December 17, 2009
Bless his heart, Henry Gleizer couldn't let go of his automated transaction patent application, taking his appeal all the way to the CAFC. What wasn't obvious to Henry was that obviousness isn't just obvious, post-KSR, it's monstrously obvious. Gleizer was affronted with the ease of combination to stomp his claims. However inarticulate, articulated reasoning need be but a whisper to damnation. And that whispered word need only be "predictable."
In re Henry Gleizer (CAFC 2009-1373) non-precedential
A short recitation of obviousness bible black from the CAFC -
Section 103 of title 35 of the U.S. Code "forbids issuance of a patent when 'the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.'" KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 405 (2007) (quoting 35 U.S.C. § 103). "Determination of obviousness under 35 U.S.C. § 103 is a legal conclusion based on underlying facts." In re Kumar, 418 F.3d 1361, 1365 (Fed. Cir. 2005). This court reviews "the Board's ultimate determination of obviousness de novo," while the Board's underlying findings of fact are reviewed under a substantial evidence standard. In re Kotzab, 217 F.3d 1365, 1369 (Fed. Cir. 2000).
Gleizer labored under the illusion that no reason was given, only conclusion. But it was all so predictable, as is most everything in hindsight.
Gleizer contends that the Board failed to articulate such a reason, instead citing "mere conclusory statements" such as "more efficient service," "design need," and "market pressure" as motivations to combine the known elements.
In response, the Director of the Patent and Trademark Office ("PTO") argues that Gleizer's claims are nothing more than a predictable variation of elements disclosed in O'Neill and Kadaba. Such a predictable combination is unpatentable under the Supreme Court's decision in KSR.
Under KSR, "[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." Id. at 416. In KSR, the Court offered guidance on when a combination might be obvious under § 103:
When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under § 103.
550 U.S. at 421. Under KSR, we conclude that Gleizer's proposed combination of elements from O'Neill and Kadaba would have been obvious to a person of ordinary skill in the art.
Gleizer had argued that a claim required "a specific sequence that is not taught by the prior art." In this case, that a vendor wouldn't ship goods before receiving payment. Henry, you're so mercantile. The broadest reasonable interpretation would be unreasonable in the real world, but there's no patent in arguing that. That said, the word "before" shipping in the claim might have solved the problem. But probably not. Not when you take into account "common sense" (we'll get to that).
He argues that his claimed method requires that electronic funds be received from the buyer before the purchased goods are shipped. To support his proposition, Gleizer points to the fact that the specification describes the steps in a sequence. In response, the Director argues that the PTO is required to give claims their broadest reasonable interpretation and that it would be improper for the PTO to read Gleizer's suggested sequential limitation into his application's claims.
We have held that unless the steps of a method actually recite or implicitly necessitate a specific order, the steps are not ordinarily construed to require one. Interactive Gift Express, Inc. v. Compuserve Inc., 256 F.3d 1323, 1342-43 (Fed. Cir. 2001). We agree with the Board that Gleizer has failed to show how a sequence of steps described in one embodiment mandates a narrow construction of the claim. See In re Bigio, 381 F.3d 1320, 1325-26 (Fed. Cir. 2004) ("Absent claim language carrying a narrowing meaning, the PTO should only limit the claim based on the specification or prosecution history when those sources expressly disclaim the broader definition.").
The relevance of being the same subject matter arose. Doesn't matter anymore, Henry. Post-KSR, any ordinary Joe Blow knows every combo.
KSR, 550 U.S. at 1741 ("[T]he analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.").
The bunker-busting bomb for not bothering to find prior art: "common sense." Notice how the CAFC's favorite metric "objective standard," is nowhere in sight. To a serious logician, it just boggles the mind.
We have held that "[a]n obviousness determination is not the result of a rigid formula disassociated from the consideration of the facts of a case" and that the "common sense of those skilled in the art demonstrates why some combinations would have been obvious where others would not." Leapfrog Enters. v. Fisher-Price, Inc., 485 F.3d 1157, 1161 (Fed. Cir. 2007). Adding an escrow account to the cited prior art would have been common sense and reasonably obvious to one of ordinary skill in designing a system for transaction of goods using electronic funds.
I feel your pain, Henry. I really do.
Posted by Patent Hawk at December 17, 2009 2:03 AM | Prior Art
Oh please. If it isn't obvious to require payment before getting the goods, I don't know what is obvious. Try going to McDonalds and getting your food before paying. My Drycleaners makes you pay up front. In fact, virtually every business I deal with on a daily basis makes me pay before I get the goods. The only exception is a sit-down restaurant. If obviousness is in the sight of the beholder (or I know it when I see it) then I'd bet almost every normal person would see this idea as obvious.
Posted by: critique at December 17, 2009 7:43 PM
I agree with critique. Payment before shipment is obvious. If there's one time to apply common sense this is one of them. If that's the sole distinction, the invention is a loser.
Posted by: mmm at December 28, 2009 1:31 PM