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.

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?

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As I said, great comments!

Joe

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?

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?

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?

I like that question! It’s a practical way to focus a client’s mind on the rigors of the nonobviousness standard.

Joe