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July 28, 2007

KSR Strikes IBM

IBM appealed one of its patent applications for displaying cached web pages (2003/0101234). The appeals board (BPAI) decision, handed down yesterday, is illustrative of the power of hindsight in combining prior art references, and blithely filling uncovered gaps, as allowed by KSR.

The BPAI decision (BPAI 2007-1340) was non-precedential; it closely followed in form, and case law citation, the recent precedential trilogy of appeals.

Appellants' invention relates to a system and method for displaying Web pages on a Web browser. (Specification 1:18-19.) In particular, the invention provides cache status information about a document, such as a Web page, through a user interface when a user rolls a cursor over an address that points to the Web page. (Specification 1:20-22.) The invention allows the user to make an informed decision to either load the cached document, load only portions of the cached document, or load a completely new or "fresh" document. (Specification 1:22 to 2:1.)

IBM laid the groundwork for the application's demise by describing the problems it was solving. Explicit problem solving, once the hallmark of good patent writing, now draws a roadmap to apply a patchwork of prior art references for obviousness rejection. That there is an identified problem to solve provides the implicit motivation for an imaginary prior art phosita to have solved it; in perfect hindsight, of course.

The Specification explains that "one of the biggest problems currently on the Internet [is] lack of adequate bandwidth" and "the delay involved in retrieving . . . information [from the Internet] frustrates the user."

Two primary references, Acharya and Gong, were used for rejection, with Banga throw in for some of the narrower claims.

There were gaps in the prior art coverage, but not wide enough for patentability.

Acharya does not teach that the file selected by the user is a cached file and does not teach that the selected file that is transmitted to the user is a cached file. (FF 11.) In addition, Gong does not teach that the user may decide to retrieve a Web page partly from cache and partly from the originating network server. (FF 19.)

The mere existence of differences between the prior art and the claim does not establish nonobviousness. Dann v. Johnston, 425 U.S. 219, 230, 189 USPQ 257, 261 (1976). The issue is "whether the difference between the prior art and the subject matter in question 'is a difference sufficient to render the claimed subject matter unobvious to one skilled in the applicable art.'" Dann, 425 U.S. at 228-29, 189 USPQ at 261 (citation omitted)

Defensively describing what constitutes "one skilled in the art" simply has not been part of prosecution to date, nor did it occur to IBM patent attorneys a fruitful approach to cover that ground as leverage for overcoming rejection.

Apart from the references and their specification, the Appellants have not addressed the level of ordinary skill in the pertinent art.

Addressing "the level of ordinary skill in the pertinent art" may seem an argument worth constructing, but it's a tilt at a windmill. As evidenced by the recent CAFC Daiichi Sankyo ruling, under the KSR metric, an inventor is of "ordinary skill."

The BPAI likes the concept that a problem with a finite number of identifiable solutions is prima facie obvious; another way to cover explicit gaps in the prior art, and very hard to argue against in many technical fields.

We conclude that allowing a user to digitally point to selected designated portions of a cached document and loading only those designated portions of the cached document would have been obvious because it is a choice from a finite number of identified, predictable solutions to the problem of latency. "When there is a design need or market pressure 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." KSR, 127 S. Ct. at 1742, 82 USPQ2d at 1397.

Variations on a theme are also obvious. Many inventions in computer-related fields can be shoehorned into a variation boot.

As a further alternative, we conclude the claimed subject matter would have been obvious because design incentives to solve the problem of latency would have prompted a predictable variation in the prior art system of Gong to apply the known principle of giving control to the user, disclosed in Acharya, in order to allow a user to digitally point to selected designated portions of a cached document and load only those designated portions of the cached document. "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, ยง103 likely bars its patentability." KSR, 127 S. Ct. at 1740, 82 USPQ2d at 1396.

All of IBM's claims in this application were wiped out.


Earlier this month, one of Patent Hawk's applications suffered a four-way obviousness hit, on considerably narrower claims than those granted in the same family four years ago. The rejection was economical, with just enough sketch of knitting to make the gaps and gangbang plausible beyond assail under the current obviousness regime. Knowing with foresight the futility of appeal facing KSR-empowered hindsight, the application was expressly abandoned.

Posted by Patent Hawk at July 28, 2007 4:14 PM | Prosecution


Interesting to observe the vicious swing of the pendulum, of common law binding precedent, with the absence of swinging pendulums in the civil law world of EPO oppositions, where the Boards of Appeal (by now 24 of them) free of precedent binding on them, and helped by the consistent application of the Problem and Solution Approach, have been handing down thousands of hindsight-free obviousness decisions over the last 25 years. The justification for binding precedent is that it delivers legal certainty. Strikes me the pendulum swing is doing more harm than any lack of legal certainty at the EPO.

Posted by: MaxDrei at July 29, 2007 1:34 PM