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October 10, 2007

The Obvious Guide

The USPTO published its examination guidelines for determining obviousness in light of the SCOTUS KSR v. Teleflex ruling.

From the patent office announcement:

“The Guidelines stress that the familiar factual inquiries announced by the Supreme Court in its much earlier decision, Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), remain the basis for every decision regarding obviousness,” noted Commissioner for Patents John Doll. “That is, patent examiners will continue to consider (1) the scope and content of the prior art, (2) the differences between the claimed invention and the prior art, (3) the level of ordinary skill in the pertinent art, and (4) objective evidence relevant to the issue of obviousness.”

Continuing from the announcement:

The Guidelines also note that patent examiners must continue to explain the reasoning that leads to a legal conclusion of obviousness when rejecting claims on that ground. The reasoning may still include the established Court of Appeals for the Federal Circuit standard that a claimed invention may be obvious if the examiner identifies a prior art teaching, suggestion, or motivation (TSM) to make it. However, in keeping with the KSR decision, the Guidelines explain that there is no requirement that patent examiners use the TSM approach in order to make a proper obviousness rejection. Furthermore, the Guidelines point out that even if the TSM approach cannot be applied to a claimed invention, that invention may still be found obvious.

The antecedent case law basis for KSR as summarized by the patent agency:

The Supreme Court stated that there are ‘‘[t]hree cases decided after Graham [that] illustrate this doctrine.’’ (1) ‘‘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.’’ (2) ‘‘In Anderson’s-Black Rock, Inc. v. Pavement Salvage Co.,... [t]he two [pre-existing elements] in combination did no more than they would in separate, sequential operation.’’ (3) ‘‘[I]n Sakraida v. AG Pro, Inc., the Court derived... the conclusion that when a patent simply arranges old elements with each performing the same function it had been known to perform and yields no more than one would expect from such an arrangement, the combination is obvious.’’

From KSR:

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, 35 U.S.C. 103 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.

When considering obviousness of a combination of known elements, the operative question is thus ‘‘whether the improvement is more than the predictable use of prior art elements according to their established functions.’’

The extra-legal aspect of KSR was redefining statutory "ordinary skill in the art" to a creative, omnificent researcher equal to any inventor. In the guidelines section on "resolving" the level of ordinary skill, again quoting KSR:

‘‘A person of ordinary skill in the art is also a person of ordinary creativity, not an automaton.’’ ‘‘[I]n many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle.’’ Office personnel may also take into account ‘‘the inferences and creative steps that a person of ordinary skill in the art would employ.’’ In addition to the factors above, Office personnel may rely on their own technical expertise to describe the knowledge and skills of a person of ordinary skill in the art.

Decades of judicial precedent in being circumspect of hindsight reasoning evaporated with KSR: if it seems obvious in hindsight, it was.

The meat of the guidelines is in the "Rationales To Support Rejections Under 35 U.S.C. 103":

Prior art is not limited just to the references being applied, but includes the understanding of one of ordinary skill in the art. The prior art reference (or references when combined) need not teach or suggest all the claim limitations; however, Office personnel must explain why the difference(s) between the prior art and the claimed invention would have been obvious to one of ordinary skill in the art. The ‘‘mere existence of differences between the prior art and an invention does not establish the invention’s nonobviousness.’’... Factors other than the disclosures of the cited prior art may provide a basis for concluding that it would have been obvious to one of ordinary skill in the art to bridge the gap. The rationales discussed below outline reasoning that may be applied to find obviousness in such cases... Other rationales to support a conclusion of obviousness may be relied upon by Office personnel.

(A) Combining prior art elements according to known methods to yield predictable results;
(B) Simple substitution of one known element for another to obtain predictable results;
(C) Use of known technique to improve similar devices (methods, or products) in the same way;
(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
(E) ‘‘Obvious to try’’—choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations would have been predictable to one of ordinary skill in the art;
(G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention.

Each rationale is detailed in the Federal Register publication of the guidelines.

Applicant's only resort is retort to an examiner miss on the facts:

If an applicant disagrees with any factual findings by the Office, an effective traverse of a rejection based wholly or partially on such findings must include a reasoned statement explaining why the applicant believes the Office has erred substantively as to the factual findings.

--

Hal Wegner pointed out the problem with having a problem. (Thanks Hal.)

Any "problem" that is identified in the patent application can lead to an Examiner then saying that the road to solution of that problem is obvious. There are numerous references in the KSR Guidelines to the "problem" and how this can lead to an obviousness determination. Manifestly, there will be many if not most situations where the drafting of the application without consideration of artificially generated "problems" may represent the best practice.

Posted by Patent Hawk at October 10, 2007 12:33 PM | Prior Art

Comments

Maybe there might need to be a jury with those of ordinary skill at some point. One might get a group of workers, show them the problem to be solved and see if they can work out a solution similar to the invention. Then show them the invention and ask them if they would have thought of it. Instead then of trying to prove an invention is non obvious with experts, get non experts to testify.
This could even become a new kind of industry or service for inventors. Employ skilled workers of many different fields as consultants, to give their opinion on various inventions. For example in the field of software one might have 100 average programmers give their opinion on whether a patent is non obvious or not, and whether they might have thought of the invention. They might be selected on the basis that they have no patents themselves or have worked on patents for their employers.
So instead of trying to define what an average worker in the art is, one proves what they in fact are in relation to the invention. One might even have them give an opinion that the KSR decision is not a correct definition of their abilities.

Posted by: MJC at October 10, 2007 8:40 PM

MJC,
Interesting idea in theory but would be extremely hard to implement and is too subjective. The consultants (hired by the alleged infringer) would need to make sure that the solution is not known (remember, the patent has been previously published). How much time and resources do you give them?

I don't quite understand Hal Wegner's point. You have to present the problem, otherwise you're trying to sneak the invention past the PTO. The Examiner needs to figure out the need for your invention to attempt to solve it through prior art. If he or she doesn't know what they are trying to solve they will likely do a poor search and a poor job examining. If it really deserves a patent than why not make sure the Examiner knows what the invention has solved? Otherwise someone with more money will figure it all out during an invalidity defense.

Posted by: Oneohthree at October 11, 2007 3:11 PM

Hi Oneohthree,
The situation is currently subjective anyway from the KSR decision. Now it seems that if an invention appears obvious in hindsight then it is. So using average skilled workers to testify otherwise is balancing the scales in the opposite direction, saying the invention is not obvious in hindsight, then the jury or judge decides.
The current problem is the average skilled worker is being defined by inventors and examiners on what he is not. It's like defining a pedigree dog on not being a mongrel. Unless you try and define what a mongrel is, i.e. mixed parentage, then the term pedigree is vague. In animal breeding they define why an animal is not a pedigree by looking at those that are not and their characteristics.
But this doesn't happen at all in patent law. No one seems to actually get average skilled workers and test their creative abilities, set them problems to solve, and see what they come up with. Also no one looks at the inventive record of average workers to see what they have done in the past as part of their work. It's assumed that an inventor makes an inventive leap to being someone quite different from the average worker and thus there is no clear dividing line between the two.
So one might be able to overcome this by showing average skilled workers a problem, and then when they fail or succeed show them various patented solutions and ask them their expert opinions. If this is done under oath one gets something to present in a court case.
If a patent is published one can ask the average workers if they have heard of the problem and the patent under oath. Some of course might lie about this, but this problem is not different from jurors and other experts lying under oath.
Many patent court cases can win or lose millions in damages. So it is likely cheaper to get a large sample of average workers in a field, give them the problem the patent solves, get them to state whether they have seen the patent before, see if they solve it, and put them under oath. This should be strong evidence to support a patent.
Also compare this to the other side, which is often just an examiner thinking something is obvious in hindsight. The examiner is saying what the average skilled worker could do, here the average skilled workers are themselves testifying on what they can do. Who is more likely to be right?

Posted by: MJC at October 11, 2007 4:31 PM

MJC, I have the suspicion that you don't know how an English patent litigation trial runs, and what evidence is of decisive importance in that forum. It would seem to address your concerns. Key is the cross-examination of the opposed technical experts, before a single judge, who had a technical education at university, then 20 years as a patent litigator, before stepping up to be a judge. His patience is not inexhaustible. No jury. There aren't that many trials (95% settle in the run up) because only 50:50 cases go to trial and the loser pays. Myself, I would like to see USA litigate patents like England does. But, as that's not possible, it's a puzzle how USA can move forward.

Posted by: MaxDrei at October 11, 2007 11:38 PM

I am thinking more of the US system and the KSR decision. Patenthawk said that 80% of issued patents in some fields might now be invalid because of this decision. So those patent owners might have a defense to obviousness by using testimony by average skilled workers that they would not have thought of those patents.
I wonder what would happen in court if average skilled workers were witnesses, saying they could not do what KSR said they could do. For example:

(A) Combining prior art elements according to known methods to yield predictable results;
(B) Simple substitution of one known element for another to obtain predictable results;
(C) Use of known technique to improve similar devices (methods, or products) in the same way;
(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
(E) ‘‘Obvious to try’’—choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations would have been predictable to one of ordinary skill in the art;

In a patent case the average skilled workers might say they would not have been able to think of the invention even if (a)-(f) above applied to it. If (a) - (f) rely on a belief of what the average skilled worker can do, and he cannot do these things, then the invention should not be obvious. The Supremes would have erred because their definition of the average skilled worker was at odds with reality.
So I thought someone might use this as a defense for obviousness after KSR, maybe even appeal to the Supremes. I'm just an inventor though.

Posted by: MJC at October 12, 2007 1:24 AM