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January 10, 2008

Not So Obvious

KSR was a radical reinterpretation of the obviousness statute, 35 U.S.C. §103(a). Now codified as case law without prospect of legislative correction, so much has become obvious that only a few avenues of claiming novelty are left. But those paths are becoming well worn.

USPTO post-KSR obviousness guidelines elucidate the dilemma:

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.

From that flow possible arguments to counter obviousness. There are but a few primary thrusts, with variations that apply to different claimed subject matter.

1) The claims derive from unpredictable results. Best used when pointing out how the prior art approach failed to yield similar results.

2) The prior art use exhibited different properties than that achieved by the claimed invention; a variation of unpredictable results.

3) The cited prior art teaches away from the claimed invention. Best used when the prior art takes a vector that achieves different results, uses different means or different process.

4) The cited prior art combination yielded different results, so would not yield the claimed invention.

5) The claimed invention is not a combination, as evidence by the cited combination prior art being different in some way from the claimed invention.

6) Hindsight bias was applied by the examiner because the problem solved by the claimed invention was viewed in a different context by the cited prior art; from that (prior art) context, the solution would thus not have been obvious. Alternately, in the framework of prior art application, the cited combination would not have been considered to have a reasonable expectation of success. This a more subtle variant when the teaching away argument cannot be substantiated.

7) The combination results from such disparate technology arts, where prior art application was substantially different than claimed, that the combination could only be conceived in hindsight.

8) The cited prior art combines different processes occurring in different contexts, using different mechanisms, at different stages, and/or with different results.

9) One of the claimed elements functions differently than in the cited prior art.

10) There were an infinite number of combinations possible in the prior art, and a particular previously unrealized insight led to the claimed invention.

11) The examiner did not provide a reason or analysis of why references would be combined. Alas, this is mostly a taunt for the examiner to come back with a cooked-up rationale. Attacking the rationale as unrealistic may be a long shot, but take all the shots you can get.

It used to be that long-felt need provided prima facie evidence of non-obviousness, as Joe Miller over at The Fire of Genius points out in a survey of historical court cases on the subject. While KSR reaffirmed Graham v. Deere, those secondary considerations don't sell as well as they used to.

Earlier entry on the subject: suggestions from the National Association of Patent Practitioners (NAPP).

Posted by Patent Hawk at January 10, 2008 1:40 AM | Prior Art



I've been trying to come up with a list of possible attacks on prima facie obviousness, since the KSR decision came down. Your list is helpful, but pitiful (unfortunately, this is what we're left with).

I would add the following:

1. Combined references fail to teach all claim limitations--we've still got this one, lest we forget.

MPEP 2143.01
2. The proposed combination or modification would destroy the functioning of the reference, or make it unsatisfactory for its intended purpose.

MPEP 2144.05
3. Criticality of claimed ranges + evidence to that effect.

Secondary Factors
1. Commercial success (good luck)
2. Satisfaction of long felt need
3. Failure of others
4. Copying by others

IMO, KSR sort of revived the secondary considerations as a point of attack. By citing them favorably, I think the SCOTUS may force the PTO to pay more than lip service when denying patentability over these. However, obviously, more than argument will be necessary to establish their validity.

Posted by: bierbelly at January 10, 2008 10:04 AM


Thanks for the comment; very good points.

Yep, my little list was pitiably measly, and it's about all we are left with, but your additions were worthwhile.

The secondary factors are, alas, secondary, and are not likely to be known or receive a receptive audience in prosecution, as noted in the entry, but good to list them. Thanks.

Posted by: Patent Hawk at January 10, 2008 11:30 AM

Hawk anb BierBelly,

Love your posts, here and otherwise.

If my memory serves, and it doesn't always anymore due to my advancing years, there was a Fed. Cir. decision, maybe a little after KSR, and non-precedential, in which the court found the invention non-obvious because it would have been common sense NOT to combine the references, or in other words, that it would have been uncommon sense to combine the references.

I think the case involved a situation where reference A had an element for performing a particular function and the court said there was nothing, including common sense, that would provide one of ordinary skill in the art with a reason to swap that element with another, different element from reference B for performing the same function. Kind of cutting against that whole "interchangeability" reasoning for combining.

I'll keep your lists in mind, but what I've found since KSR is that it's just easier to make a technical argument. Explain why the proposed modification or combination just wouldn't be done, wouldn't make sense, wouldn't be beneficial.

I'll still use the old standby's of teaching away, changing principle of operation/destroying operability arguments, but the examiners now have a tendency to cite boilerplate MPEP form paragraphs back at you in response to those arguments. They can't do that with technical arguments.

Posted by: JD at January 10, 2008 12:22 PM


It's been my experience (lately) that the examiners either don't understand the technical arguments (my field is chemistry) or don't want to deal with them at all.

Posted by: bierbelly at January 10, 2008 12:32 PM


Understood. I've kind of experienced the same thing. The reaction I get is, "Huh, nobody's ever bothered to argue that you just wouldn't do that."

It will take time to get examiners used to the concept of addressing technical arguments, and not just punching up the form paragraph about not attacking references individually or that they recognize hindsight can't be used but so long as the conclusion is based on information gleaned only from blah, blah, blah.

But if we don't force the examiners to respond to technical arguments, and break their crack-like addiction to boilerplate form paragraphs, we're gonna be in a world o' hurt.

Posted by: JD at January 10, 2008 1:29 PM


What I've been seeing lately, when arguing technology, is the examiner countering that "attorney argument does not substitute for actual evidence", in essence suggesting that known physical and chemical principles are not meaningful if they come from an attorney's mouth/pen.

Posted by: bierbelly at January 10, 2008 6:18 PM

Bierbelly writes "1. Combined references fail to teach all claim limitations--we've still got this one, lest we forget."

However, in the quote of the PTO KSR guidelines, quoted by Hawk in the original post, appear contrary - see the second sentence: "The prior art reference (or references when combined) need not teach or suggest all the claim limitations".

Thus, it would appear, at least from the PTO's viewpoint, that we do not still have this argument. Thoughts?

Posted by: KK at January 10, 2008 6:30 PM


Your examiner is legally correct in stating that "attorney argument does not substitute for actual evidence". I've written ad nauseum about this little quirk of administrative agency law. See:

The problem with filing "evidence" (aka a Rule 132 Declaration) is that it's expensive. However, once you have a proper expert on board to help you with the nonobviousness arguments, the tables should be turned on the examiner. For instance, what are the examiner's credentials for opining as to what would be obvious?

Posted by: step back at January 10, 2008 6:40 PM

step back,

If attorney "argument" means nothing, then what is the point of licensing only technically-trained persons as agents/attorneys? Like I said, it's as if the laws of physics and chemistry don't apply if we state them. Is this a new "legal fiction", or has the Bush administration propagated its hate for science into one of the very institutions that's supposed to be advancing it?

KK, whatever the PTO might believe, KSR did not overrule In re Vaeck...in fact, never even mentioned it. Of course, Vaeck doesn't stop them from constantly hurling "inherency" at us when they can't or won't search extensively enough to find a limitation in the prior art.

Posted by: bierbelly at January 10, 2008 7:12 PM

Also don't give up on the TSM test argument, citing In re Kahn which SCOTUS referred to with approval. Contrary to popular (and unfounded) belief, TSM isn't dead. In fact, the Federal Circuit in the recent Cordis Corp case rejected a challenge by the alleged infringer that the jury's verdict was based an improper instruction that used the TSM test. The Federal Circuit specifically noted that SCOTUS only said that TSM test had been applied too rigidly, not that TSM is an improper test (I've seen several quotes that have incorrectly stated that SCOTUS rejected TSM as too rigid). At worst, you might have to fight application of TSM on appeal to the Federal Circuit, and Cordis "suggests" (pardon the pun) that TSM is very much alive and well.

Posted by: EG at January 11, 2008 5:37 AM

"The problem with filing "evidence" (aka a Rule 132 Declaration) is that it's expensive."

step back,

There's another more serious problem with Rule 132 Declarations, namely that they're a "lightening rod" in litigation for "inequitable conduct" allegations. Not only will the conclusions be attacked, but also the methodology for reaching those conclusions. Also, if you provide arguments and the Declaration, and there's an allowance, there is almost an irrefutable presumption that the allowance was based on the Declaration. I'm not saying to completely avoid Rule 132 Declarations (in some arts, such as drugs, homologs, etc., you may no choice to overcome prima facie obviousness), but they should be a carefully considered "last resort."

Posted by: EG at January 11, 2008 5:46 AM


I like to read recent BPAI decisions (just for fun). An awful lot of them say: AFFIRMED, AFFIRMED, AFFIRMED on the 103 issue. These affirmances are based on the Board going along with the Examiner's "findings of fact". The applicants who have lost in front of the BPAI have close to zero chance of getting reversal by the CAFC. Why? The substantial evidence rule. When was the last time you saw the CAFC backing up a patent applicant? You haven't in recent years. By law the CAFC simply can't. Their hands are tied.

Of course I don't want to create file wrapper estoppel --by any means, not just because I file a Rule 132. However you often have to make the grim choice between getting no patent at all or fighting for one by putting on your "evidenciary" case.

I've seen experts in their given arts. Patent examiners are no experts. Neither am I. I don't try to fool myself into believing that I know it all just because I am "technically trained". All too often I see patent examiners who have totally fooled themselves when in fact they understand close to zero about the art and the meanings of terms of art. If the examiner makes a finding of fact and refuses to back down (i.e as to motivation to combine for example), that's when you have to bring in the experts to explain how ordinary artisans really think.

Posted by: step back at January 11, 2008 9:24 AM

step back,

The KSR obviousness guidelines for examiners cites In re Berg for the proposition that examiners can use their expertise to make findings of fact. As is typical with the PTO, their "interpretation" of In re Berg is half baked and the guidelines ignore In re Lee, and Zurko and In re Gartside.

When challenging an examiner's "finding of fact," it's important to request that the examiner identify where in the record the finding is supported, e.g. colunns and line numbers of references.

I would disagree with you that the Fed. Circuit's hands are tied because of substantial evidence. I think they've been critical of the PTO on that issue and have ruled in a couple of cases that the PTO's findings are not in fact supported by substantial evidence. See the Brand v. Miller interference where the Feds criticized the BPAI for making "findings" that weren't supported by substantial evidence.

I don't think you (always) have to counter the examiner's findings with 132 Decs. I think you have to nail the examiner down as to where the findings are supported. Many times the examiner can't or won't, because they're just making it up. If it comes down to disputing the examiner's interpretation based on the "examiner's expertise," you may need a 132 Dec from a PHOSITA to counter, but that should be a last resort as was suggested earlier.

Posted by: JD at January 11, 2008 9:44 AM


I agree that examiners simply make things up.
However, arguing that the CAFC will reverse is kind of silly. My clients can't afford (or don't want to afford) going up to the CAFC on appeal.

Most of the ALJ's on the BPAI panels know full well what the substantial evidence rule is. They often mention in their opinions that applicant has provided no "evidence" to counter the examiner's findings. The implication is that if you do place evidence on the record (it does not have to be a 132, it could be an excerpt from an authoritative technical treatise if that helps your cause), the BPAI panel will then fairly "weigh" the evidence on each side before coming to a decision. However, attorney argument is NOT "evidence". It weighs in as a big fat zero on the balance scale that measures evidence in the affirmative versus evidence for reversal.

In a 103 case, the most important finding of facts are these: What is the useful art? Who is PHOSITA? How did he think at the critical time?

Posted by: step back at January 11, 2008 11:04 AM

Appeal No. 20072424 (Ex parte Lewis et al.)--BPAI reversed in part because the prior art failed to teach or fairly suggest all claim limitations.

Posted by: bierbelly at January 11, 2008 12:29 PM


Thanks for the cite:

So now let's see what the Board said as to what the rules are re burden of evidence:

"(“On appeal to the Board, an applicant can overcome a rejection [under § 103] by showing insufficient **evidence** of prima facie obviousness or by rebutting the prima facie case **with evidence** of secondary indicia of nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998))."

"At the outset, we note that Appellants have presented no arguments [or evidence] directed to the combinability of Irlam and Parsons for claims 10, 12, 15, and 20-24. Likewise, ..."

"Thus, **we find** Irlam expressly teaches a plurality of email servers 401 (Fig. 4, ¶0040)."

"Thus, **we find** Appellants have failed to persuasively rebut the Examiner’s legal conclusion of obviousness by establishing **insufficient evidence** of prima facie obviousness."

"After reviewing the Woltz reference, **we find the evidence supports** Appellants’ position (See Woltz, Fig. 8, col. 7, ll. 5-34). We find that Woltz does not expressly disclose packets or datagrams."

Do you see that word, **evidence** throughput the discussion? It is a term of art in the legal field. Attorney arguments are not "evidence". Attorney arguments can point to evidence on record, but the arguments themselves are not evidence.

Posted by: step back at January 11, 2008 1:46 PM

step back,

agree that you shouldn't be arguing substantial evidence at the fed. cir.

that's why i think it's important to challenge every assertion/statement about the prior art from the examiner that doesn't include a cite (e.g. page/column/lines/figures/etc.) and cite 'em Rule 104(c)(2). and even those statements that are supported, if the examiner is stretching, call 'em on it.

Posted by: JD at January 11, 2008 1:46 PM

step back,

Oh, I agree that evidence is more than mere argument. But do I, as a chemist, really need to provide "evidence" that reaction of an organic acid with an alcohol will result in an ester? That is the detail I'm being forced to provide, IMO without good reason. The other thing I'm seeing is examiners making unsupported arguments of their own re: inherency, and improperly shifting the burden of proof to the applicant, essentially requiring us to prove a negative. Point it out, and they won't back off.

Posted by: bierbelly at January 11, 2008 6:11 PM


"Do I, as a chemist, really need to provide "evidence" that reaction of an organic acid with an alcohol will result in an ester?"

Regrettably, yes.
I was a EE major, not a ChemE major. But if I recall my organic chem correctly, that reaction will be in a beginner's organic chem book. So your burden of proof will be fairly easy --just photocopy the correct page out of your old college text book.

However, from a legal stand point, yes; an examiner can make a "finding of fact" that R-OH + HCl --> (not an ester). And if you had merely argued rather than "proven" with evidence that it isn't so, you might be unlucky enough to get a BPAI panel that does not have 2 chemists on it. If that majority votes to agree with the examiner's finding of fact (wrong as it is), that becomes the final "finding of fact" by the USPTO (under administrative agency law).

If the case then goes up to the CAFC, even if you have Newman J on your panel and she kicks and screams at how fundamentally wrong the USPTO is as to the science, the other 2 nonscience members on the panel will be compelled by law to affirm because they must give deference to findings by the USPTO pursuant to 5 USC 706.

Administrative agency law is written to assume that every agency is "competent" in its field of endeavor. The burden of proof is on you to prove otherwise (with evidence) no matter how wrong that initial assumption of law is when applied to the USPTO.

BTW, you're not alone in your upset. I've had examiners who tell me something to the equivalent of V=IR (Ohm's law) not being true and then I've had to go and "prove" them wrong. This is a big waste of the client's money. But no one at the venerable USPTO really gives a s*it about how bad examiners force inventors to spin their wheels and waste large amounts of money ($$) on ridiculous arguments. If someone really did give a s*it, we wouldn't have the final action practice that we currently have. It's an absolute disgrace. But "they" have no shame. They are too arrogant and ignorant to even know that they should have shame.

Posted by: step back at January 12, 2008 5:42 AM



If you want to see how that plays out, take a look at this BPAI case of yesterday:
09778291 - (R) 20062089 NONE 20020106072A1 08/08/2002 NONE NONE 01/11/2008 Ex Parte Apfel

The BPAI panel makes a finding of fact as to how PHOSITA interprets the word "monitoring":

"We also find to be without merit Appellant’s contention (Reh’g 2-3) that “monitoring” of a signal to determine gain control is not taking place in Shenoi. We fail to see why, at the very least, the determination of whether a signal is in the upstream or downstream direction in order to apply the differing amplification factors in Shenoi would not be considered as signal “monitoring” by the skilled artisan."

I'm not going to pass judgment on whether the conclusion is right or wrong because I haven't studied the details of the case. But in all likelihood there is no "evidence" supplied by the inventor into the administrative record as to an opposite definition for "monitoring". The applicant loses by default --due to not having filed a Rule 132 that proffers an expert's opinion as to what "monitoring" means to PHOSITA in the context of the specification.

This is something you see in case after case. An inventor is probably out there pulling his/her hair out at the insanity of the process because they never foresaw that a Board of Appeals could interpret "monitoring" to mean what the Board found it to mean.

Posted by: step back at January 12, 2008 6:06 AM

Which validates my oft proposed solution to the PTO's problem of finding examiners...stop bothering to hire technologists, and hire librarians, since all they ever do is play semantic games anyway.

Posted by: bierbelly at January 12, 2008 12:22 PM

1), 3), 5), 9), 10) and 11) seem consistent with KSR. However, 2) is not, as one cannot establish novelty by claiming a known material by its properties. Moreover, KSR does not mention "different properties." 4) is not a reliable argument. A "different result" may nonetheless be a predictable result, in which case KSR deems it obvious. 6) does not make sense. Making this argument could be self-defeating: if one argues that the claimed invention was viewed in a different context by the prior art, then one is admitting that the claimed invention existed at the time of the prior art in the first place. 7) is not supported by KSR. Also, whether the examiner used hindsight or not is not based on how “disparate” the technologies are, but rather on whether the examiner uses the claimed invention and ex post reasoning to reconstruct the prior art. 8) is not reliable. I doubt “different context” makes a difference because KSR specifically said courts and examiners can look to other contexts in making obviousness rejections. KSR: variations can be made "either in the same field or a different one." KSR: courts and patent examiners can look further than the problem the patentee was trying to solve, and to elements other than ones designed to solve the problem. With regard to 10), although "infinite number of possible combinations" does suggest that the claimed invention would not have been obvious, "particular previously unrealized insight" may be troublesome because it implies that the insight was there in the prior art in the first place, just not yet "realized".

Posted by: confused SCOTUS at November 18, 2008 6:36 PM