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A Radical Alternative Patent Reform Proposal: Eliminating The Non-Obvious Requirement

Congress is debating patent reform once again, with the House Judiciary committee hearing testimony from USPTO Commissioner David Kappos and other witnesses today about first-to-file and prior user rights.  The most significant problem, as has been repeated time and again, is the backlog of 1.2 million applications currently pending, and 700,000 applications that have yet to be looked at.  Of course, if the reform boosters are trying to convince us that the current bill will make direct headway on the backlog, their arguments in support of first-to-file are self-defeating.

The data shows a relatively small number of interferences filed over the past several years, compared with the number of applications filed.  Of course, if inventors don’t use the interference procedure because it’s too time-consuming, or too costly, a logical reaction might be to make interferences faster and cheaper to make sure we get it “right.”  But congress’ decision to agree that being “right” is no longer preferable, and instead to adopt an arbitrary method of determining invention ownership is a subject for another day.

Instead, why not talk about an idea that might actually do something about the backlog: examine patents for novelty and statutory bars, but allow patents without regard to whether or not they are “obvious.” I know what you’re thinking:

But hear me out.  From yesterday’s edition of PATNEWS:

[The Supreme Court] dictated that “predictable” is what Congress meant by “obvious”, despite a) Congress never saying so, b) Congress not even knowing what they meant in the first place, and c) the decision cited to introduce “predictable” not using “predictable”.

A new book [by Dan Gardner] introduces some empirical data that questions any use of the inferred predictive abilities of PHOSITAs for obviousness rejections.

Gardner firsts starts with work done by UC Berkeley professor Philip Tetlock, who review 27,000 expert predictions by academics, pundits and other prognosticators, and determined that they were little more accurate that throwing darts.

Also, I previously discussed the file history of the useless invention (although apparently a useful teaching tool) the Google “Doodle” and concluded that the real travesty is the 10 years needed to figure out what, if anything, was patentable about it.

At the culmination of this 10 year process, the patent office finally decided that the line between a patentable invention, and an obvious invention was the animation of logos.  Claim 26, below, was specifically agreed by the patent office to be obvious:

26. A computer-readable medium that stores instructions executable by one or more
processors to perform a method for attracting users to a web page, comprising:
instructions for creating a special event logo by modifying a standard company logo for a special event;
instructions for associating a link or search results with the special event logo, the link identifying a document relating to the special event, the search results relating to the special event;
instructions for uploading the special event logo to the web page;
instructions for receiving a user selection of the special event logo; and
instructions for providing the document relating to the special event or the search results relating to the special event based on the user selection.

Believe it or not, Google’s argument for why claim 26 should have been allowed is that certain evidence submitted by the Examiner (a previously existing modified logo on the Yahoo! web page) failed to prove that logo was uploaded to the Yahoo web page … Seriously:

Appellant submits that the Examiner has not provided any evidence that the modified Yahoo logo was uploaded on the Yahoo web page by executing instructions for uploading a special event logo to a web page.

And you thought I was the crazy one … Still don’t believe me? (page 17)

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Did that argument fail? Yes. Yes it did:

However, on this record, we agree with the Examiner’s finding (which Appellant has not rebutted) that a logo that is viewable on a webpage must have been uploaded via computer instructions.

Nevertheless, claim 29 adds to claim 26:

29. The computer-readable medium of claim 26, wherein the instructions for creating a special event logo include:
instructions for modifying the standard company logo with one or more animated images.

So, with modification of a logo clearly being obvious in view of various examples of prior art, what, then, did the patent board do with the claim that specified the logo modification could be animated?  As I already quoted:

Issue 5: Did the Examiner err in finding that the cited references would have taught or suggested instructions for modifying the standard logo with one or more animated images, as recited in dependent claim 29? (App. Br. 17).

Based upon our review of the record, we agree with Appellant that the Examiner has not established that instructions for modifying the standard logo with one or more animated images is fairly taught or suggested by the cited combination of references. (App. Br. 18). In particular, we see no “animated” image in the evidence before us. Therefore, we reverse the Examiner’s § 103 rejection of claim 29.

That’s not a typo (page 9):

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So, to recap, starting with a logo (which, mind you, is an image) and modifying and uploaded it to a web page with a computer program would have been obvious.  But modifying and uploading a logo with an animated image? Not obvious. And the reason? The board tells us “we see no ‘animated’ image in the evidence before us.”  Are they suggesting that animated images didn’t exist before 2001?

The moral of this tale is this: If the patent office is going to continue to draw such fine distinctions between what is obvious, and what is not obvious, then what’s the point of the obviousness inquiry in the first place?  As PATNEWS already suggested, using “predictability” as the touchstone of obviousness is about as accurate as throwing darts, and this distinction is a prime example of that.  It’s also a prime example of arbitrary decision-making (something government agencies are supposed to avoid).

I’m not criticizing the patent office for granting a low-value patent. It’s not their place to decide which inventions are worth the expense and which one’s aren’t.  What I am criticizing is the arbitrary distinction made here to give the patent applicant something, instead of just sticking by their guns… By caving in after a decade of prosecution, the patent office sets a de facto policy turning non-obviousness as a proxy to award patents to the most persistent applicants, rewarding “rich” inventors with patents for arbitrary combinations of existing technology, while punishing (by implication) “poor” inventors that can’t afford multiple RCE’s and an appeal brief.

Inevitably, however, enforcing non-obviousness too stringently is always met with resistance (rightly so) because it unfairly punishes inventors through the use of hindsight — like telling an inventor, “Now that you’ve described your invention, anyone would be able to make it … so you’re not entitled to a patent.” This policy will discourage people from disclosing their inventions in the first place, eviscerating the purpose of of the patent system.

But by eliminating non-obviousness, dramatically reducing the backlog and encouraging patent disclosure, the patent system can get back on track.


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