When is an Invention Obvious?

When attempting to determine whether an invention can be patented it is necessary to go through the patentability requirements in an effort to see whether patent claims can likely be obtained. Ideally you want patent claims that are meaningfully broad and commercially relevant, but at a minimum you must have claims that embody patent eligible subject matter, demonstrate a useful invention, cover a novel invention and which are non-obvious in light of the prior art. Obviousness is typically the real hurdle to patentability, and unfortunately the law of obviousness can be quite subjective and difficult to understand. At times obviousness determinations almost seems arbitrary.

The basic obviousness inquiry was set forth by the United States Supreme Court in Graham v. John Deere nearly 50 years ago, and remains good law even today. In order to determine whether an invention is obvious one must work through this analytical framework: (1) Determine the scope and content of the prior art; (2) Ascertain the differences between the claimed invention and the prior art; (3) Resolve the level of ordinary skill in the pertinent art; and (4) Consider objective indicia of non-obviousness (i.e., are there secondary considerations of non-obviousness that suggest a patent should issue despite an invention seeming to be obvious). See Understanding Obviousness: John Deer and the Basics. While this seems easy enough, the application of these factors or considerations is exceptionally difficult.

Prior to the Supreme Court’s decision in KSR v. Teleflex obviousness was rather mechanical. With obviousness we are asking whether there is any combination of prior art references that when put together would be the invention in question. In other words, could an ordinary mechanic create your invention or was there some kind of non-obvious innovation. Defining the concept with using the concept is hardly illuminating, but that is the way the law of obviousness works. This is true because what is obvious to some large degree is in the eye of the beholder.

Prior to KSR v. Teleflex there were rules in place to prevent to the obviousness inquiry from being subjective to the greatest extent possible. The United States Court of Appeals for the Federal Circuit had employed a “teaching, suggestion or motivation test” for over 30 years. If there was no teaching, suggestion or motivation to combine the references then the invention could not be obvious. This prevented hindsight from creeping into the inquiry, which was critically important because on some level everything is obvious once you know about it.

Unfortunately, in KSR the Supreme Court said that the teaching, suggestion or motivation test was too restrictive. They also said that the question about whether an invention is obvious is one of “common sense.” Sadly, the Supreme Court didn’t really define “common sense,” presumably they thought it would be self evident. This caused great turmoil both in the courts and at the United States Patent and Trademark Office. See KSR the 5th Anniversary: One Supremely Obvious Mess.

The reality is that some uniform rule has to be created even if the Supreme Court refuses to accept bright line rules. There are over 7,500 patent examiners, hundreds of federal judges that should be able to repeatably and predictably apply obviousness case after case. This need for some stability and predictability has caused the Federal Circuit to salvage as many of its old cases as possible, and the USPTO to issue guidelines and guidance to help interpret cases. Still, ever since the Supreme Court’s decision in KSR there has been a great deal of subjectivity in the application of the law of obviousness, which is apparent if you look at the patents that issue, patents that are finally rejected and ultimately abandoned, and the patents the Federal Circuit ultimately finds to include obvious patent claims. There is little to no predictability at the edges.

In theory, obviousness today is about predictability of results. We used to be able to argue that an obviousness rejection was inappropriate where there was no teaching, suggestion or motivation to combine references. Today, however, even if there is no teaching, suggestion or motivation to combine references the patent examiner can reject the application based on one of six other so-called KSR rationales. The other rationales available to the examiner are:

  1. If the invention a product of combining prior art elements according to known methods to yield predictable results the invention is obvious.
  2. If the invention is created through a substitution of one known element for another to obtain predictable results the invention is obvious.
  3. If the invention is achieved by using a known technique to improve a similar device in the same way the invention is obvious.
  4. If the invention is created by applying a known improvement technique in a way that would yield predictable results the invention is obvious.
  5. If the invention is achieved from choosing a finite number of identifiable, predictable solutions that have a reasonable expectation to succeed the invention is obvious.
  6. If known work in one filed of endeavor prompts variations based on design incentives or market forces and the variations are predictable to one of skill in the art the invention is obvious.

As you can see, rationales 3 and 4 are virtually identical. All of these also focus on whether the resulting invention was achieved by combining known references in a way to produce predictable results. Thus, the way you must argue obviousness post-KSR is to say that there is no teaching, suggestion or motivation to combine the references and that the resulting combination of elements would not have been understood to produce predictable results by someone of skill in the art.

That being said, the possibility that a utility patent could be obtained cannot be definitively ruled out even if an invention seems quite likely to be obvious, which is one of the biggest problems with the law of obviousness. Indeed, one of the more frustrating things about working with the Patent Office is that there is a real lack of uniformity in application of the law of obviousness. For example, on January 7, 2014, the Patent Office granted U.S. Patent No. 8,622,700, which for all intents and purposes granted rights to the inventor to a glow in the dark ceiling fan blade. Just take a look at claim 1 in its entirety:

1. A blade for a ceiling fan, said blade incorporating or constructed of phosphorescent materials, said ceiling fan being arranged for attachment to a ceiling.

Had I been asked if this was patentable I would have said no, and in fact I would have refused to undertake a patent search project in the first place based on the belief that there would be no way that a patent could ever issue on something so obvious. Yet, the Patent Examiner issued this patent. Still, I can tell you with great certainty that a comparably broad claim in Art Units that examine business methods and software would never issue.

If this claim to a glow-in-the-dark ceiling fan blade is ever challenged I see no way that it could survive, but the patent issued. I point this out to demonstrate how difficult it can be to definitively determine whether an invention is obvious. Whether a patent claim covers something that is obvious is almost entirely dependent on the Patent Examiner assigned, which seems to me to be an arbitrary way to handle such a fundamentally important issue.

The big problem I have is that obviousness, at least at the Patent Office, is so unevenly applied. Although I couldn’t see a claim as broad as a glow-in-the-dark ceiling fan blade being patented in most Art Units, even within Art Units that handle similar subject matter there can be a wide difference of opinion with respect to how to interpret the obviousness standard. In some areas of the Patent Office that handle software related inventions nothing is every obvious, for example if the software deals with any kind of GPS navigation system you simply will not get the same examination that you would receive if your software powered an e-commerce system.

If the software you seek to protect deals with some business objective it will have a substantial climb to overcome the obviousness rejections that are virtually guaranteed. Neither can be correct if you ask me, but there are Art Units that issue upwards of 90% of patents and there are Art Units that issue less than 10% of patents. But there is also disparate treatment of applications insofar as obviousness relate to gadgets. In some Art Units even the most modest change will be considered non-obvious, while in other Art Units with other examiners even counterintuitive manipulations of the prior art are declared obvious. Predictability at the Federal Circuit isn’t much better. See KSR Fears Realized.

If there is such random application of the law of obviousness between patent examiners within an Art Unit and between Art Units themselves, and if there is little to no predictability with respect to what will happen at the Federal Circuit, I think that clearly means that the current test is simply unworkable and arbitrary. Simply said, we don’t have a useful test for obviousness at the moment, which can make it exceptionally difficult to advise clients in cases where it could go one way or another depending on one’s particular point of view.

I can virtually guarantee that the overwhelming majority of patent applicants will encounter one or more 103 (obviousness) rejections the first time the patent examiner substantively treats the application filed. What this means is that the application you file must have solid support, which means the application needs to disclose the invention in its full grandeur together with as many nuances as possible. It also means that you really need to start thinking about how you want to position your invention. This requires a meaningful patent search and comprehensive analysis. Only by knowing what is in the prior art and working to tell the story of your invention in a light most favorable can you really have a meaningful chance to overcome the unnecessarily vague and arbitrary application of the law of obviousness.


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.

Join the Discussion

35 comments so far.

  • [Avatar for samiam]
    January 23, 2015 07:45 pm

    It’s John Deere, not John Deer.

  • [Avatar for J]
    March 7, 2014 01:28 pm

    Great summery, thanks for posting this

  • [Avatar for Anon]
    February 4, 2014 05:59 pm

    Good point Patent Leather, and one sure not to be missed by the counsel of anyone that the patent is brought against in an enforcement action.

    Which makes me wonder if the counsel pursuing this patent was doing so with the enforcement actions in mind, or (as will happen at client’s requests), this was a patent to have a patent. Such does happen for a number if reasons: funding, portfolio enrichment, vanity. Not all patents are obtained to be enforced and this mean that not all patents are prosecuted to provide the strongest patent. Not ideal in my book but such is a realistic part of some client’s wishes.

  • [Avatar for patent leather]
    patent leather
    February 4, 2014 10:50 am

    Gene, I posted a few days ago but it never appeared. I don’t think I wrote anything objectionable, so maybe it got caught in your spam filter.

    If the examiner did a simple Google search, he would have found this page: http://www.shroomery.org/forums/showflat.php/Number/323834
    which states, ” Take you ceiling fan and tape glow stick or paint with glow in the dark paint on the arms”. I notice the allowance was issued on 9/26. Those of us here who are veteran prosecutors will appreciate the significance of this, that is, that the end of the year at the USPTO for examiners is on 9/30 and so some examiners scramble before 9/30 to make sure they get all their counts in.

  • [Avatar for Anon]
    February 4, 2014 07:26 am

    Please excuse the duplicate post – first caught in filter:

    Paul Cole is correct in at least that my comments have been cursory on the patent itself, as I have geared my comments to the underlying legal aspects and have not vetted the prosecution history.

    I have not applied the Graham factors – but my comments have been to topics that have not needed that application.

    But Paul, fishing expeditions are not allowed, so I would offer that if an examiner (astute?) were to venture with a 112 rejection (just to see what the applicant would say), that an equally astute attorney would (rightfully) overcome that rejection by noting that the 112 rejection was incorrectly made – for the reasons already given.

    US prosecution has evolved to a minimalist protocol and that not only includes the applications as filed, but the correspondences as well. You do not appear to have yet grasped the full implication of KSR (the bar for sufficiency has been altered in a mirrored manner that the US PHOSITA has been augmented) – in the US, attorneys constantly must make lemonade from lemons and most swords from the courts have both leading and trailing edges. When you have a PHOSITA, as now, that is not only all-knowing of the prior art, but has common sense (whatever that is) and a modicum of imagination, what is now sufficient simply is far less than what used to be sufficient.

    Is it gamesmanship? Yes, it is. But it is the rules of the game that have been put before us, and maximizing our client’s advantage is what we are paid to do.

    Is it detrimental? To a very real degree, yes it is, as those who do not understand the legal environment – and clamor for the rich details of an engineering style document – are likely to scoff at the more bare bones approach. But rest assured that the legal requirements are the aim of the document and the aim is not to be an engineering document. The detriment comes from the increased need to educate and to manage expectations. The detriment comes from the fodder provided to those who are against patents anyway.

    I can readily imagine that those advocating in their chambers for a higher bar of obviousness (with an attempt to allow only ‘strong’ patents), did not take into consideration the consequence of so empowering PHOSITA in regards to the separate, but related, aspect of sufficiency of the disclosure. The legal evolution exhibits the law of unintended consequences. As it usually does.

  • [Avatar for MaxDrei]
    February 4, 2014 02:44 am

    Thanks Paul. Lights on celing fan blades since 1930? Makes sense.

    Interesting would be the reasons why, and what sort of lights they were. After all, if the lights required a supply of electric power, that would be quite expensive to achieve. Perhaps it was worth it though. Perhaps they were ceiling fans for dance halls, with bright lights designed to keep folks awake and excited? For that purpose, a phosphorescent glow would seem to me to be totally ill-suited.

    Patent attorneys can go on arguing obviousness till the cows come home. And what fun it is!

  • [Avatar for Paul Cole]
    Paul Cole
    February 4, 2014 02:01 am

    My views up to now, and I think those of Max and Anon were matters of first impression and we developed arguments against taking to simplistic a view against a seemingly obvious claim. Those arguments, I think, are valid but as explained are preliminary.

    If the listed prior art is briefly studied there appears to have been a host of proposals to put light on ceiling fans going back to 1930. There was only a single office action and response and the arguments were of the non-combinable/teaching away kind. The first scenario in MPEP would appear to have merit here, any benefits or effects were predictable ones given the state of the art, and it is surprising that this application was allowed, at least without further argument or evidence.

    As regards sufficiency, there is no disclosure of the appropriate materials to use or even a preferable material. There is no evidence that this inventor ever painted anything on a fan ever and no reported results. While Anon’s minimalist approach to sufficiency may be right in the US, an astute examiner would have raised an objection at least at first instance under 112 and seen what the inventor had to say. The absence of detailed description and the lack of a “been there, done that” scenario would be a further pointer in the direction of lack of merit of this application.

    If the inventor had been starting from a darkened room with a night light fitting into a plug in a wall, which is what parents are used to, then there would be arguments for unobviousness. But this inventor was not starting from that clean slate, and if the situation is further investigated then there is room for surprise that the patent issued.

  • [Avatar for Inventor0875]
    February 3, 2014 09:07 pm

    One way to help overcome hindsight bias is by devising more clear-line rules for “non-obviousness”.

    As just one example of new rules, the before or after timing of actions by others might be used:

    Invention is not obvious if:

    1) Before-timing: if all the elements have been publicly known for more than “B” months (e.g., 24 months), without the invention being independently filed-for-patent/published/publicly-disclosed/for-sale/used/suggested/etc by others.


    2) After-timing: if no others (or perhaps only 1 or 2 others) have independently filed-for-patent/published/publicly-disclosed/for-sale/used/suggested/etc the claimed invention, before and for at least “A” months (e.g., 6 or 12 months), after an applicant’s invention/priority date.

  • [Avatar for step back]
    step back
    February 3, 2014 06:52 pm


    Additionally, much of what KSR writes above is beyond the realm of rationality.

    The ordinary artisan is not an automaton.
    Thus he does not march around in a crazed frenzy covering everything with phosphorescent paint.
    Also it would be physically impossible for such a crazed non-automaton artisan to paint everything because there is not enough paint in the world.

    Moreover, a computer is a “machine”.
    There is no such thing as a customizable “general purpose” machine that one day functions like a high performance stealth military aircraft able to fly at Mach 3 and the next day like a Roomba vacuum cleaner able to safely clean your kitchen floor while baby and cat watch on the side.

    I don’t always point out the utter BS, but when I do, I make sure to go whole hog. Stay thirsty my friend. But don’t drink any Kool Aid. 😉

  • [Avatar for step back]
    step back
    February 3, 2014 06:43 pm

    I think you meant to say Problem [recognition]-Solution rather then TSM (Teaching Suggestion Motivation). No?

    In the USA, the case law is the same. The prior art must be shown to have recognized A problem (not necessarily same as that of inventor) and that it was obvious to solve the recognized problem by providing an apparatus / method matching that of the applicant’s.

  • [Avatar for MaxDrei]
    February 3, 2014 06:01 pm

    KSR, many thanks, for stepping up to the plate. I hope Gene Quinn will too, in due course.

    important, I’m sure we can agree, is to examine obviousness in a way that is not tainted by hindsight ,that is, knowledge of what is claimed as the invention.

    In Europe’s TSM Approach, this is assured by stressing that what the PHOSITA “could” have done is not enough. Rather, to be obvious, claimed subject matter must embrace what a PHOSITA “would” have done to solve the problem.

    Here, the “problem” is to reassure a child too fearful to sleep, so that he does then go to sleep. The patent plausibly explains how the claimed subject matter does indeed solve this problem.

    Now, please, KSR (and Gene Quinn) put yourself in the shoes of the PHOSITA, back before the claim was filed at the PTO, who lacks any knowledge of the claimed solution to the problem. Where in the state of the art, published by that date, for goodness’ sake, is the hint to quieten the fearful child, by doing anything to the blades of a ceiling fan?

    Thanks to this example, I begin to see why some of my US instructing associates in private practice have such terrible difficulty understanding the EPO TSM Approach to obviousness.

  • [Avatar for Paul Cole]
    Paul Cole
    February 3, 2014 04:22 pm

    @KSR For Your Pleasure

    I find myself in agreement with Anon here.

    If you ask yourself what is the correct starting point here, it is a bedroom with a fearful child and an existing night light. The problem is to provide an alternative and hopefully better night light. Once you say that the invention is safe phosphorescent treatment technology you are not defining the problem but are half way to the solution. Everything is simple in hindsight.

  • [Avatar for Anon]
    February 3, 2014 04:05 pm

    KSR For Your Pleasure,

    Unfortunately for this discussion your characterization of “The bottom line here is that the “invention” is safe, phosphorescent treatment technology. ” is not the invention that MaxDrei and I are discussing and finding agreement with.

    You have identified merely one aspect of one item in the claim, and you miss the opportunity to join a discussion on a deeper and more meaningful level.

    Further, your notion of “A similar approach, of course, applies to the general purpose programmable computer. is patently false. You offer no backing for such broad and quite frankly unsupportable statement.

  • [Avatar for MarkG]
    February 3, 2014 03:36 pm

    “The problem is nothing like that is in this claim. The claim simply covers a glow in the dark ceiling fan blade, which is extraordinarily obvious.”

    What if a significant portion of the prior art taught ways of making ceiling fan blades less conspicuous and none of the prior art taught making ceiling fans more conspicuous?

    I keep thinking of the patent application that claimed trash bags designed to look like a Jack ‘o Lantern when full. Despite the seeming simplicity of the invention, to me it was nonobvious over the prior art of trash bags which up until that point were made in colors designed to make the trash bags less conspicuous.

  • [Avatar for KSR For Your Pleasure]
    KSR For Your Pleasure
    February 3, 2014 03:23 pm

    Re: MD’s request for an explanation of the obviousness of a glow-in-the-dark fan blade:

    Phosphorescent technology, where natural light is stored during the daytime by the treated object and glows at night (whether to “reassure” or for any other reason), is old in the art.

    One skilled in the art would expect that any treatable object, including a fan blade, treated with phosphorescent technology to behave in the same manner.

    Therefore, absent any teaching in the art that phosphorescent technology could not be applied to a fan blade, the invention is obvious.

    The bottom line here is that the “invention” is safe, phosphorescent treatment technology. When the invention on that patent expires (that happened already, in fact, a long time ago), the public has every right to believe that they can apply the technology to any treatable object. That’s how phosphorescent technology was marketed in the first place.

    A similar approach, of course, applies to the general purpose programmable computer.

  • [Avatar for Anon]
    February 3, 2014 12:22 pm

    Paul Cole.


    Reread what I wrote. I did not say “best practice” (and fully note that we would probably be in agreement on that notion). What I said was legally required – which is clearly – and legitimately aligned with a far more minimalist approach. The key is that “permits” is exactly what happens when you empower PHOSITA on the leading edge of the sword. The US PHOSITA differs greatly from the European PHOSITA in this legal aspect. You are aware of a systematic difference but appear unaware of just how great that difference is. You cannot note this legal difference then attempt an argument equating treatment of US prosecution with ANY European action – you are mixing apples and oranges after noting that there are apples and oranges (and yes, I grow frustrated that you do so in several consecutive posts now).

    The point Paul is expressly not what is best practice, but what is what is legally required – what does the law mean.

  • [Avatar for Paul Cole]
    Paul Cole
    February 3, 2014 11:22 am

    @ Max and Anon

    There is a systematic difference between the European and the US approach. The US starts by looking at the differences which always tend to look small. The EPO looks at the differences and then the new result which is used to reconstruct a technical problem, which makes differences look important. This psychological difference mhelps to account for the favourable results using PSA and the remarkable lack of complaint about users of the European patent system.

    I do not understand why KSR permits less detail than before. It is often the detail that saves a case, and difficult to predict in advance which particular detail will be the vital one.

    Even if sufficiency is possible in the fan patent, there is an argument that it is not sufficient, and in litigation or European opposition it is predictable that an opponent would raise it. If I were opposing the European counterpart I certainly would.

    Conversely it turns out that there is a lot of literature readily accessible through Google on phosphorescent compounds. All the more opportunity for a patent attorney to scan that literature, discuss it with the inventor and disclose and comment on the best compounds. For example some formulations have fluorescent lifetimes of 20 hours or so. If they are used the child will see the glowing fan and be reassured whenever he or she wakes up during the night. A useful demonstration of how an astute attorney can add value to the inventor’s disclosure and improve patent quality.

  • [Avatar for Anon]
    February 3, 2014 10:15 am


    I am in accord with your last paragraph, particularly, I too disagree with Paul on his sufficiency position.

    Under US jurisprudence, it is often misunderstood what the double-edged sword of KSR inadvertently provides. I have often stated that patent applications are legal documents and not engineering documents. While best practices dictate a strong application with enough detail for enablement and possession requirements, the level of detail required was actually diminished with the KSR case. The first edge of the sword that cuts with obviousness cannot be separated from the trailing edge that dictates that less is needed in an application. Precisely the details that Paul indicates as missing in his post at 15 may be the types of details that need not be included if those details would be known in the art of making material – any material, including that of fan blades) retain phosphorescence.

    What needs to be guarded against then is the hindsight that would undermine the combination of known items. As you have stated in the past (and another thing I agree with you upon), invention can be rightfully claimed in the sense of asking the right question. Such ‘asking the right question’ often is correlated to inventions of the simplest kind. Some of the worlds truest and highest innovation can be reflected in the simplest combinations of known items, and the invention stems from the fact that no one ever thought to combine the simple items.

    Hindsight is particularly pernicious for inventions of the simplest kind. Paul does make a valid point in this regard: the analysis of obviousness falls into an elephant trap when the difference alone is small. The weight attributed to “asking the right question” may often disappear completely when a strict element to element comparison is being made.

    It is also not surprising that these same inventions of the simplest kind are often the poster children of inventions that are said should not be granted on the policy ground that protection should not extend to trinkets. Perhaps the intent of the article is to highlight the murky ground of ‘obviousness’ when that ground becomes the playground of subjective philosophies of what is ‘good enough’ to warrant patent protection, and what is not good enough because the invention pertains to trinkets.

  • [Avatar for MaxDrei]
    February 3, 2014 09:02 am

    Paul, sorry but where in my post do you divine that I thought it obvious? My post caught in the filter (written after I had read the patent) asserted that the claimed subject matter was by no means plainly obvious. Rather, i said i thought it plainly not obvious, and then wondered how Gene could assert so dogmatically that it was all so obvious.

    Overnight, I thought it might go down better with the master of this blog simply to ask him for TSM justification (rather than doubt his judgement). It seems however that i was in consequence a bit too opaque. Sorry about that.

    As for sufficiency, I’m not quite with you on that. Just tell somebody to make something (like the figures on an analogue clock face) phosphorescent and I think they could do it. If the somebody is a celing fan builder, I think they could do it too.

  • [Avatar for Paul Cole]
    Paul Cole
    February 3, 2014 07:29 am

    para 4 line 2 I should have said cat

  • [Avatar for Paul Cole]
    Paul Cole
    February 3, 2014 07:27 am


    It always pays to read the patent.

    In this case, the patentee evidently made a pre-filing search and fif not find a phosphorescent fan blade. Nor did the US examiner.

    Your analysis of obviousness falls into the elephant trap that if the difference from the prior art is small then what is claimed must be obvious. Many of the most important inventioins ever made would be judged unpatentable based on that fallacious analysis. The question is what difference the difference makes. This fan blade stores natural light during the daytime to give a reassuring glow in the night time. It requires minimal outside intervention for effectiveness. I am entirely prepared to believe that there was invention here.

    Where the specification falls down is the total lack of detailed information. I call this the cat bell-collar syndrome. Dr Michael Mouse has invented a new collar for a car carrying a bell and configured so that the approach of a cat will give an audible warning to vulnerable mice. The only problem is that he has not disclosed (because he has not worked out) how to attach the bell to the cat in the first place. In this specification there is a total lack of diclosure how to make the blade phosphorescent, and if the details are readily filled in by a skilled person using the common general knowledge then the invention is correspondingly undermined. And what sort of blade is it – metal, wood pr plastics? Is the material a dye or a pigment? What are its chemical properties and what is its phosphorescent lifetime. Can you buy appropriate dyes or pigments? If not are they described in an article? How is the skilled person to go about making a real working phosphorescent fan?

  • [Avatar for MaxDrei]
    February 3, 2014 05:14 am

    Gene, thanks for the filter trap explanation. You also wrote:

    “The claim simply covers a glow in the dark ceiling fan blade, which is extraordinarily obvious. ”

    and I was merely wondering how the claim, searched and found to be not as such old, would then progress at the EPO, under its TSM rubric.

    That prompted me in turn to wonder how you (or another of your readers) would express the egregious obviousness of the claim in suitably forthright TSM language. That’s all.

  • [Avatar for Anon]
    February 2, 2014 02:35 pm

    I could not agree more with Gene’s advice of “This requires a meaningful patent search and comprehensive analysis.

  • [Avatar for Ken Fagin]
    Ken Fagin
    February 2, 2014 01:31 pm

    Actually, reducing autism might be patentable as a method, but the apparatus, per se, may not be. I haven’t taken the time to look at the file history, but there could be something in there — e.g., a declaration — that carried the day. Bottom line, though, is Gene’s point about the difficulty in assessing obviousness — more to the point, telling a client whether an invention will or will not pass muster at the PTO — is a very difficult task indeed. Which is why I always tell a client, where I think the invention will not be patentable, “Hey, if you want to take a chance, I’m happy to do so for you. But just be aware that it may not work out.” If it does work out, well, I’m happy to have egg on my face in such a situation since the client benefitted.

  • [Avatar for Gene Quinn]
    Gene Quinn
    February 2, 2014 11:15 am


    It must have gotten caught in the spam filter, but it isn’t in that folder any more. Spam gets deleted at midnight every night.


  • [Avatar for Gene Quinn]
    Gene Quinn
    February 2, 2014 11:13 am


    You ask: “If the illuminated fan blade were found to reduce autism symptoms when a person were exposed to it, would the blade be patentable?”

    If you have an invention where this blade reduces autism symptoms the treatment regimen would need to be claimed. The fact that there exists a treatment regimen that reduces autism symptoms would not in and of itself make an otherwise obvious invention patentable.

    So the answer to your question is YES, it could certainly contribute to patentability but if and only if that is mentioned in the claim. The problem is nothing like that is in this claim. The claim simply covers a glow in the dark ceiling fan blade, which is extraordinarily obvious.


  • [Avatar for Gene Quinn]
    Gene Quinn
    February 2, 2014 11:09 am


    Yes, I wrote that the patent quality problem is a problem that existed 12+ years ago, and you either know or should know what I was referring to in that previous post. You take it completely out of context.

    That prior post you quoted was discussing software patents, where that statement is 100% correct. The people who are vilifying patent trolls, and the people like you who ignorantly belittle the contributions of Thomas Edison, pretend that software patents are being issued left and right.

    If you care to read the entire article I point out in this article that what happens in the software Art Units is very, very different than what happens elsewhere in the office, but even within software there is a certain arbitrary nature.

    Please try and keep up Benny. I don’t appreciate you mischaracterizing what I write. While I appreciate you reading your comments are increasingly preventing meaningful discussion on the topics. If you feel it necessary to compare apples and oranges and pretend that what I write is inconsistent there are plenty of forums on the Internet where that brand of head-in-the-sand criticism is not only allowed but encouraged.


  • [Avatar for ip guy]
    ip guy
    February 2, 2014 10:33 am

    With KSR now, most patents that are being issued by the USPTO are likely obvious. I would think that the reexam business would pick up though, since there would be such a target rich environment. The “Golden Age” of patents has truly past unfortunately.

  • [Avatar for Anon]
    February 2, 2014 09:42 am

    Benny at 4.

    Your use of the word ‘trivial’ raises my eyebrows.

    How do you mean that word? In the legal sense? Do you realize the point of the article here is that the very definition of the word you use so quickly is the focal point of the legal quagmire, imbued as it is with such an easy taint of hindsight?

  • [Avatar for Anon]
    February 2, 2014 09:40 am

    I hesitate to post as I have not been receiving on-point responses, but once again I am confused by how Paul Cole states issues of law and fact.

    In particular, Paul states “Any deviation of this by means of a preconceived patentability standard denies the applicant or patentee due process. So if you are loking for a clear universal standard the answer is that you cannot have one because the law will not let you.

    This is not a legally correct statement. The standard is not the varying set of facts that naturally vary from case to case. The standard is the law that should be universally applied to each set of varying facts. To say the law does not allow you to have a universal standard is, to put it bluntly, absurd. I am left with the feeling that Paul believes Due Process is a results based concept instead of an objective process based concept.

    Perhaps Paul will clarify his views.

    On an semi-related note, the link to the KSR fears thread was very amusing, with John White’s comment at 40 in response to Blind Dogma’s musing at 33 seems to add an important element missing from the current conversations: the level of importance of the patent right as a property right and the constitutional notion of what qualifies as a taking, the application of due process, and the appropriate Supreme Court level of scrutiny to be applied in review of any law in question.

  • [Avatar for Benny]
    February 2, 2014 08:28 am

    Gene, in a previous post you wrote – (I quote)
    “The other problem with the “patent quality” argument is that it seeks to fight a problem that existed 12+ years ago. The patents that are vilified as being too basic and not including enough innovative disclosure are legacy patents from a different era”

    The ceiling fan patent you highlighted (bad pun…) in this post proves that the problem hasn’t completely gone away. It’s not an isolated example.
    I know that in the software/internet field things have improved, but trivial patents of the type you quoted can be a significant drag on the manufacturing industry.

  • [Avatar for priestly]
    February 2, 2014 08:15 am

    secondary evidence is the name of the game if you want to power through 103 rejections (good or bad). at least in biotechnology

  • [Avatar for Michael Zall]
    Michael Zall
    February 2, 2014 07:37 am

    In the law we are faced with many “opinion” type decisions: clear and convincing, beyond a reasonable doubt, negligence, gross negligence, intent, obscene, and on and on. No matter how we try to define these objectively it comes down to one or more people giving their opinion. How many criminal cases are decided on “I do not like him/her” rather than the facts that may not indicate guilt. How many patents are granted because a creative patent attorney has given the invention a great write up or slant or he/she is a cooperative attorney in dealing with the Examiner? How many patents are not granted because the case is a pro se case or the examiner does not like the attorney? We will always have to live with these ambiguities of life and to a large extent quit trying to refine the standards that do exist. There should be standards or guidelines, but in the end it is a case by case determination. If the illuminated fan blade were found to reduce autism symptoms when a person were exposed to it, would the blade be patentable?

  • [Avatar for Paul Cole]
    Paul Cole
    February 2, 2014 05:54 am

    There is no material difference between the obviousness test that you have in the US and the corresponding test that we have in the UK. In both jurisdictions the jurisprudence demands certain preliminary enquiries and then leaves the decision as a jury question to be decided according to the evidence and arguments of counsel. The decision cannot be made until the totality of the evidence has been considered. Any deviation of this by means of a preconceived patentability standard denies the applicant or patentee due process. So if you are loking for a clear universal standard the answer is that you cannot have one because the law will not let you.

    Given the jury question, what are we left with? The answer is a set of evidential topics which may be put forward on one side or the other. Intrinsically some topics carry more weight than others, but they are all pertinent and it is impossible to know for any particular case which will be the topic that in this case will swing the balance to one side or the other. If this is acknowledged, it becomes much easier to explain the law because any given topic e.g. commercial success can be considered not as a matter of legal principle but as a matter of evidence.

    It is strikingly apparent that the list of rationales in MPEP was compiled by a person who had never completed a course in hugh school algebra. Such a course teaches the student that complex expressions should be simplified when possible, and for most of us much time in our late childhood was devoted to such exercises. Rationales 1-6 all have in common that the claimed subject matter should lead to some new function or result i.e be compliant with A & P (US Supreme Court, 1050). So they are not six separate tests but in reality a single test. If that is passed the seventh rationale is TSM. So the take home lesson is that if the claimed subject matter does not pass A & P then there may be an objection (although there may be a sub-combination that is arguably inventive), and if it does you need to go on to apply TSM. If that course is adopted, you arrive at a test which closely resembles PSA as applied in the EPO.

    As a very rough rule of thumb, if there is a new function or result that satisfies A & P, then it is highly likely that the claimed subject matter will survive an obviousness attack. In Europe the new function or result can be used to reconstruct a technical problem for PSA. If you carry out an online search in the EPO decisions database for other kinds of objection e.g. one-way street or bonus effect you will find that these are raised in only about 10% of cases.

    In the phosphorescent lamp example, the relevant starting point prior art is not the fan but instead is a bedroom with a nervous child in it, and the problem is how to provide low level illumination to reassure the child. Given that fans have been in bedrooms for many decades, and nobody previously has proposed to make it phosphorescent there is a good argument that the concept is inventive.

    In Europe as part of PSA we ask whether the problem has been solved. Not here I think. What is the identity of the phosphorescent plastics or paint used? What is the active phosphorescent substance? What is the phosphorescent lifetime? Presumably it must be several hours otherwise the required reassurance will nto be achieved. But the patent teaches none of this. Such deficiencies should routinely be picked up by an examiner and used to base an objection under 35 USC 112,

  • [Avatar for MaxDrei]
    February 1, 2014 07:06 pm

    i just mailed. Nothing happened. Stuck in the filter perhaps?