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January 22, 2008

Swan Song

KSR obviousness claims another victim. Sang Su Lee, one of the longest running ex parte appeals, at 14 years (the first BPAI opinion was 1994), was knocked out in the second round by the CAFC in a simple Rule 36 order (a per curiam affirmance without an opinion: CAFC 2007-1191). Round one vacated the BPAI decision for failing to specify a motivation for a combination obviousness finding. Motivation became passé as KSR sucked the oxygen out of the CAFC's longstanding teaching-suggestion-motivation (TSM) test.

Posted by Patent Hawk at January 22, 2008 12:39 PM | Prior Art

Comments

"Round one vacated the BPAI decision for failing to specify a motivation for a combination obviousness finding. Motivation became passé as KSR sucked the oxygen out of the CAFC's longstanding teaching-suggestion-motivation (TSM) test."

Patent Hawk,

I disagree with your summary of the affirmance. The examiner applied new art to address a limitation that was previously addressed under the "common sense" rationale frequently (always?) misunderstood by all examiners and the Board. The Board clearly stated in its latest opinion that to the extent the original In re Lee decision by the Feds was an admonishment to the examiner to produce some evidence of a claim feature that wasn't addressed by the examiner's original combination, the Board was convinced that the examiner had heeded that admonishment and produced the evidence. (I'll leave it to others to debate whether digital watches and televisions are analogous art, or reasonably pertinent to one another.)

Yes, examiners can argue that the "common sense" is a reason to modify/combine references. But they have to produce evidence that all of the claimed features are in the prior art (the ridiculous new PTO obviousness guidelines notwithstanding.) But "common sense" is the weakest reason to combine references. Why? Because all you have to do is ask the examiner, "But why would one of ordinary skill in the art modify/combine in the manner suggested in the Office Action?" If the only answer the examiner can come up with is, "Well, because it would be common sense," then you know the rejection is BS.

I think I had a discussion on your site with bierbelly (I think it was him) about making technical arguments against modifications/combinations. I always make technical arguments as to why the modification/combination set forth in the rejection would not be done by one of ordinary skill in the art. And if the examiner can't respond with anything other than, "Yeah, but it would be common sense," that's when I know I'm right. (I know well in advance, but the examiner's lame response is nice confirmation.)

Enjoy your site.

Posted by: JD at January 24, 2008 2:25 PM

JD,

Thank you for the excellent recount of the history of In re Sang Su Lee (II).

I also want to thank Prof. Joe Miller (Fire of Genius) for obtaining and posting a copy of the BPAI decision and rehearing on his site (here:
http://www.thefireofgenius.com/2008/01/23/the-boards-lee-decisions/
)

Lee II did not invoke KSR. Nor did it invoke "common sense" (which BTW I agree is mythical BS and indefinite in every sense).

Instead Lee II took the "problem-solution" track.

The examiner made a finding of fact that there is a universal "problem", recognized by all, that *all* electronic gizmos are created equal and all such gizmos are difficult to operate and thus in sore need of a "demonstration" mode. The examiner found a 4-button digital watch that had a demonstration mode. He then waved his magical combining wand and transfered the "teachings" of the digital watch world to the land of TV.

It's probably too late for poor Mr. Lee. But practitioners can draw a lesson from his case: Don't let the examiner arbitrarily define "the problem" and its universality.

Posted by: step back at January 26, 2008 7:19 AM