Chief Judge Rader Says KSR Didn’t Change Anything, I Disagree

By Gene Quinn
October 6, 2011

Chief Judge Rader at UNH Law, 9-30-2011

On Monday, April 30, 2007, the United States Supreme Court issued its much anticipated decision in KSR International Co. v Teleflex, Inc.  For many months patent pundits tried to predict how the Supreme Court would handle the Federal Circuit “teaching, suggestion and motivation” test, used to determine whether a particular patent claim is obvious.  Predictions of this sort are usually no more reliable than predictions of any other kind, and while everyone had an opinion, few actually anticipated what the Supreme Court would do.  Whether the surprise that was KSR was owing to the patent bar being willful blind or simply having misplaced hope is another story for another day.

The Supreme Court dislikes bright line rules, but surely they wouldn’t opt for a totality of the circumstances approach to obviousness and throw away TSM, thereby leaving some 6,000+ patent examiners to make their own determinations about the qualitative value of an invention?  Isn’t that what erasing “flash of creative genius” was meant to do away with? Sadly, the Supreme Court put on display their severe lack of understanding for all to see, believing obviousness to be about common sense.  But who’s common sense?  What boundaries would be put in place?  As is all to familiar, the Supreme Court took the “we decide, you figure it out” approach.  I guess they loathe showing their work, which is probably why they aren’t mathematicians!

In any event, last weekend I was in New Hampshire at the University of New Hampshire School of Law (i.e., the former Franklin Pierce Law Center) for dedication ceremonies relating to the opening of the Franklin Pierce Center for Intellectual Property at UNH.  Chief Judge Randall Rader of the United States Court of Appeals for the Federal Circuit was also in attendance.  Among other things, the Chief participated in a Judges’ panel that included Judge Pauline Newman and Judge Arthur Gajarsa.  It was during this panel that Rader said that he would challenge anyone to demonstrate how the Supreme Court decision in KSR v. Teleflex did anything to change the law of obviousness and how the Federal Circuit addresses the issue.

Upon hearing Rader make such a bold statement the first thought that ran through my mind was — Really? Did he just say that? I have heard from others for some time that Rader has been heard to say these or similar things relating to obviousness, but I just discounted them as one would discount the output of a game of telephone.  After something gets stated, shared and restated there is typically little of the same message remaining.  That had to be why Rader was reported  to have said such curious things about obviousness and the impact of KSR. But then I was sitting right there listening to Chief Judge Rader say something that is provably incorrect.  I’ll bite.  I’ll take that challenge.

In KSR, the Supreme Court said in unequivocal terms that the Federal Circuit decision below was wrong, and that sole reliance on the teaching, suggestion and motivation test was not in line with prior Supreme Court precedents, such as Graham v. John Deere.  Nevertheless, the Supreme Court did recognize that when the Court of Customs and Patent Appeals was on to something when they first announced the teaching, suggestion, or motivation test.  In fact, the Court called it a “helpful insight” into determining whether a claimed invention is obvious.  Notwithstanding, helpful insight or not, the Supreme Court said that the TSM test had become rigid and mandatory, making it inconsistent with Supreme Court precedents that require a more flexible approach to obviousness.  Indeed, the Supreme Court was correct in that the TSM test had become rigid and mandatory, but they were wrong to view that as a bad thing.  An objective standard that leads to predictability of results is a far better approach to obviousness; it prevents subjectivity.

Subjective interpretation of what is patentable is exactly why Congress sought to prevent when this language was added to § 103: “Patentability shall not be negatived by the manner in which the invention was made.” Simply stated, if you were grading the Supreme Court decision in KSR it would have received a failing grade for failure to take into account the express language of the statute they were interpreting.  But I digress.

The Supreme Court explained in KSR that: “In determining whether the subject matter of a patent claim is obvious, neither the particular motivation nor the avowed purpose of the patentee controls. What matters is the objective reach of the claim. If the claim extends to what is obvious, it is invalid under §103.” But how does one determine whether something is obvious?  A good question no doubt, but unfortunately the Supreme Court did not feel like answering it.  What the Court did say, however, is that “[t]here is no necessary inconsistency between the idea underlying the TSM test and the Graham analysis. But when a court transforms the general principle into a rigid rule that limits the obviousness inquiry, as the Court of Appeals did here, it errs.”  So TSM is not inconsistent, but a lack of teaching, suggestion or motivation does not render an invention non-obvious.  Of course, everyone knows that up until the Supreme Court decided KSR demonstrating a lack of teaching, suggestion or motivation was the way you would demonstrate non-obviousness.

Of course, the Supreme Court did note that while waiting for the issuance of the final KSR decision the Federal Circuit seemed to adopt a kinder, gentler teaching, suggestion and motivation test, one not as rigid.  See, e.g., DyStar Textilfarben GmbH & Co. Deutschland KG v. C. H. Patrick Co., 464 F. 3d 1356, 1367 (2006) (“Our suggestion test is in actuality quite flexible and not only permits, but requires, consideration of common knowledge and common sense.”); Alza Corp. v. Mylan Labs., Inc., 464 F. 3d 1286, 1291 (2006) (“There is flexibility in our obviousness jurisprudence because a motivation may be found implicitly in the prior art. We do not have a rigid test that requires an actual teaching to combine…”).  Those rulings were not, of course, before the Supreme Court, but anyone who is being honest knows that prior to this softening by the Federal Circuit the TSM test was rigid and hardcore, which was a good thing.

Slight softening around the edges as it applies to the “suggestion” prong is hardly the transformation in the law inspired by the Supreme Court in KSR.  This is confirmed by the way the United States Patent and Trademark Office has been handling obviousness determinations since that fateful decision.  In fact, here are the exemplary rationales that may support a conclusion of obviousness in the aftermath of KSR.

(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 are 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.

See MPEP 2143 (emphasis added).

While volumes and volumes could be written about how the USPTO deals with KSR, I’ll confine my commentary to two things specifically — rationales (E) and (G).  First, you should immediately recognize that only rationale (G) relates to TSM, which should suggest to everyone that (A) through (F) are different than TSM.  So the first thing to factually and truthfully recognize is that there are more potential rationales for finding an invention obvious after KSR.  That is hardly revolutionary; it is well accepted within the patent community.

You should also immediately recognize that one of the new rationales for finding an invention obvious is that it was “obvious to try.”  There can be absolutely no dispute here.  Rejections on obviousness grounds based upon the invention being “obvious to try” were strictly prohibited prior to KSR.  Sadly, the Supreme Court says that if something is obvious to try then it may be considered obvious, and patent examiners, the Board of Patent Appeals and Interferences and the Federal Circuit have done a 180-degree about-face on “obvious to try.”

More specifically, relative to “obvious to try,” prior to the Supreme Court issuing its decision in KSR, the Federal Circuit explained in In re Deuel (CAFC, 1995) that an obvious to try standard was an inappropriate test for obviousness.  The Court in Deuel said succinctly and directly: “Obvious to try has long been held not to constitute obviousness.”   Subsequently, after the Supreme Court KSR decision then Circuit Judge Rader wrote this about “obvious to try” in the majority opinion of In re Kubin: “Insofar as Deuel implies the obviousness inquiry cannot consider that the combination of the claim’s constituent elements was ‘obvious to try,’ the Supreme Court in KSR unambiguously discredited that holding.”  So it would seem that Rader well understands that something changed in the law of obviousness as a direct result of the Supreme Court’s decision in KSR.

Of course, if you read In re Kubin, you will come across Rader’s attempts to say that the Supreme Court simply agreed with Federal Circuit precedent that predated Deuel.  That, however, cannot save Rader’s claims now for at least two reasons.  First, it is still undeniable that after Deuel “obvious to try” was discredited and was not the law.  Second, if you look at the O’Farrell case that Rader says is in line with the Supreme Court rationale it says: “this court and its predecessors have repeatedly emphasized that ‘obvious to try’ is not the standard under § 103.”  The O’Farrell court went on to say that an invention that is obvious can be one that is obvious to try, stating the operative question as: “when is an invention that was obvious to try nevertheless nonobvious?”  So it is clear that inventions that were obvious to try could still be nonobvious and patentable under O’Farrell.  Is that what the Supreme Court said in KSR?  No.  That is, however, what the Federal Circuit is trying to turn the Supreme Court KSR decision into.

So why would Chief Judge Rader make such an incorrect statement about obviousness law and the impact brought to bear by KSR?  I certainly hope that he doesn’t actually believe what he said because it is really a rather ridiculous statement that has absolutely no truth.  Anyone who works in the patent area can tell you with great certainty that the law of obviousness is extremely different, district courts no longer apply TSM, the Patent Office has their rationales and Guidance explaining that TSM isn’t the sine qua non that is always had been and even the Federal Circuit has recognized the shift in the law in case after case.

Perhaps Rader does believe what he said, but perhaps he is just trying a smoke-and-mirrors tactic with the Supreme Court.  You know, watch the shinny object swing back and forth Supreme Court Justices.  Your eyes are growing sleepy.  SNAP! The Federal Circuit law relative to obviousness was the same before KSR as it has been since KSR.  When you awaken you will feel refreshed and far more informed.  SNAP!

Truthfully, I don’t know what Chief Judge Rader was saying or why, and I sure hope he doesn’t actually believe what he said.  There does not seem to be any evidence that I can find in Rader’s decisions that would suggest that he still thinks that TSM is the law of the land, and his gyrations to limit “obvious to try” suggest he well understands that what the Supreme Court said was a substantial departure from the previous law of obviousness that needs softening by the Federal Circuit.  Maybe, this is just his way of say that the Federal Circuit had already migrated to the understanding of obviousness that the Supreme Court laid out in KSR.  A real stretch of “the one that got away” variety if you ask me.

Regardless of why it was said, it is unfortunate that Chief Judge Rader does not seize upon the opportunity to say things the way they actually are.  What is the harm in recognizing that KSR changed the landscape in a significant way, but that the Supreme Court left the Federal Circuit with the difficult task of figuring out which, if any, of their previous decisions remain viable in this brave new obviousness world.

I also see no reason why observing the reality of the situation should be avoided.  Being straight forward and recognizing the path the Supreme Court took us on with respect to obviousness would only work to benefit a struggling patent system.  It is hardly news that it is more difficult to demonstrate an invention is non-obvious now than it was under the TSM approach, and the KSR abomination that exalts common sense and subjectivity over objectivity and proof is just another arrow in the quiver of those who are not particularly fond of patents and the U.S. patent system.

We continue to erode the rights of the patentee, make it easier to challenge issued patents and make it harder to obtain patents in the first place. That is what the Supreme Court did in KSR, and it is what they did in eBay, and it is what Congress did with the America Invents Act.  Must judges be so politically correct that they cannot expressly recognize what is plain for everyone else to see?  Regardless of what Chief Judge Rader thinks, the law of obviousness has changed significantly.  It does no one any good to perpetuate a myth or falsehood about the ease of demonstrating something is non-obvious.

Respectfully, I dissent.

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and founder of IPWatchdog.com. Gene is also a principal lecturer in the PLI Patent Bar Review Course and an attorney with Widerman Malek. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 60 Comments comments.

  1. EG October 6, 2011 8:24 pm

    Gene,

    If the Chief Judge truly believes KSR International didn’t change how obviousness was determined before under 35 USC 103, we’re in serious trouble. May be he issued the challenge to simply get the debate going. I sure hope so because saying KSR International didn’t change anything is like saying the Sun still revolves around the earth after Copernicus discovered/said the opposite was true.

  2. Just visiting October 6, 2011 8:58 pm

    I agree with Radar, in theory.

    TSM = “rejections on obviousness grounds cannot be sustained by merely conclusory statements; instead there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”

    The TSM test was deemed unacceptable, not because it wasn’t correct, but it was misnamed. It should have been named the “why test” – as in explain WHY one having ordinary skill in the art would have combined X and Y. Both the TSM test and the “articulated reasoning with some rational underpinning” require the same thing – explain why.

    As to the comments regarding “common knowledge” and “common sense,” there should never be a problem with relying upon those in determining obviousness. What I think got lost in the shuffle is that there is still a necessity to present substantial EVIDENCE of common knowledge and common sense. This point was not addressed in the KSR decision, but I doubt very much that KSR overruled Dickinson v. Zurko, which requires findings of fact be supported by substantial evidence. A finding as to what is “common sense” or is “common knowledge” is a finding of fact, and the APA (as interpreted in Zurko) requires substantial evidence to support a finding.

    When I said I agree with Radar, in theory, is that I believe many people (mostly at the USPTO and particularly at the BPAI) have lost track of the requirement for an “articulated reasoning with some rational underpinning.” Statements such as “[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results” is not an articulated reasoning with some rational underpinning. Instead, it is a guiding principle that must be applied to the particular facts. However, I have seen phrases such as that be used, MANY TIMES, as the “articulated reasoning.”

    As to the “obvious to try” rationale, the case law cited by the USPTO as to rationale E (see 2007 guidelines) all include some explanation of a “why.” In fact, all the othe rationales (i.e., A-F), which are supposedly different than G, all give an explanation as to “why.”

    Besides being given a bad name (that confused SCOTUS), the problem with the TSM test is that nobody knew how to use it properly. When trying to prove obviousness, which required getting from A to X, most (lazy) people tried to find that one magic bullet of a reference that got you straight from A to X. However, sometimes it would have been easier to go from A to G, G to S, and then S to X – just nobody wanted to go through that effort. What then happened is many people found the closest reference that got you from A to X and then filled in the rest. Such rejections should have been properly rejected because the filling in of the missing gaps still needed to be supported with evidence, not conclusory statements.

    If you read the KSR decision, the Supreme Court spent a lot of time addressing the findings of fact in order to support their obviousness analysis (i.e., the filled in those gaps). However, they did so based upon evidence.

    In the end, I agree with Radar for the following reasons:
    TSM=a “why” test = “articulated reasoning with some rational underpinning”
    KSR did not overrule Zurko and the APA so findings of fact must be supported by substantial evidence.

    Although the BPAI/USPTO routinely mucks up obviousness, Radar was only addressing how the Federal Circuit addresses obviousness. As a practical matter, my arguments really haven’t changed much at all. I’ll argue that the Examiner has failed to present an “articulated reasoning with some rational underpinning” as opposed to arguing the Examiner has failed to establish a “teaching, suggestion, or motivation.” However, in my mind, they are the same argument.

    To me, although the name has changed, the ultimate analysis is still the same (at least at the Federal Circuit — unless Linn or Dyk is on your panel, in which case you better be on the side looking to invalidate the patent).

    I, respectfully, affirm.

  3. Gene Quinn October 6, 2011 9:28 pm

    JV-

    Thanks for playing along… but I have to dissent from your affirmance.

    TSM was always the way you would argue an obviousness rejection. You would say that the invention was not obvious because there was no teaching, suggestion or motivation in the prior art to combine. if that were true then you won. Now it can be true and you lose. So how can you say that nothing has changed?

    Also, what about obvious to try? That clearly has changed. Obvious to try was not an acceptable rejection prior to KSR.

    I agree with you that many patent examiners give scant consideration to articulating a reason for the rational underpinning.

    -Gene

  4. Gene Quinn October 6, 2011 9:31 pm

    EG-

    I love the Copernicus reference.

    Have you seen that commercial where the guy keeps getting fired but cannot hear over the sound of his crunchy cereal? This sort of reminds me of that. Or maybe more like someone who says something enough times that it starts to become true and authoritative. The fact that he is CJ would lend some authority to the belief for sure.

    -Gene

  5. EG October 7, 2011 6:16 am

    I believe many people (mostly at the USPTO and particularly at the BPAI) have lost track of the requirement for an “articulated reasoning with some rational underpinning.”

    JV,

    Very true. I presume you’re referring to the approving citiation by SCOTUS in KSR International to In re Kahn. That Kahn quote is a standard citiation in almost all my responses to rejections based on 35 USC 103. The fact that many Examiners ignore it is infuriating (including failing to factually support conclusory statements in their Office Actions), but it doesn’t stop me from pointing out to them the legal impropriety in failing to heed what Kahn says.

  6. PJB October 7, 2011 7:46 am

    Through the years, the PTO/courts became muddled with over expansivity of TSM……. in this light, I agree that KSR simply restated guidance that obviousness is more complex and analysis than one test alone can provide a solution to…… there has to be some variability accounted for based on other factors (predictability of the art, for example, in lending one to interpret that which would be known to one of ordinary skill in the field of the invention at the time of the invention)…..Obviousness analysis is a totality of factors and TSM (though not dispositive) is definitely one of them, ….

    My personal view is that the best argument to the PTO is that the prior art AS A WHOLE (including that which which would or should be known to one of ordinary skill) should still provide some motivation to combine. Otherwise, the only possible way to combine would come from hindsight analysis. My reading of Graham Unfortunately, the KSR opinion has been overtranslated/overcompensated by the PTO in their guidelines especially in the so-called predictable arts, which has been unfortunate……

    PJB

  7. Just visiting October 7, 2011 10:28 am

    “Now it can be true and you lose. So how can you say that nothing has changed?”

    Remember, Radar limited his comments to the Federal Circuit.

    Additionally, the circumstance you’ve described, and I’ve seen it often at the BPAI is the little word games the BPAI likes to play and, again, their penchant for confusing guiding principles with actual analysis.

    If you argue TSM, they’ll straight out ignore it because you didn’t phrase the argument properly. Present the same argument as a failure to provide an articulated reasoning with some RATIONAL underpinning and you’ll have better traction. If the Examiner’s doesn’t present a “rational” reasoning for the combination, then you’ve got an argument.

    “Also, what about obvious to try? That clearly has changed. Obvious to try was not an acceptable rejection prior to KSR.”
    I see that made in <1% of the applications I handle. Also, if you look at the Examination Guidelines based upon KSR (2007 version), the examples for the obvious to try always include the "why" (i.e., "it is obvious to try because ….").

    "That Kahn quote is a standard citiation in almost all my responses"
    That Kahn quote is a necessary citation in all my responses (unless I quoted it already during prosecution).

  8. David Boundy October 7, 2011 12:23 pm

    I agree with Judge Rader and Just Visiting. KSR reaffirmed every crucial element of Federal Circuit jurisprudence on obviousness.

    First, note that all of the various rationales for obviousness in KSR and MPEP § 2143 require the three-part test that has been in effect all along in the analysis of “obviousness of the difference” step of Graham: (a) all elements known, (b) motivation or reason to modify or combine, and (c) reasonable expectation of success. The KSR seven tests all reduce to the same three-part test. (Of course, show me an Office Action that makes all three showings…)

    Second, the Supreme Court reaffirmed that examiner opinion plays at most a secondary, interpretive role—each element of the obviousness inquiry must be supported by objective evidence:

    In Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 148 USPQ 459 (1966), the Court set out a framework for applying the statutory language of § 103, language itself based on the logic of the earlier decision in Hotchkiss v. Greenwood, 11 How. 248, 13 L.Ed. 683 (1851), and its progeny. See 383 U.S., at 15–17, 148 USPQ at 464–66. The analysis is objective:
    “Under § 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background the obviousness or nonobviousness of the subject matter is determined. Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented.” Graham, at 17–18, 148 USPQ at 467.

    Though there are several references to “common sense” in the KSR opinion, all comment either that “common sense” should be used to develop the legal test or that “common sense” is a conclusion, probably as a matter of law, inferred from facts that each have adequate evidentiary support, and none even imply that “common sense” is either a mongrel class of evidence or another class of § 102 prior art. At least in the administrative context, unless the examiners has offered sworn expert or fact evidence (a reference or affidavit), an examiner’s common sense is not § 102 or § 103 prior art. If the PTO asserts something was “common sense,” it has to objectively prove it to a preponderance of “substantial evidence,” just like any other agency that has the burden of proof.

    Third, the Supreme Court reiterated that it is the examiner’s burden to explain precisely the grounds for obviousness:
    … in order to determine whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue. To facilitate review, this analysis should be made explicit. See In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (CA Fed. 2006) (“[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”).

    Fourth, on the facts of KSR, the Court had before it additional prior art: the Asano ’782 patent, the White ’068 patent, and “public use” prior art by Chevrolet, that supplied precisely the inference that the Supreme Court relied on. Finally, the Supreme Court emphasized that expert testimony must be given weight (and, as JV notes, examiners do not get sworn as expert witnesses and are not subject to cross examination–what an examiner says is not “evidence” on a footing with anything relevant in KSR). Thus, on the holding of the case on its facts, it’s not clear that KSR effected any change applicable during PTO proceedings.

    The real problem that you point out, Gene, is the one that patent prosecutors always face — the law and the PTO are two ships passing in the night. I share JV’s comment #7.

  9. David Boundy October 7, 2011 12:30 pm

    Gene —

    You state, “Sadly, the Supreme Court says that if something is obvious to try then it may be considered obvious, and patent examiners, the Board of Patent Appeals and Interferences and the Federal Circuit have done a 180-degree about-face on “obvious to try.””

    Not so. Read KSR. The closest fit may be this, “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.” “Obvious to try” is not a sufficient test. The examiner must, in addition, show show “design need or market pressure,” “finite number of identified, predictable solutions,” and “anticipated success.” That’s no less rigorous than pre-KSR Federal Circuit law! Maybe examiners and BPAI have done a 180, Federal Circuit has not.

  10. Gene Quinn October 7, 2011 12:33 pm

    David-

    How can you with a straight face say that KSR reaffirmed every crucial element of CAFC jurisprudence?

    Clearly, KSR says that “obvious to try” is a valid means for rejecting a claim as obvious. Clearly, prior to KSR “obvious to try” was not a valid obviousness rejection. That alone means that KSR changed the law of obviousness. I don’t know how anyone gets past the fact that Judge Rader recognizes in Kubin that the Supreme Court overruled Deuel.

    As far as the real problem being the USPTO, in the KSR guidelines they published they went through some 30 cases from the Federal Circuit. So it isn’t just the PTO that is interpreting things differently, it is the Federal Circuit.

    Up until you and JV spoke out I could say I didn’t know a single patent professional that thought KSR announced a business as usual approach to obviousness. Whether it is the USPTO or the CAFC, business has changed dramatically.

    -Gene

  11. Gene Quinn October 7, 2011 12:47 pm

    David-

    You left out the critical part of the quote from the Supreme Court in KSR, which says:

    “Third, the court erred in concluding that a patent claim cannot be proved obvious merely by showing that the combination of elements was obvious to try.”

    Prior to that statement the law of the Federal Circuit was that a patent claim cannot be proved obvious by showing a combination was obvious to try. After that statement in KSR obvious to try is now a legitimate rational for finding a claim unpatentable, or invalidating an already issued claim.

    This is VERY different than the way the USPTO and the CAFC interpreted obviousness prior to KSR. I just don’t understand the revisionist history at work here.

    -Gene

  12. tyler durden October 7, 2011 1:12 pm

    rader said he would challenge anyone to demonstrate how the Supreme Court decision in KSR v. Teleflex did anything to change the law of obviousness and how the Federal Circuit addresses the issue.

    and you call him a liar (by saying that his comment is absolutely rediculous and devoid of truth)?

    I don’t know you, but I think I have lost respect for anything you have written or will write.

    Rader is one of the most thoughtful speakers I have ever known. He does not just yammer off the cuff.

    and you somehow took a challenge as a statement of fact.

    best to you, but If I were FPLC, or the school were you are a professor, I might ask that you seperate your blog from any reference to their names. (I am guessing that the school where you profess already did)

  13. Just visiting October 7, 2011 1:15 pm

    Gene:

    Don’t get hung up on “obvious to try” jurisprudence. I see it rarely … and its only real use is in the chemical arts. Also, if you look at the case law, the courts do more than say “it would have been obvious to try” and then wipe their hands of the issue. There are addditional findings that are made and some of these findings are consistent, IMHO, with what would be considered the “motivation” of the old TSM test.

    Trust me, when KSR came out, I thought it was the end of everything. However, after I have had time to reflect, and get better acquainted with the law, I see that me fears (that the law has changed substantively) were unfounded. The only (real) change has been that the BPAI doesn’t understand the difference between guiding principles and actual analysis based upon the Graham fndings of fact. The rejections I get from Examiners after KSR differ only marginally from those I received prior to KSR.

    FYI — I like David’s point about “common sense” not being a new class of prior art under 102/103. This is what I think many people feared when KSR came out, but in reflection, this is not what KSR ruled. KSR did not overrule Zurko. Sure, you can rely on common sense, but it still has to be based upon substantial evidence. Personally, I don’t think the USPTO gets that last point, but I think the Federal Circuit (mostly) does. As I noted earlier, there are a few Federal Circuit judges that will do anything to make it harder to obtain a patent.

  14. step back October 7, 2011 1:56 pm

    Gene,

    I’m going to side partly (not fully) with what David Boundy said up thread.

    IMHO, KSR has a very specific fact pattern and everyone should go back and re-read KSR a dozen more times.

    One argument in the PTO process might be that KSR had a very unique fact pattern, but the present case is different, example: the problem was not recognized by the art.

  15. David Boundy October 7, 2011 2:07 pm

    Gene —

    Be careful of quoting out of context. The second sentence of the paragraph qualifies the over-broad first sentence. Merely “obvious to try” is not, all by itself, enough to show . Here’ s the whole paragraph.

    The same constricted analysis led the Court of Appeals to conclude, in error, that a patent claim cannot be proved obvious merely by showing that the combination of elements was “obvious to try.” Id., at 289 (internal quotation marks omitted). When there is a design need or market pressure to solve a problem and there are a finite number of identified, predict-able 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

  16. Gene Quinn October 7, 2011 2:47 pm

    Tyler-

    Sorry to disappoint you, but the views expressed in this article have been extremely well received by many in the patent community. Whether you like Judge Rader or not, what he said was incorrect. The law is simply NOT the same after KSR. If you have lost respect for me as a result of me telling the truth that seems like a YOU problem to me.

    I think I should also point out that I never called Rader a liar. Perhaps you should re-read the article. He is wrong and I find it hard to believe he could make such a provably incorrect statement, but that is not the same as calling him a liar. Even respected Judges make mistakes, and thankfully our system allows for individuals to recognize that and even talk about it.

    -Gene

  17. David Boundy October 7, 2011 2:53 pm

    Gene —

    You comment “As far as the real problem being the USPTO, in the KSR guidelines they published they went through some 30 cases from the Federal Circuit. So it isn’t just the PTO that is interpreting things differently, it is the Federal Circuit.”

    It’s instructive to go through and compare what the Federal Circuit really said with what the PTO Office of Examination Policy said that the Federal Circuit said. As you noted in your own comment letter on the second set of KSR Guidelines http://www.uspto.gov/patents/law/comments/updatedksr_quinn_26feb2011.pdf , the Guidelines are — shall we say — perhaps a screenplay adaptation, loosely based on Federal Circuit law. The PTO’s legal staff are not the most careful of lawyers, they’re really eager to attribute to the Federal Circuit stuff that just ain’t there, and just as willing to turn “must’s” pointed at the PTO into “may’s” for examiners.

  18. Gene Quinn October 7, 2011 2:54 pm

    David-

    Here is a quote from KSR:

    “That it might have been obvious to try the combination of Asano and a sensor was likewise irrelevant, in the court’s view, because “ ‘ “[o]bvious to try” has long been held not to constitute obviousness.’ ” Id., at 289 (quoting In re Deuel, 51 F. 3d 1552, 1559 (CA Fed. 1995)).”

    So the Supreme Court says what Judge Rader confirmed in Kubin. The law of the Circuit was that “obvious to try” was not a valid rejection. After KSR it is a valid rejection, that is a change.

    For all those who are siding with Judge Rader, can you provide me with application serial numbers that post-KSR you have been successful making an argument that there is no teaching, suggestion or motivation to combine? I’d really love to see those examples. It worked prior to KSR and now it just doesn’t work. The TSM test was the ONLY test and now the Supreme Court says it isn’t the only test and the Patent Office has a list of alternative rationales and the Federal Circuit has a growing number of cases applying those rationales that would never have been successful under TSM.

    How anyone can think that the law of obviousness is the same now as it ever was is nearly incomprehensible. Of course, I am happy to be convinced with citations to applications and cases from the Federal Circuit showing that the law of the land is still TSM in a post-KSR world.

    Looking forward to that TSM proof, which must exist if you are correct.

    -Gene

  19. Gene Quinn October 7, 2011 3:13 pm

    I would also love to have someone explain how Tokai v. Easton is just the same law applied as it existed pre-KSR.

    See: http://ipwatchdog.com/2011/02/01/ksr-fears-federal-circuit-off-the-deep-end/id=14807/

    There are plenty of cases that clearly demonstrate a substantial shift in the way the CAFC handles obviousness. I don’t understand why Judge Rader’s own words recognizing that Deuel has been overruled doesn’t dispose of the issue completely. He recognized that the law prior to KSR was that obvious to try was not a valid rejection. He acknowledges that now it is a valid rejection. What more evidence does anyone need?

    As for the USPTO, the guidelines seem to be a distillation by the PTO lawyers for the examiners. I went through every case when I was preparing KSR questions for the PLI patent bar review course, and went through the KSR guidelines with a fine tooth comb. While I might have written some things differently I don’t know that anyone could say that the KSR guidelines are not within the envelope of a fair reading of the cases. Of course, what is a fair reading itself seems questioned given that the Supreme Court so clearly overruled TSM as the only test and said that obvious to try is a valid rejection.

    I’m still looking for those examples showing that TSM works the same as it ever did prior to KSR.

    -Gene

  20. David Boundy October 7, 2011 3:47 pm

    Gene —

    I always advise junior lawyers that I’m mentoring to read carefully first, type second.

    I don’t think anyone is saying “the same.” To take my remarks as an example, I said “every crucial element” but stated that there were a few changes at the edges on the amount of evidence required to support invalidity or unpatentability. You seem to admit that KSR is entirely consistent with Dystar and Alza, but then somehow you brush them off the table in order to create a strawman. That’s kind of weird, actually…

    Lets look at where the differences are, and where they aren’t.

    KSR makes clear that expert testimony is sufficient evidence to support summary judgment, which was a questionable proposition before. But the document evidence that the Supreme Court actually relied on would have reached the same result on final judgment, under pre-KSR law.

    Before KSR, as a practical matter, an attacker had to have prior art to show every footstep in the trail leading all the way up to the invention. After KSR, it’s permissible to rely on the inferences over the art that one of ordinary skill would draw. The judges tend to disagree a bit over how far those inferences can reach. Rader changed his approach very little, and his approach is fully consistent with KSR. (Other judges changed their approaches more, and except for the weight to be given expert testimony, I don’t think they are fully consistent with KSR. But they have the Presidential appointment and Senate confirmation, so their opinions count, mine don’t, but there you go.)

    All these have a fairly large effect on summary judgment, but rarely move the needle on ultimate outcome (and should move the needle almost never in ex parte prosecution, where there’s no expert testimony).

    If more appeals from the PTO Board to the Federal Circuit raised administrative law and procedural grounds (where the PTO gets a highly non-deferential standard of review), instead of patent law grounds (where the PTO gets high Overton Park deference), the rates of reversal of PTO Actions would be quite different, and the PTO would have to fall in line to follow the law pretty quickly. The Board’s inferences are all but unassailable as issues of fact, but the Board’s procedural means for reaching those inferences is often unsound and readily appealable:
    – often before Frye in January 2010 and occasionally after, Board applies a wrong burden of proof or standard of review — both reversible error almost per se (very hard for PTO to show harmless error when a fact was decided on the wrong burden of proof)
    – Board relied on insubstantial evidence barred by Universal Camera
    – examiner breached procedure, which prevented an effective preparation of the appeal before the Board (5 U.S.C. § 704; Stone v. Federal Deposit Insurance Corp., 179 F.3d 1368, 1376 (Fed. Cir. 1999) (“Our system is premised on the procedural fairness at each stage of [agency] proceedings. A [party before the agency] is entitled to a certain amount of due process rights at each stage and, when those rights are undermined, the [party] is entitled to relief regardless of the stage of proceedings.”); Phillips Petroleum Co. v. Brenner, 383 F.2d 514, 517 n.8, 154 USPQ 211, 213 n.8 (D.C. Cir. 1967) (“Meaningful judicial review embraces authority adequate to cope with and excise the aftermath of arbitrary rulings of the Patent Office, if any, that taint its final action and affect individual rights. In general, judicial review provisions of Title 35 marked an effort by Congress to assure, not to restrict, adequacy of judicial review of the Patent Office.”)

    Because the administrative law didn’t change, most (not all, Gene, not all, just most) PTO decisions should come out the same as they did before.

  21. Gene Quinn October 7, 2011 4:00 pm

    David-

    We are going to have to agree to disagree. We must be working in different technologies, talking to different patent practitioners and reading different Federal Circuit cases. TSM is not the law any more and that is just the tip of the iceberg.

    I’m glad that you find that things are the same and that TSM is still working, as well as citing to cases that pre-date KSR saying “obvious to try” cannot be the basis of a rejection. It is good to hear that you are able to convince examiners not to apply the rational in the guidance and to ignore MPEP 2143 other than (G). Notwithstanding, I’d still love some citation of examples so we understand how and where you have been successful with these arguments before examiners, at the BPAI or at the Federal Circuit. Because if you are right you should be able to provide proof by way of illustrative examples.

    -Gene

  22. step back October 7, 2011 5:12 pm

    @David,

    Thank you for the cites included in your exegesis re administrative law (APA) -those are keepers.

    I’m going to stake my position midway between yours and Gene’s.

    If Gene is saying that the PTO has markedly changed its behavior in view of KSR, I agree with that.

    If you are saying that most patent practitioners do not understand administrative agency law and/or don’t know how to see all the factual details present in KSR –I’m going to agree with that too.

    Far too many appeals go up to the CAFC from adverse PTO Board decisions where the appeals are based on argument of counsel, which as those who litigate know; is not “evidence” (is not substantial evidence). Unless you create a proper administrative record below filled with “evidence”, appealing to the CAFC is a complete waste of time (and money). But then again, is anyone listening? No.

  23. David Boundy October 7, 2011 5:49 pm

    Gene, if you don’t read, we can’t agree on what the issue is. If we don’t agree on what the issue is, we can’t agree to disagree.

    I fully concur that among examiners, post-KSR, the PTO has allowed anarchy to prevail. Among examiners, there are no rules–even the written rules in the latest Federal Register on KSR are simply ignored. Examiners, SPE’s and TC Directors all realize that they get more counts the less they follow or enforce the rules.

    But examiners wasn’t the topic, was it. The topic was KSR itself. Whether the PTO is even pretending to implement KSR as the Supreme Court wrote it is an entirely different issue.

    Please don’t change the subject.

  24. Blind Dogma October 7, 2011 6:07 pm

    David,

    I would daresay the “reading’ goes both ways. It would be hard for Gene to “change the subject” as he has been the one that has dictated what that subject is.

    To a certain extent, both of you have been arguing past each other, but with enough overlap to amke things seem like you are talking about the same thing.

    You haven’t been.

    As EG would say – Peace!

  25. Gene Quinn October 7, 2011 8:07 pm

    David-

    I’m not changing the subject at all. This article was about whether Chief Judge Rader is correct when he says that Federal Circuit case law is the same as it ever was. He stated that KSR had no impact and nothing has changed.

    I agree with BD that we are talking past each other, and it dawned on me as I was at the gym this evening. Yeah… what a life… even when exercising I can’t escape thinking about such exciting stuff.

    My position is that KSR changed the law, which has been recognized in CAFC case after CAFC case. As a result of those cases the USPTO has had to try and make sense of a whole lot of nonsense. Once subjectivity gets introduced by the Supreme Court via CAFC cases it is no wonder that patent examiners have a widely divergent view of what things mean. This is exactly what all of us knew would happen. It was already difficult to get consistency and to some extent intellectual honesty, at least in a first office action and to a large extent even before an RCE. A lot of that has changed with the count system changing, but we all knew that KSR would lead examiners to over use and abuse the decision.

    If we take a step back perhaps we are agreeing on more than we are disagreeing, although I don’t know I would say the PTO has “allowed anarchy to prevail.” I’m not sure what they are supposed to do with 6,300+ decision makers and a Supreme Court decision that was careless with word choice.

    If you want to focus on the case itself that is fine, although I don’t know how you can divorce the case from the consequences. But even if we focus on the Supreme Court decision alone what I said was completely correct. The Supreme Court decision itself does away with the TSM test, which is what was applied exclusively by the CAFC. Prior to the Supreme Court doing away with TSM if you could show there was no teaching, suggestion or motivation you would prevail — and that includes prevailing at the CAFC. The Supreme Court decision itself says a claimed invention can be found obvious because it is obvious to try, which before the Supreme KSR decision was not a valid rejection. So I just don’t see how anyone can say that KSR didn’t change the law. For crying out loud even Judge Rader’s decisions recognize that KSR changed the law.

    Are you really arguing that the Supreme Court KSR decision did not change the law of obviousness? Are you really agreeing with Judge Rader when he says that KSR hasn’t changed CAFC handling of obviousness at all?

    -Gene

  26. step back October 7, 2011 9:06 pm

    If we take a step back … the PTO has “allowed anarchy to prevail” … [because of] a Supreme Court decision [KSR] that was careless with word choice.

    Gene,

    There was anarchy at the PTO even before KSR.

    Basically, an examiner makes up a story about who PHOSITA was and how he/she thought at the critical time (before time of the invention). Needless to say, the story always ends with PHOSITA exclaiming, “Eureka! that’s obvious to me.”

    The only thing is that before KSR, the USPTO examiner was limited in his story-making abilities by the need to back it up with a specific TSM example.

    KSR has loosened the reins by allowing the examiner to back up his made-up-story re PHOSITA with things other than TSM; things like “common sense” and “obvious-to-try” (when and only when there are market pressures in that direction to begin with).

    So yes, at the end of the day Rader is wrong if he says KSR changed nothing. It expanded the range of BS made-up stories that examiners and infringers can throw at a claim when trying to kill it on the basis of “obviousness”.

    On the other hand, both examiners and accused infringers are still supposed to back their BS made-up stories with “substantial evidence”. Problem is, many patent practitioners can’t see a difference between pure made up BS and true “substantial evidence”.

  27. 4Mark October 8, 2011 4:24 am

    Nice summary from Step Back. This is exactly how it seems to me too. Not so much a change of the law, rather a change of attitude and of rhetoric, being exhibited by PTO Examiners intent on managing the workload, attacking the backlog and resisting the progress of what they perceive as trivial subject matter.

    Just like the EPO in recent years. Do others agree?

  28. William of Occam October 8, 2011 8:47 am

    resisting the progress of what they perceive as trivial subject matter

    You read far too much into their actions. There is no such “noble” mindset of “protecting against the advance of patents of trivial subject matter.” Witness the number of patents that are still granted that people hold up as examples of trivial subject matter.

    Further, the US examiner does not care one whit about the EPO. To make such a comment is to again implicate forces at work that simply are not there. Now whether the EPO examiners may likewise feel that they are mere cogs in a giant wheel and are pressured to mass-produce examinations on some cookie-cutter schedule, well that’s a different discussion.

    There is a razor that holds here: you have grunts trying to meet quotas and have been given a quick and mindless tool to do so. They do so. They will continue to do so until made to do otherwise.

  29. Just visiting October 8, 2011 10:52 am

    “can you provide me with application serial numbers that post-KSR you have been successful making an argument that there is no teaching, suggestion or motivation to combine.”

    You must have overlooked one of my earlier writings in which I clearly indicated that I don’t make a TSM argument anymore. I make an argument that the Examiner has failed to articulate a reasoning with some rational underpinning. IMHO, they are the same argument, they are just worded different. Also, to be clear, the Examiner almost always articulates a reasoning – however, they are based upon a rational underpinning.

    The Tokai case is an abomination, and Newman got it right (again). Again, as I noted above, there are some Federal Circuit judges that seem hellbent to invalidate patents.

    “There are plenty of cases that clearly demonstrate a substantial shift in the way the CAFC handles obviousness.”
    OK. What, exactly, is the shift?

    “The Supreme Court decision itself does away with the TSM test, which is what was applied exclusively by the CAFC.”
    I disagree. The Supreme Court enunciated a “rational underpinning” test – which they pulled from In re Kahn. To me, the TSM test and rational underpinning test are the same. Explain how they are different. Regardless, they didn’t do away with it – they said it wasn’t the exclusive test. What they didn’t realize, because not one of the briefs submitted to the Supreme Court addressed this issue, is that the invention at issue under KSR was obvious under TSM. What the Supreme Court performed in their decision was a TSM analysis. They found a teaching/suggestion/motivation. They just didn’t want to call it a TSM analysis because they (apparently) thought it was too limiting.

    FYI – look at the following USPTO Appeals:

    2009-014431
    2009-012958
    2009-014419

  30. Gene Quinn October 8, 2011 1:00 pm

    JV-

    You ask: What, exactly, is the shift?

    I guess if you assume that TSM is the same as the 7 rationales there is no difference. How that is the case is curious since TSM is one of the 7 rationales which means there are 6 new rationales. The fact that you (and others) can scare examiners into not applying the other 6 rationales because they don’t want to go through the mental gymnastics required doesn’t mean that things haven’t changed. As we all know there are many examiners who work for the Patent Denial Authority, and they are applying the law and guidance post-KSR very differently, which forces you to take more narrow claims, take nothing, file continuations or appeal.

    So we will need to agree to disagree. You will never convince me that KSR ratified the TSM test and didn’t say “obvious to try” is a valid rejection. Both things are clear for everyone to read. You saying that “the TSM test and rational underpinning test are the same” is also something I will never agree with, and I suspect the vast majority of the patent bar would disagree with you as well.

    I will just leave off by pointing out that I agree with you that Tokai is an abomination and Newman got it right. That being said it is still the law and there are still CAFC judges that feel it was correct and will apply it. Tokai never would have come out this way prior to KSR, so it seems pretty clear that I am correct. The law of the CAFC is simply not the same post KSR regardless of what you want to try and believe.

    -Gene

  31. Just visiting October 8, 2011 4:32 pm

    “I guess if you assume that TSM is the same as the 7 rationales there is no difference.”

    Gene. How are any the other 7 rationales less restrictive than the TSM test? My position is that they all require something that explains “why” one skilled in the art would combine the references, which to me is the same as a teaching, suggestion, or motivation. In fact, I love it when any Examiner attempts to use any of the other rationales — because they invariably don’t make the findings necessary to invoke them.

    You say there is a difference, what is it?

  32. Old Examiner October 8, 2011 6:40 pm

    Seriously, isn’t “common sense” the logical appraoch to determining patentability? For almost 40 years, I have been employing common sense to determine obviousness. Certainly, I always relied on teachings/suggestions of the art to support a 103 rejection, but I always formulated the rejection based upon whether or not it made any sense to me. I’ve also always been willing to withdraw a rejection if so warranted by the arguments of an attorney. Over my career, my allowance rate has consistently been at around 65%.

    It also seems to me that a lot of the junior examiners are scared to allow claims for fear of not having found the best art and getting thier cases bounced by Quality Review. This stems from a flushing away of our classification system and reporting to supervisors unfamiliar with the art. Accordingly, any 103 rejection flies so as to preclude allowance. It is why the allowance rate in the Office sank to around 30%. The COPA cases won’t help this situation.

  33. Stan E. Delo October 8, 2011 8:08 pm

    Gene-

    Just the fact that he proposed such a dare seems to send up at least yellow flags for me. It tends to make me wonder what his motives might be for positing such a strange question in the first place. It seems to want to make the whole issue go away, with very little consideration. Fortunately I am independent, so I can say things like this that attorneys might want to shy away from once in a while. Somebody has to speak up though, when it is very obvious to them that the Emperor is in fact not wearing any clothes after all. “Pay no attention to that small man behind the curtain, because I am the great and powerful Wizard of OZ!”

    The wizard of shifting sands it seems to me, so colour me a bit Blue this afternoon. Anybody up for a quaff of my new Cobalt Blue Kool-aide? Just the slightest touch of a Manganese chaser, and it tends to go catalytic, so be careful!

    Best regards,
    Stan~

  34. Stan E. Delo October 8, 2011 8:26 pm

    OE-

    Thank you Very much for your take on things! I plan to try to file as much stuff as possible in the next 17 months, which is not especially convenient for me right now. It is really good to hear the other side of the story for a change. Now if the Congress would just Stop Stealing the funding for the USPTO! I heard the 15 % fee increase will allow Congress to exapproriate $600,000,000 from the budget of the USPTO in a single year, leaving all of us inventors hanging out to dry and being examined by others for How Many years? Maybe average pendencies of over 40 months? Not good. Too many hands in the till.

    Best regards,
    Stan~

  35. step back October 9, 2011 6:31 am

    isn’t “common sense” the logical appraoch ?

    @Old Examiner:

    Of course not.

    “Common sense” is a BS made-up phrase that basically means: “I have no idea why I “feel” this way, but I do and if you dare challenge how I feel then I accuse you of having feelings contrary to what common people have, meaning you are so $tupid your IQ falls below the level of even the common denominator IQ”.

    With that said, the desire of every examiner to “win” by finding a gotch-ya piece of prior art, or a gotch-ya broad interpretation of the claim, is understandable. That is your job. It is hard for any one person to play both sides of the table, meaning to be pro-inventor and be the devil’s advocate.

    The problem arises when examiners become over-zealous in their quest and argue “common sense” or “obvious to try” where neither of these is “logic”. Both are irrational forms of circular logic with a twist of rhetoric added to spice up the Kool Aid.

  36. 4Mark October 9, 2011 9:09 am

    I always thought that the most admirable inventions, those most deserving of a patent, were those that elicit the reaction: Dammit, why didn’t I think of that.

    The tricky thing about “common sense”, applied with hindsight knowledge of the invention, is that through that particular prism they are also then the most “obvious”.

    TSM is the only way to go. But TSM as the EPO practises it. Nobody has ever been able to tell me in what way it fails to mediate cleanly and fairly, between the inventor and the public.

  37. William of Occam October 9, 2011 10:09 am

    those most deserving of a patent

    A dangerous mindset to have.

    Patents are “deserving” whether you like them or not if they meet the legal requirements. Period.

  38. Just visiting October 9, 2011 10:32 am

    “TSM is the only way to go. But TSM as the EPO practises it. Nobody has ever been able to tell me in what way it fails to mediate cleanly and fairly, between the inventor and the public.”

    I believe I have had this conversation with (hopefullY) a different poster in a different forum. If my understanding of “obviousness” analysis, as it is applied in the EPO is correct, they assume that the problem is known. I don’t think that assumption accurate reflects the realities of inventing.

  39. Old Examiner October 9, 2011 1:48 pm

    “The problem arises when examiners become over-zealous in their quest and argue “common sense” or “obvious to try” where neither of these is “logic”. ”

    @ Step back

    Isn’t predictable result merely synonymous for common sense? However, you can label it whatever you so desire, but it has to make sense. The rejection can’t be without some logical basis to support it. As I stated, there has to be some teaching or suggestion in the art to make the rejection. I also stated that arguments may rebut the initial rejection, but that rejection should still be made.

  40. Stan E. Delo October 9, 2011 3:59 pm

    OE-

    I think you might have put your finger on it. *Common sense* would seem to suggest a broad view of opinions, hopefully tempered by wisdom as regards being familiar with their particular art units. The potential rejection should of course be considered at least, such that a strong patent right is acquired if valid concerns are addressed in a decisive manner. A real problem I see going forward, is the very real possibility that US patents will be deemed to have a much lower presumption of validity, making them arguably less valuable once the Post Grant Review process takes over from the intre-parte` review at a year, if I recall it correctly? They at least limited PGR to 9 months, and will be applying a no second bite rule, that goes to a *could have but didn’t at the time* limitation. The S. 1145 Patent Reform effort would have granted challenge rights for the life of the patent, by nearly Anyone with an *economic interest*, whatever that is supposed to mean?!

    Cheerio,
    Stan~

  41. 4Mark October 9, 2011 4:56 pm

    Thank you JV. Just what I was hoping for.

    Of course the problem is “known”. That is because the EPO’s “objective technical problem” is derived from the specification, written by the inventor BEFORE the date on which obviousness is tested, that is to say, the date the claim is filed at the PTO.

    The mischief of First to Invent is that obviousness is (well, at least theoretically, if not in practice) assessed at the date of conception, before ever enablement is diligently achieved, and before ever anybody knows whether the “invention” is enable-able or not. How the F do you assess obviousness rationally, before you have even found out how to enable?

    From now on, be careful what you say the invention is, in your app, before you file. For the EPO will give you full faith and credit for that, but only that. That’s fair isn’t it? That’s what you had now better get used to, with the AIA and First to File, hadn’t you?

    And as for you, William, I agree. So does the EPC, which says you are entitled to a patent unless the EPO Examiner can found a ground of objection under the provisions of the EPC that will stand up to legal review. My “deserving” means, “meeting the patent-eligibility and patentability provisions of the applicable statute” no more, no less. What do you think I meant?

  42. Stan E. Delo October 9, 2011 5:33 pm

    No 4Mark it is not fair. American inventors have been robbed of some of their rights by the Congress of the United States of America. They of course don’t know that yet, and it will probably take about 3 years for them to see any effects at all. When they finally realize what a bad mistake it was, it will probably be way too late to change anything, short of random court challenges to try to define the legislation a little further.

    Dasvedanya~
    Stan

  43. Just visiting October 9, 2011 8:30 pm

    “Of course the problem is ‘known’.”

    No … emphatically No!! Many times, identifying the problem is the most important part of inventing. However, what is elusive is not the cure to the problem, but identifying what is the problem Work a few years as an engineer and you’ll appreciate this.

    By assuming that the problem was known, you’ve eliminated a class of inventions. Moreover, such an analysis runs counter to the requirement that “[p]atentability shall not be negative by the manner in which the invention was made.”

    “That’s what you had now better get used to, with the AIA and First to File, hadn’t you?”
    No … as best I can tell, AIA didn’t change the obviousness analysis.

  44. Anon October 9, 2011 11:19 pm

    My guess – 4Mark is the same (EPO Uberalles salesman) poster from Patently-O known as MaxDrei.

    This is not a good thing, as MaxDrei is known there for what is affectionately known as “shilling.” That is, ignoring any points made against the beloved views that are to be espoused and endlessly ignoring any actual (and critical) differences in legal regimes in order to espouse those beloved views.

  45. 4Mark October 10, 2011 2:18 am

    You know, Anon, what is “ignoring” to the one is “responding on point” to the other. As Simon and Garfunkel used to sing “A man hears what he wants to hear; and disregards the rest”. Are you not also a fan of TSM? Would you not be happier, if USPTO Examiners (like those at the EPO) had to fashion all their obviousness objections to pass through the eye of that needle?

    JV, I don’t assume the problem is “known”. You seem to have no idea how EPO-PSA works in practice.

    But in time you will. When AIA comes in to force, the US courts have to face it, that obviousness must be judged as of the filing date of your app. What happens then to the legal approach to obvioousness? I think I can foresee, but I await with interest. Meanwhile, in the best interests of your clients, be sure to draft your apps tomorrow to fit in with the ways obviousness will be determined, ten years from now, OK?

    I seem to remember MaxDrei posting here too, a long time ago. I was wondering what happened to him.

  46. 4Mark October 10, 2011 2:52 am

    JV, on your “identifying the problem” point.

    I agree, subjectively, identifying the problem is often the key to progress. But we would not want to decide obviousness subjectively, would we? Who knows what examiners boards and judges might decide, based on their subjective “common sense”.

    Better then, to do it objectively (like in the EPO) by identifying the “objective technical problem”.

    Then, when they have done that, the next step at the EPO is to ask whether it was in fact, repeat, in fact, the objective case that the inventive step lay in the identification by the PHOSITA of the problem to be solved. The EPO White Book of its case law goes back to 1980. It is replete with caselaw on the class of European patents covering what we call “problem inventions”. The landmark case was handed down in 1981, if I remember right.

    Anon, this is what you mean by “shilling”, right? Am I then not permitted to respond to the point raised by JV.

  47. Anon October 10, 2011 8:02 am

    what is “ignoring” to the one is “responding on point” to the other

    No. That is incorrect, no matter what songwriteres you want to reference. Such “black” is “white” nonsense is a Patently-O tactic.

    Anon, this is what you mean by “shilling”, right?

    No. Providing a case that is on point (here, your reference of such a case is close enough) to actually be a comment of substance. It is the other rhetoric you lavish that is “shilling.” It is the “EPO is best and eventually the US will recognize that” that is shilling.

    Am I then not permitted to respond to the point raised by JV.

    Absolutely. But then again, you probaly know that actually answering someone is not shilling. Re-read my posts to see if you can figure out what I indicate is “shilling” and stop purposefully conflating real posts with real answers with the mistatements of what “shilling” is – that is a decidely “Patently-O” tactic – one given very short leash here by Gene (and thankfully so).

  48. Just visiting October 10, 2011 9:02 am

    “When AIA comes in to force, the US courts have to face it, that obviousness must be judged as of the filing date of your app. What happens then to the legal approach to obvioousness?”

    Unless there is a priority battle, that determination of obviousness is made at the time of constructive reduction to practice of the invention (i.e., the filing of the application). As such, I don’t see a problem.

    “But we would not want to decide obviousness subjectively, would we?”
    Hello???? What world are you living in? A conclusion of law (e.g., obviousness) is one of subjectivity.

    “Better then, to do it objectively (like in the EPO) by identifying the “objective technical problem.”
    No Max … we’ve been over this time and time again. Stop wasting your time. Nobody wants to listen to your drivel/shilling over here. Stick to patently-o, where trolling is encouraged and your fellow trolls of MM and 6 reside.

    BTW – your “objective” technical problem is a subjective determination. If you don’t know why, then you don’t understand the difference between the words “objective” and “subjective.”

    “Who knows what examiners boards and judges might decide.”
    Aren’t you the one that keeps saying that the EPO doesn’t use precedent and each judge is able to decide an issue on their own? If so, how can you answer the above question as it regards to the EPO? Without precedent, the same issues decided in one court is decided differently in another court. IMHO, not a good way to run a legal system.

  49. 4Mark October 10, 2011 10:01 am

    Gene, you there?

    EDITORIAL NOTE: REMAINDER OF MESSAGE DELETED AS UNNECESSARILY CONDESCENDING AND NOT CALCULATED TO FORWARD A SUBSTANTIVE DISCUSSION

  50. Gene Quinn October 10, 2011 11:21 am

    4Mark-

    A portion of y our previous comment has been deleted as being condescending. If you don’t want to participate in a substantive discussion and are just going to be a nuisance you have plenty of outlets for that on the Internet.

    -Gene

  51. 4Mark October 10, 2011 12:19 pm

    Gene I do want to participate in a substantive discussion and I think my posts up to now have demonstrated that. But I had not realised what a nuisance I was making of myself. I’ll stop that, right now.

  52. Gene Quinn October 10, 2011 12:28 pm

    4Mark-

    Just to be perfectly clear, in a real smart a$$ way you asked— should I leave now before you Gene (who is trigger happy with banning people) bans me? It should be plain to see that this type of comment is NOT calculated to lead to a substantive debate. If you don’t see that then that is a YOU problem.

    Stay if you want, go if you want, I don’t care. But ask to be banned again and you will be banned. I don’t have time to put up with that brand of nonsense. There are plenty of places online where you can go and say whatever kind of outrageous thing you want. I’m not going to tolerate nonsense here.

    -Gene

  53. step back October 10, 2011 2:33 pm

    @Old Examiner:

    No.

    “Common sense” is not “predictable” by another name.

    “Common sense” is failure to articulate an actual reason. It is a covering up of a lack of an explicitly written down reason with a psychological ploy that has no sense or logic within it whatsoever.

    Maybe you honestly “feel” that in making an obviousness rejection you have some inner “sense” for why something is obvious. But that is not good enough. The law requires you to spell it out in writing; not sweep it under the rug of a totally uninformative, “common sense” line.

  54. Gene Quinn October 10, 2011 4:39 pm

    @step & @Old Examiner

    I have to agree with step that common sense is not merely predictability by another name.

    In Wyers v. Master Lock the CAFC said: “the ultimate inference as to the existence of a motivation to combine references may boil down to a question of common sense…” The court then goes on to say:

    “It is simply a matter of common sense that the sleeve used in Down, in a towing attachment quite similar to a hitch receiver/tow bar arrangement, could be combined with a barbell-shaped hitch pin lock in order to address the known problem of different aperture sizes in standard hitch receivers and the shelf-space problem experienced by retailers.”

    The trouble with referring to “common sense” is that it is always a conclusion. The Court tries to say that this problem was known, that problem was known, this patent did this and that patent did that. Ultimately, it winds up being a judgment call that says… because of the foregoing it would be common sense. That is not reasoning to support a conclusion, it is a conclusion plain and simple. If A, then B thus Zebra doesn’t make a conclusion. At the end of the day what common sense allows is for the appearance of reasoning that manifests itself in the subjective opinion of one or more individuals (one in the case of an examiner, 3 in the case of the CAFC).

    That is why TSM was the appropriate test. It prevented subject analysis and qualitative judging of the value of the inventive contribution. If there was no TSM then it couldn’t be obvious. Now with common sense an invention is obvious because obviously it was not inventive.

    -Gene

  55. step back October 10, 2011 9:21 pm

    @Old Examiner

    … and furthermore, as David Boundy and I have tried numerous time to explain (perhaps not in this specific thread), it is a violation of patent law (of 35 USC 132) and of administrative agency law (the APA) for the USPTO to not clearly articulate the “reasoning’ behind its conclusion so that applicant is “notified” per applicant’s rights under section 132 and so that a reviewing court is apprised of the way in which the agency arrived at its final determination (see 5 USC 706)

  56. Old Examiner October 11, 2011 12:09 am

    As i stated in my previous post, there has to be some teaching or suggestion in the art to support the conclusion of obviousness. You can label it whatever you so desire.

  57. step back October 11, 2011 1:36 am

    OK then. We are all in agreement. There must be TSM.

    Now who is going to go over to those 9 hold outs at the SCt. and tell them?

  58. Visitor October 12, 2011 1:56 am

    David, first off, you’re a condescending jerk with your mentor comment. You and your mentee’s can *** **. Just an observers opinion suggesting you act less of a tool.

    But in your fine tradition, the (dork) supreme court takes a case. Sure, they can avoid all the chatter and simply say “affirmed” to achieve no change in the law. But instead, cagey badgers they are, the wrote about not changing things ad nauseum for pages on end! You’re brilliant.

    And high. And in good company with rader. In person he comes off, in my opinion, as an ego maniacal tool that has little hesitation in belittling/condescending towards others. And heck, since he and you say so, it must be so. Brilliant as you and he are, we’ll all go back and re-read more per instructions; clearly we need to since we disagree, it can only be due to our inferior intellects.