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October 20, 2007

Thinning the Patent Thicket

Thanks to KSR, the bar of §103(a) is set obscenely high for patent prosecution. Examiner rejections on obviousness, regularly combining three and four references to cover all the claim limitations, reek of hindsight, and are pasted with the thinnest of glue: e.g. "it would have been obvious to one of ordinary skill in the art at the time of invention to combine four patentably distinct references of unrelated subject matter because it would have been advantageous, as the applicant claimed."

Posted by Patent Hawk at October 20, 2007 3:25 PM | Prosecution


As I mention in a previous comment, KSR is illogical because of "infinite descent":


This is a mathematical proof but it also applies to logic. I don't think though it might be used that way in logic as taught, but it is true nonetheless.

Suppose you have something which may be true or false which is based on axioms, or other things previously proven. A contradiction in logic is well known to most people but Fermat saw something else here. If A for example is proven by B and C, and then B is proven by D and E, and E proven by F and G, etc at some point you have to get to something which is proven by another method or the chain of proof (like Aristotle said) is endless and there is nothing in it that is actually proven.

KSR is like this because it is passing the buck to prior art and previous inventions, and then saying that combining that would be obvious given the motivation of a creative person.

But one can go down the chain of inventions as described and say that at each point, that each was obvious because of the prior art before it, and so on without end until you have the caveman making the wheel. So this is called infinite descent because there is no actual logical basis or axiom for it, but to refer endlessly to an earlier situation.

Fermat used this by saying that integers could not have the property of infinite descent because they stopped at zero. So perhaps the only way to avoid KSR is to have no prior art at all, i.e. nothing at all like the invention, and the invention not being a combination of any known prior art. This is surely impossible though, or one might be trying to patent a scientific discovery which is also not allowed.

So there has to be a break in the infinite logic where KSR ends (like zero with the integers), or it is meaningless. So if KSR is meaningless because of infinite descent then it should be able to be overturned in court. If not, then there should be a clear line as to what KSR applies to and what it does not.

Perhaps it is necessary then to have a kind of "firewall" invention. One invents something and claims it broadly, which is invalidated by KSR even though it is not really obvious. But then embodiments of that rely on the broad claim for being non obvious. Even though the broad claim is deemed obvious those of average skill could not have used that knowledge to make that described in the narrower claims because this knowledge was not available to them.

It was not available because it was not published before the ideas in the narrower claims. So for example one invents a general piece of software, like a function in a word processor. This ends up being obvious because of KSR. However if one has narrower claims covering all the embodiments these might not be obvious because they rely on the broad invention, which was not available to the average skiller worker to create the narrow embodiments from. So he could not have used hindsight because he didn't know about the broadly claimed ideas.

So in effect you lose the broad claim but if you claim every narrower embodiment, with divisionals to avoid 25/5 limitations, then you cover all the ideas in the patent application anyway. Equivalent inventions should also still be covered unless losing the broad claim means giving these up like an estoppel. However if a narrower claim is not obvious I think something equivalent to it is also not obvious.

There is an obvious logical contradiction with having to give up the broad claim yet the narrow claims are non obvious, but that is not for the inventor or attorney to decide. A means claim for example might be invalid as obvious but not narrower claims describing the means themselves.

Posted by: MJC at October 20, 2007 8:06 PM