Comments on: Nonobviousness at the Board http://www.thefireofgenius.com/2007/05/25/nonobviousness-at-the-board/ Academic commentary about patent law, i.p. law, creativity, and more Mon, 13 Oct 2008 22:28:08 +0000 http://wordpress.org/?v=2.5 By: step back http://www.thefireofgenius.com/2007/05/25/nonobviousness-at-the-board/#comment-70148 step back Fri, 29 Jun 2007 16:03:53 +0000 http://www.thefireofgenius.com/2007/05/25/nonobviousness-at-the-board/#comment-70148 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. 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.

]]> By: len http://www.thefireofgenius.com/2007/05/25/nonobviousness-at-the-board/#comment-67642 len Mon, 25 Jun 2007 04:36:43 +0000 http://www.thefireofgenius.com/2007/05/25/nonobviousness-at-the-board/#comment-67642 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. 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.

]]> By: step back http://www.thefireofgenius.com/2007/05/25/nonobviousness-at-the-board/#comment-62359 step back Sat, 16 Jun 2007 13:13:48 +0000 http://www.thefireofgenius.com/2007/05/25/nonobviousness-at-the-board/#comment-62359 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 <a href="http://www.fedcir.gov/opinions/07-1056.pdf" rel="nofollow">IN RE JED MARGOLIN.</a> 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.

]]> By: krp http://www.thefireofgenius.com/2007/05/25/nonobviousness-at-the-board/#comment-57801 krp Thu, 31 May 2007 03:07:25 +0000 http://www.thefireofgenius.com/2007/05/25/nonobviousness-at-the-board/#comment-57801 All patents are evil -- period. krp All patents are evil — period.

krp

]]> By: blog2.zingip.com http://www.thefireofgenius.com/2007/05/25/nonobviousness-at-the-board/#comment-57006 blog2.zingip.com Sun, 27 May 2007 00:53:41 +0000 http://www.thefireofgenius.com/2007/05/25/nonobviousness-at-the-board/#comment-57006 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 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

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