Nonobviousness at the Board
There are already 31 BPAI opinions applying KSR to appeals from Examiners’ obviousness rejections. I list them on my post-KSR resource page.
The following passage from KSR appears to be a Board favorite: “As our precedents make clear, however, the 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.”
Mere course correction? No … sea change.
As I stated on the Duke Law School IP blawg – I believe that the decisions of patent examiners should be at the abuse of discretion standard – otherwise we risk setting aside well established standard everyday practices. Look what happened with how abstracts would be treated in the eyes of the law. The law is about predictability – so how can we have faith in a system where everything is at whimsy of those with the resources to litigate. Turn our backs on the Small American Business and we may as well join the CCP
Comment by blog2.zingip.com — May 26, 2007 @ 5:53 pm
All patents are evil — period.
krp
Comment by krp — May 30, 2007 @ 8:07 pm
JSM,
You & I are probably in a minority given that most attorneys and legal scholars do not read the latest BOPAI decisions to see how the USPTO is actually dealing after KSR. Who after all needs to be confused by the facts? All too many of the attorneys I speak to still believe that KSR is a mere hiccup and business will continue as usual, no big change. They don’t understand how the tale the Examiner spins about PHOSITA becomes indisputable “fact” under the substantial evidence rule. See IN RE JED MARGOLIN.
Comment by step back — June 16, 2007 @ 6:13 am
Not a sea change. The Board and others are simply expressing the state of the law which now includes KSR. The Obviousness standard always relied on what was “generally available to one of ordinary skill in the art.” (You can see it quoted in the MPEP: “First, there must be some suggestion or motivation, either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. . . . In re Vaeck, 947 F.2d 488, 20 USPQ2d 1438 (Fed. Cir. 1991). ”
I have never read any opinion that stated obviousness required that the references provide some explicit teaching. I would be interested if you could show me such a case.
Comment by len — June 24, 2007 @ 9:36 pm
Len,
How can you sit there so calmly on the beach while the KSR tsunami rushes in at you?
Prior to KSR, the law required “evidence” of something existing in the prior art that provides TS or M (TSM) for the actions by PHOSITA that a challenger proposes.
In KSR the Supremes removed the requirement for “evidence”. One no longer needs “evidence” of TSM. One can wave a hand and mutter the magic words: “common sense”. One can wave a finger and flip off the magic words: “ordinary creativity”. Before KSR you would have been laughed out of the courtroom for such evidence-lacking tactics. After KSR, the boot has been kicked over to the other side, to require the inventor to prove a negative, namely, that it is not “common sense” or “ordinary creativity” or mere combination of “familiar elements” operating according to their predictable functions. Stand up and smell the ocean.
It is a sea change. Start running for higher ground.
Comment by step back — June 29, 2007 @ 9:03 am
Please give me a prompt about a direct phone numbers provider with the bigest country coverage and cheap call forwarding to mobile phone which gives 800 number? I have to get the numbers in the Argentina, Great Britain, Germany, India, China, Korea, Norway, Peru, Philippines, France, Salvador.
?
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