The Problem of Reducing Patentability to Novelty

By Neal Solomon
July 31, 2017

EDITORIAL NOTE: This is part 3 of a multi-part series by author Neal Solomon. If you have missed previous installments please see part 1: The Myth of Patent Quality; and part 2: Patent Quality Relies on a Fictitious Narrative.

The patent system consists of a fundamental bargain. In order to encourage invention of original technical research, the government confers a limited exclusive right to the inventor. Inventors are supplied with an incentive of limited exclusivity in order to induce the difficult efforts to solve complex scientific and technical problems or to find applications for technological solutions. This bargain is fused with entrepreneurship, with multiple inventors competing in order to promote dynamic economic development. Society and the economy benefit from the progress that results from the incentives to invent that originate in a patent’s exclusive right.

However, a patent is merely a detailed disclosure of an invention. The patent endows the patent holder with key rights as a reward for developing an original invention. The patent is a disclosure to the world about the details of an invention in such a way as to enable others to practice the invention. As such, the patent is an incentive to solve hard problems by contributing an original and useful solution.

One main theme of all patent laws dating back to before the 1624 English patent laws involves an emphasis on the originality of an invention. Great pains have been taken to ensure that a patent is conferred only on a novel invention.

Patent critics mistakenly associate tests of originality of a patented invention with patent quality. Assessing a patent’s originality refers to a patent’s validity, not its quality. Patent validity involves assessing tests of originality, typically novelty. The tests have generally been whether an invention is new and useful, not whether the invention is high-quality. In some sense, the notion of an invention’s quality is non sequitur with the test of scientific novelty. Neither does a well-written description or well-researched invention represent a quality invention. [Nevertheless, written description is a criteria for patent validity in that the specificity and particularity of an invention must be clearly described.] Patent validity mainly rests on a search of prior art to assess originality. The main question of novelty thus relies on the thoroughness of the search of prior art. In some ways, patent quality is equated with this thoroughness of a search for prior art, not with any substantive aspect of an invention. The assessment of patent validity largely depends on delimiting the scope of prior art. Interestingly, this assessment is more art than science, since there is no objective standard for patent validity or assessment of prior art, particularly the combination of prior art.

On the other hand, assessments of patent eligibility rely on an interpretation of scientific abstraction, natural phenomena or a law of nature that lies on the outside of the functional utility of inventions. In the case of eligibility analysis, the goal posts have shifted over the years as the courts exclude matter from elibigiligy for technical reasons, whether in software or biochemistry. For instance, the Supreme Court’s assessment has unduly limited abstract ideas (Bilski and Alice, with a connection to a machine akin to a 19th century test) and natural phenomena (Mayo and Myriad, requiring a human contribution beyond a discovery, despite the wording in the Constitution regarding conferring an exclusive right for limited times to “discoveries,” suggesting a test for originality without utility). Inventions that would have satisfied the criteria in one nation or one time may not satisfy the criteria at other times or places. The net effect of arbitrarily changing standards in order to exclude patents from patentability is ultimately to limit competition and to protect market incumbents. Recent judicial decisions on patentability appear to represent an arbitrary and logically unjustifiable limitation of patent eligibility that has a tendency to retard progress.

Ironically, judicial decisions on patent eligibility tend to depend on inventiveness, with tests of originality that tend to refer to novelty, reducing the issue of patentability to novelty. For example, post-Alice Federal Circuit decisions in Enfish and BASCOM flush out the two-step tests of a technical contribution and an inventive step, thereby reducing patentability to inventiveness.

Uncertainty about patent validity, the changing standards for assessing patent validity or the false equivalence between patentability and novelty, has tended to destabilize the patent system.

Between 1836 and 1952, a patent was valid if it satisfied the test of inventiveness. Did the invention satisfy the question of inventive step? If so, a patent should issue. However, in order to show an inventive step requires, first, delimiting, prior art in order to assess the invention’s originality.

The 1952 Act changed the criteria required to assess originality or an inventive step. Rather than focusing only on “inventiveness,” the new criteria included assessment of “novelty” (35 U.S.C. § 102) and “non-obviousness” (35 U.S.C. § 103). In 1946, a criteria was applied for a “flash of genius” that required an inventor to have an epiphany of an original invention. But this psychological criterion was vague and arbitrary. The 1952 Act created the notion of “non-obviousness” in order to enable a step beyond the indefinite notion of inventiveness. A patent was obvious if some combination of prior art would render the invention not innovative. Nevertheless, the notion of “obviousness” is itself vague and inherently unscientific.

Once a patent is examined and granted by the USPTO, it is presumed to be valid (35 U.S.C. § 282). In 2010, the Supreme Court issued an opinion in i4i, which reiterated 150 years of jurisprudence on patent validity and the high bar to attack a patent that is presumed valid. In order to challenge the validity of an issued patent, a challenger must satisfy the clear and convincing standard. Most challenges have centered on attacking a patent for patentability after the changing criteria of Alice or Myriad and for non-obviousness after Graham and KSR. After satisfaction of the patent eligibility test, most patents have tended to be challenged for non-obviousness by bringing in a flood of prior art that may be combined in different ways to attack the claims of a patent.

Whether in the PTO – in an original examination or in a post grant review – or the courts, the biggest challenge for patent validity to overcome is the challenge posed by the issue of non-obviousness.

CLICK HERE to CONTINUE READING… Up next is a discussion of the problem with obviousness and how the overly inclusive nature of obviousness interpretations has led to problems.

The Author

Neal Solomon

Neal Solomon is CEO of Advanced System Technologies Inc. A prolific inventor of technologies involving semiconductors, communications, data management, imaging, robotics and healthcare, he holds degrees from Reed College and the University of Chicago.

Warning & Disclaimer: The pages, articles and comments on 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 as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of Read more.

Discuss this

There are currently 37 Comments comments.

  1. Ternary July 31, 2017 10:05 am

    “The net effect of arbitrarily changing standards in order to exclude patents from patentability is ultimately to limit competition and to protect market incumbents.”

    Well said Neal. The current mess was not created to enforce some ideal “patent quality” standard. Its purpose is to get rid of competition.

    I am looking forward to your next installment on “obviousness.”

  2. Anon July 31, 2017 10:34 am

    Mr. Solomon, I am curious as to where you found “technological” in your research of the patent bargain.

    Or did that word simply “sneak in” from the ongoing rhetoric about what is “proper” to be covered under patent eligibility?

    The actual bargain deals with those items under the (very broad) Useful Arts category, which is to be contrasted with the notion of Fine Arts (for which, expression and copyright is an analagous property protection avenue.

    I consider the attempts to pin something down to “technological” to be a subtle (but no less incorrect) subversion of the topic of patent eligibility, and in a manner, obfuscates the statutory category portion of 101 with the other portion of 101: utility.

    While most likely not your intent, I would take issue on the point of making sure that discussions of patent eligibility remain clear as to the distinctions of the (very broad) statutory categories and the (also very broad) notion of “the right type of” utility. I am reminded of the aphorism of “give them an inch and they will take a mile.”

  3. JNG July 31, 2017 1:10 pm

    Greetings Mr. Solomon

    “Ironically, judicial decisions on patent eligibility tend to depend on inventiveness, with tests of originality that tend to refer to novelty, reducing the issue of patentability to novelty”

    Were it only so simple.

    As the past 200+ opinions on 101 have shown, the PTAB pretty much doesn’t care if you have novelty, non-obviousness,etc. in your favor; they claim 101 now includes a magical “inventive step” requirement that they can’t define, but pretty much means whatever they want to… their decisions show “inventive step” is now being used as a “super-novelty” test restricted to and available only to particular technologies deemed worthy by these ALJs. I can live with novelty requirements, but 102/103 are now rendered superfluous in the new regime.

  4. Ternary July 31, 2017 2:51 pm

    Anon @2,
    Technology came sneaking in through obviousness determination by “one of ordinary skill.” This is one of the most baffling aspects of patent prosecution, especially to novice patent applicants facing their first obviousness rejection. Determination of “obviousness” is presented as a reasonable (and usually technical) re-construction of the claims from prior art, using hindsight. Many of the obviousness determinations originate from engineering fantasy-land. (Revenge of the English majors?). One of ordinary skill presented solely with cited prior art would often be unable and unmotivated to arrive at the claimed invention.

    It is the 103 section that brings technology in, I believe, not the 101 section. Technology is also why many people object to patents. (you are right: “give them an inch …”) They see many inventions as a predictable result of “known engineering” efforts, not deserving a patent. Somewhat as an answer to an exercise in an engineering textbook, forgetting that it is the question that drives the answer. I gladly refer to the “other blog” where comments often rant about the quality of inventions, how “obvious” they are.

  5. Night Writer July 31, 2017 3:20 pm

    @3 JNG exactly. I agree.

  6. Alex in Chicago July 31, 2017 4:35 pm

    While I like where this series is going, unfortunately I feel it is (so far) too theoretical and high minded in the direction it has gone. The problems with (and thus solutions for) “bad patents” (which I think have been proven to be a problem whenever I look at the most controversial cases) are practical, not legal.

    In other words, the patents/applications often do contain good inventions in the drawings & specification, the problem is in the claims (and the examination). Claims in controversial patents rarely seem to embody the invention that one thinks of when they read the specification, and often they have elements that are not part of a typical examiner’s prior art catalogue (aka EAST). This means patents that are not novel or nonobvious pass through examination with claims directed to inventions far broader than those supported in the specification.

    How does one fix this? More time for examiners does little if the search tools are poor (and they are) outside of EAST. SPEs could be better at training and allowing rejections for 112 issues, but its the SPEs themselves that often need retraining. I think, in theory, IPRs could solve a lot of the problems by outsourcing prior art searches and legal arguments to people with more money and time (often by virtue that only useful patents are examined so closely). Maybe those changes plus the 101 and KSR related legal changes are too much when combined, but I think a way to overcome the practical limitations of the Office without a half million dollar dispute in District Court was needed.

  7. mike July 31, 2017 5:14 pm

    “Patent critics mistakenly associate tests of originality of a patented invention with patent quality. Assessing a patent’s originality refers to a patent’s validity, not its quality. Patent validity involves assessing tests of originality, typically novelty. The tests have generally been whether an invention is new and useful, not whether the invention is high-quality. In some sense, the notion of an invention’s quality is non sequitur with the test of scientific novelty. Neither does a well-written description or well-researched invention represent a quality invention.”

    I think this paragraph is conflating “patent quality” with “invention quality”. A patent to a narrow embodiment of an invention that is an incremental advance over existing technology, if carefully drafted to claim only the novel, non-obvious aspects of the invention and clearly delineate the claimed invention with respect to the prior art can be quite “strong” and provide good protection for the patentee (high patent quality), while a poorly drafted, overly broad patent covering even a revolutionary invention may be too weak to provide any protection (low patent quality). Or am I misunderstanding the thrust of the paragraph?

  8. Tesia Thomas July 31, 2017 5:24 pm


    Not in PTAB.
    Many attorneys start off with overly broad claims and expect them to be narrowed in prosecution.
    The incremental advance would likely be held invalid in PTAB for not being “original” enough thus not “high quality.”

    He’s saying that critics don’t care what is claimed, whether narrow or broad. Broad makes it easier to invalidate in PTAB. They judge the patent validity by the invention.
    For instance, if they think a narrow improvement is obvious in their opinion then they’ll IPR it no matter what is claimed. They’ll string together prior art to have it be proven obvious.

  9. Anon July 31, 2017 5:38 pm

    Ternary @ 4,

    Respectfully, your answer is simply, and plainly, incorrect.

    While I “get” the angle that I think that you are advancing with the “engineering” aspect, “Art” itself, has no impetus to “technological.”

    One of ordinary skill for ANY Art, remains so in the absence of the insertion of “technological.”

    There is a pre-Bilski case from the CAFC that explicitly states that there is NO such thing as a “technological arts” test. I cannot put my finger on it at the moment, and since I am traveling, it may be a few days before I can do so.

  10. Edward Heller July 31, 2017 6:37 pm

    Alex in Chicago@6, spot on.

    The problem of quality is not so much whether the specification discloses an invention in terms of originality, or whether it enables one to make the disclosed invention, the problem of quality relates to the claims and whether they are clear and definite, and whether they claim far more than the inventor had a right to claim in the first place.

    Somewhere along the path between here and there we have lost sight of the big picture. No one has a right to claim any more than what he or she discloses. Today, patent attorneys seem to assume that they have a right to claim all ways of achieving the same result as the disclosed invention, or the broadest conception of equivalents of the disclosed subject matter.

    I should not say that this is a problem only of today. The problem was present back in the day as well. See e.g. Boulton & Watt v. Bull and the familiar O’Reilly v. Morse.

    (Let us not be confused with claiming old elements functionally. The problem comes in when claiming what is new.)

    For those of you who know me, I personally became actively involved in patent law policy conversations because the disk drive industry was suffering from so-called “form factor” patents. These patents claimed the results of invention – e.g., the specific diameter of the disk of a smaller size disk drive – rather than the inventions necessary to achieve the advance. Anybody who achieved the advanced by other means still facially infringed the claims. It was a major problem in the disk drive industry and required the patent office to rethink what it was doing.

    But the problem clued me in to the overall problem of functional claiming. It was a problem back in the day. It remains a major problem in patent law that has not been addressed fully. Even if the claims are narrowed by construction to cover the corresponding structure and equivalents, the apparent breath of the claims themselves remains the problem – just as the Supreme Court said they did in Halliburton.

  11. Anon July 31, 2017 8:14 pm

    Your “Windmills” are well known Mr. Heller.

    As is your typical behavior in tilting at those Windmills.

  12. Night Writer August 1, 2017 6:54 am

    @10 scope of enablement.

  13. Alex in Chicago August 1, 2017 2:31 pm

    @NW How often have you seen an examiner understand that principle? For me, it approaches 0. I’ve seen other practitioners get claims through that seem to violate the laws of physics…

  14. Edward Heller August 1, 2017 2:31 pm

    Night@12, “possession.”

  15. Edward Heller August 1, 2017 2:33 pm

    Alex, agreed. The PTO is not doing a good job. The reason is that they are never educated in the fundamentals. Too many trees and not enough forest.

  16. Curious August 1, 2017 8:21 pm

    But the problem clued me in to the overall problem of functional claiming.
    Therein lies YOUR problem. You improperly conflate somebody claiming an end result (e.g., a smaller-sized disc for a hard drive) as limitation for hardware with software-related claims that recite functional limitations (e.g., sending a request from a client to a server). They are very different.

    Almost all software-related claims are combinations of functions that, TOGETHER, are directed to an inventive concept. While the components can be described functionally, I find that the best way to claim a software-related application is as a method claim. A method (or process) claim is simply a series of steps, which are actions taken by a computer. Looking up the definition of “functional” and you’ll find the term “activity.” Look up “activity” and you’ll see “process” as part of the definition. As such, functional limitations and method (process) claims are easily interchangeable.

    Rewriting your hard drive claim as a method claim would result in “providing a hard drive disk having a diameter less than X.” However, you will have to search a long time to find a software-related claim anywhere close to that — people very rarely draft software claims as a single step. Moreover, if they do so they aren’t claiming the end result of the action as the limitation.

    What this all means is that your distaste for “functional limitations” at the point of novelty very rarely have an analogue in computer-related inventions. This is why your arguments on functional claiming always fall flat because you cannot produce any comparable examples in the computer arts.

  17. mike August 2, 2017 9:16 am


    Maybe I am being too literal about this, but my understanding is that “patent quality” is an attempt to describe how well a patent will survive challenges; i.e., how clear it is that the claims would be considered patentable across forums including patent examiners, the PTAB, and the court system. Strong patents cover clearly patentable material and have been examined against the closest available prior art, and if asserted in an infringement action would likely survive any challenge based on the validity of the patent. Weak patents are those which would be unlikely to survive validity challenges.

    This is not directly connected to the inventive space – a truly revolutionary and unexpected invention might be so badly claimed or examined under such a poor choice of prior art that the patent obtained is a weak patent, while an incremental advance may be claimed narrowly enough and examined against a broad enough spectrum of prior art to be a strong and very defensible patent. The argument of patent trolls viz. quality of patents is that patents which would not survive a validity challenge (weak patents) are being asserted, rather than that patents which cover incremental advances are being asserted.

  18. Edward Heller August 2, 2017 9:35 am

    Curious, “You improperly conflate somebody claiming an end result (e.g., a smaller-sized disc for a hard drive) as limitation for hardware with software-related claims that recite functional limitations (e.g., sending a request from a client to a server). They are very different.”

    Not me, Lemley.

    Software claims defined the software by a series of steps.

    Nothing wrong there. I have been heavily critical of Lemley for conflating.

  19. Anon August 2, 2017 11:19 am

    Mr. Heller, while it is merely a convenience and an ease to understand, based on language considerations, that “Software claims defined the software by a series of steps.” it remains critical to maintain the understanding that software is not the execution of software.

    One is a machine component, and the other is a use of that machine component.

    The lack of properly keeping this distinction in mind often leads to the logical fallacy of “just using a computer.”

    The plain fact of the matter is that one cannot “just use a computer” until AFTER that computer is configured to be so used with the addition of the machine component known as software.

    We should not (and not ever) allow the “ease of communication” to become a point at which anti-software patent folk attempt logical fallacies to obfuscate what the facts of the situation are.

  20. Ternary August 2, 2017 12:40 pm

    Assume a well known digital gate: the XOR gate, of which a performance is defined by a truth table. Assume the realization of such a gate with NAND gates, of which 4 are required. You realize that you can build the XOR gate simply as a look-up table stored in a memory. Apart from the fact that this is known, would claiming a memory storing an XOR truth table be functional claiming or structural?

    You do not claim a memory storing an XOR truth table, but a truth table representing a “modulo-2 addition.” (for readers not familiar with the terms, these are identical if one uses binary states 0 and 1). This causes a rejection over Alice, as the invention is directed to the abstract idea of arithmetical addition. Will amending “modulo-2 addition” to XOR solve the Alice issue?

  21. Tesia Thomas August 2, 2017 2:00 pm


    I understand what you’re saying but good and poor quality means nothing with PTAB.
    Your competitors can and will attack until they invalidate it.

  22. Ned Heller August 2, 2017 2:21 pm

    Ternary, I think functional claiming of old elements is entirely proper. The functional claiming I complain about is limited to the novel features.

    In your example, when alternative ways of implementing a particular element are known to the art, I think one can functionally claim what they do, and the claim should be construed to cover them all.

  23. Ned Heller August 2, 2017 2:24 pm

    Tessia, regarding poor quality, a patent can be of poor quality even if it is valid if one really cannot understand from the claims themselves what is covered.

  24. Tesia Thomas August 2, 2017 2:27 pm

    @Ned Heller,

    Do you really think a patent like that will survive an IPR?

  25. Ternary August 2, 2017 3:20 pm

    Ned @22. Excellent, I am with you. Now what about a completely novel feature?

    What if I modify a Viterbi algorithm for error-correcting decoding (in a convolution code) by using a novel function defined by a completely novel and unconventional truth table that can be implemented in a digital combinational circuit (via a Karnaugh diagram for instance) or in a look-up table on a memory or in discrete steps on a processor.

    Does it make any difference what I claim? Is one way more abstract than another? Does it matter what I call it? Remember, one of ordinary skill with a logic analyzer looking only at logic states would not be able to tell what type of implementation was used.

  26. Anon August 2, 2017 4:05 pm

    Ned is in-aware (albeit purposefully, as I am more than aware that he has been repeatedly informed) that the “wares” – as to computer components – are patentably equivalent.

    Software is equivalent to firmware is equivalent to hardware.

    Anyone advancing arguments otherwise are doing so in a less than honest manner.

  27. Anon August 2, 2017 4:06 pm

    in-aware –> una’ware

  28. Edward Heller August 2, 2017 4:32 pm

    Ternary, it should make no difference at all how the novel function is implemented if the way is not part of the invention but is something that is known – known alternatives. The known part of the prior art should be able to be described in the claim in terms that people can understand and that should cover all of them.

  29. Edward Heller August 2, 2017 4:36 pm

    Tesia, it is my understanding that if a claim cannot be understood, the PTAB will not even institute an IPR.

    What I am saying is a little bit different. I am saying that the claimed subject matter should be clear from the claims themselves to one of ordinary skill in the art. We should be able to toss the specification and still understand with fair certainty what is covered.

    I think the Supreme Court in Nautilus said something close to this. T hey said that the reasonable certainty had to be after one read the specification. I think this is wrongheaded. But it is what it is.

  30. Tesia Thomas August 2, 2017 4:49 pm

    @Edward Heller,

    So what happens then? The patent is OK because people don’t understand it?

    Yeah I think that’s why some attorneys claim things as such…

    A (something or other) characterized by/comprising:
    (stuff that characterizes/comprises the something or other)

    This way all you have to do is define the ‘something or other’ (which should be explained in the spec) and then extend it to the claims.

  31. Ned Heller August 2, 2017 4:57 pm

    Tesia, the patent is not okay in my book, but you can bet that the patent owner will try desperately to rescue the claims in a court of law if the accused infringer asserts that the claims are invalid for indefiniteness.

  32. Anon August 2, 2017 5:16 pm

    Mr. Heller,

    I find your (now repeated) comment of “We should be able to toss the specification and still understand with fair certainty what is covered.” to be truly bizarre.

  33. Edward Heller August 2, 2017 5:27 pm

    Anon, how so?

    While we have the doctrine that a patentee can be its own lexicographer, ordinarily the words in a claim should have their ordinary meaning to one of ordinary skill in the art and that meaning should be definite. Thus if the words allow two interpretations, additional language must be added to clarify which of those two is meant.

    If a claim term is defined in the specification, the least we can do is to put that definition into the claims in the form of a footnote.

    Ditto any test.

    I think the Europeans are practically there already because of their insistence that the claims be clear enough that they cannot be challenged for indefiniteness. That is where I think we need to go.

  34. Anon August 2, 2017 6:49 pm

    How so?

    Your view sounds in the awful tactic of examiners not bothering to read the specification and engaging in claim key word searching.

    Have you been away from prosecution for the last decade or so?

    If you are going to just “toss the specification,” then why the H bother with it?

    Further, there are times when a word may have two interpretations and BOTH interpretations are desired to be included. That would be a breadth and not an indefiniteness issue per se.

    Putting more and more things into the claim will only lead to NOT having a meaningful claim (and would be indicative of the historical omnibus claim of : “as described herein”)

    As to any comparative analysis with European practice – thanks but no thanks as there are too many differences to make any simple casual reference meaningful.

  35. mike August 3, 2017 12:17 pm


    You’re exactly right. The loudest voices are claiming that patent trolls are those that assert weak, poor quality patents that shouldn’t have been granted in the first place, and the PTAB and court system are rapidly demonstrating that EVERY patent, no matter how strong or high quality, is actually a weak, poor quality patent that shouldn’t have been granted in the first place. So asserting a patent makes you a patent troll.

  36. Tesia Thomas August 3, 2017 12:43 pm


    Exactly which is why inventors like me are hesitant to bring our products to market.
    Every week someone emails me for a quote for my product.
    I’m still in R&D technically but I could sell something.

    The only safe patent is the patent no one makes money on.
    I don’t want to be in court as soon as my product sells. But I will be because there are huge multinationals who’s ancient product would be wiped out by mine.
    Our own government is against us.
    From jealous, egotistical govt researchers who ask for your help (SBIR solicitations) just to back stab you to the Darrell Issa’s in Congress.

    The only way for my IP to survive is for me to not make money.
    Any money I do make (currently millions of $$ in potential sales quotes ironically many from DoD contractors) will be lost to legal fees.

    None of my competitors are going to infringe before I start making money because they would have to totally disrupt themselves.
    So, yeah…inventor limbo courtesy of AIA. And because I actually want to make money.

    If I sell billions, I’ll spend billions on legal fees with these laws.

  37. Anon August 3, 2017 4:46 pm

    The only safe patent is the patent no one makes money on.

    There is an historical analogue to that quote.

    The only valid patent is one that has not yet appeared before us

    Of course, the historical analogue was uttered – and in part – drove Congress (once upon a time) to arise from slumber and rebuke the Court and attempt to Make Patents Great Again (apologies for the slogan).