Obviously Non-obvious and Patentable Inventions Part I

Once again I find myself traveling for PLI, this time I am in an airplane heading for Oakland, California, with the final destination of San Francisco, California via taxi. This will be the last live location for the PLI Patent Bar Review Course for 2009. John White and I will be in San Francisco teaching at PLI headquarters downtown starting Wednesday and running through Sunday. There is always a home study course available for those who want to take the course between now and our next live course, which will be from January 6-10, 2010 in Washington, DC. So as I travel cross country I will be working on a few articles I have wanted to get to for some time, but which obviously don’t require contemporaneous research. One such article is a different kind of KSR perspective. Since the infamous and horribly troubling decision by the Supreme Court in KSR I have from time to time looked at the crazy patents that continue to be issued by the US Patent Office and concluding that KSR is much ado about nothing.  For example see Crazy Patents in an Era of Alleged Patent Quality. Of course that is not really true, but the Supreme Court KSR decision did replace the previous objective test and supplanted it with a subjective test that literally requires inventors to demonstrate they undertook a fools errand because they knew their invention could not work. The only way that makes any sense logically is if it could be used to prevent trivial, perhaps stupid patents. That hasn’t happened though, so what good did KSR do? None, but it has and will cause harm. Notwithstanding, I thought it might be fun to identify a few inventions that clearly are not obvious, because if they were as obvious as they seem a variety of very smart people would have figured them out long ago. This is the first in what will hopefully be a fun series of obvious non-obvious inventions.

What KSR did was change the calculus with respect to what is obvious in the first instance. In KSR the Supreme Court threw out the Federal Circuit “teaching, suggestion or motivation” test, frequently referred to simply as TSM. What KSR did not disturb, however, was the law relating to secondary considerations. Today the law says that in order to determine whether an invention is obvious one must look at the prior art and determine what it means, look at the claimed invention and then consider what a person of ordinary skill in the art would appreciate, because the person of skill in the art is the relevant audience. The Supreme Court has said, most notably in Graham v. John Deere, that it MAY also be useful to take into consideration objective evidence of non-obviousness, which is just another way to say “secondary conditions” may be taken into account. The Federal Circuit has long since overruled the Supreme Court (yes, really) and the law says that a proper obviousness inquiry MUST take into consideration objective indicia of non-obviousness. The Federal Circuit test contradicts the Supreme Court test, but it is what is applied today, and it makes sense because secondary considerations are a reality check on whether it is fair to say an invention is obvious.

So why the primer on secondary considerations? Not all objective indicia of non-obviousness are created equally. There is a perception in the independent inventor community that if an invention doesn’t exist on the market it must be patentable. That is not true because there are a variety of reasons why an invention could be patented and not be on the market, and in fact this is quite common. Nevertheless, a very strong consideration is when there is a long felt, well established need that has gone unaddressed for many years. So the fact that no one has invented, even something simple, can be strong evidence of non-obviousness when there is a well documented need. The longer the need is well documented the better the case for non-obviousness. So one can effectively argue that something quite obvious could hardly be obvious if there is a long felt, unmet need. I will go one step further and say that if there is a long felt need that the best and brightest cannot figure out that has to be strong evidence of non-obviousness, right? That would mean that something like a playoff system in the college football league formerly known as Division I couldn’t be obvious, right?

Proposed Non-obvious Invention 1
College Football Playoff

What was formerly known as Division I College Football is now “officially” Football Bowl Subdivision or FBS for short. Year after year the public calls for a playoff system, talk sports radio and TV broadcasters all call for a playoff system, but yet it never happens. Year after year we get lame excuses from University Presidents, who are undoubtedly highly educated and smart people. They do not support a playoff for Division I (I refuse to use FBS) because they allege that it would take students out of class even more and interfere with their education. Never mind that we all know there are “special” accommodations given to football players at big schools, which range from them not going to class, to getting tutors, to having people take exams for them. They claim that a playoff would force the college football season to cross over two semesters, never mind that this already happens in Basketball and other sports. They also claim that it is not necessary because the current system is just fine. Never mind that this year there could be as many as 5 teams that go undefeated (i.e., Alabama or Florida, Texas, TCU, Cincinnati and Boise State). Also never mind that the way Division I is currently handled clearly violates US Antitrust laws. You see, there is a lot of money at stake and many schools simply have no chance to play for a national championship even if they win every game on their schedule because there is a bias against non-BCS conferences, and a bias against the Big East (Cincinnati has no chance of playing for a national title even if they go undefeated in a BCS conference). Also please ignore the fact that Division II and Division III college football both have playoffs, as do every other college sport.

We all know why the excuses are made. It is to keep the bowl system in tact, which rewards a handful of conferences that are in collusion, hence the Antitrust violation. But we can’t assume malice, can we? The law is not written to presume malice or intent, and University Presidents are a distinguished bunch that are very smart. You would have to think that if a playoff system were obvious a bunch of the best and brightest would have figured it out by now, particularly given the clear violation of US Antitrust laws, but no such common sense approach is forthcoming. So I think it is fair to say that a Division I playoff system is anything but obvious, which is further suggested by the fact that President Obama is on record saying he thinks a playoff system is appropriate but there seems to be no movement on the part of the Department of Justice to force such a playoff and eliminate obvious (pun intended) unfairness.

So the best and brightest in academia cannot figure out a solution, and neither can the best and brightest in the US federal government. Therefore, I have “invented” a non-obvious solution. I propose a playoff for at least 4 teams play in a single elimination format with the winner advancing to the next round and the loser not advancing and being done for the season with no chance for winning the national championship (a necessary caveat so that voters do not pick a team to be national champion even after they lose in the playoffs). In the preferred embodiment 8 teams will make the playoffs, which would require 3 weeks of playoffs to determine the national champion. A version of this invention can have 16 teams make the playoffs (requiring 4 weeks of playoffs) or 6 teams, with the top 2 seeds receiving a buy in the first round. To ensure this is non-obvious a version could have a small number of byes, such as for example the top 4 teams, with 8 teams seeded 5 through 12 playing in the opening round to narrow down to 8 teams for round 2. Other embodiments include a round robin format that is not single elimination, perhaps with 4 teams each playing each other before identifying the best team out of the 4. In still further embodiments rather than playing a football game and deciding the championship on the field the teams could play checkers, chess, rock-paper-scissors or any of a variety of other games to determine which football team is the national champion. In some versions of the invention flipping a coin in lieu of an off the field or on the field game can be employed.

In future installments we will take a look at a method of lending money to only people who have an income such that one can logically and realistically believe that the lendee will be able to repay the lendor. We will also explore such other obviously non-obvious inventions as a method of stimulating the economy by cutting taxes, which at one point in time was obvious but must have turned into something non-obvious because this historically successful strategy is being ignored in favor of a strategy that has NEVER worked. We will also explore a method of lowering health care costs by establishing a national marketplace for the purchase of health insurance benefits, thereby eliminating the tremendous variation in cost of the same exact policy from State A to State B. We will also explore other inventions like a method of forcing the Federal Circuit to follow its own precedent, a method of forcing the Federal Circuit to apply Rule 56 rather than making up law and ignoring regulations at their whim, a method of preventing Microsoft from continually releasing defective operating systems and then charging consumers to upgrade to a system that works like the original operating system was supposed to, a method of ensuring Federal Circuit decisions make sense comprising having Judge Newman and Judge Rader sit on every three-judge panel, and a method of preventing the federal government from trampling on the First Amendment by actually allowing EPA officials to post YouTube videos expressing their own opinion on their own time comprising reading the First Amendment to the President and his Cabinet (including the Czars) VERY slow and EXTREMELY loud, followed by “which part of this is confusing.”

Stay tuned for these and other obviously non-obvious inventions. Feel free to make suggestions. This is going to be a lot of fun!


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Join the Discussion

7 comments so far.

  • [Avatar for Gene Quinn]
    Gene Quinn
    November 18, 2009 01:40 pm


    To some extent you are correct. TSM used to mean that if there was no teaching, suggestion or motivation then the invention could not be obvious. After KSR if there is teaching, suggestion or motivation the invention is obvious, but may still be obvious even if there is a complete lack of objective evidence suggestion there is any teaching, suggestion or motivation found within the prior art. Now without TSM an invention can be determined to be obvious based on the invention being common sense. What the Supreme Court failed to do is provide any guidance with respect to what is common sense, so it now is largely a subjective test without any king of objective grounding.


  • [Avatar for American Cowboy]
    American Cowboy
    November 18, 2009 12:27 pm

    Even if SCt is not going to defer to FedCir, which may not even be constitutional, at least they should be mindful that Congress was attempting to create predictability. SCt seems to be offended by FedCir attempts to acheive predictability in patent cases.

  • [Avatar for EG]
    November 18, 2009 11:57 am

    Sorry, add “is” to end of the first sentence in the first paragraph and “require” to the end of the last sentence in the first paragraph.

  • [Avatar for EG]
    November 18, 2009 11:54 am

    “Congress established the FedCir to reduce uncertainty in patent law decisions to enhance the likelihood of predictable results in patent cases.”


    You and I are of like mind. And up until 2006, SCOTUS pretty much let the Federal Circuit establish what patent law jurisprudcence. With KSR International et al., that has all gone by the boards. SCOTUS has no concept that what it says on patentability will need to be applied by ~6000 non-legally trained patent examiners, and KSR International (like Graham before it) provides nothing but a nebulous standard to apply under 35 USC 103. Put differently, patent examiners are not equipped to do the “fact finding” that both KSR International and Graham.

    The currently nonsensical Bilski “machine or transformation” test is one unfortunate consequence of SCOTUS ruffing up the Federal Circuit too often lately. I’m not saying the Federal Circuit always get it right (recently they’ve shown too much abitlity to get it wrong or create confusion as to what’s right). But SCOTUS would do well to heed the mandate by Congress when it created the Federal Circuit, and be more “sensitive” in when to take patent cases from the Federal Circuit, and in especially understanding that the Federal Circuit, not SCOTUS, was intended to be the primary source of patent law jurisprudence.

  • [Avatar for Patent Gal]
    Patent Gal
    November 18, 2009 11:39 am

    Thanks for an immensely entertaining article. I love it! Can’t wait for the rest!!

  • [Avatar for John Spevacek]
    John Spevacek
    November 18, 2009 11:37 am


    Nice post. I like it.

    As a PHOSITA, I have a question about TSM. It seems to me like they (The SCOTUS) didn’t “throw it out”, but instead said that it use to be both a necessary and sufficient test, but it now is only necessary but not sufficient. Is that correct?

  • [Avatar for American Cowboy]
    American Cowboy
    November 18, 2009 10:23 am

    Gene, a thought occurred to me recently and the KSR cases are an example.

    Congress established the FedCir to reduce uncertainty in patent law decisions to enhance the likelihood of predictable results in patent cases. That would reduce the need to ligigate and reduce its costs when needed. If the outcome of a suit or a motion is pretty clear, the parties have reason to settle; if it is unclear, they can cast their lot with the judge’s discretion.

    When FedCir established the relatively bright line rule of TSM, it was trying to provide enough certainty in the law to yield Congress’s intended result. In another issue, FedCir used to hold that patentees who prove infringement almost automatically get awarded injunctions, but SCt made injunctions discretionary.

    When the SCt reviews these precedents of FedCir, should they not give some deference to the Congressional intent to foster predictability. Instead by saying that TSM is gobbledegook and such, they make patent litigation a crapshoot, raising the cost and need of litigation. The patent litigators love it, but that does not make it good public policy.