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July 18, 2007

Chilling Invention at the PTO

A trilogy of recent precedential decisions by the USPTO Board of Appeals and Interferences (BPAI) demonstrates the extent to the which the Supreme Court KSR obviousness decision raised the bar to patentability, providing patent examiners ready harpoons to puncture claimed inventions with aplomb.

Carolyn Catan appealed a claimed "consumer electronics device using bioauthentication to authorize sub-users of an authorized credit account to place orders over a communication network up to a pre-set maximum subcredit limit." (BPAI 2007-0820)

Mary Smith appealed a claimed "pocket insert for a bound book, which includes at least one pocket adapted to receive and retain supplemental material that cannot easily be bound directly to the book binding, such as a diskette or CD-ROM."  (BPAI 2007-1925)

Marek Kubin appealed a claimed specific "isolated nucleic acid molecule comprising a polynucleotide encoding a polypeptide." (BPAI 2007-0819).

All three claimed inventions were downed by obviousness using a combination of prior art references.

Here is the evolved patent office post-KSR boilerplate setup to have 35 U.S.C. § 103(a) serve as undertaker to a patent application. [Most of the language common to all three appeal decisions; below includes all of the preamble language used in all three. Underlining by the author; italics in the original.] Expect to see all or a goodly portion of what's below in your office action rejection in the near future.

“Section 103 forbids issuance of a patent when ‘the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 127 S.Ct. 1727, 1734, 82 USPQ2d 1385, 1391 (2007). The question of obviousness is resolved on the basis of underlying factual determinations including (1) the scope and content of the prior art, (2) any differences between the claimed subject matter and the prior art, (3) the level of skill in the art, and (4) where in evidence, so-called secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18, 148 USPQ 459, 467 (1966). See also KSR, 127 S.Ct. at 1734, 82 USPQ2d at 1391 (“While the sequence of these questions might be reordered in any particular case, the [Graham] factors continue to define the inquiry that controls.”) The Court in Graham further noted that evidence of secondary considerations, such as commercial success, long felt but unsolved needs, failure of others, etc., “might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented.” 383 U.S. at 18, 148 USPQ at 467.

In KSR, the Supreme Court emphasized “the need for caution in granting a patent based on the combination of elements found in the prior art,” id. at 1739, 82 USPQ2d at 1395, and discussed circumstances in which a patent might be determined to be obvious without an explicit application of the teaching, suggestion, motivation test. In particular, the Supreme Court emphasized that “the principles laid down in Graham reaffirmed the ‘functional approach’ of Hotchkiss, 11 How. 248.” KSR, 127 S.Ct. at 1739, 82 USPQ2d at 1395 (citing Graham v. John Deere Co., 383 U.S. 1, 12 (1966) (emphasis added)), and reaffirmed principles based on its precedent that “[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” Id. The Court explained:

When a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one. If a person of ordinary skill can implement a predictable variation, §103 likely bars its patentability. For the same reason, if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.

Id. at 1740, 82 USPQ2d at 1396. The operative question in this “functional approach” is thus “whether the improvement is more than the predictable use of prior art elements according to their established functions.” Id.

The Supreme Court stated that there are “[t]hree cases decided after Graham [that] illustrate this doctrine.” Id. at 1739, 82 USPQ2d at 1395. “In United States v. Adams, … [t]he Court recognized that when a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result.” Id. at 1739-40, 82 USPQ2d at 1395. “Sakraida and Anderson’s-Black Rock are illustrative – a court must ask whether the improvement is more that the predictable use of prior art elements according to their established function.” Id. at 1740, 82 USPQ2d at 1395.

The Supreme Court’s opinion in United States v. Adams, 383 U.S. 39, 40, 148 USPQ 479, 480 (1966) is illustrative of the “functional approach” to be taken in cases where the claimed invention is a prior art structure altered by substituting one element in the structure for another known element. KSR, 127 S.Ct. at 1734, 82 USPQ2d at 1391. “The Court [in Adams] recognized that when a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result. 383 U.S., at 50-51.” Id. Ultimately the Adams Court found the combination at issue not obvious to those skilled in the art because, although the elements were known in the prior art, they worked together in an unexpected manner.

The [Adams] Court relied upon the corollary principle that when the prior art teaches away from combining certain known elements, discovery of a successful means of combining them is more likely to be nonobvious. Id., at 51-52, 86 S.Ct. 708. When Adams designed his battery, the prior art warned that risks were involved in using the types of electrodes he employed. The fact that the elements worked together in an unexpected and fruitful manner supported the conclusion that Adams’s design was not obvious to those skilled in the art.

KSR, 127 S.Ct. at 1740, 82 USPQ2d at 1395 (emphasis added).

The Supreme Court stated that “[f]ollowing these principles may be more difficult in other cases than it is here because the claimed subject matter may involve more than the simple substitution of one known element for another or the mere application of a known technique to a piece of prior art ready for the improvement.” Id. The Court explained, “[o]ften, it will be necessary for a court to look to interrelated teachings of multiple patents; the effects of demands known to the design community or present in the marketplace; and the background knowledge possessed by a person having ordinary skill in the art, all in order to determine whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.” Id. at 1740-41, 82 USPQ2d at 1396. The Court noted that “[t]o facilitate review, this analysis should be made explicit.” Id., citing In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”). 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.” Id.

The Federal Circuit recently concluded that it would have been obvious to combine (1) a mechanical device for actuating a phonograph to play back sounds associated with a letter in a word on a puzzle piece with (2) an electronic, processor-driven device capable of playing the sound associated with a first letter of a word in a book. Leapfrog Ent., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1161, 82 USPQ2d 1687, 1690-91 (Fed. Cir. 2007) (“[a]ccommodating a prior art mechanical device that accomplishes [a desired] goal to modern electronics would have been reasonably obvious to one of ordinary skill in designing children’s learning devices”). In reaching that conclusion, the Federal Circuit recognized that “[a]n obviousness determination is not the result of a rigid formula disassociated from the consideration of the facts of a case. Indeed, the common sense of those skilled in the art demonstrates why some combinations would have been obvious where others would not.” Id. at 1161, 82 USPQ2d at 1687 (citing KSR, 127 S.Ct. 1727, 1739, 82 USPQ2d 1385, 1395 (2007) (“The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.”). The Federal Circuit relied in part on the fact that Leapfrog had presented no evidence that the inclusion of a reader in the combined device was “uniquely challenging or difficult for one of ordinary skill in the art” or “represented an unobvious step over the prior art.” Id. (citing KSR, 127 S.Ct. at 1740-41, 82 USPQ2d at 1396).

The person of ordinary skill in the art is a hypothetical person who is presumed to know the relevant prior art. Custom Accessories, Inc. v. Jeffrey- Allan Indus., Inc., 807 F.2d 955, 962, 1 USPQ2d 1196, 1201 (Fed. Cir. 1986). In determining this skill level, the court may consider various factors including “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” Id. (cited in In re GPAC, 57 F.3d 1573, 1579, 35 USPQ2d 1116, 1121 (Fed. Cir. 1995)). In a given case, every factor may not be present, and one or more factors may predominate. Id. at 962-63, 1 USPQ2d at 1201.

Catan's combination of biometric authenticator with credit grantor device was found obvious as a merely updated substitution. Any claimed combination itself now provides the motivation to combine any number of prior art references. Gaps between the prior art and the claimed invention are easily dismissed as obvious in light of perfect hindsight.

The claim is to a structure already known in the prior art that is altered by the mere substitution of one known element for another element known in the field for the same function. The facts themselves show that there is no difference between the claimed subject matter and the prior art but for the combination itself. “[T]he mere existence of differences between the prior art and an invention does not establish the invention's nonobviousness. The gap between the prior art and respondent's system is simply not so great as to render the system nonobvious to one reasonably skilled in the art.” Dann v. Johnston, 425 U.S. 219, 230, 189 USPQ 257, 261 (1976) (holding that claims directed to a machine system for automatic record keeping of bank checks and deposits were obvious in view of the use of data processing equipment and computer programs in the banking industry at the time of the invention in combination with a prior art automatic data processing system using a programmed digital computer for use in a large business organization).

Smith's claimed book pocket was a predictable combination in hindsight. Absent the unlikely explicit teaching away from a claimed combination by the prior art references used, silence by the prior art along with "ordinary creativity" in hindsight reasoning fits together disparate prior art references "like pieces of a puzzle." An applicant must now convincingly argue that a combination "would have been beyond the skill of one of skill in the art."

The question is whether one of ordinary skill in the art starting with Wyant’s two-ply pocket would have found it obvious at the time the invention was made to modify Wyant's pocket insert to include a continuous two-ply seam as taught by Dick for providing a more secure pocket. In considering the teaching of Wyant and Dick, we have found that (1) each of the claimed elements is found within the scope and content of the prior art; (2) one of ordinary skill in the art could have combined the elements as claimed by methods known at the time the invention was made; and (3) one of ordinary skill in the art would have recognized at the time the invention was made that the capabilities or functions of the combination were predictable.

In particular, Appellant argues that Wyant and Dick teach away from each other because combining Dick with Wyant would render Wyant inoperable for its primary purpose—namely providing tabs that selectively can be folded outward of the edge of the card (Substitute Br. 11). The Examiner correctly found that if the base sheet and pocket sheet were attached along the perimeter edge as disclosed in Dick, it would still be possible to fold back the tabs of Wyant near its attached perimeter edge (Answer 6). Appellant argues that the only way the tabs of Wyant can be formed is by forming the tab yielding sheet and the base sheet from a single piece of material to form a folded line (Substitute Br. 11). Although this method is consistent with an embodiment disclosed in Wyant, there is nothing in Wyant that requires or suggests that this is the only way to attach tabs that can be selectively folded outward, much less to teach away from the use of a pocket constructed on one side surface of a base sheet, the element for which the Examiner relies on Dick (Answer 5). Where, as here, art is silent on the capabilities or function of any particular item, that is not teaching away from its use. Further, the Court in KSR noted that “[a] person of ordinary skill is also a person of ordinary creativity, not an automaton.” 127 S.Ct. at 1742, 82 USPQ2d at 1397. It would take no more than ordinary creativity for a person of ordinary skill to adapt Wyant to form tabs with the base sheet and pocket sheet attached along the perimeter edge as disclosed in Dick. As noted by KSR:

Common sense teaches, however, that familiar items may have obvious uses beyond their primary purposes, and in many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle.

KSR, 127 S.Ct. at 1742, 82 USPQ2d at 1397.

Because Appellant has not shown that the application of the Ruebens technique to the combination of Wyant and Dick would have been beyond the skill of one of skill in the art, we find using the technique would have been obvious.

Hal Wegner comments on the Kubin case:

Kubin is highly significant in two critical areas of biotechnology patent law. The opinion –

(a) repudiates Deuel, keyed to language taken from the Supreme Court KSR decision as well as the Federal Circuit Kahn opinion that preceded KSR; and

(b) adopts the controversial Enzo line of “written description” biotechnology case law as the position of the PTO Board (p. 15).

[ Note: the written description issue is not covered here, to focus on the obviousness issue.]

Most everything is obvious to try, and a need for explicit motivation to combine references as obvious is passé. Any problem that the invention solved now provides the motivation to combine prior art references. The BPAI on Kubin's claimed polynucleotide -

We frame the § 103(a) issue: Would Appellants’ claimed nucleotide sequence have been obvious to one of ordinary skill in the art, based on Valiante’s disclosure... and his express teachings how to isolate its cDNA by conventional techniques?

Regardless of some factual similarities between Deuel and this case, Deuel is not controlling and thus does not stand in the way of our conclusion, given the increased level of skill in the art and the factual differences. See In re Wallach, 378 F.3d 1330, 1334, 71 USPQ2d 1939, 1942 (Fed. Cir. 2004) (“state of the art has developed [since] In re Deuel”).

 A single, obvious species within a claimed genus renders the claimed genus unpatentable under § 103.

Appellants heavily rely on Deuel. (See, e.g., Br. 19.) To the extent Deuel is considered relevant to this case, we note the Supreme Court recently cast doubt on the viability of Deuel to the extent the Federal Circuit rejected an “obvious to try” test. See KSR Int’l Co. v. Teleflex Inc., 127 S.Ct. 1727, ___, 82 USPQ2d 1385, 1394, 1396 (2007) (citing Deuel, 51 F.3d at 1559). Under KSR, it’s now apparent “obvious to try” may be an appropriate test in more situations than we previously contemplated.

When there is motivation

to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to anticipated success, it is likely the product not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under § 103.

KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727, ___, 82 USPQ2d 1385, 1397 (2007). This reasoning is applicable here. The “problem” facing those in the art was to isolate NAIL cDNA, and there were a limited number of methodologies available to do so. The skilled artisan would have had reason to try these methodologies with the reasonable expectation that at least one would be successful. Thus, isolating NAIL cDNA was “the product not of innovation but of ordinary skill and common sense,” leading us to conclude NAIL cDNA is not patentable as it would have been obvious to isolate it.

Appellants also argue lack of motivation to combine the cited references. (Br. 20-22; Reply Br. 19-21.) Motivation to combine references “may be found in implicit factors, such as ‘knowledge of one of ordinary skill in the art, and [what] the nature of the problem to be solved as a whole would have suggested to those of ordinary skill in the art’.” Alza Corp. v. Mylan Labs., 464 F.3d 1286, 1291, 80 USPQ2d 1001, 1004 (Fed. Cir. 2006) (quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1337 (Fed. Cir. 2006)). See also KSR, 127 S. Ct. at ___, 82 USPQ2d at 1396 (citing with approval In re Kahn, 441 F.3d at 988, 78 USPQ2d at 1336).

There is one sentence in the KSR ruling that can only be uttered with laughable irony as a dinosaur of caution against hindsight run amok.

A factfinder should be aware, of course, of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning.

The above three cases are not necessarily claimed inventions that would have passed muster prior to KSR, but the blanket of obviousness has been greatly enlarged, as evidenced by the BPAI boilerplate.

Surely those who will profit from lack of patent protection must be delighted, as "obviousness" now acts as a specter to smother invention. If you did not think KSR would usher into this country a dark age for patents, reconsider. The economic repercussions are going to be titanic in years to come.

Posted by Patent Hawk at July 18, 2007 10:45 PM | Prosecution

Comments

Haven't seen the book pocket, but why was 103 necessary - I think there's got to be a 102 rejection there. I've seen books with pockets to hold additional materials, e.g. fold-out maps or charts.

Posted by: DJF at July 29, 2007 4:05 AM