Comments on: Not your dad’s nonobviousness standard … http://www.thefireofgenius.com/2006/05/25/not-your-dads-nonobviousness-standard/ Academic commentary about patent law, i.p. law, creativity, and more Fri, 21 May 2010 18:16:42 -0700 http://wordpress.org/?v=2.8.5 hourly 1 By: Ghinga http://www.thefireofgenius.com/2006/05/25/not-your-dads-nonobviousness-standard/comment-page-1/#comment-52666 Ghinga Mon, 30 Apr 2007 20:48:08 +0000 http://www.thefireofgenius.com/2006/05/25/not-your-dads-nonobviousness-standard/#comment-52666 Nice Site!!! (p)2 Nice Site!!! (p)2

]]> By: Mark Roberts http://www.thefireofgenius.com/2006/05/25/not-your-dads-nonobviousness-standard/comment-page-1/#comment-3896 Mark Roberts Thu, 14 Sep 2006 22:12:58 +0000 http://www.thefireofgenius.com/2006/05/25/not-your-dads-nonobviousness-standard/#comment-3896 The SG's concerns over rigidity of the suggestion test overlooks the great flexibility inherrent in the "motivation to combine" compnoent of the the test. The motivation to combine includes amongst other things, consideration of the problem to be solved - a factor to consider to determine whether a prior art reference is analagous art from the outset. In this regard the suggetion test is at least as flexible as the EPOs problem solution test. In addition, the PTO retains the right to reject on grounds of obviousness by taking "Official Notice", where some aspect of an invention is so well known by common knowledge that is considered trivial. Even when the PTO is challenged on this ground, the examiner only need find any reference, whether analagous or not, that demonstrates the asserted common knowledge. Moreover, when obviousness is asserted during a litigation to invalidate an invention, the source of the prior art is not restricted to references, but can include testimony from experts about what was known or used commonly in the field of endeavor. As to the comment about peanut butter and jelly, the writer is apparently unaware of the "unexpected results" component of the obviousness inquiry. Who would of thunk how good it was going to be ahead of time? The SG’s concerns over rigidity of the suggestion test overlooks the great flexibility inherrent in the “motivation to combine” compnoent of the the test. The motivation to combine includes amongst other things, consideration of the problem to be solved – a factor to consider to determine whether a prior art reference is analagous art from the outset. In this regard the suggetion test is at least as flexible as the EPOs problem solution test. In addition, the PTO retains the right to reject on grounds of obviousness by taking “Official Notice”, where some aspect of an invention is so well known by common knowledge that is considered trivial. Even when the PTO is challenged on this ground, the examiner only need find any reference, whether analagous or not, that demonstrates the asserted common knowledge. Moreover, when obviousness is asserted during a litigation to invalidate an invention, the source of the prior art is not restricted to references, but can include testimony from experts about what was known or used commonly in the field of endeavor. As to the comment about peanut butter and jelly, the writer is apparently unaware of the “unexpected results” component of the obviousness inquiry. Who would of thunk how good it was going to be ahead of time?

]]> By: Michael Smith http://www.thefireofgenius.com/2006/05/25/not-your-dads-nonobviousness-standard/comment-page-1/#comment-1403 Michael Smith Thu, 29 Jun 2006 20:04:03 +0000 http://www.thefireofgenius.com/2006/05/25/not-your-dads-nonobviousness-standard/#comment-1403 Seems to me that the PHOSITA standard, if implemented as the sole requirement for obviousness, will be implemented in a capricious and arbitrary manner. The solution would be to make PHOSITA an objective standard. I can't find any proposals as to how to impose an objective standard onto PHOSITA, have you seen any such proposal? Seems to me that the PHOSITA standard, if implemented as the sole requirement for obviousness, will be implemented in a capricious and arbitrary manner.

The solution would be to make PHOSITA an objective standard.

I can’t find any proposals as to how to impose an objective standard onto PHOSITA, have you seen any such proposal?

]]> By: The Fire of Genius » Kicking up some KSR comments … http://www.thefireofgenius.com/2006/05/25/not-your-dads-nonobviousness-standard/comment-page-1/#comment-1380 The Fire of Genius » Kicking up some KSR comments … Wed, 28 Jun 2006 23:47:02 +0000 http://www.thefireofgenius.com/2006/05/25/not-your-dads-nonobviousness-standard/#comment-1380 [...] Dennis hits a bull’s eye here. The thing that most convinces me is the superstrong position the SG (with the help of the PTO) has already taken against the teaching/suggestion/motivation test. Look at the Supreme Court’s decision in Festo for a sense of how powerful the SG’s advocacy can be in helping the Court formulate its approach to patent law: Just as Warner-Jenkinson held that the patentee bears the burden of proving that an amendment was not made for a reason that would give rise to estoppel, we hold here that the patentee should bear the burden of showing that the amendment does not surrender the particular equivalent in question. This is the approach advocated by the United States, see Brief for United States as Amicus Curiae 22—28, and we regard it to be sound. [...] [...] Dennis hits a bull’s eye here. The thing that most convinces me is the superstrong position the SG (with the help of the PTO) has already taken against the teaching/suggestion/motivation test. Look at the Supreme Court’s decision in Festo for a sense of how powerful the SG’s advocacy can be in helping the Court formulate its approach to patent law: Just as Warner-Jenkinson held that the patentee bears the burden of proving that an amendment was not made for a reason that would give rise to estoppel, we hold here that the patentee should bear the burden of showing that the amendment does not surrender the particular equivalent in question. This is the approach advocated by the United States, see Brief for United States as Amicus Curiae 22—28, and we regard it to be sound. [...]

]]> By: The Fire of Genius » KSR - Liftoff! http://www.thefireofgenius.com/2006/05/25/not-your-dads-nonobviousness-standard/comment-page-1/#comment-1316 The Fire of Genius » KSR - Liftoff! Mon, 26 Jun 2006 14:11:05 +0000 http://www.thefireofgenius.com/2006/05/25/not-your-dads-nonobviousness-standard/#comment-1316 [...] The Supreme Court has granted review in KSR Int’l v. Teleflex, Inc., S. Ct. No. 04-1350. This grant is consistent with the Solicitor General’s recommendation in the case, which I reviewed in some detail. The SG’s brief recommending review likely gives a strong preview of what the SG’s brief on the merits will argue. [...] [...] The Supreme Court has granted review in KSR Int’l v. Teleflex, Inc., S. Ct. No. 04-1350. This grant is consistent with the Solicitor General’s recommendation in the case, which I reviewed in some detail. The SG’s brief recommending review likely gives a strong preview of what the SG’s brief on the merits will argue. [...]

]]> By: Kodi http://www.thefireofgenius.com/2006/05/25/not-your-dads-nonobviousness-standard/comment-page-1/#comment-1161 Kodi Wed, 14 Jun 2006 20:16:39 +0000 http://www.thefireofgenius.com/2006/05/25/not-your-dads-nonobviousness-standard/#comment-1161 what is the relationship between motivation and obviousness? aren't they mutually exclusive? for example, it would be "obvious", i hope, to combine peanut butter and jelly, but i dont believe there needs to be any motivation in existence for the "obviousness" of the combination to materialize -- i can just be bored and felt like squishing two unrelated condiments together. in other words, can't an obvious combination of existing inventions come into being without any motivation? btw, if you say the desire to squish two unrelated condiments together is the motivation, then we can say the general curious or bored nature of human existence provides the universal motivation for all obvious combinations. what is the relationship between motivation and obviousness? aren’t they mutually exclusive? for example, it would be “obvious”, i hope, to combine peanut butter and jelly, but i dont believe there needs to be any motivation in existence for the “obviousness” of the combination to materialize — i can just be bored and felt like squishing two unrelated condiments together. in other words, can’t an obvious combination of existing inventions come into being without any motivation?

btw, if you say the desire to squish two unrelated condiments together is the motivation, then we can say the general curious or bored nature of human existence provides the universal motivation for all obvious combinations.

]]> By: The Fire of Genius » Toward a new nonobviousness analysis http://www.thefireofgenius.com/2006/05/25/not-your-dads-nonobviousness-standard/comment-page-1/#comment-79 The Fire of Genius » Toward a new nonobviousness analysis Wed, 31 May 2006 01:30:03 +0000 http://www.thefireofgenius.com/2006/05/25/not-your-dads-nonobviousness-standard/#comment-79 [...] In the wake of the SG’s brief supporting review in KSR, Patently-O’s Dennis Crouch poses the core questions: After the teaching-suggestion-motivation test is gone, what standard will a patent examiner use to decide whether a new combination is non-obvious? To be sure, the current test is formalistic and has been both under– and over-inclusive. However, has anyone proposed a better test — one that can be carried out by the PTO even in light of the high-turnover and young workforce in the agency’s examining corps? [...] [...] In the wake of the SG’s brief supporting review in KSR, Patently-O’s Dennis Crouch poses the core questions: After the teaching-suggestion-motivation test is gone, what standard will a patent examiner use to decide whether a new combination is non-obvious? To be sure, the current test is formalistic and has been both under– and over-inclusive. However, has anyone proposed a better test — one that can be carried out by the PTO even in light of the high-turnover and young workforce in the agency’s examining corps? [...]

]]> By: The Fire of Genius » Nonobviousness: Greatest Hits, #4 http://www.thefireofgenius.com/2006/05/25/not-your-dads-nonobviousness-standard/comment-page-1/#comment-78 The Fire of Genius » Nonobviousness: Greatest Hits, #4 Tue, 30 May 2006 23:03:52 +0000 http://www.thefireofgenius.com/2006/05/25/not-your-dads-nonobviousness-standard/#comment-78 [...] Given the SG’s brief supporting review in KSR, a 1977 article by Mary Helen Sears is more timely now than ever.  In the article, Ms. Sears reviews the central lessons of Graham, Adams, Anderson’s Black-Rock, and Sakraida.  She concludes that these cases adopt a core premise about the ordinary artisan’s basic creative ability to recombine and reconfigure known elements in new ways that take advantage of the elements’ known functions.  As she puts it, “the level of ordinary skill at any given time affords the basis for associating old elements in any manner which merely takes advantage of their known capabilities.”  Mary Helen Sears, Combination Patents and 35 U.S.C. section 103, 1977 Detroit College of Law Review 83, 99. [...] [...] Given the SG’s brief supporting review in KSR, a 1977 article by Mary Helen Sears is more timely now than ever.  In the article, Ms. Sears reviews the central lessons of Graham, Adams, Anderson’s Black-Rock, and Sakraida.  She concludes that these cases adopt a core premise about the ordinary artisan’s basic creative ability to recombine and reconfigure known elements in new ways that take advantage of the elements’ known functions.  As she puts it, “the level of ordinary skill at any given time affords the basis for associating old elements in any manner which merely takes advantage of their known capabilities.”  Mary Helen Sears, Combination Patents and 35 U.S.C. section 103, 1977 Detroit College of Law Review 83, 99. [...]

]]> By: The Fire of Genius » Nonobviousness: Greatest Hits, #2 http://www.thefireofgenius.com/2006/05/25/not-your-dads-nonobviousness-standard/comment-page-1/#comment-73 The Fire of Genius » Nonobviousness: Greatest Hits, #2 Mon, 29 May 2006 05:30:49 +0000 http://www.thefireofgenius.com/2006/05/25/not-your-dads-nonobviousness-standard/#comment-73 [...] As I noted the other day, the Solicitor General has filed a brief urging the Supreme Court to grant review in KSR v. Teleflex, a case about the appropriate test for nonobviousness.  In that brief, the SG quotes several times from the Supreme Court’s unanimous decision in Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141 (1989).  In Bonito Boats, the Supreme Court struck down a Florida state statute that protected vessel hull designs from copying, on the ground that the Florida law conflicted with, and was thus preempted by, the Patent Act.  What does that have to do with the nonobviousness standard?  Well, before explaining how the state vessel hull statute conflicted with the Patent Act, the Court explained the basic policy commitments embodies in the Patent Act. [...] [...] As I noted the other day, the Solicitor General has filed a brief urging the Supreme Court to grant review in KSR v. Teleflex, a case about the appropriate test for nonobviousness.  In that brief, the SG quotes several times from the Supreme Court’s unanimous decision in Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141 (1989).  In Bonito Boats, the Supreme Court struck down a Florida state statute that protected vessel hull designs from copying, on the ground that the Florida law conflicted with, and was thus preempted by, the Patent Act.  What does that have to do with the nonobviousness standard?  Well, before explaining how the state vessel hull statute conflicted with the Patent Act, the Court explained the basic policy commitments embodies in the Patent Act. [...]

]]> By: MaxDrei http://www.thefireofgenius.com/2006/05/25/not-your-dads-nonobviousness-standard/comment-page-1/#comment-66 MaxDrei Fri, 26 May 2006 20:52:51 +0000 http://www.thefireofgenius.com/2006/05/25/not-your-dads-nonobviousness-standard/#comment-66 If the English courts are at last coming to recognise the power of the EPO "problem and solution approach" to decide obviousness objectively (and cleanly and quickly in pre-grant examination on the merits), one would have thought it might have something to offer in USA. It took 30 years for the English judges and senior barristers to "get it". Germany isn't there yet. The US could now take the chance to capitalise on this 30 year long debate in Europe, whether motivation is needed before something is obvious to do. "Problem and solution" of course needs a motivation. In my experience, everybody away from the EPO thinks intuitively that they already understand P&S, so nobody takes the trouble to grasp it before launching into vehement criticism of it ("hindsight", "closest" art etc etc). Possibly there is also in the national courts of European countries a hint of "Not invented Here" Syndrome prejudicing them against P&S. I expect that to happen again, at SCOTUS level, which would be a pity, given that P&S has stood up to all attacks made on it during the long period it took to establish its unassailable pre-eminence at the EPO. If the English courts are at last coming to recognise the power of the EPO “problem and solution approach” to decide obviousness objectively (and cleanly and quickly in pre-grant examination on the merits), one would have thought it might have something to offer in USA. It took 30 years for the English judges and senior barristers to “get it”. Germany isn’t there yet. The US could now take the chance to capitalise on this 30 year long debate in Europe, whether motivation is needed before something is obvious to do. “Problem and solution” of course needs a motivation.

In my experience, everybody away from the EPO thinks intuitively that they already understand P&S, so nobody takes the trouble to grasp it before launching into vehement criticism of it (”hindsight”, “closest” art etc etc). Possibly there is also in the national courts of European countries a hint of “Not invented Here” Syndrome prejudicing them against P&S. I expect that to happen again, at SCOTUS level, which would be a pity, given that P&S has stood up to all attacks made on it during the long period it took to establish its unassailable pre-eminence at the EPO.

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