is described in terms of the containers its designed to package. One of ordinary skill in the art would understand what is being claimed, unless one was being intentionally obtuse.
I haven’t read the spec. However, an obvious problem solved by the inventors (of at least claim 2) is that of wasted space and material in the package of the primary cited document in order to proved room for a finger to press into the box. Their solution was to move the top can forward and place the finger tab between the cans instead of in front of the first can.
Well well. What Wegner writes is worth reading. The man takes a keen interest in cases over here. Can you possibly provide a Link?
It is true that “unassailable” is a risky thing to aver. Margaret Thatcher once said it of her favourite Chancellor of the Exchequer. Within weeks he was gone.
LOL, as if on cue, Hal Wegner’s morning email also assails the unassailable.
Asked and answered Leopold.
Have you nothing else to do but to try to mischaracterize me? I thought you were too busy to address the points I raise. Surely you have better things to do than to post such empty nonsense (even if I am handing one of your circle mates head back to them).
You are a sad, lonely, embittered person, aren’t you?
Bold tag off.
Your attempts to explain why a Yes or No does not serve a satisfactory answer assumes far too much, and simply does not address the question I asked of you.
Instead of the smarminess that you have exhibited, all you would have had to do to avoid what you consider “bitter barking dog biting your hand” (LOL on that as I was the one polite until you bit my hand) was to simply state that my question was not a binary yes/no question. explain why and clarify your initial self-contradictory post.
Of course, my question was a quite simple request for you to correct a self-contradictory statement and that statement needed to be clarified.
It still does.
As my followup below at 12:32 PM indicated, anything but a yes/no answer is arbitrary and (possibly) capricious. To play on your analogy, you have been beating your wife. If you don’t like that type of question, don’t beat your wife to begin with.
As for shame, that would be yours for simply not providing a simple clarification when politely asked.
And by the way, not answering is a form of dialogue (don’t assume that other readers might be interested in what you write) and speaks more clearly the message that you just don’t know what it is that you peddle. If you did know, then a straight forward answer would have been forthcoming to my straightforward question, avoiding your smarminess and my rapier wit serving up your head back to you.
As for what Leopold thinks, he has consistently shown his errors and you should put no account into his suppositions.
You asked a question that obliges a Yes or a No for an answer. Ever since then I have been trying to explain to you why a Yes or a No does not serve as a satisfactory answer, you know, like to the question “Have you stopped beating your wife?”.
I do know what is making this so difficult. It is your offensive and unpleasant hectoring manner, dishing out needle to anybody on this blog who comes to your attention.
Like some disturbed barking dog behind bars, your relentless obsession is to bite the hand that feeds you, whenever you can engineer an opportunity. Leo thinks you are sad. I’m not sure about that. I think you might be embittered about something. Shame you cannot identify the chip on your shoulder, and then shrug it off.
Dialogue between you and me proceeds only for as long as I think other readers might be interested in what I write.
“Are you also going to claim that I’ve never expressed an opinion regarding whether mental steps are “allowed” in patent claims?”
Nice deflection – but that’s not the question at hand.
It certainly is the question “at hand”. You brought it up. I’m asking NWPA for his opinion because he’s been reading the blog for the past couple years and he knows how to find old archived threads and re-read them to confirm that his gut feelings are correct before he types them up and hits “post”.
It is perfectly clear (to those willing to see) that you are attempting to eliminate any presence of thought from patentability considerations
I think you can write more clearly than that, anon. In any case, you should strive to write more clearly. “Eliminate presence of thought from patentability considerations”? That sounds exactly like the new legal doctrine proposed by the government in Prometheus. It’s certainly a helpful step on the road to determining whether a method claim reciting a mental step is patent eligible but it’s not permitted in a 102 or 103 analysis. The Supreme Court didn’t adopt the government’s position.
Rather than focus on my future “agenda”, you’d be far better served by trying to understand what the Supreme Court did in Prometheus. As you know, I’m rather fond of that decision. If I were you, I’d try to demonstrate how a step of thinking about something new can be sufficiently “integrated” with an old (but otherwise patent eligible) process such that a patent-eligible claim results. If you can identify such a claim, I might indeed “attempt” to “eliminate it”, just for grins.
Alternatively, you could simply acknowledge that it’s not possible to draft such a claim and that the Supreme Court in Prometheus made it impossible to protect a new thought merely by appending some patent-eligible process step to a step of thinking about that new thought. Put on your big boy pants, anon. It’s about time, isn’t it?
“So, do you derive the OTP without recourse to the specification? You demanded a Yes or No answer. So, Yes or No? You tell me.”
It’s your EP jurisprudence MaxDrei. I asked you for an answer.
An answer is not turning around and asking me that very same question.
Why are you making this so difficult? If you don’t know the answer, just say so.
“It’s the Approach as such that is unassailable by now.”
Right. Gotcha the first time on that part. It’s your contradicting parts that still need some work.
So what does the unassailable Approach say about how to do that critical part of the approach?
You aren’t really saying that the choice of one or the other is completely arbitrary are you? These approaches yield very different things. You cannot be “unassailable” if you are operating a legal system “on a whim” can you?
What kind of system have you been pushing?
Right from the early days of the EPO, so-called “problem inventions” have been acknowledged, where implementation of the solution is trite, once the “solution” has been identified.
Got it, MD. We’re on the same page, I believe. A solution may be trite, but it’s still a solution. You can’t claim the problem itself, even in the case where you are the first person to perceive of the problem. You still need to claim at least a “trite” solution. That’s what I was getting at in my 6:40 comment.
It’s the Approach as such that is unassailable by now.
The EPO runs a civil law system, without Binding Precedent. There is enough wiggle room to accommodate the issue above.
I have explained the two extremes. Individual Decisions are always in between these two extremes. in each case, the deciding Board sincerely believes that it is faithfully following the EPO-PSA Rules, in every case to get to a just result.
What do I mean by “context”? That one can’t understand what any claim means except when one construes it in context with the specification that supports it and breathes into it its life and meaning. Suppose the claim calls for a “slide”. What might that mean? Or take the sentence “Helen rushed to the bank”. What does it mean? Is she rushing to get cash or to save a child drowning in a river?
You derive the OTP exclusively from the claim and D1. But first you need to know what the claim means.
So, do you derive the OTP without recourse to the specification? You demanded a Yes or No answer. So, Yes or No? You tell me.
FINALLY – now was that so hard?
What does the unassailable case law say?
Surely, a system you preach with such vigor must have this very basic understanding already figured out, right? Please, tell me that it is so, and tell me, what is the black letter EP law?
“As far as anon is concerned, earlier posts hopelessly unclear? Yes, that I do see clearly.”
You missed a critical word MaxDrei – “yours”
And back to the point at hand: what do you mean by “in context?” Are you saying that the problem statement is derived from the claims in context of the (applicant’s) specification? That the problem statement is derived not just from the applicant’s claims themselves? You have yet to answer the simplest of questions here and instead seem to want to swagger when you have zero justification for doing so.
The more proper response from you would be a polite acceptance of my gentle nudging you to actually make sense (with your very own special EP jurisprudence no less), rather than attempting to be a smart-@_$$ and badly missing the smart.
That’s not the kind of swagger that you want, now is if?
You do realize a simple and straightforward correction from you at the onset would have avoided all this embarrassment of yours, right? But it appears you, like others simply cannot look at the content of a post and go from there but rather get all hung up on who the poster is.
How sad – especially when you try so hard and miss so badly.
Good question. Answer: Opinions differ.
I (and many EPO Boards) say that D1 is legitimate only when it is a realistic starting point to solve the subjective problem announced by Applicant in the specification of the application as filed, in the specific technical field set there by Applicant.
But others say you are free to choose any D1 that just happens to have the most features in common with the claim, regardless which field it’s in and which problem it addresses.
Two very different things? No, I don’t see that. To understand what words mean, they have to be read in context. Nobody disputes that, do they?
As far as anon is concerned, earlier posts hopelessly unclear? Yes, that I do see clearly.
…And don’t you get to that starting point prior art document D1 through the applicant’s entire application and not just through the claims?
(this too is not a dig – a serious question that is absent from your answer)
“and think you can explain your comprehension problem in a way even I can understand.”
You see MaxDrei, that’s the kind of B$ smarmy posting that really sets me off. I was trying to be nice, with no digs and understand you when you posted in a lazy and self-contradicting manner. I was patient and explained what should have been obvious to you right from the start, and you have to go and be an @_$$ about it.
Nice deflection – you might note that the “problem” was on your end – your contradictory statements just did not make sense on their own accord – and it was only through my patient cajoling of you that elicited a post that wasn’t self-contradicting (albeit, still not clear).
So, there is no need for me to “come back and have me explain” – it was you that needed to clarify.
Now, if we can return to being civil without your failing attempt at “swagger,” let’s look at your point 2. From what you post here, the problem is not defined by the applicant’s spec at all, but rather, the applicant’s claims – and claims alone – are taken and then the prior art is referenced to build the problem statement. Or is it that you mean that the applicant’s claims and specification (reading the claims in light of the specification and what it discloses) are both used with the prior art to determine the problem statement.
You, of course, realize that these are two very different things, right?
You, of course, realize that your earlier posts were hopelessly unclear about this, right?
LOL – not at all – You are a sad lonely troll, once again commenting to me, aren’t you?