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IP, Patent

A Patently Obvious Reading of the Recent Examination Guidelines

The USPTO Decides to Lower Obviousness Standards” proclaims Slashdot.  Yes, according to Slashdot these new guidelines (which actually went into effect in September, and thoroughly debated over at PatentlyO) “do away with” the old 2007 standards which said that predictable variations based on design incentives, and use of known techniques to improve similar devices.  Mike Masnick, over at TechDirt, tells us that the “US Patent Office Makes It Harder To Reject Patents For Obviousness.”  According to Masnick,

we’re back down to just three tests for obviousness, which significantly limits the likelihood that examiners will reject patents as obvious. The end result? A lot more obvious ideas getting patented, followed by a lot more gridlock and needless lawsuits and transfer payments in the market — and a huge tax on innovation. What a shame.

Both authors cite End Software Patents, which tells us the “USPTO has now deleted four of [the seven] tests” for obviousness. Of course, all three articles are dead wrong, as well as the lawyer they were following.

After the break, I explain precisely what each of these sources missed when reading the 2010 guidelines, as well as Hal Milton‘s recent comments at an AIPLA meeting regarding the differences between how courts and examiners evaluate patentability, and how to draft claims that will stand up to a court challenge.  Stay tuned … there’s also a plug for Hal’s new book and patent-pending software tool, both designed to teach lawyers to write patents the right way!

According to End Software Patents, the seven post-KSR tests for obviousness were:

(A) Combining prior art elements according to known methods to yield
predictable results;

(B) Simple substitution of one known element for another to obtain predictable results;

(C) Use of known technique to improve similar devices (methods, or products) in the same way;

(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;

(E) “Obvious to try”–choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;

(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations would have been predictable to one of ordinary skill in the art;

(G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention.

However, according to the lawyer they’re all quoting, all but three of these test are obliterated by these new guidelines.  In KSR, patent obviousness and USPTO practice, posted over at the ipeg blog,

The 2010 KSR Guidelines insist only that, in addition to TSM, there are two other tests for obviousness:

(a) “substituting one known element for another,” which requires that “the result obtained would have been predictable.”  75 Fed. Reg. at 53649.

(b) “the obvious to try rationale,” which requires “a recognized problem or need in the art” and “a finite number of identified, predictable solutions to the recognized need or problem.”  Id. at 53653.

Well, substantial changes to obviousness standards are certainly nothing to ignore.  Naturally, I had to take a peek for myself.  Again, you can read the guidelines for yourself here.

As to the purpose of this publication in the first instance, the PTO tells us that they wanted “to provide additional guidance in view of decisions by the United States Court of Appeals for the Federal Circuit (Federal Circuit) since KSR.”  And what of those old guidelines, that everyone before the jump told us are just washed away by all this?  From the notice:

The 2007 KSR Guidelines have been incorporated in the MPEP. See MPEP § 2141 (8th ed. 2001) (Rev. 6, Sept. 2007).

The MPEP is, of course, the manual that all Examiner use as a guide in examining patent applications.  Look at the current edition of the MPEP, section 2141 states:

Exemplary rationales that may support a conclusion of obviousness include:

(A) Combining prior art elements according to known methods to yield predictable results;

(B) Simple substitution of one known element for another to obtain predictable results;

(C) Use of known technique to improve similar devices (methods, or products) in the same way;

(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;

(E) “Obvious to try” – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;

(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art;

(G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention. See MPEP § 2143 for a discussion of the rationales listed above along with examples illustrating how the cited rationales may be used to support a finding of obviousness.

So, summarizing these three snippets, is it possible that these new 2010 guidelines simply provide us with the teachings of additional Court of Appeals cases that have published since the original 2007 guidelines? Perhaps the only relevant caselaw since the MPEP was amended post-KSR addressed the two specific tests discussed in the 2010 guidelines?  In fact, the PTO explains that we should treat these supplemental guidelines as exactly that, a supplement:

Thus, Office personnel may use this 2010 KSR Guidelines Update in conjunction with the 2007 KSR Guidelines (incorporated into MPEP §§ 2141 and 2143) to provide a more complete view of the state of the law of obviousness.

Interpreting the PTO’s publication of these guidelines as “giv[ing] applicants greater opportunities to obtain allowance of claims” is simply inaccurate.  Moreover, coming from an attorney at a well-respected law firm, it leads others to believe that “[a] lot more obvious ideas getting patented, followed by a lot more gridlock and needless lawsuits.”

Kudos to Dana Blankenhorn of ZDNet, who managed to cover this same story here without taking the “chicken little” approach.  Sensibly, Dana writes:

Some patent attorneys think this weakening of obviousness obviously means it’s going to be easier to sneak obvious ideas through the patent office. That’s Slashdot’s fear as well.

I don’t think it’s quite that obvious.

Indeed.

Of course, boiling down obviousness to a series of arbitrary tests is, in itself, a silly way to evaluate patentability.  Hal Milton, the man who wrote the claim ultimately invalidated in KSR v Teleflex, recently discussed at an AIPLA meeting how to identify, claim and present the new function flowing from the claimed invention, which he refers to as the “art-additive.”  While the USPTO focuses primarily on the language of the claims to determine patentability, Hal discovered that courts are more concerned with the patent as a whole. In fact, Hal long ago discovered that the law of obviousness has been developing consistently for over 150 years, and published those findings in the article The KSR Standard for Patentability, which explained that a valid patent should “issue only to those combinations that produce a new and useful result.” (emphasis added) (Also published in 89 JPTOS 615 (2007).  According to Hal’s comments at AIPLA, while it may be possible to draft a claim in such a way as to pass one of the PTO’s arbitrary tests, any issuing patent would be diminished in litigation since a court would be more likely to view the claim as merely an aggregation of old elements, or (at best) because the true art-additive can be used to interpret the claims more narrowly than their plain language might suggest.

As an example of the former situation, Hal discussed his own patent from KSR v Teleflex, where the art-additive consisted of the combination of rectilinear motion with a fixed sensor.  Claim 4, which was held invalid by the Supreme Court, removed the rectilinear requirement and merely combined a fixed pivot with adjusting movement, whether rectilinear or rotary.  As an example of the latter, Hal discussed Lydall v. Federal Mogul, where an attempt and broadening claims from the narrower art-additive (a composite batt having three layers) to a broader application (a single-layer batt) failed even though a reissue application issued with broader claims.

In his book, Principles for Preparing Patent Applications, Hal applies these principles to teach lawyers how to write patents that will stand up to a validity challenge.  Always the entrepreneur, Hal is also the proprietor of Patent Architect, a patent-pending (of course) software application that applies Hal’s drafting principles to flawlessly create error-free patent applications.

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