Posts Tagged “KSR ruling”

Have you ever noticed that the cooked meats at the deli – the whole turkey breast, the roast beef, the ham – are often cooked in a mesh sleeve that makes the surface of the meat have a windowpane check pattern? The same pattern you’d have if you were pressed against an oversized window screen. If you were in the meat packing business, would you consider a way to lock the intersecting threads of the mesh obvious?

If you’ve filed a patent application anytime in the recent past you’ve probably been smacked by an “obviousness” rejection of some or all of your claims. Obviousness used to be much less of a problem – so much less that it seemed that every trivial “invention” was getting a patent.

But, like any pendulum, this situation did a 100% about face after the Supreme Court’s KSR ruling. Within that ruling the patent examiners, and the district courts, apparently, found the “common sense” rule. That is, even if they could not find a direct link between some prior art and the current application, they could now appeal to common sense to justify an obviousness rejection or invalidity ruling. How do you fight common sense?

The problem is that common sense makes a lot more sense in hindsight. Every trail looks obvious once someone has marked it for you. Luckily for Marcus and Neil Mintz, inventors of a new “meat encasement” stockinette, the Court of Appeals (CAFC) reversed the District Court’s invalid-as-obvious decision by pointing to that Court’s hindsight errors.

A patent claim is invalid as obvious “if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art.” This definition requires an understanding of the level of ordinary skill in the art and a review of any objective evidence of nonobviousness. To determine the level of skill in the art the court will look at: the type of problems encountered in the art; prior art solutions to those problems; rapidity of  innovation in the art; sophistication of the technology; and educational level of active workers in the field.”

In this case, the prior art, the problems giving rise to the invention, and the invention itself featured the “meat encasement” art. The district court, however, said the person of ordinary skill would have familiarity with the knitting art but no familiarity with the meat encasing art! Entirely omitting the meat encasement art, according to the CAFC, led the validity search astray.

Additionally, the CAFC said the district court made a clear error in its unsubstantiated reliance on “a common sense view” to hold that it would have been “obvious to try” a locking engagement (to make the stockinette). “Common sense”, the CAFC said, is a shorthand label for knowledge so basic that it certainly lies within the skill set of an ordinary artisan. But of course the basic knowledge (common sense) of a knitting artisan is likely to be different from the basic knowledge in the possession of a meat encasement artisan.

The district court also used the invention to define the problem that the invention solves; that is, hindsight. Often the inventive contribution lies in defining the problem in a new revelatory way. In this case, the question was NOT about how to lock the grid of the stockinette in place but rather whether a person of ordinary skill in the meat encasement arts, at the time of the invention, would have recognized the adherence problem recognized by the inventors and found it obvious to produce the meat encasement structure that included the locking stitch in the open mesh stockinette.

Technical advance, often occurs through incremental steps. These marginal advances in retrospect may seem deceptively simple, particularly when retracing the path already blazed by the inventor. Where the invention is less technologically complex, it is particularly important to ward against falling into the forbidden use of hindsight. Simply because the technology can be easily understood does not mean it is obvious at the time of invention. In fact, objective consideration of simple technology is often the most difficult because, once the problem and solution appear together in the patent disclosure, the advance seems self-evident.

Many of my clients who are engineers fall into this trap and resist filing for a patent – they forget that having already solved a problem is always going to make it look obvious in hindsight. The important question to ask, however, is will this “obvious” solution provide your company with a sustainable competitive advantage in your markets?

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Life is full of subjective measures – Am I a “good” person? Depends. Is this a “long” piece of string? Depends. Is Playboy “pornographic”? Depends. Is that figure skating routine worthy of 9.8 or 9.9? Depends. Is my invention “obvious”? Depends.

By now, you probably know that the Supreme Court, in the “KSR” ruling, made getting a patent significantly harder by throwing out a test that had been [mis]used for many years. This week, according to Greg Aharonian of the Internet Patent News Service, the PTO issued revised guidelines for obviousness determination during patent examination in response to the KSR decision. According to Greg, who has time to read these things, the new guidelines effectively define obvious as “predictable”.

Like trying to prove the non-existence of a non-observable phenomenon, being absolute about what’s good, pornographic, or obvious is clearly impossible. If we agree with the premise that patents should only accrue to inventors who make a meaningful improvement (by which I “obviously” mean to make an improvement that was not “obvious” to the bulk of society) to their fields of endeavor, then we buy into the conclusion that some subset of society will have to sit in judgment of these improvements and try to apply a fair (= equally applied) standard to all inventions. That the current situation is a poor implementation of this goal does not invalidate the goal.

The standard to which inventors are held, however, will always be defined by a sense of what society believes or understands. The KSR ruling was to obviousness what Potter Stewart’s words were to pornography (“I shall not today attempt further to define [pornographic] material…but I know it when I see it.”) Or, to paraphrase Cole Porter, “In olden days a glimpse of prior art was looked on as something shocking but now, God knows, anything goes” (sorry Cole).

Anyway, I think we’d just better suck it up and work our arguments at the PTO or CAFC the best we can. I personally don’t like moving from “obvious” toward “predictable” because I don’t want to limit inventions to items developed by trial and error (like Edison’s light bulb filament); I want to reward the inventor who uses whatever skills he or she has to predict a result that the rest of us didn’t have the insight to consider.

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