by Dennis Crouch
Earlier this week, the USPTO published updated examination guidelines regarding obviousness determinations under 35 U.S.C. §103. While these new guidelines are not legally binding, they offer important insight into how the Office plans to apply an even more flexible approach to obviousness — something Director Vidal sees as mandated by the Supreme Court’s 2007 decision in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007). (2500 words).
Overall the guidance here suggests that the office is looking to make non-obviousness a larger hurdle via increased flexibility. Still, the guidelines spend some time on the requirements of a prima facie case; the necessity of both evidence and reasoning to support any obviousness rejection; and consideration of all evidence before the examiner. Obviousness is already the most common rejection – with the vast majority of applications being initially rejected as obvious. It will be interesting to see whether the rates go up even further following this new guidance.
This post breaks down the guidelines and walks through some potential strategies for patent applicants.
Reiterating the Central Role of Graham v. John Deere.
The updated guidance underscores that the factual inquiries set forth by the Supreme Court in Graham v. John Deere Co., 383 U.S. 1 (1966), continue to control obviousness determinations even after KSR:
As the opening paragraph of the KSR decision made clear by quoting Graham, the Supreme Court’s decision reaffirmed the approach to obviousness announced decades earlier: ‘Under § 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background, the obviousness or nonobviousness of the subject matter is determined.’
Thus, while KSR mandated a more flexible approach, the Graham factors still form the foundation of any obviousness analysis. As the guidelines state, “USPTO personnel continue to ground obviousness determinations in the objective inquiries announced in Graham.” Before Graham and the 1952 Act, the courts had ground their obviousness analysis in the statutory requirement of “invention” and the Constitutional purpose to “promote the Progress.” In Graham, the court held Section 103 was intended to simply codify the common law of its prior cases – with the one exception of rejecting a “flash of creative genius test” to the extent one existed. The guidelines do not reference the US Constitution or any other Supreme Court cases besides Graham and KSR.
Rather than reflecting on old cases, the guidance appears to largely focus on accounting for Federal Circuit precedent from the past 15 years — since KSR. Thus, the updated guidance seeks to consolidate and synthesize that body of appellate case law for examiners. As the introduction states, it aims to “provide further clarification for decision-makers on how the Supreme Court’s directives should be applied.”
There has been some inconsistency across technology centers and individual examiners in how KSR’s flexibility is applied, and the guidance is one move in an effort to further synchronize Office-wide standards and best practices. Unfortunately, as I note below, the guidance has some major problems that will likely lead to greater confusion. Still, the guidance will be useful for applicants and attorneys to understand how examiners are expected to analyze obviousness issues.
In a footnote, the agency notes that this particular guidance does not address “the impact, if any, of artificial intelligence on the obviousness inquiry. The Office continues to seek input from the public on that question and will issue additional notices as warranted.”
Accounting for the AIA’s Change to the Obviousness Timeframe
An important preliminary note in the guidelines acknowledges that the America Invents Act (AIA) changed the relevant timeframe for the obviousness inquiry from the “time the invention was made” to “before the effective filing date of the claimed invention.” As the guidelines explain:
When determining obviousness in a case governed by the AIA, Office personnel should interpret references to ‘at the time of invention’ in KSR as if they referred to the statutory time focus under the AIA, which is ‘before the effective filing date of the claimed invention.’
Thus, KSR and the obviousness analysis must be applied through the lens of the AIA filing-date focus and its first-to-file system.
Mandating a Flexible Approach to Understanding Prior Art
Echoing KSR’s directive that “[a] person of ordinary skill is also a person of ordinary creativity, not an automaton,” the guidelines emphasize the need for flexibility in understanding the scope of the prior art:
The Supreme Court instructed the Federal Circuit that persons having ordinary skill in the art (PHOSITAs) also have common sense, which may be used to glean suggestions from the prior art that go beyond the primary purpose for which that prior art was produced . . . a proper understanding of the prior art extends to all that the art reasonably suggests, and is not limited to its articulated teachings regarding how to solve the particular technological problem with which the art was primarily concerned.
This is a potentially confusing element of the guidance that is derived from the Supreme Court’s statement that the obviousness analysis “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ,” and the Court’s push back against “overemphasis on the importance of published articles and the explicit content of issued patents.” Quoting KSR.
I am concerned that this portion of the guidance will lead to some major troubles because this portion of the guidance confuses KSR‘s motivation to combine analysis with an examiner’s analysis of the scope-and-content of the prior art. In the sections of KSR quoted above, the Supreme Court is discussing flexibility of the motivation-to-combine analysis and pushing back on the Federal Circuit’s “TSM” test that the Supreme Court found was unduly bound to express teachings in the prior art. The guidance, however, takes the Court’s analysis a step further and tells examiners that the scope-and-content of the prior art also need not be unduly bound to the prior art. Confusion.
To resolve this, I would want examiners to be clear in their reading of prior art — and particularly in their analysis of what is suggested-but-not-disclosed by the prior art. Still, an important point made by the guidance is that the scope of a reference’s disclosure depends upon the level of skill in the art. For a PHOSITA, a circle within a chip-design drawing may have a particular meaning that would be meaningless to an ordinary reader. Here though we also expect readers to have some amount of creativity — thus “ordinary creativity” must be taken into account and becomes part of the disclosure itself.
But who is PHOSITA?. Although the guidance asks examiners to consider what might be suggested to a PHOSITA, the guidance does not ask examiners to actually determine the level of skill. Examiners almost never explicitly state the level of skill in the art — it will be interesting to see whether pushback on implicit statements of what a PHOSITA would know could see some results.
Flexibility in the scope of the prior art also extends to the analogous arts test. Under long standing precedent, we assume that a PHOSITA would only look to certain “analogous” references in considering whether to move forward with an obvious project. The two-step analogous arts test for obviousness involves determining whether a reference is within the scope of the prior art by considering two separate tests:
- Same Field Test: This test asks whether the reference is in the same field as the inventor’s endeavor.
- Reasonably Pertinent Test: This test asks whether the reference is reasonably pertinent to the particular problem with which the inventor was involved
A reference that fits either of these categories is considered analogous art and then can be used in the obviousness analysis.
Although the Federal Circuit has reiterated the test as still binding post-KSR, several cases have suggested that KSR has expanded the scope of potential prior art. Wyers v. Master Lock Co., 616 F.3d 1231 (Fed. Cir. 2010) (SCT “directed us to construe the scope of analogous art broadly”); Airbus S.A.S. v. Firepass Corp., 941 F.3d 1374 (Fed. Cir. 2019) (analogous arts test “should take into account any relevant evidence in the record cited by the parties to demonstrate the knowledge and perspective of a person of ordinary skill in the art.”). (Notice how many reference there are in the Winslow tableau image above).
One oddity of the analogous arts guidance is that it cites Netflix, Inc. v. DivX, LLC, 80 F.4th 1352 (Fed. Cir. 2023) as “not[ing] the flexible approach under KSR as applied to the ‘same field of endeavor’ test.'” But in Netflix, the Federal Circuit only cited KSR twice. The first cite was simply quoting the argument made by the patent challenger Netflix that KSR requires a broader analogous arts test (apparently quoting Wyers). The court did not address that portion of the argument directly and then later cited KSR only for its statement that courts must be cautious to avoid hindsight bias. Id. (“A factfinder should be aware, of course, of the distortion caused by hindsight bias . . . .”).
The court in Netflix also does not use the “flexible” term to describe its analogous arts test but rather highlights that the scope is substantially fact-dependent. Still, Netflix is useful for patent examiners because it allows for broad “general” fields of endeavor and does not require substantial explanation of their linkage.
Endorsing a Flexible Approach to Providing a Motivation to Combine
The guidelines also reiterate KSR’s flexible approach to articulating motivations to combine prior art teachings:
Consistent with KSR, the Federal Circuit makes it clear that the obviousness analysis is not ‘confined by a formalistic conception of the words teaching, suggestion, and motivation.’ To be sure, the Federal Circuit continues to use the word ‘motivation’ in its obviousness jurisprudence. However, it is evident that the term is no longer understood in a rigid or formalistic way.
Quoting Intel Corp. v. Qualcomm Inc., 21 F.4th 784 (Fed. Cir. 2021).
The list of permissible motivations endorsed by the guidelines is expansive, including “market forces; design incentives; the ‘interrelated teachings of multiple patents’; ‘any need or problem known in the field of endeavor at the time of invention and addressed by the patent’; and the background knowledge, creativity, and common sense of the person of ordinary skill.”
Articulated Reasoning Still Required
Importantly, the guidelines caution that the flexibility approach does not relieve examiners of the need to provide articulated reasoning grounded in facts:
[P]recedential case law requires such an analysis. . . . [C]learly articulated obviousness rejections serve the goal of compact prosecution and allow patent practitioners and Office personnel to conclude patent examination or other USPTO proceedings at the earliest possible time.
Thus, while KSR and its progeny have expanded the sources of motivation and types of reasoning sufficient to support an obviousness rejection, conclusory rejections without articulated rationale will still not suffice.
Considering All Relevant Objective Evidence
The updated guidelines also emphasize the continued need to consider all relevant evidence, including commercial success, long-felt need, and failure of others:
The requirement to consider all relevant evidence is part of the establishment of a prima facie case of obviousness. . . . At each stage of USPTO proceedings, Office personnel must reweigh all evidence that is relevant and properly of record at that time. Newly submitted evidence in rebuttal of an obviousness rejection must not be considered merely for its knockdown value against any previously established prima facie case.
So while the list of potential motivations and reasoning supporting obviousness has expanded post-KSR, objective real-world evidence weighing against obviousness still plays a key role.
It follows from the directive to consider all relevant evidence that the mere existence of a reason to modify the teachings of the prior art may not necessarily lead to a conclusion that a claimed invention would have been legally obvious.
In practice, even if the examiner can easily spin a motivation to combine that seems to fill the gap between prior art and claims, compelling evidence that others failed to solve the problem; that a claimed solution enjoyed commercial success; or that the prior art teaches-away from the solution may undermine an obviousness finding.
Applying Reasoning to Reach Legal Obviousness Determinations
The guidelines wrap up by underscoring that obviousness remains a legal conclusion grounded in factual underpinnings:
Any legally proper obviousness rejection must identify facts and then articulate sound reasoning that leads to the conclusion that the claims would have been obvious to a PHOSITA. . . . After making appropriate findings of fact, Office personnel must use reasoning in accordance with Graham and KSR to determine whether a claimed invention would have been obvious in view of all relevant facts.
Any legally proper obviousness rejection must identify facts and then articulate sound reasoning that leads to the conclusion that the claims would have been obvious to a PHOSITA. . . . After making appropriate findings of fact, Office personnel must use reasoning in accordance with Graham and KSR to determine whether a claimed invention would have been obvious in view of all relevant facts. Office personnel must explain on the record how the conclusion of obviousness was reached. Once the findings of fact are articulated, Office personnel must provide an explanation to support an obviousness rejection under 35 U.S.C. 103.
Thus, while the approach to obviousness is flexible, rejections still require identifiable facts linked through articulated reasoning leading to the ultimate legal conclusion of obviousness.
Takeaways
The guidelines do not substantially change the examination approach to obviousness. While the generalized flexibility guidance gives examiners more leeway, the requirements of articulated evidence and reasoning push the other way. It remains to be seen which side of the scale will be more rigorously enforced. Of course, the emphasis throughout the guidance is on flexibility and common sense — suggesting that the expansive approach will carry more weight at the USPTO.
For patent applicants, I want to note a few elements of the guidance that may help patent applicants:
- Noting rejections require: “a clear articulation of reasoning, grounded in relevant facts.” Arguments focused on disputing the sufficiency of the examiner’s factual basis or reasoning may gain more traction than attempts to distinguish prior art. Depending upon the situation, will probably be most effective if directed to internal management (SPE/TC Director) rather than as a PTAB appeal because the low standard for a prima facie case has not changed.
- Cautioning against: “references to ‘common sense’ without any support.” This is similar to point 1, but patent applicants should scrutinize any attempt to rely on “common sense” without citation or more complete reasoning that ties the common sense to the level of skill in the art.
- Consideration of all relevant evidence before the examiner: The guidance emphasizes the importance of considering all relevant evidence that is properly before the decision-maker. Of course, it will be the applicant’s duty to ensure that the evidence is before the examiner.
- Emphasizing secondary considerations evidence: “Objective indicia may often be the most probative and cogent evidence of nonobviousness in the record.” This can be difficult and more costly, but providing evidence of secondary considerations of nonobviousness can easily win your case – so long as they include specific evidence tied to the claim scope rather than general conclusory statements. The guidance particularly warns against “expert’s conclusory opinion about a matter relevant to the obviousness inquiry may be unavailing unless accompanied by factual support.”
- The Level of Skill: These guidelines repeatedly emphasize the knowledge and skill of a PHOSITA. Of course, the PHOSITA level is fact dependent and changes according to the area of technology or market. But, examiners almost never explicitly define the level of skill associated with PHOSITA. The guidelines new focus offers opportunity to challenge implicit assumptions made along this vein.
What do you think — are there further strategies that you can derive from the guidance?
Of some interest, in the past substantial aspects of guidance and training has focused on searching and identifying the best prior art. This new guidance avoids that topic and instead instructs examiners on how to marshal their evidence to establish a prima facie case of obviousness.
Sharing my response to Max Drei’s comment in IPWatchdog: “Meanwhile, what jurisprudence is out there, on the issue whether the case put by the Examiner fails to rise to the (modest? minimal? serious? or something else?) level of “prima facie”?”
The examiners’ behavior is informed by their performance and appraisal plan (PAP). PAP revisions arise by behind the scenes POPA-management negotiations. Note that the patent bar, Congress, OMB, OPM, PPAC, inventors, American public, etc., are not sitting at that negotiation table. It has only been through Congressional oversight hearings that we have even been able to obtain copies of revised PAPs.
As long as determining compliance with 35 USC 103 is rated as by the USPTO management-POPA negotiated PAP as a basic task to be performable by entry level trainees with essential cursory level attention (without any required advanced analysis or sound legal understanding) there is nothing to ensure that the examiners’ determination of prima facie obviousness rises beyond the bare minimal level, no matter how many OPLA-created guidance documents or MPEP updates are published.
link to IPWATCHDOG.COM
Executive branch malfeasance.
Julie thanks for clarifying that “prima facie” in practice means “bare minimal”.
It has become clear that a bare minimum is enough. But so what? Applicant should be delighted, I would have thought. For if the objection under 103 is so paltry, rebutting it should be child’s play, and robust rebuttal followed by issue, it seems to me, is the best possible paper trail to leave on the prosecution record. As Applicant, weak obviousness objections are in some ways better than no 103 objections at all, are they not?
Or am I to understand that once a 103 objection has been made, the USPTO is institutionally unable to take a step back, and will stubbornly maintain its obviousness objection in the face of a reply case that would easily convince any half-way reasonable mind? Is that the difficulty that prosecutors have at the USPTO?
But so what?
The so what is that the minimum is not being done. Further, the rebuttal is tilted to the examiner by those in the first line of review.
Obtuse – is it deliberate?
The biggest issue with an obviousness analysis is hindsight. That term is used only once in the whole document. Yet, we know that this is a real psychological problem where humans once they know something cannot do an analysis where they forget they knew something. There are hundreds of psychological studies showing this fact.
The fact is too that TSM is what worked. Now we have to convince people something is not obvious because it is just so good.
Notice too: “Prior art is not limited just to the references being applied, but includes the understanding of one of ordinary skill in the art.”
So, with 103, we are using everything we know and properly thinking about one of ordinary skill in the art. But with 112, under Williamson, we are using the understanding of circuit court judges. So, remove the one of ordinary skill in the art for 112 and hyper-include the one of ordinary skill in the art for 103.
The biggest problem I have with these guidelines is that it doesn’t address the other side of the problem. What is that? Well, I am literally writing a response right now to a case where the examiner is using five or six references to piece together the claim. The five or six references together don’t even perform all the functions the claim does when put together.
An Examiner should not use a claimed structure as a “template” and select elements from the references to reconstruct the claimed invention.
Anyway, I don’t have hours to explain all this. But the guidelines are one sided. They don’t provide good arguments for when the examiner has gone too far and used the claim as a template and then just pieced together the elements and how to tell when the examiner has done that. And it doesn’t caution against hindsight, which we know is a very real psychological problem. Go to Google Scholar and type in “hindsight”.
You assert that TSM “worked”. But that’s from your viewpoint as advocate fopr the inventor/applicant. See 12.3.1.2 in this thread for a PTO view that TSM doesn’t “work” for anybody else.
NW: do you care to contrast how TSM works at the EPO with how it worked in the USA? Why is it that at the EPO it is seen as fair, efficient and neutral by both patent owners and those petitioning for revocation of a patent?
TSM was at least somewhat objective. The current method is completely subjective and similar to the Alice test. That can easily be seen in these new guidelines by the fact that they didn’t put limiting principles in as part of the guidelines nor discuss hindsight. Note that there many experiments that illustrate once a human knows something it is nearly impossible to forget it in that you use it when you reason.
The comments at 12.3.1.2 are naive at best. Typically, what one finds is that the claims are used as a template and the claims provide a new function that is not in the prior art. And the USA tends not to appreciate that a solution is more efficient than the current solutions. Basically, in the USA the application of 103 is all over the place. Some examiners are happy with a claim as long as it is not close to a 102. Others will argue with you all day long and want some wonderful new function that they can write home about. And it is only getting worse.
I do a lot of prosecution at the EPO, JP, KR, and CN as well as some other odd applications elsewhere. The EPO is different than the USA but I’d say I have about as much chance of getting the same claims allowed in the USA and the EPO. EPO examiners tend to be more knowledgeable and tend to accept the argument that the claims solve a technical solution in a way that is not in the prior art. That is usually enough for a patent. The big problem at the EPO is that divisionals are so expensive.
Thanks for that. I read with surprise and pleasure though, that the biggest problem at the EPO for your clients is that divisionals are expensive.
Why don’t you add the reason why (it’s pretty straightforward).?
Instead, anon, I will ask readers why file so many divisionals at the EPO. After all, if the invention is ABC you can have in one single patent granted by the EPO a slew of different independent claims (apparatus, process, intermediate, end product, use) each directed to a different aspect of the over-arching inventive concept. That means that if you are filing a divisional it’s because you are seeking protection for an invention different from the one which the parent is protecting. And if you want protection for two inventions you need two patents. Simple as that.
I suppose that NW takes issue with EPO fees for a divisional because of the payment, on filing, of the EPO annuities that have accrued since the legal date of the divisional claims. In answer, where is the public policy objective of subsidising those who file one application directed to a slew of different inventions (which then get divided out over the 20 yer pendency of the parent) relative to the applicant who files from the get go a separate application for each invention?
Seriously, is this your only problem with EPO practice? EPO managers will be delighted.
you only partially hit.
the reason why is the payment of fees – not just “paying for a second patent.”
Think schedule – pay to bring up front, pay for each year, pay prior to grant… The payments do NOT get to be ‘divided out’ as your wording might indicate, eh?
Can’t answer you, anon. No idea what you are trying to say.
+1
It would be interesting to know how the PTO is presenting, or will present, these new guidelines to the Examiner. Will the Examiners be told that they are being too lenient or will be they be told that they are not giving enough of an explanaiton of their reasoning.
“Overall the guidance here suggests that the office is looking to make non-obviousness a larger hurdle via increased flexibility. ”
The burden is upon the USPTO to show obviousness, NOT on applicants to show non-obviousness.
No. The PTAB and that if you can combine several pieces of prior art to read on the claim then it is “prima facie” obvious and the inventor must prove otherwise.
Just a reminder: “This is the prior art context where logic was used and this is a reference that teaches the use of computers for automating logic” is a perfectly good prima facie case that should be difficult to overcome in nearly all instances absent some severely narrowing claim amendments.
Yay (
) the resurrection of the vapid TV show House ‘logic.’
Answer: the Grand Hall experiment.
Dennis did not say “prima facie obviousness.”
Regardless, the burden is to overcome the prima facie case, not prove a negative.
Words matter.
One thing hidden by this comment is that the USPTO examiner needs to initially provide a prima facie case of obviousness — and the courts have declared that to be a fairly low standard. Once a prima facie case is established, the applicant then has to put on their case that shows non-obviousness (or at least that the examiner was wrong).
Not hidden. You did not say “prima facie obviousness.”
Regardless, one is not required to prove a negative, i.e., non-obviousness. One cannot do that. One can rebut the prima facie case.
Mom, what here is negative? Inventive and obvious are simply antonyms of each other. Proving something “obvious” is also just as much a challenge to “prove a negative” to wit to prove that the claimed subject matter is “non-inventive”.
When we speak about the difficulty of proving a negative we are referring to proof of fact, are we not, rather than a legal concept like patentability, sufficiency or obviousness.
Mom, what here is negative? Inventive and obvious are simply antonyms of each other. The task of proving something “obvious” is the task of proving a negative, namely that the claimed subject matter is “non-inventive”.
When we speak about the difficulty of proving a negative are we not referring to proof of fact, rather than a legal concept (like inventiveness or not, or obviousness or not).
Proving that something is NOT obvious is proving a negative. Not difficult.
Did you mean “not possible?”
Word games. The Examiner does not have to prove it is not an invention. The Examiner has to establish obviousness.
Well, Dennis, I understand that. But are people here saying that once the USPTO has made a “prima facie” obviousness case, no amount of rebuttal will get it to change its mind. I’m alluding to that old Kahneman chestnut, the human “thinking fast- thinking slow” brain which, once it has set out in any one given direction, is adept at finding reasons to cling to that path, however erroneous, however misguided it is shown by cogent argument to be?
In short, if the pressure from management is on an Examiner to “get it right first time” how much prospect is there of an Examiner acting objectively and dispassionately, taking a step back from their “prima facie” negative opinion on patentability?
Good points!
“Once a prima facie case is established, the applicant then has to put on their case that shows non-obviousness (or at least that the examiner was wrong).”
You sound like to the old dinosaur partner instructing the newbie associate in preparing their first OA response, “This is your chance to tell the story of the invention! Talk about all its wonderful benefits and advantages!”
Ugh. So wrong.
Rule 111(b). That’s it. Point out the errors. And GET.TO.THE.POINT. ASAFP
That’s it.
There is certainly value to not adding to file wrapper estoppel.
The entire world of normal rational people knows that the overwhelming majority of eternally aggrieved online whiners about “patent rights” are demented rightwing algae eaters who care about nothing except the instant size of their own pocketbooks.
In that regard, let’s note that the leader of the diseased f a s c i s t party in this country — a self proclaimed billionaire — is currently arguing that he shouldn’t have to post bond for his appeal (an appeal that he will surely lose) because … he can’t afford it. Sadly, these rightwing infants are typically so deep in their cult that they can’t even process how ridiculous they sound when they accuse the PTO of operating like a (lol) “banana republic” because it published some guidelines that are allegedly “flexible.”
It’s going to be a fun six months watching the meltdown of the white nationalist party. Start polishing those guns, wingnerts! And learn to aim them at your own face where they’ll do the most good.
Your apoplectic rant is noted.
MM bro, did you hear biden is losing black and hispanic young voters in droves lolololol? Funny stuff! Guess they goin fashy eh?
Please Pardon Potential re(P)eat S
Your comment is awaiting moderation.
March 1, 2024 at 7:42 am (and :43 and :44)
With the Sprint Left Overton Window effect, most all “are going fashy.”
I briefly scanned this. I didn’t see anything different, and I entirely expect that the same reasoning employed after KSR (which was little different than the reasons employed pre KSR).
Unless proven otherwise, this is a big nothing-burger as far as I’m concerned.
Sadly, even nothing-burgers can cause indigestion in the tummy’s of those who ingest such burgers. Burp.
In the sections of KSR quoted above, the Supreme Court is discussing flexibility of the motivation-to-combine analysis and pushing back on the Federal Circuit’s “TSM” test that the Supreme Court found was unduly bound to express teachings in the prior art.
The supreme court doesn’t have a motivation to combine analysis. Only the federal circuit calls it a motivation to combine. The supreme court only asks if there is a reason rationale that the combination of elements claimed would be made. That’s not the same test. It’s not a question of whether a person “starting with” the Jones machine (having features AB) would “have a motivation to combine” with some feature (C) of the Smith machine. The supreme court analysis is “Is there evidence that claimed machine ABC could be made and a reason it would be?” The answer to that is “Here’s evidence that A, B and C existed” (show references) and “here’s a reason to use them together.” It has nothing to do with how Jones and Smith used their machines, or if Jones would have a reason to seek out Smith, or if the Jones and Smith machines conflict in some manner.
The federal circuit thinks you start with a primary reference machine and you find some reason to make modifications disclosed in a second reference. That is one way of performing the supreme court’s test, but not the only way. There’s plenty of times when there’s (1) no particular reason to make a known modification or (2) the modification has never been done before and yet the Supreme Court found the machine obvious. KSR itself was a case where neither reference disclosed the sensor in the claimed location, which is why they had to resort to the obvious to try rationale. US v Adams is another case where – absent the teaching away – it seems like you can have no motivation and still find something obvious on the logic of “There’s one difference here, and the one difference produces exactly what we thought it would.”
Examiners almost never explicitly state the level of skill in the art — it will be interesting to see whether pushback on implicit statements of what a PHOSITA would know could see some results.
Hahaha, oh you don’t want us to do that. Obvious features can be further amended. Unenabled features can only be amended out. Some of my most entertaining abandonments have come from applicants who thought they were smart enough to make the level of skill in the art a debated issue.
The guidelines do not substantially change the examination approach to obviousness.
They don’t change the approach at all, to my knowledge. I certainly haven’t been told to do anything differently.
Cautioning against: “references to ‘common sense’ without any support.” This is similar to point 1, but patent applicants should scrutinize any attempt to rely on “common sense” without citation or more complete reasoning that ties the common sense to the level of skill in the art.
I dunno, I just saw an applicant that fought the notion that it’s common sense to take reaction time into account when driving a car. That’s not the kind of argument I’d advise attorneys to make more often.
“I just saw an applicant that fought the notion that it’s common sense to take reaction time into account when driving a car.”
LOL
Well, we’ve seen numerous self-identifying attorneys here pretend that driving a car is some amazing new skill that nobody has ever thought about before. Almost like reading a map! Or using logic and math to identify whether X is more similar to Y or Z. Being born yesterday is EXCITING. The PTO is stuffy and boring and just doesn’t like technology.
Thank you for that illumination of the Federal Circuit’s “motivation to combine” and the Supreme Court’s “reason to combine” enquiries. I had not realised that choice between “reason” and “motivation” was of such decisive importance.
For many years, I have been asserting that the EPO’s “Problem-Solution Approach” is a TSM regime. Reading your comment leaves me thinking that the EPO’s “could/would” jurisprudence fits better to that of SCOTUS than the Fed. Ct. Perhaps it is not too much, to dream of convergence towards a universal methodology for the obviousness enquiry.
You really should know better than to use the word “illumination” when it comes to Random’s “legal analysis.”
You do know that he is NOT an attorney.
He may not be an attorney, but he shares at least one trait with many attorneys: he’s a something that rhymes with “wick” and starts with “pr”.
(may be a repeat – but funny enough for two)
I was told in law school that the most powerful person in a criminal case is not the judge, but the prosecutor. It is a counterintuitive statement, because of course the judge is the decision maker. The point was that the prosecutor has wide latitude gets to choose what decisions are available for the judge to make, and judges are often very deferential to prosecutorial discretion.
The analogy to patent examination is hard to miss. On a theoretical level, I have no issue with a flexible approach or one where the examiner can say “Here’s evidence that A, B and C existed” (show references) and “here’s a reason to use them together.” Just one little problem… The “reason to use them together” that Examiners produce often has little or no evidentiary basis. Once the Examiner has set this up, most applicants have and amend, and many PTAB judges defer to the examiner’s and affirm. This creates a feedback loop where examiners learn the wrong lessons. This is natural human nature, but leads to bad examination practices proliferating. Subjectivity needs strong oversight. Until that exists, guidance such as this is a dangerous path.
Does it make any difference whether the test is whether the skilled person “could” have put together the combination ABC or whether the skilled person “would” have put ABC together? To my mind, it does. With hindsight, one can trawl the state of the art, millions of disclosures, to find A, and B and C and then easily make the argument that the omniscient PHOSITA “could” from that reservoir have put together the ABC combination. Making out a case that they “would” have made that combination, back on the date of the claim, is distinctly harder to pull off. Well, at least it is, here in Europe.
As noted above, you are putting too much faith in the nonsense of Random.
With hindsight, one can trawl the state of the art, millions of disclosures, to find A, and B and C and then easily make the argument that the omniscient PHOSITA “could” from that reservoir have put together the ABC combination.
This is the default position of course, because the function of the PHOSITA “omniscience” is to ensure that the state of the art is being advanced. A system which just repeats what the art already knew isn’t advancing the art, so why would it be rewarded with a patent? If the art knew of A and B and C separately, and ABC together is nothing more than the sum of A+B+C separately, what has the art learned by the disclosure of the conception of the ABC system? That’s why A&P Tea Co says that merely rearranging known elements, with each achieving only what a PHOSITA would expect, is obvious.
To take the opposite position is akin to saying that the person who wrote the “A” book of the encyclopedia is an inventor, because nobody ever thought of putting known Aardarks, acorns, and attestations in the same place together before. The question isn’t whether its all been in one place before – that’s anticipation. The question is only whether there’s something new said in the combination.
Making out a case that they “would” have made that combination, back on the date of the claim, is distinctly harder to pull off. Well, at least it is, here in Europe.
If your conception of obviousness is a relative, subjective standard then you find everything nonobvious. In this case, at any given point in time there is one, or maybe a small handful of things the art “would” have found optimal, and suboptimal choices are nonobvious because one “would”n’t have selected the suboptimal choice. This could be a system, it’s just not the system we have, because it allows for the continual repatenting of suboptimal elements such that they never fall to the public. There was a time that the pentium II chip was the fastest chip available, and it was novel, nonobvious and patentable. And now that the patent has run and there are better chips out there, it is unquestionable that any person “would”n’t have selected a pentium II to process things today. Presumably this means that all of the applications of a pentium II are again patentable – a claim to using a pentium II to run a neural network is nonobvious because nobody “would” select that chip out of the many elements that a PHOSITA could “trawl through the art” for use in that system. The result is that the pentium II is again patentable in all of its applications, and it never falls to the public.
If your conception of obviousness is objective, as at least the US system is, it is objectively obvious to use known things for their known benefits. “Hindsight” as you use it here is an unfairly derogatory term. If ABC has no synergy or unexpectedness in combination then the art already knew the result of using ABC since the art already knew the result of using A, the result of using B and the result of using C. The specification describing the ABC claim can’t possibly disclose something other than what the art already knew since the whole is nothing more than the sum of its parts, and you admit the parts were individually known. Thus the utility of ABC was already known, the applicant is just the first person that sought to monopolize it. The only “hindsight” being applied there is commercial in nature, not inventive – Applicant wasn’t the first to find that ABC achieved a result, Applicant was just the first to recognize that the result ABC achieved would be commercially valuable enough to monopolize it.
There is generally one time the “could” question fails – when enablement to make the combination was lacking. There is generally one time the “would” question fails – when the results are unexpected, either in terms of direction or in terms of magnitude. All of the other considerations go toward these two situations. In any case, the touchstone is always if one can articulate what the art now knows that it did not know prior to reading the instant specification. If one can’t, no amount of argument should result in a valid claim because the applicants fundamentally haven’t achieved the quid pro quo of the patent bargain.
Hey Random, you have never weighed in the Hobson choice with Gen AI.
To your statement then of, “ because the function of the PHOSITA “omniscience” is to ensure that the state of the art is being advanced.”
what is your position on Gen AI?
A) Does Gen AI rise to a level of introducing a non-human inventor?
B) Does Gen AI NOT rise to a level of introducing a non-human inventor?
Either of A) or B) has its patent implications, but what is your choice of an answer?
Either of A) or B) has its patent implications, but what is your choice of an answer?
I don’t much care. You’re talking to one of the small percentage of humans who can’t be granted a patent, and I don’t feel particularly slighted by it. They made a decision that any contributions someone like me might make would be more trouble than its worth, and they’re probably right. If they came out the other way that’d be fine too. So too with AI inventorship. It’s like a little old lady deeding her house to her cats – I guess if the law wants to take the time to deal with it that’s fine, and if they just want to wash their hands of the issue that’s fine too.
The law as written seems to suggest only a human can be an inventor, but if a court were to say otherwise it really wouldn’t matter.
LOL – thanks for confirming that you lack understanding of the issues.
For all of your blather, you lack the ability to actually think through the issues.
This is most definitely NOT “small percentage” with a direct impact of USE of AI that obtains something that is in itself not claimable by a human because a human reading that something cannot rise to satisfy the definition of inventor, but it affects EVERYONE because it is a non-human that now SETS the State of the Art.
Go back and read what I wrote leading into the choices of A) and B).
Take your time – try to think.
Or, putting it simply, is ABC truly a new combination (something more than the sum of its parts) or is it nothing more than a collocation of existing elements. But perhaps the USPTO will now say that even a new combination isn’t enough to confer patentability on ABC ?
It has never been enough that “even a new combination” is enough.
Think about what you actually wrote there MaxDrei.
Perhaps the distinction that the Engish courts make, between a true combination of technical features (which delivers a synergistic result) and a mere collocation of technical features (which delivers no more than what its individual components deliver) is lost on students of patentability law in the USA.
But not on the Europrean mainland, where one finds it in the established “partial problem” case law of the EPO.
Responding to obviousness objections by adding to the collocation claim one technical feature after another to force the Examiner to cite ever more prior art references but without bringing any synergy to the party might get you to issue at the USPTO but not in Europe.
What is “enough” to confer patentability, anon? A new combination of features, that delivers a surprising or unexpected result, seems to me like prime subject matter. Not to you though, eh?
Your rant misses my point entirely.
But you did take it as suspected – a chance for that EPO Uber Alles shilling.
The reason usually comes from the fact that applicants successfully did it. And that is the problem.
The “reason to use them together” that Examiners produce often has little or no evidentiary basis.
This is indeed a problem in certain cases, but not in most. In most cases the reason something is being used is because it produces the result that people would expect.
This is clear in law but rarely can you get prosecuting attorneys on board. The supreme court has been clear that merely arranging known machines with each doing what they were expected is not patentable. And yet applicants expect more “motivation” than that, so they expect more “evidence” than that.
Nine times out of ten things do the same thing “in combination” that they do outside of the combination, because rarely does a combination provide either synergistic or interfering results. This is especially true when you are in the predictable arts and/or when the element itself is defined functionally rather than structurally. When the combination truly is interfering or synergistic, the specification notes it and has language that would allow the applicant to amend or fight on the issue. In these situations the lack of evidence by the examiner truly is a problem. In situations where the specification is silent the motivation almost always writes itself – the reason the examiner is resorting to obviousness is because the other references lack the feature, and the addition of the feature is motivated by the known advantage of using the item, which is the same in the new context as it was in the old context.
A nice concrete example is the novelty of the first person to put a cup holder in a car. The “motivation” question (and again, it’s not really a “motivation” question to the supreme court) doesn’t require the examiner to even explain (let alone provide evidence of) why someone driving a car would have a cup, or why they would want a place to set it, or whether it is a net good/bad to promote drinking while driving. The only questions are (1) were cup holders known, (2) was there any enablement problem in putting a cup holder in a car and (3) does the cup holder structure in a car result in the holding of cups. (1) is part of the citations in the body of the rejection, (2) is usually settled by the applicant’s specification not providing a technical teaching (thereby admitting a sufficient level of technical skill in the art), and (3) is the default position unless something would suggest otherwise. There’s no evidence to cite – it’s plainly clear that nothing about the car renders the structure of a cup holder incapable of holding cups, and the car obviously didn’t have a cup holder before (or we’d be in anticipation) so the motivation for adding a cup holder is “the expectation of some advantage is the strongest motivation” (MPEP 2144) – the holder-less car couldn’t hold cups, and now the modified cup holder car performs the function of holding cups. That is an advantage of the holder-less car.
Applicants often expect some sort of particular commercial motivation (“People buy fast food, but spill cups while transporting them home, this specification solves the problem of spilled cups”) when the law only requires inventive rationality. It’s obvious to use known structures to do the things they are known to be capable of doing.
“In most cases the reason something is being used is because it produces the result that people would expect.”
1) is that what most people would expect at the time of the filing?
2) is that reason for the complete phrase of “using them together?”
As to “in most cases,” I am wondering which universe in the multi-verse you are inhabiting, as BOTH 1) and 2) are routinely NOT followed.
1) is that what most people would expect at the time of the filing?
“Most people” is not the standard, the hypothetical PHOSITA is. The PHOSITA expects things to perform in the same manner she knows them to perform unless the PHOSITA knows of a reason to suspect that the different context would yield different results. That’s the essence of teaching away or unexpected surprise considerations – the reason they evidence nonobviousness is because the contrapositive is obvious.
2) is that reason for the complete phrase of “using them together?”
What?
As to “in most cases,” I am wondering which universe in the multi-verse you are inhabiting, as BOTH 1) and 2) are routinely NOT followed.
This is true, but that is because the legal standard is judged on the PHOSITA and the PHOSITA is a fictional being. Engineers do suboptimal things because they lack total knowledge in the field, lack the money to try optimal strategies, or work for corporations that seek to profit from economies of scale.
At times the reason a corporation seeks a patent is to protect an upcoming product line, but rarely are commercial product lines the cutting edge of the field so it should be unsurprising they are obvious. At times applicants are confused about what the state of the art is. At times applicants reinvent the wheel. These are all human “mistakes” that the hypothetical person that knows everything the art has done rises above.
The law is NOT about what an average human in the field would do. The law is about what would fall outside of the ordinary human creativity when wielded by a fictional embodiment of the entirety of knowledge in a given field of endeavor. It ought to be unsurprising that the two do not yield similar outcomes.
This ^ btw, is why anon is wrong about the notion that increasing the skill and creativity of the PHOSITA increases the breadth of possessed embodiments under 112a. 112a is directed to what a PHOSITA thinks these inventors possessed. Obviousness is directed toward what was within the creative scope of a person that knows all preexisting knowledge in the field. That’s the whole point of patent law – The applications that become obvious to PHOSITA is at least as large and is often larger than the applications that are thought of by the inventors.
And no – this is NOT why I am in error, as the real humans need to meet the LEGAL aspects as set by the LEGAL person and those aspects DO affect ‘the bar’ for both 103 and 112.
There is NO separate legal person for each that carries different realms of the legal fiction.
The “most people” was in regard to the inventors. Yes, I am well aware that it is a legal fiction non-human person of PHOSITA that is the legal criterion – something YOU missed above in the impact of AI. (plus – as I am sure that you might catch on, that is the exact phrase that YOU had used).
That you also missed on 2) is not a surprise. Do you know how often I see 103 rejections in which the (boilerplate-slapped-together) reason FOR COMBINING is merely the benefit of a single cited reference?
Rationale is NEVER merely the benefit alone of a single reference.
That turns 103 prior art into mere piecemeal 102 prior art.
You seem to have jumped over a merely perceived miscalculation, and did not address my actual points.
Try again.
The example of a cup holder in a car is a nice one for exploring obviousness because it seems intuitively a patentable invention. But suppose that there have always been on tea clippers and the sailing yachts of rich entrepreneurs a recess next to the helmsman to hold his mug of piping hot tea safe from spillage. Flash of genius to install one in his car? What do you think?
>The only questions are…
There is (should be) another factor. Consider my favorite SCOTUS case: Eibel Process. The inventor in that case just put bricks under two of the legs of an existing machine…to make water run down hill. Applying your test: Were bricks known? Check.
Did he enable using gravity to move water? Undoubtedly. Did the bricks+machine combo allow said water to run down hill? Clearly.
And yet, the invention was nonobvious.
Yes, OC, Random cares not for the actual law – he is an examiner after all.
Were bricks known? Check.
Did he enable using gravity to move water? Undoubtedly. Did the bricks+machine combo allow said water to run down hill? Clearly.
That is a misunderstanding of what constitutes the invention.
The nonobvious part of claim 1 was not “maintained at a substantial elevation above the level” (ie. “add bricks”) nor was it “whereby the stock is caused to travel by gravity, rapidly” (ie. “water runs downhill”) rather it is “at a speed approximately equal to the speed of the wire.”
The prior art was that higher speed wires resulted in defective paper. While the preferred embodiment was to raise the pitch, the specification (and the claims) was clear that the invention was to move the stock “at a speed approximately equal to the speed of the wire” and the specification included embodiments where the pitch was low and the wire was slowed down. The invention was not in the ability to make stock roll downhill faster, the invention was in timing the roll of the stock to the speed of the wire. Making the timing equal removed the defectiveness in the outcome, and since it was so easy to increase the roll speed of the stock, it allowed for much faster operation without the defects that had traditionally occurred.
If the “invention” had been to make something roll downhill faster that would have been obvious. And if there is any doubt about that today one need only look at KSR’s language that approvingly cites A&P Tea Co. Rather the invention was in disclosure that the equality of speeds removes the defects, which is something nobody knew. Put another way – the prior art taught away from faster wire speeds because they were known to cause increased defects, but the patentee discovered an unknown synergistic effect to increasing the stock feed speed – it not only performed the expected result of moving the stock faster, it also provided the unexpected result of eliminating defects that were known to occur as wire speed increased. There was no reason to think that feeding the stock more quickly would decrease defects, and it is *that* disclosure (and not the “you can stack bricks to make something roll faster” that you cite) that was patent worthy. The easy physical setup (using bricks to increase the pitch and therefore increase the stock feed speed) is an obvious part of the claim.
Yeesh, your reading of that case is like looking at a software claim and thinking its nonobvious because of the processor and memory and not the computer instructions. You might want to pick a new favorite case.
The inventive step in Eibel was recognizing that the problem preventing running the machine faster was a speed mismatch between the slurry and the wire.
The legal point from the case was that an invention could be non-obvious (and statutory) even though the actual solution to said problem was completely conventional i.e., all of the claimed elements were both known and used for the same purpose as in the claimed invention…. which was important because, if the claims didn’t cover putting bricks under two legs, they would have been worthless. That’s how others would implement the invention in practice.
>the pitch was low and the wire was slowed down
That was the prior art. Speeding up the wire was the long-sought holy grail.
Which is also at point in Diehr all of the items and even the result were all known in the art.