Pardon Me, But What Is the Point of Deciding Whether or Not a Reference ‘Teaches Away’?

By Daniel Hanson
February 17, 2021

“Does the jurisprudence concerning ‘teaching away’—particularly the jurisprudence pertaining to whether a reference does or does not ‘teach away’—make any sense? And if not, what ought to replace it?”

Teaching away - https://depositphotos.com/67111027/stock-photo-whats-the-point-card.html“Teaching away” is a concept important to obviousness analysis under U.S. patent law. “Teaching away” basically bears upon the issue of motivation to combine elements in a manner set out by a patent claim, and such motivation is relevant to obviousness analysis but not to anticipation analysis: would one skilled in the art have had reason (or motivation) to put the known elements in the arrangement that the inventor has claimed? In a sense, “teaching away” is an anti-motivation, as it weighs against such an arrangement.

“Teaching away” is purely a creature of obviousness analysis. In anticipation analysis, “teaching” plays a role, but “teaching away” does not. Indeed, a common mistake among patent practitioners is to argue, in response to an anticipation rejection, that a cited reference “teaches away” from the claimed subject matter. What the practitioner (usually) ought to have said is that the cited reference discloses something different from the claimed subject matter. Such a careless use of terminology may have quite a serious effect: it may cause the decision-maker (court or agency) to dismiss an otherwise legitimate argument out of hand, or to give it short shrift. A simple quotation of Krippelz v. Ford Motor Co., 667 F.3d 1261, 1269 (Fed. Cir. 2012), may be all that the decision-maker needs to dispose of the argument: “First and foremost, teaching away is not relevant to an anticipation analysis; it is only a component of an obviousness analysis.”

When questions are raised about legal obviousness of a claim, however, “teaching away” is an issue that is often joined and argued, both at the agency level and in the courts. Once the issue is joined, a decision-maker will typically set about to determine whether the reference really does “teach away” or not.

The question I propose to address is: Does the jurisprudence concerning “teaching away”—particularly the jurisprudence pertaining to whether a reference does or does not “teach away”—make any sense? And if not, what ought to replace it?

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Does a Reference ‘Teach Away’ or Not?

In general, “teaching away” involves some criticizing, discrediting, misdirecting (that is, directing in a direction divergent from that path taken by the inventor) or otherwise discouraging of an approach, from the perspective of a person having ordinary skill in the art. E.g., Meiresonne v. Google, Inc., 849 F.3d 1379, 1382 (Fed. Cir. 2017); In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004); see MPEP 2145, Part X(D). Evidence concerning whether the prior art teaches away from a given invention must relate to and be commensurate in scope with the ultimate claims at issue. See, e.g., MeadWestVaco Corp. v. Rexam Beauty and Closures, Inc., 731 F.3d 1258, 1264–65 (Fed. Cir. 2013).

There are many appellate decisions, not to mention a multitude of decisions of lower tribunals, discussing whether a particular reference does or does not “teach away” with regard to a particular claim. In some instances, the reference is found to “teach away”; and in some instances, it is found not to do so.

If a Reference ‘Teaches Away,’ What Is the Legal Effect?

If a party urges that a relevant reference “teaches away” from what is asserted in a claim, and if the decision-maker (the agency or a court) agrees that the reference does indeed “teach away,” that means the claim is nonobvious, right?

No, it doesn’t mean that. The Supreme Court’s KSR opinion says that “teaching away” makes nonobviousness “more likely,” not a certainty, and not presumptively the case. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007), citing United States v. Adams, 383 U.S. 39, 51-52 (1966).

The Federal Circuit has gone further, observing that the prior art could include one or more references suggesting a combination, and others critiquing or otherwise discouraging the same. A reference may even refute its own “teaching away”:  “Even a single reference can include both types of statements, and we have held that it is error to fail to consider the entirety of the art.” Arctic Cat Inc. v. Bombardier Recreational Products Inc., 876 F.3d 1350, 1360 (Fed. Cir. 2017).

So, if the reference is found to “teach away,” that finding is not determinative of the issue of obviousness in general, or of motivation in particular. A claim may be determined to be obvious anyway, if other evidence of substance in the record weighs in favor of such a determination.

If a Reference Does Not ‘Teach Away,’ What Is the Legal Effect?

What if the reference is determined not to “teach away”? Does that mean that some motivation to combine elements from different references must exist? Does it mean that the reference is effectively irrelevant and can safely be ignored? Does it mean that the claim is definitively obvious?

It means none of those things. “[T]the absence of a formal teaching away in one reference does not automatically establish a motivation to combine it with another reference in the same field.” Rembrandt Wireless Tech., LP v. Samsung Elecs. Co. Ltd., 853 F.3d 1370 1379-80 (Fed. Cir. 2017). “[E]ven if [the reference] does not teach away, its statements … are relevant to a finding regarding whether a skilled artisan would be motivated to combine….” Apple Inc. v. Samsung Elecs. Co., Ltd., 839 F.3d 1034, 1051 n.15 (Fed. Cir. 2016) (en banc); accord Arctic Cat, 876 F.3d at 1360 (Fed. Cir. 2017) (citing authorities) (“As our precedent reflects, prior art need not explicitly ‘teach away’ to be relevant to the obviousness determination”).

So, to sum up, deciding whether a reference “teaches away” or not is not really determinative of anything pertaining to obviousness in general or to motivation in particular: relevant, yes; but determinative, no.

Therefore, pardon me for asking, but what is the point of the jurisprudential framework that purports to categorize references as either “teaching away” or not? The issue is not an either-or issue in the first place and deciding that a reference is one or the other does not resolve any major legal issues.

An Adjustment to Jurisprudence

Rather than spend effort to try to label a reference as “teaching away” or “not teaching away,” why not simply consider the reference for what it is worth?

Put another way, why not simply analyze a reference according to what it “teaches,” and how far “away” it goes? Put still another way, why not consider the question as a balancing test, as courts and agencies do with other fact-based issues?

Here are some considerations that may be weighed in the balance.

a) How Discouraging Is the Reference?

Discouragement is a spectrum, not a binary choice, and there is a wide range of discouragement. It is one thing to have a reference that says “You shouldn’t combine element A with element B”; and another thing for a reference to say “If you combine element A with element B, it may cause a serious explosion.” Even though the former seems to be more commanding by saying a thing “shouldn’t” be done, the latter makes mention of very dire consequences of doing the thing, perhaps making the latter example more discouraging.

Discouragement not only comes in many degrees, it comes in many forms. It may come in the form of a recommendation (something short of a prohibition, such as “It is not a good idea to combine element A with element B”), or a simple report that may be very discouraging without overtly criticizing or discrediting (“We tried combining element A with element B, and it didn’t work”), or a cautionary remark (“Combining element A with element B may be hazardous”), or a flat-out alarm (“For the love of all that is holy, don’t combine element A with element B!!”).

But how discouraging a reference may be is just one factor on the balance. Even if a reference is unmistakably discouraging to a significant (non-trivial) degree, other evidence must be taken into account. In Bayer Pharma AG v. Watson Labs., Inc., 874 F.3d 1316, 1327-28 (Fed. Cir. 2017), the evidence indicated that a particular medication dissolved in the mouth would taste bitter (but not “too bitter”!). The district court had determined that, even if there had been motivation to make the medicinal formulation, the expected bitter taste (among other things) rose to the level of “teaching away,” and that effectively decided the obviousness question in favor of nonobviousness. The Federal Circuit said that the concerns, though valid, did not rise to “teaching away,” as they only pertained to whether the option was favored, and that expected bad taste would not determine whether the combination was a “still workable option.” It may be noteworthy that physicians regard a bad taste as immensely discouraging when prescribing such oral medications (especially oral medications administered to children, which was not the case in Bayer), and that a medicine a patient refuses to take might not be deemed “workable” by a physician for that reason alone. Arguably, the court trivialized some legitimate medical concerns. But the trivialization, if any, was brought about by trying to decide, as an either-or matter, whether there was “teaching away” or not.

A balancing approach would have been more straightforward: such discouragement was one consideration among many, and not overriding on the question of obviousness; so the matter ought to be sent back to the district court for re-evaluation of the strength of all of the evidence.

Where a reference is taken for what it is worth, trivialization would be less of a risk. A decision-maker applying a balancing approach would be better poised to avoid the absurdity of regarding an explicit, serious warning as little more than an offhand recommendation. Such absurdity may be well-illustrated, to comic effect, by this exchange from “Ghostbusters” (1984):

Egon: There’s something very important I forgot to tell you.

Peter: What?

Egon: Don’t cross the streams.

Peter (puzzled): Why??

Egon: It would be bad.

Peter:  I’m fuzzy on the whole good/bad thing. What do you mean, “bad”?

Egon:  Try to imagine all life as you know it stopping instantaneously, and every

molecule in your body exploding at the speed of light.

Ray:   Total protonic reversal.

Peter: Right. That’s “bad”?? Okay. All right, important safety tip. Thanks, Egon.

b) How Explanatory Is the Reference?

If a reference discourages a combination, does the reference say why? Does the reference point to any studies or tests? Are adverse consequences specifically mentioned? Does the reference offer a justification for its discouragement, or is the discouragement conclusory?

If reasons are given, are they technical reasons? A reference that discourages a combination principally for economic reasons (for example) deserves far less weight than a reference that discourages that combination principally for technical reasons. “[T]he fact that the two disclosed apparatus would not be combined by businessmen for economic reasons is not the same as saying that it could not be done because skilled persons in the art felt that there was some technological incompatibility that prevented their combination. Only the latter fact is telling on the issue of nonobviousness.” Orthopedic Equip. Co., Inc. v. United States, 702 F.2d 1005, 1013 (Fed. Cir. 1983); see also Telefonaktiebolaget LM Ericsson v. TCL Corp., 941 F.3d 1341, 1350 (Fed. Cir. 2019) (technological efficacy is what counts).

c) Does the Reference Know What It Is Talking About?

Credibility of evidence is always relevant to the weight that evidence ought to be given. Is the purported “teaching away” from a credible source? Is the technology of the reference close to the technology in the claims? Is the reference’s language truly pertinent to the pending question? Does the reference offer a detailed discussion or just a passing remark (or something in between)? Does the reference include troubling errors? Is the “teaching away” given short shrift or is it bolstered by other explanation and evidence and analysis?

When weighing credibility, the goal is quality, not quantity. Five crackpot references should not outweigh one opposing solid reference supported by evidence and reasoning.

d) A Few Other Considerations

The factors listed above are not exhaustive. Other things that may be taken into account are: How does the reference fit in relation to other references? Is it consistent with other references, or is it an outlier? With respect to the particular claims at issue, is the reference tangential or more on-point? How recent is the reference? What is the expert testimony as to the seriousness of the discouragement? If consequences are discussed, are the consequences serious? How serious? Do the authors of the reference have noteworthy credentials? Is there a rebuttal to the reference? Does the reference’s analysis include anything that doesn’t belong? Is the reference’s analysis missing something important? If multiple references discourage the combination, do they do so independently or does one reference cite to the other (or to the same source as the other)? And so on.

In other words, the “teaching away” issue could be evaluated, before an agency or a court, much like many other issues of fact and evidentiary weight are evaluated in general jurisprudence (not just patent law jurisprudence).

What Doesn’t Change?

If “teaching away” is integrated into a broader and more flexible balancing approach, many of the legal principles and precedents pertaining to obviousness remain unaffected. “Teaching away” is still relevant, particularly to the issue of whether one skilled in the art would have had an impetus to make the combination. If a reference speaks ill of a combination in any way or to any degree, such “teaching away” would not be determinative; but it would be evidence in favor of nonobviousness. A technical basis for “teaching away” generally ought to carry more weight than a non-technical reason. A decision-maker addressing a “teaching away” issue would still have to explain why the reference deserves to be given the weight that it is given.

Adopting a balancing approach is not a radical idea. All we have to do is set aside the notion that “teaching away” involves a binary choice.

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The Author

Daniel Hanson

Daniel Hanson is Senior In-House Patent Counsel for Huawei Canada who has worked with a number of law firms and corporations, including BlackBerry Ltd. in Canada. His practice focuses upon patent preparation and prosecution. The views expressed are his own.

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 as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 41 Comments comments. Join the discussion.

  1. Anon February 18, 2021 7:08 am

    Interesting and thank you.

    A quick note though, “teaching away” is not the only path forward for arguing against the motivation to combine references, and is not even my first “go-to” tactic.

    I have found a much better tactic to be the “expectation of success” combined with the “may not change the taught principle of operation” of any of the references being combined.

    This especially works when the plurality of references being combined starts going over four references, because often at that point, there is some serious conflicts arising in the disparate sources.

    Just as in this article, the notion that the totality of the teaching has to be considered (in the article, it is in the sense that one cannot cherry-pick a specific instance as ‘teaching away’), so too in the opposite direction, the “expectation of success” cannot be “cherry-picked” for the singular ‘positive’ element being mapped in the (hindsight) manner that so often is the result of keyword-search mapping. Here, the notion of ‘positive’ is to be understood as a keyword match used to reject, and not in the sense that ‘positive’ is an appropriate combination.

    Very often, examiners make the mistake of not using the meaning of the entire phrase “motivation to combine,” and instead, only go so far as using the word “motivation.”

    The trap therein is that “motivation” alone is aways there. “Motivation” alone is the element itself. If you read in the rejection the examiner merely citing the single reference teaching of the value of the item itself, you will see an improper use of the reference under 103.

    This does not mean though that the 103 is always improper. It just means that you have to do the examiner’s work with the references and verify whether or not the WHOLE PHRASE has been met. As I noted, this may be done by looking at whether or not the expectation of success is challenged by any conflicts created by the different teachings.

    This has morphed into more than just a “quick note,” so let me add one more bug-a-boo of mine. 103 prior art and 102 prior art have a fundamental difference. Not only as pointed out in this article in regards to “teaching away,” but also as to the necessary conditions for seeking to combine in the first instance. There happens to be an (anti-patent) mindset out there that 103 art is merely a collection of 102 art. That ALL combinations are possible, and that treatment of 103 is merely the happenstance that the features did not happen in one reference (in the manner of how they are put together in the claim).

    That would be legal error, and an improper explosion of the keep-out zone of obviousness.

  2. AAA JJ February 18, 2021 8:49 am

    Great article.

    The people who really need to read it are the APJ’s who love to turn every “there is no reason to combine/modify the prior art” argument into the “Applicant is essentially arguing teaching away” strawman that they then love to knock down (with a form paragraph insert).

    There may be many reasons why it would not have been obvious to combine/modify the prior art. As you note, it’s a spectrum. Teaching away is one end of the spectrum, but it’s not binary as you say.

  3. Ratty February 18, 2021 12:44 pm

    “Teaching away” arguments might also be entitled to weight like “commercial success” objective evidence. Having interviewed an inventor — and this is public because I argued it to the BPAI — who said their choice was “counterintuitive” because everyone else in the industry said you needed to build it in one piece and the inventors figured there were advantages to build it using separate pieces. The cited are was all the “got to be one piece” approach so I was able to argue that our position (claims limited to separate pieces) was objective while the Examiner’s position was merely speculation. We also had commercial success and, indeed, newsworthiness, so while the rationale was “teaching away” the facts enabled pushing it as objective.

  4. David Lewis February 18, 2021 5:31 pm

    Good article, but I fear that were statements “teaching away” from the invention treated like secondary considerations, the end result would like be that they are almost always dismissed and never given serious consideration, no matter how strong the teaching is, beyond an acknowledgement of the teaching and a statement about when the evidence is considered as whole, the invention is still obvious (kind of the way secondary considerations are currently treated).

  5. Ronald Slusky February 18, 2021 8:23 pm

    The doctrine of “teaching away” applies much more broadly than whether the cited reference(s) teach away. The criterion is whether the art as a whole teaches away. For example, the claimed subject matter may be A+B+C+D The examiner’s cited art may comprise two references–one discloses A+B+C and the other reference discloses C+D. The examiner asserts that it would have been obvious to the POSITA to combine the two teachings to arrive at A+B+C+D, particularly given that the two references have C in common. However, the art could be argued to teach away from such a combination if the applicant can cite yet some other reference that asserts that one should never combine D with any combination that includes B because, say, any such combination poses a danger of some kind.

  6. Ronald D. Slusky February 18, 2021 8:53 pm

    Adding to my previous comment….

    I assumed in my example that the art is replete with examples of combinations that include B and D which, indeed, proved to be dangerous (e.g. explosively unstable), just as my assumed reference discusses. Yet, I’m assuming, the presently claimed never-before-disclosed combination A+B+C+D does not exhibit that problem (which can also give rise to an “unexpected results” argument).

  7. Anon February 19, 2021 8:05 am

    I think that it stands in sharp contrast the view of the (larger) doctrine as exhibited by Mr. Slusky, and the much more stringent application by (some) courts, basically requiring an explicit and affirmative “do not do this precise combination.”

  8. MaxDrei February 19, 2021 8:47 am

    Good observations from Mr Slusky (whose book I enjoyed). It strikes me that the notion of “teaching away” has something in common with the European way to think about obviousness, namely, that it is not that which the skilled person “could” have done that is relevant. Rather, having regard to the totality of the prior art landscape, what is decisive is what technical features that imaginary being, the person of ordinary skill in the art “would” have combined.

    Those combinations which the POSITA “would” have made are obvious. Anything in the prior art universe which “teaches away” from any given combination renders it less likely that the person of ordinary skill “would” have made that combination.

  9. AAA JJ February 19, 2021 9:30 am

    “… but I fear that were statements “teaching away” from the invention treated like secondary considerations, the end result would like be that they are almost always dismissed and never given serious consideration…”

    That happens now. Most examiners, SPE’s, APJ’s, and judges think examining is dependent on magic words. “Oh, applicant invoked the magic words ‘teaching away’ so let me utter my counter spell and insert the appropriate form paragraph dismissing the argument.”

    Like it’s scene from Harry Potter or something.

    As the article notes, it’s a spectrum. And arguing “there is no reason to modify/combine the reference(s)” and/or “there is a reason not to modify/combine the reference(s)” are two sides of the same coin.

    But if you invoke the magic words “teaching away” in your argument you immediately trigger the counter spell/form paragraph reply.

    Even if you don’t invoke the magic words the APJ’s and judges will “accuse” you of arguing “teaching away” and then reject their mischaracterization of your argument.

  10. Ronald D. Slusky February 19, 2021 12:18 pm

    Responding to Anon’s comment (#7), there is long-standing case law that says that once something is disclosed in the prior art, it is unpatentable under section 102, even if the prior art says, “don’t do this” or “this can’t be done”. Such prior art does not teach away from the subject matter, per se. It only teaches away from its practicality or utility. The case law formulation is that as a matter of law, a reference cannot teach away from something that it actually discloses.

    If the present inventor has found a good reason to “do it” after all, that might entitle the inventor to claim, perhaps, a non-obvious use (e.g. method claim) of a structure that the prior art said one shouldn’t bother with.

    It’s for this reason that the “teaching away” concept applies only in questions of obviousness.

    Thus, for example, the fact that that prior art asserts that time travel is impossible would not enable the person who figures out how to actually do time travel from claiming time travel per se. The reason is that the naked notion of time travel is already in the prior art and the naked notion of time travel is thus already in the prior art in a section 102 sense. The claim would have to include some structural or method limitation directed to HOW the inventor achieved time travel–a “process” that was already in the prior art in a section 102 sense.

  11. Anon February 19, 2021 1:08 pm

    To AAA JJ’s point, the “counter spell” is defaulted to (and to fold in part of my comment from Post 1 above that indicates a mindless use of that counter spell):

    Very often, examiners make the mistake of not using the meaning of the entire phrase “motivation to combine,” and instead, only go so far as using the word “motivation.”

    The trap therein is that “motivation” alone is always there.

    “Motivation” alone is the element itself. If you read in the rejection the examiner merely citing the single reference teaching of the value of the item itself, you will see an improper use of the reference under 103.

  12. Anon February 19, 2021 3:59 pm

    Mr. Slusky,

    I would be very interested in a case that held (for 102 purposes) that a teaching away of “this cannot be done” can serve as prior art — given that patents are provided the sense of being enabled by their status of having been granted, and there can be no enablement that inures is the expression that is in essence NO ONE CAN ENABLE THIS.

  13. Ronald D. Slusky February 19, 2021 9:29 pm

    Anon:

    Although the claimed invention must be enabled, remember that an issued patent may disclose all kinds of things besides the claimed invention. And, of course, prior art includes printed publications, not just patents.

    As to cases, see those cited in the 2d paragraph of MPEP 2131.05, which provides that “A reference is no less anticipatory if, after disclosing the invention, the reference then disparages it. The question whether a reference ‘teaches away’ from the invention is inapplicable to an anticipation analysis.”

  14. MaxDrei February 20, 2021 5:04 am

    In the USA, is there not a key difference between 102 and 103 when it comes to assessing the patentability of a claim of date Y (say a date in the year 2010) with reference to a prior art document published on date X (say in 1956, or 1976), that difference being that obviousness is as of 2010 but what the document discloses is as of its publication date?

    So, when a 1956 document discloses some combination of technical features but then declares that this combination “cannot be done”, that will render the document less than anticipatory. What the PHOSITA makes of it in 2010 is quite another matter, because of the intervening technological progress.

  15. Anon February 20, 2021 9:51 am

    Mr. Slusky,

    Yes, I am talking directly to the notion of “remember that an issued patent may disclose all kinds of things besides the claimed invention.

    And yes, things disclosed outside of the claims do obtain a certain status of “fact” and inclusion as “prior art” for the effect of “ride along” because of the fact that a patent WAS granted.

    And yes, certain printed publications DO obtain the status of prior art – and certainly these extend well beyond patents.

    But the immediate point here is that just because an item IS in a printed publication, that item in the printed publication gets an unwavering (and unthinking) “well, it must be real” type of validation.

    Immediate counter point: pure science fiction and fantasy (the FICTION portion of science fiction) does NOT get to be treated as prior art – NO MATTER the time of its writing, and no matter if it a basis for anticipation or for obviousness.

    This is concept that should be acknowledged front and center.

    Once that acknowledgement is made, then we can advance to a discussion of what constitutes matters captured in writing and how to distinguish from ALL of the items captured in writing and those items which properly serve a legal prior art basis.

    To my immediate point here, I distinguished your second paragraph (and reference to MPEP 2131.05) in the view that “disclosing” is NOT what that term is being extended to mean when the point is not “don’t do this (it’s possible to do this)” but instead is “cannot do this (This is just not possible to do – AND THUS CANNOT BE ENABLED).”

    The parallel of the latter (and my immediate point) to the fiction portion of Science Fiction (and pure fantasy) should be evident.

    Also, I would point out that one reads MPEP 2135.05, the sufficiency of the reference in question at that point is NOT being challenged. You do NOT get to that point without establishing that the reference is sufficient, and my point is a direct challenge to the sufficiency. I have NOT surrendered the point that the reference is sufficient and then moving to the issue that MPEP 2131.05 is purported to be addressing. NOTHING in MPEP 2131.05 resolves the point that I am making.

  16. Ronald D. Slusky February 20, 2021 12:50 pm

    Anon:

    Your statement–“Pure science fiction and fantasy (the FICTION
    portion of science fiction) does NOT get to be treated as prior art.
    NO MATTER the time of its writing, and no matter if it a basis for
    anticipation or for obviousness”–is not correct.

    If it WAS correct, the first person to enable time travel could patent the whole concept of time travel, e.g. “A method comprising the step of transporting a person to a selected time and place in the past or the future.”

    But there is no jurisprudential basis for allowing such a claim. Indeed there is every jurisprudential reason to NOT allow it.

    Specifically, suppose you and I are separately working on the known goal of time travel and I teach an enabling embodiment (e.g. flux capacitor). If science fiction’s description of time travel is not prior art then I would be allowed the above claim.

    Subsequently you come up with a totally different mechanism to enable time travel (rubbing ketchup on the left side of your face). If I am allowed the above claim, I could enjoin you from practicing your method of time travel even though nothing that you invented was in any way taught by what I did.

    Just because someone is the first to come up with a result that science fiction describes, doesn’t allow that person a claim that is so broad as to encompass all ways of achieving that result. The reason is that that would give that inventor broader coverage than his/her contribution to the art. In my example, my contribution to the art is using a flux capacitor to achieve science fiction’s description of time travel–not time travel per se.

    See, for example, O’Reilly v. Morse, 56 U.S. 62 (1854), where the Supreme Court disallowed a claim so broad as to encompass all ways of achieving what was then only science fiction–being able to transmit intelligence over any distance–a problem that many were working on in order to overcome the fact that telegraph signals greatly attenuated over even relatively short distances. The Court observed that since it was a known, albeit, unachieved goal in the art–effectively science fiction–Morse was limited to his disclosed way of solving the problem, even though he was the first to come up with **A** solution.

    The first successful human-powered helicopter was built in 1989. Do you give the inventors of that device a claim that encompasses all human-powered helicopters? The prior art was only science fiction; Leonardo Da Vinci postulated such a thing more than 400 years earlier but his embodiment was inoperative and human-powered helicopter flight remained science fiction until 1989.

  17. Anon February 20, 2021 2:45 pm

    MaxDrei @ 14,

    The short answer is no.

    The not-so-slightly longer answer is that you appear to be confusing the date of the item being evaluated and some notion that art is somehow ‘dated’ as to some later point for the legal fictional person of the Person Having Ordinary Skill In The Art. You appear to confuse the date of the inputs with the date of the item being examined. While certainly the date of the item being examined is a critical date, and inputs are indeed fair game UP TO THAT POINT, inputs themselves always have their respective date. Choose a different input, and you necessarily have a different evaluation (albeit you may have the same result of that different evaluation).

    This may stem from your own (adamantly NOT admitted, but nevertheless true) version of PHOSITA not being consistently applied to both the notion of anticipation and obviousness.

    Quite in fact, the opposite of your intimation that US has chosen an ‘odd’ view, the US Sovereign choice of how dates are applied are consistent across anticipation and obviousness in regards to what that legal fictional person of PHOSITA does.

    What IS different is what the two tests are for, and this generates the fact that the sets of what may be deemed to be ‘prior art’ out of the universe of all dated items, may not in fact be the same for that same legal fictional person.

    In other words, the person (legal fiction) is the same and consistent across the tests, but what the tests are intended to do create different treatment of the items being evaluated as potential legal inputs – as of each item’s actual date.

    As I have noted, your Sovereign has chosen differently (as is the right of your Sovereign). Your Sovereign (per your own descriptions), acts for the test of Anticipation what real people may have in view of one to another. Your Sovereign (per your own descriptions), acts for the test of Obviousness a slightly different (but still not universal – given the issue of ‘secret’ prior art) application of the legal person. You use more of the sense of the legal fiction, but still insert a partial sense of “real person by not taking the actual state of the art at the time of filing, but instead take a slightly modified NON-actual state of what a ‘real person’ could see as the state of the art – even though NO real person could actually see the entirety of what may actually be published to the public record.

    As to actual timing, I would suggest the following illustration:

    Item 1: Science Fiction published 1897 (involving a putative “Martian Death Ray” that lases humans based on recognition that the target is human because of the face of the target).
    Item 2: Lasers invented 1958.
    Item 3: Facial recognition invented 1964.

    Case A: A death ray that lases targets based on an indicator that the target is a human invented in 1959.
    Item 1 has zero bearing in evaluating any legal test.

    Case B: A death ray that lases targets based on an indicator that the target is a human invented in 1969.
    Item 1 STILL has zero bearing in evaluating any legal test.

    Now, OTHER items may or may not have bearing. The date for the critical evaluation under any legal test remains BOTH the date of the item (here, for example, Items 2 and 3) and the date of purported invention (Case A or Case B).

    Certainly the purported invention (Case A or Case B) carries its date – whatever that may be.

    But (to clarify your misconception), the legal fictional person of PHOSITA “makes of it” ONLY what the items themselves are – and thus carry the dates of those selected items.

    You MAY be being confused by the fact that often Science Fiction is not ENTIRELY pure fantasy, but instead may have certain elements that provide real factual elements. The mistake is to think that the date of the Science Fiction is the actual controlling date for those real factual elements. This is just not so. Certainly, the date of the Science Fiction (for the factual elements) most certainly is a later date than an actual controlling date, and if that date of Science Fiction precedes the purported invention date, then it is ‘easy to see’ that claims to only such factual matters certainly MAY fail obviousness and perhaps even anticipation. It is to be critically realized though that this is only a “MAY” – even for all elements being factually present prior to a purported invention.

    After all, obviousness is NOT intended to be some type of “Super-Anticipation” in which there must be some element of a purported invention that never existed anywhere in any manner on its own. Which of course, astute individuals might grasp to be the necessary ramification if one treats 103 prior art as merely 102 prior art in multiple sources.

  18. Anon February 20, 2021 2:57 pm

    Mr. Slusky,

    I disagree, and see nothing in your post that supports your assertion. Respectfully, the intonation of Morse is simply not on point.

    Fiction – by its very definition – is not proper material.

    Note (in my layout for MaxDrei) that elements that may be factual that are present in science fiction (which I would posit, really good science fiction has plenty of so that suspension of reality is made a bit easier) are NOT THE SAME as fiction itself.

    The fact that science fictions exists NEVER is proper to deny patent protection to the actualization of items that may be present in science fiction but are themselves fiction.

    What you postulate is simply an abhorrence of what the law mandates.

    If by chance you have a citation that supports the FICTION element of science fiction as having preclusive effect as of its date (and NOT a date of some other later intermittent item that turns fiction into non-fiction), I would love to see that citation. (hint: Morse is NOT that citation)

  19. ipguy February 20, 2021 10:35 pm

    However you approach the issue of “teaching away,” it is important to note that Examiners feel free to ignore any arguments that come from the attorney as “mere attorney argument” but are not as free to dismiss a 1.132 affidavit/declaration from one of the inventors as to how a person of ordinary skill would have viewed the art and what it teaches.

  20. MaxDrei February 21, 2021 9:11 am

    anon, I’m grateful for the effort you put into your comment at 17, and the “death ray” example. But you have yet to appreciate my point about whether an 1897 publication of a “death ray drone” deprives of its novelty a claim dated July 1st, 2010, to a UAV laser weapon that uses facial recognition tech to select its target.

    First, do you have in the USA the rule that, to be novelty-destroying, a reference must enable that which it discloses and, if so…..

    Second, what is the date at which the enablement criterion is assessed for that given reference? Is it, for example, the date of publication of the reference or is, for example, the date of the claim? Or is it some date in between?

    You see, if it is the date of the claim, then the question whether the 1897 reference anticipates the claim is determined by the date of the claim. Thus, it anticipates some claims that are directed to subject matter “X” but not others directed to the identical subject matter. Is that how it is, in the USA?

    As you say, sovereigns decide for themselves. Thus, in the UK, it’s the date of publication of the reference whereas in Germany (last time I looked into it) it is the date of the claim. It’s a serious question. Would you like to respond seriously?

  21. MaxDrei February 21, 2021 9:24 am

    ipguy, I must say, your 19 comment elicited from me a wry smile and reminded me of the answer from witness Mandy Rice-Davis under cross-examination in court in the 1960’s in England, when the sworn statement of another witness, Lord Astor, was put to her. Lord Astor in his statement, had denied that his name was on a list of “clients”.

    Ms Rice-Davis smiled and said “Well he would say that, wouldn’t he”. The entire court dissolved in laughter. The quote is, today, at least as useful as it was back in the 1960’s.

    One of the UK’s most illustrious patent judges, Robin Jacob, explained to us, two or three decades ago, that the last person that a court would turn to for help in assessing patentability of a claim of a patent is the inventor of the claimed subject matter.

    Me, I put greater weight on witness evidence after it has been tested under cross-examination.

  22. Anon February 21, 2021 10:55 am

    MaxDrei,

    I believe that I have answered your question.

    A reference (to establish it as a reference) is of its date.

    If there is something ELSE that may ‘provide enablement,’ then it is that something ELSE that itself must be the reference so chosen.

    The ‘enablement’ aspect is the aspect of ‘fiction,’ that in and of itself – for its date – is ALWAYS fiction.

    This is spelled out in my post.

  23. MaxDrei February 22, 2021 5:48 am

    I see that I have failed, again, to get through to you what the issue is. So, one last time, I’ll try again.

    We assess what a reference discloses by reference to a skilled person, not a judge or jury member. You need to be an engineer to derive useful content from an engineering document, and a chemist to derive teaching from a Paper in a learned journal in chemistry. But the date at which the nominated reader is deemed to be reading the reference is also of decisive importance. Why, because the basic knowledge of the notional reader (their common general knowledge, their “mental furniture”) is different in, say, 2010, from what it was in, say, 1956.

    So it is with science fiction references (as in your helpful example). The PHOSITA reader of the novel, in 1890, cannot enable its death ray idea, that same notional reader in 2020 sure can though.

    So, for a claim with a 2020 date, does the 1896 publication “count” as an enabled disclosure or not? Does it make a decisive difference (I sincerely hope not) if the 1896 publication is presented as “science fiction” or as a serious proposal in a science and engineering periodical?

    As I tried to explain, the answer varies from jurisdiction to jurisdiction, but only because the date on which the notional reader is deemed to be reading the reference is fixed differently, from jurisdiction to jurisdiction. Which date is it, in the USA? Or doesn’t the law in the USA know yet the answer to that question?

  24. Anon February 22, 2021 7:15 am

    It is not that you have failed to make your point.

    It is that you keep on trying to make the wrong point.

    The date of the reference is…

    …the date of the reference.

    Your attempt here to provided “enablement” outside of the reference — through your “general knowledge — is an attempt to provide the reference with something the reference needs to have.

    As I have out back to you (twice now), if something ELSE is what is providing the enablement, then it is THAT something else that needs to be the choice of being the reference.

    You appear to have over-inflated this “general knowledge” thing, and want to use that to ‘breathe life’ into science fiction in some attempt to move back the date that a PHOSITA may have in evaluating a claimed innovation.

    You are simply not correct in trying to make a piece of science fiction BE a legitimate reference through the “shifting knowledge” of time, long after that piece of science fiction was written.

    If in that shifting knowledge of time, something ELSE is done that turns elements of fiction (of the piece of science fiction) into an element of non-fiction, then the proper reference IS that later occurring item.

    The proper reference is never the non-enabled fictional elements of a work of science fiction.

    Not ever.

    You do seem confused on this point, so let me again note to you that works of science fiction MAY include elements of non-fiction. Those elements though are not non-fiction (generally speaking) by the act of being published in the fiction work, and may be more like your ‘background knowledge’ that you want to refer to.

    That changes nothing — ever — about the elements of fiction in the publication. You simply never get to use, as a proper reference a work of science fiction as a reference point by a PHOSITA the fictional element of the work of science fiction.

    A reference date IS the date of the reference.

    If you want some other date (for the reason of your ‘general knowledge’), then you must pick a different reference with a different date.

    No amount of “general knowledge” ever turns an item of science fiction into non-fiction for THAT item to be a reference.

    I have no idea why you would be possessed with the notion that this is somehow possible.

    Perhaps some Sovereign has chosen to allow it. If that be the case, I would be interested in reading that decision (in part, to see what was actually stated and compare that to your version of what the case states).

  25. MaxDrei February 22, 2021 9:15 am

    I’m not trying to make a point. Rather, I’m just trying to get a simple answer to a simple question. I regret having seized upon your science fiction hypothetical because it has led you astray. My question has to do with the day-to-day nitty-gritty of determining whether a reference published long before the date of the claim deprives a claim of novelty, or not, depending on whether that reference is found to enable (or not) that which it discloses.

    Your endless repetition of “The date of the reference is the date of the reference” is no answer at all. You remind me of British Prime Minister Theresa May and her endless repetition of the mantra: BREXIT means BREXIT

    I live in hope that some other reader will understand my question and answer it here.

  26. Anon February 22, 2021 10:10 am

    MaxDrei,

    I have given you the simple answer at least three times now.

    I am not the one “led astray.”

    You seem to be having difficulty grasping the simple answer, but it is there.

    Quite to the contrary of your “BREXIT” quip, the simple answer is as given (even if you don’t want to accept it), and I have provided a working example to explain that simple answer, and I have followed up to try to help you understand how your own conflation of “general common knowledge” does not change that simple answer.

    You are just too intent to not see that it is you that remains confused.

  27. ipguy February 22, 2021 2:31 pm

    @21

    “One of the UK’s most illustrious patent judges, Robin Jacob, explained to us, two or three decades ago, that the last person that a court would turn to for help in assessing patentability of a claim of a patent is the inventor of the claimed subject matter.”

    While it has been referred to as a “quasi-judicial” process, US patent examination is not a litigation. Robin Jacob wasn’t a US Patent Examiner. While a US Patent Examiner may feel free to ignore the Applicant’s attorney, the US Patent Examiner can’t ignore (and must be able to refute) evidence submitted by the inventor of the claimed subject matter.

  28. MaxDrei February 22, 2021 4:51 pm

    ipguy, would you like to expand on that? This evidence you envisage being adduced by the inventor: is it evidence of fact? Or is it the evidence of an expert into, for example, what the PHOSITA would or would not have found obvious, or whether any given prior art reference enables what it discloses?

    What Robin Jacob had in mind was evidence from the inventor in the form of the opinion of that inventor on some issue touching patentability. Every inventor bar none holds the opinion that their invention is patentable, despite all evidence to the contrary. How does one set about rebutting that opinion? Does it stand until the Examiner has convincingly rebutted it (with an opinion of their own, perhaps)?

  29. Anon February 23, 2021 9:50 am

    Every inventor bar none holds the opinion that their invention is patentable, despite all evidence to the contrary

    Well that is certainly not true.

    If it were true, there would never ever ever be any abandonments during prosecution.

    It is indeed practically the opposite, as I would have to sit and really think about the last time I had a client to which did not accept my objective explanation of why a particular item was being correctly rejected.

    Maybe it’s not the client there, MaxDrei, and maybe it’s your explanations to the client that should be re-evaluated.

  30. AAA JJ February 23, 2021 10:52 am

    Opinion evidence, whether from the inventor or a third party, on factual issues such as reason to combine, reasonable expectation of success, etc., is probative and must be considered. I think it’s less probative than the objective documentary evidence but I have seen a few cases where it made a difference.

    I don’t think the examiner has to “refute” or “rebut” opinion evidence. As with all determinations the examiner is supposed to weigh all the evidence and arguments and make a determination and provide the reasoning/analysis that led to the determination.

    No evidence on its own is supposed to or required to make the case all on its own. To argue that any singular piece of evidence is dispositive is error. Whether it’s the examiner or the applicant making that argument.

  31. MaxDrei February 23, 2021 12:53 pm

    AAA JJ you just made my day, with your statement that contemporaneous (after the event) opinion evidence is less probative than the before-the-event evidence of prior art documents………. because that latter evidence is “objective”.

    I think we want an objective determination of obviousness and so I think a TSM test is the way to do it.

  32. AAA JJ February 23, 2021 2:32 pm

    A former colleague of mine had a client who won a Nobel prize in chemistry. He submitted an affidavit to traverse a rejection. In the affidavit he basically said, “I have a Nobel prize in chemistry and it would not have been obvious to me to combine those references.”

    The case was allowed.

    A rare example, to be sure.

    As ipguy notes in his thoughtful posts, examiners essentially never provide any fact finding and/or explanation into the factual inquiry of the level of ordinary skill in the art. What can one of ordinary skill in the art do with that incredible knowledge? In the absence of any evidence and explanation from the examiner, I think opinion evidence may be helpful. It would certainly be helpful when faced with APJ’s who don’t understand the burden of proof on that factual inquiry and chide applicants for not providing any evidence that there is a lack of a reasonable expectation of success.

  33. MaxDrei February 23, 2021 2:44 pm

    Thanks AAA JJ. Your story of the allowed case fits with the way the courts in England look at obviousness. Nobody ever asks the court to find that it would have been obvious to “combine” two references out of the prior art universe. That’s because the likelihood of succeeding with such an approach is close to zero.

    Yet courts in England often do find claims obvious. When they do, it is usually on the basis of just one reference, read with the common general knowledge of the skilled person. How that cgk is fixed is usually the heart of an English patent validity trial.

    it’s an interesting approach to litigating the validity of a claim.

  34. ipguy February 23, 2021 3:50 pm

    @28 “ipguy, would you like to expand on that?”

    Instead of re-hashing the points made by Anon and AAA JJ,
    I would only add that I recently went through a situation where the Examiner said that a drawing disclosed a certain feature, and I explained in great detail why that the feature was not shown in the reference’s drawings. The Examiner refused to budge. After consulting with a professional draftsman, the draftsman agreed with my findings on what the drawings did/did not disclose, and agreed to sign a declaration stating his professional opinion (basically repeating what I previously presented to the Examiner). The Examiner’s response to the draftsman’s declaration was a Notice of Allowance.
    The bottom line is that Examiner’s, more often than not, do not act as if they have to give any weight to attorney argument. The same language in an affidavit/declaration, be it from an inventor or a draftsman, is something that an Examiner is not free to ignore. The BPAI/PTAB have, on more than one occasion, reversed rejections when affidavits/declarations have been dismissed by Examiners as “mere opinion” without properly addressing the affidavits/declaration (see #30 by AAA JJ).

    Courts are courts and patent examination is……well, to quote Monty Python, “And now for something completely different….”
    [cue Sousa’s The Liberty Bell aka The Monty Python theme song]

  35. Anon February 24, 2021 9:27 am

    An interesting segue by MaxDrei at post 33, pivoting from what AAA JJ actually stated to a discussion of how a Sovereign that MaxDrei is more familiar with operates.

    I will leave it to others to verify MaxDrei’s views on the UK Sovereign mode of operations.

    I will note that if indeed true, this may explain MaxDrei’s seeming inability to grasp how the US Sovereign has chosen to operate. While leaving low-hanging fruit (combining actual references, and the ‘motivation to combine’ therein – quite the opposite of MaxDrei’s assertion of “close to zero“), the glorification of this (reference-less[?]) ‘general knowledge’ as a preferred battleground sounds at best, well, messy. It certainly sounds discordant from any type of “objective” mode of operations, for without actual solid references, bantering about an opinion of what is common knowledge seems like a completely arbitrary venture. There well may be additional details that would deflate this sense of arbitrariness, but I don’t operate in the UK, and am unaware of any additional information currently not on the table of discussion.

  36. MaxDrei February 24, 2021 10:58 am

    In reply to anon at 35, and for anybody interested, I provide below a Link to the UK PTO’s “MPEP” on the subject of obviousness. Within it, there are copious references to the leading court decisions, and to the notion of the “common general knowledge”.

    https://www.gov.uk/guidance/manual-of-patent-practice-mopp/section-3-inventive-step

    anon supposes the approach of the English courts to be, at best “messy”. While not that, it is certainly inherently expensive, relying as it does on testing under cross-examination the evidence in chief of the opposed party technical experts, about what was the CGK of the notional PHOSITA at the date of the claim.

    While expensive, it does achieve an objective answer to the Question “Obvious Y/N?” that fits better with reality.

  37. Anon February 24, 2021 11:27 am

    While not that”…. then going on to show THAT…

    A battle of experts with the ensuing SUBJECTIVE evaluation is the opposite of objective.

    smh

  38. AAA JJ February 24, 2021 11:29 am

    “…the glorification of this (reference-less[?]) ‘general knowledge’ as a preferred battleground sounds at best, well, messy. It certainly sounds discordant from any type of ‘objective’ mode of operations, for without actual solid references, bantering about an opinion of what is common knowledge seems like a completely arbitrary venture.”

    I agree. The problem with things like “common knowledge” and “common sense” is that none of that is in the record. If it’s so common, it shouldn’t be that hard to find some objective documentary evidence to establish it. And when you point that out to examiners, and APJ’s, what you get in return is the utterly ridiculous, “It’s so common nobody ever bothered to write it down!”

    How does one respond to “It would have been common sense for one of ordinary skill in the art to…”? The only thing you can say is, “No it’s not.” And then the APJ’s will say, “Applicant doesn’t present any evidence that it wouldn’t be common sense” while completely ignoring 1) that the examiner hasn’t presented any objective evidence of “common sense” and 2) the examiner has the burden.

    The determination of obviousness has to be objective. It has to be. It can’t rely on “gap filling” nonsense like “common sense” and “common knowledge” that is not supported/established by objective evidence.

  39. MaxDrei February 24, 2021 1:22 pm

    On objective vs subjective, and the absurdity of the notion of “common sense” perhaps it would help here to provide a Link to a UK patent law blog, and an item on that blog that is a commentary on an obviousness case (Leo) in which the cgk played an important role.

    Typically, an English trial of patent validity runs for 5 days in court, of which the middle three are taken up with x-exam of the opposed expert witnesses, on the content of their respective written reports, that were exchanged between the parties many weeks before the date of the trial. It is a bench trial, with the single judge (whose career prior to elevation to the bench was as a top patent trial lawyer) attentively observing the demeanour of the opposed experts under x-exam from a distance of about 10 ft away.

    Whether a party wins or loses often depends on how whether their written expert report survives the x-exam of its author. The respective litigation teams know this, when they choose an expert and procure the written report. These three days in court are, for observers with an interest in the case, absolutely gripping.

    Obviously, such forensic fact-finding is not a possibility at the Patent Office. Believe me though, in court it is remarkably powerful.

    https://ipkitten.blogspot.com/2014/10/obviousness-common-general-knowledge.html

  40. AAA JJ February 24, 2021 2:13 pm

    I see that working in the trial context. The patentee and the challenger can wage a battle of experts over “common sense” and “common knowledge” to their hearts content. Seems like an expensive solution to me though.

    But that won’t work in ex parte examination.

    I checked the links you sent. It seems that “common knowledge” in the UK is more akin to our “level of ordinary skill” inquiry. As ipguy has said many times, US examiners don’t even bother addressing it, let alone establish it.

  41. MaxDrei February 24, 2021 5:49 pm

    Yep, that’s about it, AAA JJ. Expensive (Rolls-Royce justice). Too expensive for every routine patent application. Readably do-able inter Partes, difficult to pull off convincingly, ex Parte.

    I think one needs to establish the “level” of “ordinary skill” before one can objectively assess whether something was obvious for the notional “skilled person”.

    Interesting is the process of doing that i) in court and at the Patent Office; and ii) in a civil law jurisdiction (mainland Europe, Asia, 4 of the World’s “Big Five” Patent Offices) as opposed to a jurisdiction (USA, England & Wales, Ireland, Australia, New Zealand), running on adversarial English law principles.

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