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October 23, 2007

Invention Undermined

Bryan Zerhusen of McCarter & English opines that KSR & the new USPTO obviousness examination Guidelines ring a death knell for many constitutionally patentable inventions:

It is now apparent that in the view of the USPTO, KSR went much further than previously thought in eroding the certainty established by decades of Federal Circuit precedent. Taken together, KSR and the Guidelines result in an unfair system where the spirit of Article 1, Section 8, Clause 8 of the Constitution has been undermined. Furthermore, in some fields of art it seems as though only pioneering inventions are likely to be patentable.

To Zerhusen, the sought-after evisceration of patent protection by some mega-corporations has largely been accomplished, and may only be reversed by statutory reform in a vector opposite to the current trend.

While this result may bring a collective smile to the face of large, multinational corporations, it is repugnant to the true spirit of the Constitution because this system alienates small companies, start ups, and individuals that seek to build upon discrete but nonetheless novel improvements in the art. Take to the extreme, KSR and the Guidelines will operate as a disincentive to innovation and discovery in the United States unless legislation is enacted to codify and clarify the standard.

SCOTUS dicta that all prior art could be applied in combination for an obviousness assault on novelty is odious to Zerhusen.

[T]he court in KSR stated, in dicta, that "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 in a different one." 127 S. Ct. at 1740. Later, the court in KSR states that "the first error... in this case was... holding that courts and patent examiners should look only to the problem that the patentee was trying to solve." 82 USPQ2d at 1397.

To the extent the Supreme Court actually intended to overrule the previous standard in all situations, it was unnecessary, against years of Federal Circuit precedent (the court specifically established to adjudicate patent issues), and unfair for patent applicants as well as patent holders.

One must bear in mind the arrogant parochialism of the U.S. Supreme Court, practicing a form of judicial totalitarianism practiced elsewhere only in the most repressive political regimes, of ignoring all precedents except its own.

Zerhusen assails the overarching reach of combination as non-invention in KSR.

Nothing in the body of law pertaining to obviousness prior to KSR contravened the well established rule that the simple act of combining known elements with no change in their respective functions is unpatentable. This statement, however, as it apears in KSR and prior cases, is more aptly directed at situations where each element in the combination merely functions as a discrete component without inventive integration of function.

The court in KSR reaffirmed that a patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art. 127 S. Ct. at 1741. However, the court in KSR goes to deride inventions made in the "ordinary course." Id.

One can only surmise that this language is the death knell for simple, non-complex inventions; a result that is contrary to the spirit of the patent law, and detrimental to a free-market economy. Just because an invention is not pioneering should not mean, a priori, that it is unworthy of any protection under the Patent Laws. However, this is the course that the Guidelines now seem to direct.

Hindsight reasoning had always been a jurisprudence concern. No longer. Worry over hindsight got gibberish lip service from the Supreme Court in KSR.

As an apparent attempt to temper its holding, the court in KSR indicated that "it can be important to identify a reason that would have prompted a person in the relevant field to combine the elements in the way the claimed new invention does." Id.

However the court provides meaningless guidelines such as "design and market incentives," "any need or problem known in the field of endeavor at the time of the invention and addressed by the patent," and also suggests using "common sense." This is akin to instructing a jury in a criminal trial to "go with their gut" instead of requiring a finding of specific elements before convicting a defendant. As such, the court's suggestion is without any practical effect or utility, and invites inconsistency, unfairness, and uncertainty.

Liberated from worry about hindsight reasoning, the patent office now takes carte blanche to search and destroy applications by combining prior art bits from everywhere.

[T]he Guidelines... appear to have written out or overruled the long-standing requirement that a cited reference be from an analogous art. Analogous art has been defined as that which is from the same or related field of endeavor or reasonably pertains to the particular problem with which the applicant was concerned. See Wang Laboratories v. Toshiba, 993 F.2d 858 (Fed. Cir. 1993).. [A]rmed with the dicta in KSR, the Guidelines now enable examiners any field of art to find an applicant's claimed elements.

The Guidelines seize upon... language in KSR, paving the way for examiners to rely on generalities and speculation, instead of logic and factual evidence, to shift the burden of proving non-obviousness to the applicant. Even more troubling is that this type of analysis necessarily calls for the use of hindsight, and the application of the "obvious to try" standard as a valid justification for raising an obviousness rejection.

SCOTUS KSR practically encourages hindsight reasoning, and the Guidelines bear that mark of hindsight zeal.

In fact, the court in KSR goes as far as to suggest that there is nothing inherently wrong with using hindsight and the "obvious to try standard." In effect, the court uses this suggestion as a means of bootstrapping its earlier recommendation that references be used from any field of endeavor and the fact finder may provide a "reason" for making the claimed invention.

Not surprisingly, the Guidelines adopt, as advocated by the Supreme Court, a modification of the prohibition on the application of the "obvious to try" standard for determining obviousness. See In re Deuel, 51 F3d 1552, 1559 (Fed. Cir. 1995); Cf Guidelines p57529-32.

The Guidelines provide that the "obvious to try" standard is not improper if the invention yields a result which could have been predicted. As stated above, this type of analysis requires "hindsight reasoning" because a fact finder must first identify elements in the prior art, regardless of the field of endeavor, and piece the elements together, using the applicant's patent as a roadmap.

The new Guidelines give the examiners the ability to identify elements of the applicant's invention in any field of endeavor, combine them using the applicant's claims as a roadmap, and assert that it would have been obvious to combine because of general motivation to improve technologies in that field based on the simple existence of the need that the claimed invention addresses. This type of circular reasoning [is] contrary to decades of well established Federal Circuit law.

Zerhusen concludes that the Guidelines in light of KSR are unconstitutional in raising the bar to patentability so high.

If it difficult to conceive of a basic mechanical or electrical device that is not largely based on a combination of known elements. In addition, the predictability of those fields means that in nearly every instance the novel configuration of existing elements will give rise to an obviousness rejection because the result could have been predicted; even if the operation of the invention as a whole is new.

If one concludes that innovation largely occurs in discrete steps, the Guidelines and the decision in KSR have basically precluded the granting of a patent save pioneering technologies; i.e., those that claim subject matter that was previously thought or taught as being impossible, and/or where the function of the resulting combination could not have been predicted. As such, the Guidelines have picked up where KSR left off, and then used it to run roughshod over [the] spirit of Article I,s.8, cl. 8 of the Constitution.

Posted by Patent Hawk at October 23, 2007 9:33 PM | Prior Art


If the great Judge Rich were still alive today, this ruling would have killed him.

Posted by: john at October 23, 2007 10:39 PM

It seems to me that KSR has generalised the teaching-suggestion-motivation test to this for skilled workers:
1. Teaching them that all inventions are a combination of something, which is a combination of something else and so on. So now they know how to build any invention, given time and resources.
2. Suggesting to them that they try every possible combination of elements until they solve every problem the company wants them to.
3. Motivating them by telling them they are fired if they fail.

Posted by: MJC at October 24, 2007 12:19 AM

What is a "constitutionally patentable invention"?

Posted by: the unknown patent lawyer at October 24, 2007 10:38 AM

"Constitutionally patentable inventions" - Look what the unicorn drug in: poetic license. Constitution Article 1, Section 8, Clause 8: "To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries;" to the extent that statute and/or rules remove that right, that extent is unconstitutional.

Posted by: Patent Hawk at October 24, 2007 12:03 PM

How much more of this wailing and gnashing of teeth, till the US finally gets round to a serious look at EPO problem and solution approach. Importantly, over nearly 30 years now, and in thousands of oppositions at the EPO (full adversarial inter partes proceedings to kill the patent simultaneously in up to 32 countries) PSA has become unassailable, and accepted equally by both patent owners and opponents as a fair way to settle the obviousness issue objectively. No mean feat, that!! BUT, you have to understand PSA before you can appreciate its sublime elegance (and scrupulous exclusion of hindsight), and very few outside EPO circles have any useful understanding of PSA. That might be because no court sits on top of the EPO, so the EPO gets on with its business, and judges get on with theirs, and the judges have no inclination to get to grips with an approach operated in an "ivory tower" Patent Office, which they see as hopelessly artificial. However, PSA works.

Posted by: MaxDrei at October 24, 2007 11:37 PM

"Bryan Zerhusen of McCarter & English opines that KSR & the new USPTO obviousness examination Guidelines ring a death knell for many constitutionally patentable inventions:"

Unfortunately the Constitutuion is not what determines whether an invention is patentable - it is Congress.

Article 1 Section 8. The Congress shall have >>>power>>>power

Posted by: KIM at October 25, 2007 9:56 AM

The full text --

"Bryan Zerhusen of McCarter & English opines that KSR & the new USPTO obviousness examination Guidelines ring a death knell for many constitutionally patentable inventions:"

Unfortunately the Constitutuion is not what determines whether an invention is patentable - it is Congress.

Article 1 Section 8. The Congress shall have power; To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries;

Congress is not constitutionally required to exploit that power. Congress could limit or eliminate patents if it so desired. (Though due process of law and the takings clause would affect preexisting intellectual property). I don't think it would be a good idea but Congress has the power to do it.

Anyone who thinks that there is a constitutionally protected right to a patent is deluding themselves. The scope of patent protection is a political issue - that is why the power is given to Congress. Congress decides what in their opinion is the correct balance between invention and reward. The Courts interpret the laws that Congress makes.

If the Supreme Court got it wrong interpreting the patent law with KSR – and I think they did - Congress will have to fix it.

Posted by: KIM at October 25, 2007 10:01 AM

I wonder if Google's pagerank patent would still be valid under KSR. That would really cost them some money, it stops Yahoo and Microsoft from using it.

The section quoted below seems to make Pagerank obvious under KSR:



"Hyperlink Search Engine, developed by IDD Information Services, (http://rankdex.gari.com/) uses backlink information (i.e., information from pages that contain links to the current page) to assist in identifying relevant web documents. Rather than using the content of a document to determine relevance, the technique uses the anchor text of links to the document to characterize the relevance of a document. The idea of associating anchor text with the page the text points to was first implemented in the World Wide Web Worm (Oliver A. McBryan, GENVL and WWWW: Tools for Taming the Web, First International Conference on the World Wide Web, CERN, Geneva, May 25-27, 1994). The Hyperlink Search Engine has applied this idea to assist in determining document relevance in a search. In particular, search query terms are compared to a collection of anchor text descriptions that point to the page, rather than to a keyword index of the page content. A rank is then assigned to a document based on the degree to which the search terms match the anchor descriptions in its backlink documents.

The well known idea of citation counting is a simple method for determining the importance of a document by counting its number of citations, or backlinks. The citation rank r(A) of a document which has n backlink pages is simply


In the case of databases whose content is of relatively uniform quality and importance it is valid to assume that a highly cited document should be of greater interest than a document with only one or two citations. Many databases, however, have extreme variations in the quality and importance of documents. In these cases, citation ranking is overly simplistic. For example, citation ranking will give the same rank to a document that is cited once on an obscure page as to a similar document that is cited once on a well-known and highly respected page."

Posted by: MJC at October 26, 2007 7:51 PM