Toward a new nonobviousness analysis
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?
I know I will spend a great deal of time over the next year or two thinking about what standard the PTO and the courts should use. And I know that it’s impossible to say now where my thinking will finally land, if it ever lands at all.
That said, I do have some highly tentative thoughts to which I welcome reactions and comments. My thoughts are after the jump.
My basic (and highly tentative) take, at the moment, riffs on Mary Helen Sears’ approach.
People of ordinary skill in an art come up with new inventions all the time. If they didn’t, we wouldn’t need (or want) a nonobviousness requirement to thresh the big-advance-wheat from the little-advance-chaff. I therefore begin from the premise that the person of ordinary skill in the art — any art — has a basic ability to creatively recombine and reconfigure the basic building blocks, or elements, in her art. When doing so, the POSITA recombines and reconfigures the building blocks according to their typical functions and roles (as well as any functions the art may expressly suggest, although such express suggestion isn’t necessary, and may not even be that common). So far as I can tell, getting the POSITA’s baseline creative ability right is the single most important step in the analysis, and getting it wrong is what, in the view of many, has sent the Federal Circuit so far astray. [Note: This basic creative ability is what the Federal Circuit’s suggestion test improperly denies to the POSITA. By doing so, the Federal Circuit has effectively cut the nonobviousness requirement back to a supernovelty requirement.]
At the Patent Office, the examiner should canvass the pertinent prior art to [1] determine which elements, if any, in a given claim can be found in the prior art, and [2] assess whether the claimed invention uses those prior art elements for their known functions or roles. Key to both steps is a firm idea of the primary problem that the claimed invention solves.
The pertinent prior art will contain either all the elements in the claim under review serving the same functions, all the elements in the claim under review but playing different functions, or less than all the elements in the claim under review.
[3][a] If the pertinent prior art contains all the elements in the claim serving their prior art functions, the examiner should make an initial rejection of the claim. [b] At this point, the burden of production and persuasion would shift to the applicant to overcome the presumptive obviousness of the claim. [c] The only evidence the Patent Office should accept in rebuttal is clear proof that the prior art expressly taught away from making the combination in the claim under review, or that identifiable others had tried and failed to solve the problem the applicant has successfully solved. [Note: I don’t think unexpected results is an adequate rebuttal, given the POSITA’s ability and incentive to try basic recombinations of existing elements using their known functions. I don’t think commercial success evidence is sufficiently weighty, given the great number of alternative explanations. Of course, given the early stage at which patent prosecution occurs, the applicant isn’t likely to have much commercial success evidence anyway.]
[4][a] If the pertinent prior contains all the elements in the claim but at least one is playing a different function, or the art does not contain all the elements in the claim, [b] the burden remains on the examiner to prove that the invention would have been obvious. [c] The examiner should not make an initial rejection of the claim unless the examiner can show what in the pertinent prior art or in the POSITA’s basic repertoire of tools and techniques would have suggested or motivated the POSITA to change the function played by a known element, or to modiy the known element to create the new element.
[5] A court challenge would work the same way, with the accused infringer playing a role analogous to the examiner’s. Of course, under current law, the presumption of validity would require that the accused infringer present clear and convincing evidence of the pertinent prior art. However, in my approach, upon a showing that the prior art contains all the elements of the claim serving their prior art functions, the patentee would bear the burden of production and persuasion to overcome the presumptive obviousness of the claimed invention. As was true in patent prosecution, the only evidence the court should allow in rebuttal is evidence tending to show that the prior art expressly taught away from making the combination in the claim under review, or that identifiable others had tried and failed to solve the problem the applicant has successfully solved.
I think this approach would produce the same outcomes as the Supreme Court reached in Graham, Adams, Anderson’s Black-Rock, and Sakraida. I think it might well not produce the same outcomes the Supreme Court reached in Great A&P Tea and Cuno Eng’g.
Comments?
UPDATE: For views markedly different from mine, check out this series of posts at Patent Prospector: first, second, and third.
I think we need to develop a spectrum of the non-obvious test before we begin arguing where the line should be. If we can agree on the knobs and levers, then we can let the powers that be slowly adjust them over time.
I like the shifting burden bit though.
Comment by David — May 30, 2006 @ 10:59 pm
One problem with the current obviousness test is administrative. The test works well for one interested group, large pharmaceutical companies, but not well for another group, namely large software companies. If we accept the premise (I’m not sure we should) that there are many bad patents that make it impossible for large software companies to go about their business, then why is this so? Is it because patentability is assessed differently in different art units? Is it because the suggestion test is too applicant-friendly? Or is it because the subject matter does not lend itself to evaluation under the current test?
In any event, I’m glad you have new test in mind. The SG statement the the current test underestimates the capabilities of patent examiners implies an examiner “says so” test would be better.
I should point out that a showing of commercial success currently requires a close nexus between the success and the claim features. I agree that assertions of commercial success should be critically evaluated to ensure that the commercial success is not due to something other than the claimed features, but I would be surprised if many overly broad “bad” patents were granted based on a showing of commercial success.
Comment by Travis — May 31, 2006 @ 12:24 pm
A comment: your proposed route seems to me to convert structural claims into quasi-means-plus-function claims because the examiner must not only identify claimed structural elements in various pieces of prior art, but the examiner must also identify the function or role of each claimed structural element as they are presented in the prior art. This process forces function to become part of a structural claim. Under this procedure I may as well not try to claim structure and function independently in different independent claims. Please correct me if I am wrong in this interpretation.
Also, I have a comment on the timliness factor of presenting evidence of commercial success in patent application examination. Due to the back-log at the patent office, various products may well have been in the market long enough to establish commercial success by the time the patentee needs to make arguments regarding non-obviousness. In my past job, for one client we did submit evidence of commercial success and filling an unmet need during examination as an argument for non-obviousness because the product had already hit the market and was taking off.
Comment by Jim Hilsenteger — May 31, 2006 @ 1:08 pm
Jim,
On the commercial success point: as I said, a secondary reason not to include it in my framework is that it usually won’t be available. Of course, sometimes it will be available. Which gets us to the primary problem … it’s too unreliable, absent evidence of the failure of others to solve a longfelt problem. In the case you mention, you had the stronger form of evidence, an actual longfelt need, and that’s what I would look to.
On the structure/function point: I don’t think I can agree. Perhaps it’s because function is already, and has long been, part of how we understand claims that recite structure alone. For example, to determine which prior art is pertinent, one has to know both the field of the applicant’s endeavor and the nature of the problem the applicant sought to solve. These inquiries entail looking not only to structures, but to the functions those structures serve. This is clear from cases such as In re Bigio (Fed. Cir. Aug. 24, 2004). Or in analyzing whether an element in an accused item is equivalent to an element recited in the claim, we consider the function played by both (whether we use the “insubstantial difference” approach or the “function/way/result” approach). Finally, look back at the Supreme Court’s decision in Graham; the functions played by the claimed elements, both in the claim and in the prior art, are part of the determination whether the claimed invention would have been obvious.
Joe
Comment by Joe — May 31, 2006 @ 1:31 pm
An approach to obviousness that serves users of a USPTO full of rookie Examiners? Sounds like the problem that hit the EPO when it opened in 1978 with quotas of Examiners appointed to the EPO from the national Patent Offices of all Member States around Europe. Task: find a line that all can learn quickly and utilise consistently, or suffer subjective refusals that vary according to the nationality of the Examiner. Solution: the Problem and Solution Approach.
Big snag: outside EPO prosecution circles, everybody thinks they understand P&S intuitively, and already knows that it is fatally flawed with hindsight reasoning. So, in their ignorance, they discount it as a viable, objective and fair way to manage obviousness.
Yet, after 25 years in the EPO, it has beaten off all academic criticism and is by now unassailable.
Comment by MaxDrei — May 31, 2006 @ 1:43 pm
MaxDrei or Joe,
Could you point me to some literature explaining the “Problem and Solution” approach? I’d like to understand it better for both practical and philosophical reasons.
Thanks,
Jim
Comment by Jim Hilsenteger — May 31, 2006 @ 2:33 pm
Jim,
The Wikipedia entry for Obviousness is actually not a bad place to get info on the EPO’s P&S, because it collects some links to external sources.
It’s here.
Comment by Joe Miller — May 31, 2006 @ 9:28 pm
I respond to the invitation to say something on EPO P&S.
For the EPO to ask if something is obvious is a dumb question. One might just as well ask if a trademark is descriptive. First you need to know what goods. In obviousness, you need to ask “Obvious, for what?”.
So, first go to the spec and see what field the inventor is in, and what is the asserted contribution to that field. There’s your frame of reference. Search the art. Find what would be a “realistic starting point” for a PHOSITA, on the date of the claim, who has been given the task, in that tech field, to come up with a technical effect as promised by the inventor (hindsight you cry, but wait). We call that doc D1.
Look now at the technical features recited in the claim (C). In Europe it is compulsory to define your invention in terms of technical features. Those in the claim but not in D1 let us call CF, characterizing features. What technical effects do we get when we inject CF into the D1 disclosure? The so-called “objective problem” is the problem for the PHOSITA on the claim date, to start from D1 and achieve those technical effects.
Without using hindsight, now look through the totality of the public knowledge at that date, and see if, on that day, it included any hint or suggestion to modify DI by inserting CF to solve the objective problem, that is, achieve the technical effect which the inventor achieved.
You are done.
EPO has no Rules of Evidence. You can be as creative as you like in working the Approach.
You can view the Approach as involving a sort of “toggling” between tech effects and tech features. (But don’t get too hung up on “technical”)
You say that the single doc starting point is artifial. I agree. But is it unfair? I say not. I am just as happy using P&S when I represent an Opponent as when I represent an EPO Applicant. It is quick clean and objective, and equally potent for both sides of the argument. Starting from a single document just saves a huge amount of time, and renders the whole thing objective.
And the writer of the patent application defines the framework. If he is over-ambitious on scope, the Approach is brutal in cutting him back to reality, in no time at all.
Comment by MaxDrei — May 31, 2006 @ 11:50 pm
I have a test that I put to clients when I’m explaining to them the obviousness requirement of patent law. I asked them if their invention falls in the: “Who would have thought that…?” category. For example: “Who would have thought that rubbing your teeth with the claw of the hammer will prevent tooth decay?”
Comment by David J. French — June 7, 2006 @ 6:51 pm
David,
I like that question! It’s a practical way to focus a client’s mind on the rigors of the nonobviousness standard.
Joe
Comment by Joe — June 7, 2006 @ 6:57 pm
Interesting approach. Two comments.
First, even though an apparatus or article of manufacure is not obvious under the “Miller Test,” a method for making the thing may well be obvious if all of the method steps serve functions or roles known in the art.
Second, if the Miller test were law, would it require any changes in the (restrictive) law of claim construction?
Comment by Rick Wilhelm — July 6, 2006 @ 9:41 am
Another comment.
If the pertinent prior art does not contain all of the elements, or at least one of the elements does not serve a function or role known in the pertinent prior art, the invention is presumed not obvious and the examiner has the burden of showing that there is a teaching in the pertinent prior art that the element could be used in the new (claimed) function or role. Is this part of your test different from the current CAFC suggestion test and if so how does it differ?
Comment by Rick Wilhelm — July 6, 2006 @ 9:55 am
Yet another comment/question.
If at least one of the elements serves in a role or function known in the pertinent art, according to your test the only evidence permitted to overcome the presumption of obviousness is a clear, express teaching away from the combination or an identification of others who tried and failed to solve the same problem. Suppose an invention is a circuit comprised of elements R and C. Element R, as is well known in the art at the time of the invention, functions as an electrical resistor. Element C, as is well known in the art, functionsas an electrical capacitor. The particular circuit arrangement attentuates electric signals at particular frequencies, but passes signals at other frequencies with minimal attenuation, i.e., the invention is an RC filter circuit. Thus, the invention would appear to use known elements serving known functions to produce a non-obvious result. See U.S. Pat. No. 1,227,113 to Campbell (issued May 22, 1917). Assuming that Campbell couldn’t show a clear teaching away or that identifiable others had tried and failed to create a filter, Campbell would have be denied a patent on grounds of obviousness. Others may well have been working on the problem of creating a filter in 1917. Maybe those other would have published the fact that they were trying to solve the problem. At that time, however, others may not have been working on the problem or they may have been working on the problem secretly or in a manner otherwise unknown to Campbell. Should Campbell’s invention be denied a patent for being non-obvious if he can’t sustain the burden of proof under your test?
Comment by Rick Wilhelm — July 6, 2006 @ 3:06 pm
Rick,
Wow! Lot’s of great comments. Here are some thoughts, in response …
Regarding your 9:41 am post — I agree that, in theory, it’s possible for an apparatus to be nonobvious and for a method of making it to be obvious. Indeed, I think this is already the law: “As the district court recognized in its initial ruling, there are no per se rules relating the patentability of product and process in either direction. A process yielding a novel and nonobvious product may nonetheless be obvious; conversely, a process yielding a well-known product may yet be nonobvious.” Torpharm, Inc. v. Ranbaxy Pharms., Inc., 336 F.3d 1322, 1327 (Fed. Cir. 2003) (citing In re Ochiai, 71 F.3d 1565, 1571-72 (Fed. Cir. 1995)). And I don’t think my approach to nonobvious would, or should, require any change to the claim construction methodology prescribed by the recent en banc opinion in Phillips.
Regarding your 9:55 am post — I disagree with the way you summarized my approach. You restated the current suggestion test. What I said is actually a little different, and in an important way. In the case in question (new element, or new role for known element), what I propose is that “the examiner should not make an initial rejection of the claim unless the examiner can show what in the pertinent prior art or in the POSITA’s basic repertoire of tools and techniques would have suggested or motivated the POSITA to change the function played by a known element, or to modiy the known element to create the new element.” In other words, the ordinary artisan’s ordinary creativity in the art in question remains a source for showing that an invention would have been obvious. But, one protests, isn’t this already the case in the Federal Circuit’s suggestion test cases … namely, under the heading of “implicit suggestions,” or finding that the suggestion coming from the nature of the problem to be solved or from the knowledge of one of skill in the art? Fair enough, in a sense. In my view, these are the cases where even the Federal Circuit simply cannot bring itself to live within the tight confines of the suggestion test.
Regarding your 3:06 pm post — I don’t think I agree with your first step here. Shifting the burden to the applicant would arise only if all the elements in the new invention are known, and are serving their known functions. (You begin your comment by saying “If at least one of the elements …” In my proposed framework, to use the analysis in Paragraph 3, it would need to be all the elements. If it were only some that were known, and others were unknown, one would kick over to Paragraph 4.)
But, putting that to one side, let’s take your example of Campbell’s RC filter circuit. You say that both resistor R and capacitor C are serving their known functions. That sounds, however, like an incomplete picture. The combination is serving a function that was not known — filtering — right? This suggests that my Paragraph 3 (and maybe even my Paragraph 4) needs tweaking to take better account of the fact that, consistent with section 103’s focus on the “subject matter as a whole,” the claimed combination may solve a problem that ordinary artisans would not have tried to solve with those component parts. Something for me to think about …
Perhaps its sufficient to add a third ground of rebuttal to the two I’ve already stated (express teaching away, and actual failures by others). What if the third ground of rebuttal were, the prior art solutions to the problem in question rely on fundamentally different structure/function relationships?
* * *
As I said, great comments!
Joe
Comment by Joe — July 6, 2006 @ 4:06 pm
Re 9:41. a) I forgot about In re Ochiai. b) My inclination is that the claim construction methodolgy would need some adjustment.
Re: 9:55. I did misstate this part of your test. What I was thinking is that the examiner needs to put forth evidence of the POSITA’s basic repertoire of tools and techniques and that evidence is found in the pertinent prior art. I was careless and grouped your “tools” category with the traditional prior art category, e.g., literature, patents, etc. It was not my intent to restate the current suggestion test. My question was how does this part of your test different from the current CAFC suggestion test? It seems to me that if the traditional prior art category is used, your test may be the same as the current suggestion test. But your test differs from the current test when the “tools” category is used. In other words, the Miller test expands the current suggestion test.
Maybe you discuss elsewhere, but I think your idea of using the “ordinary artisan’s ordinary creativity in the art . . . [as] a source for showing that an invention would have been obvious” needs to be fleshed out. What’s “ordinary”? Definitely more creative than the current POSITA, but how much more creative? How narrowly do you define the ordinary artisan? Anyone working in a general field or only those working on the leading edge of a specialized area of the general field? How do you define what tools can be placed in the “tools” category? Anything in an undergraduate text. Something published in a specialized journal at the Ph.D. level?
Re 3:06. a) It looks as if I again misstated your test. b) You are correct - the combination is serving a function that was not known. Additionally, I believe, but am not sure, that the elements are arranged in a manner not previously known. While Campbell’s filter is clearly part of the modern electrial engineer’s skill set (it’s in sophmore level text books), it wasn’t in the tool box in the early 1900’s. Campbell made the discovery around 1909 while working on another problem. He filed a patent application that was abandoned in 1913 “when the AT&T patent attorneys and the patent examiner failed to appreciate the novelty of the invnention.” Campbell published a paper on the theroy underlying his patent in 1922 in The Bell System Technical Journal. Campbell studied at MIT and Harvard, was a Ph.D., and later received various professional honors for his contributions to the field. K.W. Wagner independently developed a similar circuit in Germany around 1915. I inlcude these comments to stress that it seems to me that this the type of idea that should be eligible for patent protection under any test.
Comment by Rick Wilhelm — July 7, 2006 @ 9:22 am
[…] requirement back to a supernovelty requirement.] Filed under: Patent , Supreme Court Permalink | Trackback URL| […]
Pingback by The Fire of Genius » What does the PHOSITA invent? — August 28, 2006 @ 6:47 am
[…] date, the ordinary artisan’s creativity. Filed under: Patent , Supreme Court Permalink | Trackback URL| […]
Pingback by The Fire of Genius » The KSR Revolution (?) — April 30, 2007 @ 10:05 am
[…] In May 2006, I proposed that we use a presumption framework in analyzing nonobviousness. In my proposed framework, [a] If the pertinent prior art contains all the elements in the claim serving their prior art functions, the examiner should make an initial rejection of the claim. [b] At this point, the burden of production and persuasion would shift to the applicant to overcome the presumptive obviousness of the claim. [c] The only evidence the Patent Office should accept in rebuttal is clear proof that the prior art expressly taught away from making the combination in the claim under review, or that identifiable others had tried and failed to solve the problem the applicant has successfully solved. […]
Pingback by The Fire of Genius » A Presumption Framework for Nonobviousness — May 7, 2007 @ 8:28 am