So much has been made about the United States Supreme Court’s decision in KSR v. Teleflex, which happened just over 2 years ago. Occasionally I like to take a look at how the Patent Office is handling KSR. Admittedly, this is not a scientific study, and is more aimed at having fun and perhaps also explaining so we never forget just how absurd the Supreme Court’s decision in KSR actually was. Those familiar with the KSR decision and history will recall that the non-patent experts on the Supreme Court, including Justice Antonin Scalia who openly admitted he didn’t understand patent law during oral arguments — calling patents “gobbledygook,” decided to completely do away with an objective, understandable and repeatable test in favor of a completely subjective test without any concrete boundaries. Yes, in their infinite wisdom the Supreme Court decided that the law of what is obvious should be conducted on a case by case analysis and an invention is obvious if it is “common sense.”
Too bad Scalia and the Supremes didn’t understand that what is common sense to one might actually not be common sense to others. Too bad they also didn’t take time to consider that the 6,000 patent examiners working for the USPTO are not attorneys, and follow the dictates of rules laid out for them. But how do you get any uniformity with 6,000 examiners all applying an undefined understanding of “common sense.” Apparently the Supreme Court also didn’t understand that the US Constitution also requires those similarly situated to be treated similarly, otherwise there is illegal and unconstitutional discrimination. Finally, the Supreme Court’s decision in KSR actually sets forth a rule that says that when an inventor attempts something that they thought would or might work, the invention is obvious. So now, only those things embarked upon by an inventor where the inventor thought it was foolish and/or could never work will result in inventions that can be patented. Completely absurd!
Thankfully, the Patent Office seems to be applying KSR in a way that… well… completely ignores the Supreme Court in at least some cases. This is not meant as a criticism of the USPTO, but rather a compliment. The real trouble with KSR does not seem to be the Patent Office, but will the courts follow the Supreme Court? If the courts do follow the Supreme Court then virtually nothing is patentable, at least not when there is any motivation to try and invent. You have to be an “accidental inventor” if KSR is applied strictly, which means nothing can be patented moving forward. But how long will it take the Federal Circuit to overrule the Supreme Court, like they have frequently done in so many areas of patent law over the years? Stay tuned! Time will tell, but for now, here are a few recently issued patents that seem to have been granted such that KSR was hardly considered by the PTO.
Head covering and insignia display assembly
US Patent No. 7,536,731
Issued May 26, 2009
Filed June 14, 2004
This invention is directed to a head covering and insignia display assembly including a primary member constructed of a foldable weather resistant material and structured to comprise a sports helmet configuration. Additionally, the primary member comprises a unitary construction so as to eliminate the complex and expensive composite construction requirements associated with known devices. In one embodiment, the primary member comprises a unitary construction of fleece, or another readily foldable material including, for example, leather, flannel, or wool, just to name a few, to provide the user with at least some degree of protection from the elements, such as cold temperatures.
Bidet based liquid dispenser and blow-dryer system
US Patent No. 7,543,339
Issued June 9, 2009
Filed February 28, 2008
The invention is designed to take advantage of the unused space that exists directly above the average toilet water tank for the placement of a modular bidet system. This invention utilizes a unique modular cabinet designed to be strategically placed onto the top rim of a standard toilet’s water tank. It is shaped to blend in with the design of the water tank for aesthetics. The bottom of the cabinet has guides so that the cabinet can fit well on a variety of water tank sizes. The top of the cabinet is a rim just like that of the water tank to allow the original toilet’s lid to be re-installed. This allows the stock toilet lid to be reused so that the general design of the toilet can be maintained and to help the cabinet to blend into the existing bathroom decor. This modular design allows other modular cabinets or special purpose cabinets to be installed onto it. The cabinet can have its own custom lid as well. This modular cabinet provides the housing and space for the components of the bidet system, which includes a bidet device with a hose reel and water sprayer, a cartridge based liquid dispenser for dispensing of cleaning solutions or medicines to the bidet sprayer, and a blow-dryer. This is an apparatus that can either be attached to an existing toilet as an aftermarket product or manufactured in combination with a new toilet.
US Patent No. 7,543,511
Issued June 9, 2009
Filed February 18, 2008
This invention is a protective enclosure, such as a visor, for use on a dog (or other animal) comprising a body foldable into the general shape of the animal’s head, wherein the body includes an upper portion adapted to fold around the animal’s snout so as to form a front opening for the animal’s mouth and nostrils, and a rear portion adapted to be foldable over the rear of the animal’s head so as to form one or more ear openings, and wherein said body includes a compliant internal spacer adapted to hold the enclosure snugly in engagement with the animal’s head when applied to the animal.
Convertible sock/slipper legwarmer
US Patent No. 7,533,424
Issued May 19, 2009
Filed August 8, 2006
This invention relates to apparel for covering a foot, leg and/or a portion thereof may include a sock-like tube made of wearable material that is sized to fit over the foot and the leg. The sock-like tube may have a closed end, an open end, and an opening near but not at the closed end that is sized for the foot to pass through.The opening may extend across approximately half of the sock-like tube. The opening may be positioned such that, after the sock-like tube is placed over the foot and leg, the opening is behind the beginning of the toes and in the front of the ankle. The opening may be formed by overlapping portions of material. The sock-like tube may be constructed from three pieces of material. The three pieces of material may each have a width that is equal to approximately half of the circumference of the sock-like tube. The first piece may have a length that is approximately equal to the length of the sock-like tube. The second piece may have a length that is more than half the length of the sock-like tube but less than the length of the sock-like tube. The third piece may have a length that is less than half of the length of the sock-like tube. The length of the second piece plus the third piece may be greater than the length of the first piece.
I am not saying that these inventions are not real inventions, and I am not saying they are obvious in any real sense, although the helmet does make me scratch my head a bit. Nevertheless, with the nonsensical test for obviousness announced by the Supreme Court in KSR v. Teleflex it is hard to see why there would not be motivation to try and expect success, which literally should mean that these inventions, and virtually all others, are obvious. Of course, the Supreme Court decision in KSR is in direct conflict with 35 U.S.C. 103, which says in relevant part: “Patentability shall not be negatived by the manner in which the invention was made.” Hopefully Congress will eventually get around to undoing KSR and amending 103, perhaps what they need to amend 103 like this: “Patentability shall not be negatived by the manner in which the invention was made. P.S. We really mean it!”
Join the Discussion
7 comments so far.
~~Logan~~June 24, 2009 08:12 pm
I won’t comment on the validity (or obviousness) or not of the various patents you cite for obvious reasons. However, I do have a question for you, as well as the other lawers out there.
Often on these blogs we see lawyers (and/or applicants) complaining, as above, about issued patents that they think are obvious or should have otherwise been rejected (e,g, 101 or 112). Quite often they argue that the claims are clearly not allowable on their face simply because of what is known by the general public (not one of ordinary skill, but less) or clearly do not meet statute/case law (i.e., Bilski). Very often these issued patents were drafted by patent lawyers, as well.
Now, my question is: are lawyers (or applicants, as the case may be) under ANY obligation (legal, ethical, or otherwise) to file claims that they actually believe are allowable & meet the statutory (102, 103, 112, 101) requirements? Or can they file claims that read on every known device since the dawn of time (e.g., a “stick”) or things which they don’t even come close to mentioning in the spec, for example? Are they any ramifications of doing such, other than a 1st action rejection?
The reasons I ask is because of all of the complaints we see on these blogs where the lawyers all say “I would never file that!” but it appears that a lot of lawers are filing “that”. There seems to be a disconnect between what people file and what observers (including yourself above) feel is reasonable to allow. Personally, while I do believe it is the examiners job & obligation to not allow those claims that are properly rejectable, shouldn’t the applicant/lawyer also share a bit of the blame for claims that are generally felt to be obvious based on general knowledge or invalid based on statute/case law? Or do you believe that patent lawyers can file claims that read on anything & it is all up to the examiner to find prior art?
(Unfortunately, it seems like years ago lawyers filed claims that were more “reasonable” (i.e., closer to where the line of allowability was) and didn’t read (literally) on the definition of a whole class. Today they often file (knowingly??) overly broad claims and leave it to the examiner to find something to reject the claims. I think that this has helped lead to the increased rejection rate & the acrimony between examiners & lawyers. It seems that the process has gone from a cooperative one (where we both want to get claims that distinguish over the prior art to one where the only goal of applicant/lawyer is to get the broadest claim possible no matter how they have to get there.)
Appreciate hearing your response.
Mr TJune 24, 2009 12:29 am
“And now for something completely different:” This patent bothered me at a gut level and is not merely the use of “may” throughout the description/patent which I was taught never to use so I looked at the claim, and viola I can see how it issued without looking at the prosecution history: Who couldn’t design around this patent if it were found to to be patentable (assuming a challenge would occur, i.e. indefiniteness, etc.) [yes a presumption of validity for issued patent]. Is there a market for such a product that warrants the patent costs:
Here is the claim:
1. A tube-like sock that may be worn in four different configurations on a calf and an associated foot having an ankle, toes, a sole with an arch, a heel, an instep, and a ball, the tube-like sock comprising: a first piece of stretchable and elastic material that is substantially rectangular, except for a front portion that is rounded, and that has a stretched width that is approximately the width of the sole of the foot and a stretched length that is approximately the distance between the end of the toes and the midpoint of the calf; a second piece of stretchable and elastic material that is not integral with the first piece of material and that is substantially rectangular and that has a stretched width that is approximately the same as the stretched width of the first piece of material and a stretched length that is approximately the distance between the midpoint of the arch and the midpoint of the calf; and a third piece of stretchable and elastic material that is not integral with the first or the second piece of material and that is substantially rectangular, except for a front potion that is substantially rounded, and that has a stretched width that is approximately the same as the stretched width of the first piece of material and a stretched length that is approximately the distance between the mid-point of the arch and the end of the toes, the first, second and third pieces of material are attached to one-another such that: a squared edge across the width of the first piece of material is substantially aligned with a squared edge across the width of the second piece of material; and the rounded front portion of the first piece of material is substantially aligned with the rounded front portion of the third piece of material; the first, second, and third pieces of material are attached to one another only along a single seam along the entire perimeter of the first piece of material, except for the squared edge of the first piece of material, thus forming a tube-like sock, the three pieces of material being sized to fit snuggly over the calf and the foot, the three pieces of material are not attached to any other piece of material, the second piece of material is not attached to any other material at either edge of its width, the third piece of material is not attached to any other material at one edge of its width, the three pieces of material form a closed end at the edges of the rounded portions of the first and third pieces of material, an open end at the calf end of the first and second pieces of material, and an overlapping portion between the second and third pieces of material above approximately the mid-point of where the arch of the foot is when the apparel is worn, the overlapping portion forming a closable opening that, when opened, is large enough for the toes, ball, arch, sole, instep, and heel of the foot to pass through, the three pieces of material are sized and attached to one another such that the tube-like sock may be worn in each of the following four different configuration: a first configuration that completely covers the calf and all of the foot; a second configuration that completely covers the foot but only a lower portion of the calf a third configuration that completely covers the calf and the foot, except for the toes, without obstructing contact between the ball of the foot and a floor beneath it or substantially bunching up under the arch; and a fourth configuration that completely covers the calf but not any portion of the foot, without substantially bunching up above the ankle.
Noise above LawJune 22, 2009 06:11 pm
Just to throw in a little historical perspective (credit to the Patent Prospector who prominently displays this quote):
“The fact is that one new idea leads to another, that to a third, and so on through a course of time until someone, with whom no one of these ideas was original, combines all together, and produces what is justly called a new invention.”
– Thomas Jefferson, Director of the 1st U.S. Patent Board –
Gene QuinnJune 21, 2009 08:53 pm
I’m afraid that you do not seem to understand the law of obviousness. You need to figure out what the level of skill in the art is, and you are creating a fictitious distinction that the law does not make. The law of obviousness asks whether it would be obvious to one of ordinary skill in the art, and there is no such thing as “one of expert skill in the art,” as you suggest. The inventor would be one of ordinary skill in the art much of the time, or quite possibly the inventor will be less sophisticated then “one of ordinary skill in the art.” When the Supreme Court says that it is not a matter of whether it is obvious to the patentee they are talking about the situation where the inventor possesses less skill than those deemed “of ordinary skill in the art.” There is simply no basis in law for the distinction you are trying to make.
“Obvious to try” is exactly the new standard endorsed in KSR. The Supreme Court said: “that a combination was obvious to try might show that it was obvious under §103.” When the Supreme Court was explaining that an invention could potentially be obvious if it was “obvious to try,” the Court was referring to the situation where there exists a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions. In this circumstance the Court explained that a person of ordinary skill would have good reason to pursue the known options within his or her technical grasp, and that if this pursuit leads to the anticipated success it was likely the product of ordinary skill and common sense – not an act of innovation.
Additionally, the Board of Patent Appeals and Interferences stated in In re Kubin: “Under KSR, it’s now apparent “obvious to try” may be an appropriate test in more situations than we previously contemplated.”
After a long line of cases suggesting that “obvious to try” was not the standard, the Supreme Court wiped it away in KSR, and I suspect that they didn’t even know what they were really doing or saying. They were sloppy to use the term “obvious to try.”
marvJune 21, 2009 04:21 pm
You say “the Supreme Court’s decision in KSR actually sets forth a rule that says that when an inventor attempts something that they thought would or might work, the invention is obvious. So now, only those things embarked upon by an inventor where the inventor thought it was foolish and/or could never work will result in inventions that can be patented. Completely absurd!”
However, the KSR decision states “The question is not whether the combination was obvious to the patentee but whether the combination was obvious to a person with ordinary skill in the art.” Seems pretty clear to me that your interpretation does not reflect the court’s intent. “Obvious to try” to one of ordinary skill in the art does not equate to “obvious to try” to one of expert skill in the art, i.e. the inventor.
Gene QuinnJune 21, 2009 11:27 am
I agree with you. Some examiners apply KSR and others ignore KSR. For the life of me I don’t understand why patent attorneys do not set up an equal protection argument. Eventually someone will get that issue to the Federal Circuit, and if it does get into the courts the decision will have to be that applicants are not treated equally. Thanks to the Supremes the objective statement of teaching, suggestion and motivation is gone and disparate treatment is now encouraged. The Supremes certainly didn’t know enough, said many things that give examiners and judges subjective basis to do whatever they would like, and that is fundamentally unfair.
It is odd how KSR has relevance when the invention is “real” or potentially “important” but seems to be completely ignored in so many other areas.
step backJune 21, 2009 09:23 am
This is one of your posts where I feel compelled to both agree with you, and disagree with you, all at the same time.
A first thing that all practitioners should be doing for an umpteenth time is re-read KSR again.
Re-read it while pretending you are a Supreme Court justice with little understanding of science or how the invention process works but also as one who believes in “the market” and its ability to produce “innovations” all on its own (like that cure for cancer that the market has been promising us all these years; yeah right). Re-read it while noticing that PHOSITA is no longer an automaton but rather a “person”. What implications does that raise? Hmmm.
In so far as the USPTO *not* applying KSR, my anecdotal experience has been quite the opposite. I find examiners picking out catch phrases from KSR (like the “predictable results” line) out of context and liberally applying them like ice cream sprinkles to all their rejections.
I do agree with you that KSR has turned out to be a double edged sword. There is that business about requiring a “rational underpinning” that seems to trip Examiners up. Of course, the burden of proof is on the Applicant. When you combine that with Dickenson v. Zurko (substantial evidence rule), it becomes a fairly expensive cocktail for inventors. It is the Applicant who has to come up with substantial evidence that the rejection lacks rational underpinning. I see in other blogs that a number of practitioners have started “getting it” about Zurko and KSR. Yet all too often, when reading through the unending lists of affirmations in the BPAI Freedom of Info Reading Room, one sees many well known law firms who seem to have not gotten it and who go down in flames under the substantial evidence rule. So all in all, this is a good proactive post by you. Maybe it will get more practitioners to re-read KSR, to re-read Zurko, and to locate the other edge of the double edged sword in what KSR stands for and in what Zurko stands for. Yes, like “uniformity” and the USPTO not engaging in arbitrary and capricious decision making when they deem that something is “common sense” but fail to explain why.