May 30, 2006
In Teleflex v. KSR, the U.S. Solicitor General (SG) filed a vacuous brief in support of patent examiners and judges deciding a patent's validity on whim, with no supportive evidence.
The Federal Circuit’s test creates a substantial obstacle to showing that a claimed invention that simply combines known features without substantial innovation would have been obvious, because the test requires the party challenging the patent to come forward with affirmative evidence in the prior art of a teaching, suggestion, or motivation to combine the features. See, e.g., In re Kotzab, 217 F.3d 1365, 1370-1371 (Fed. Cir. 2000); Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1348-1349 (Fed. Cir. 2000); In re Rouffet, 149 F.3d 1350, 1357 (Fed. Cir. 1998). That showing may be difficult or impossible even though the combination, on its face, would have been obvious. For example, such affirmative evidence may be lacking if the claim arose in a newly emerging technical field or if the combination was so obvious to persons skilled in the art that no one would have had need or incentive to record the trivial extension of the art.
The Solicitor General seems to know nothing of prior art: there is so much of it that the problem is most often picking the best story art, most easily understood and clearly elucidated, not that it doesn't exist. Using novel combinations in a newly emerging technical field is a prime example of patentability, but practitioners in every emerging technology take pride in being visionary about the possibilities, combinations and permutations that might work, particularly evidenced in academic articles, and that shoots down a lot of what otherwise might have been considered patentable. "Trivial extensions" are easily shot down through affirmative evidence, and seldom turn into a patent anyway, as examiners usually nail those, even if the evidence is a bit thin, and the patent appeals board drives the nails into the coffin of such an application if appealed. Prior art patents with decent backgrounds, and books, are typically the best source for invalidating trivial patents.
Keep in mind the flimsy nature of KSR's position, and hence the inappropriateness of the Supreme Court taking this case. The district court granted summary judgment of invalidity based on obviousness. Teleflex appealed, arguing summary judgment was inappropriate because facts were at the heart of the dispute. The CAFC agreed, citing the basis for establishing fact, namely (surprise!) evidence, and remanded. KSR appealed up to the Supreme Court, before the district court had another shot.
As a coda of agreement to Patent Hawk's position, Dennis Crouch hit the nail on the head:
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? A patent attorney e-mailed his fear that a less formal test will give examiner’s permission to make the dreaded “because I say so” conclusory argument.
Posted by Patent Hawk at May 30, 2006 9:07 PM | Prior Art
I am a patent attorney and was a primary examiner in group 2800 for 8 years. Based on my experiences, the Solicitor has a point.
Many times, I was confronted with an invention that I considered to be obvious on its face, but had an extremely difficult time finding evidence of obviousness. The difficulty is usually not finding prior art, but finding the motivation for the combination. In one instance, the Board told me that it was not obvious to put heat dissipating fins on a heat sink, because I did not provide an adequate motivational statement.
The problem is not necessarily the standard, but rather the way the PTO chooses to interpret that standard. They have placed the "letter of the law" ahead of "spirit of the law." Because of this, examiners are issuing cases with good art, soley because they lack a motivational statement.
Posted by: Mike Brooke at June 1, 2006 4:58 AM
Over at www.thefireofgenius.com, I offer a new way to analyze whether an invention would have been obvious or not. It's in a post from May 30, called "Toward a new nonobviousness analysis." I think you will find that it deals well with the scenario that Mike Brooke describes in the comment above.
Posted by: Joe Miller at June 1, 2006 1:18 PM