“I’ve asked that in the past but it’s been ignored. The SPE stands firm that the Examiner is allowed to implicitly determine the level of ordinary skill and not required to explicitly determine ordinary skill level. When I bring up that implicit determination still requires the Examiner to demonstrate that a reference reflects an appropriate level of skill, they have no answer, and the “answers” they typically throw at me are along the lines of “the references reflect the appropriate level of skill because the Examiner can come up with a reason to combine the references.””
Right, they don’t even understand what you’re asking for. Once they do, it is of course child’s play.
“The USPTO has had over 50 years to come up with a test for an Examiner to explicitly determine the level of skill. ”
Meh, like 99% of the cases it isn’t all that relevant to. Unless you want to launch a crusade against obviousness rejections and have nigh all combinations deemed non-obvious. Which nobody in power wants you to be successful at, so it isn’t going to happen.
” Naturally, if the USPTO came up with an analysis for determining skill level, it would be something else that applicants could appeal.”
Right, and “who needs that headache” when in truth it isn’t all that relevant, UNLESS, you want what I mentioned above. Which again, isn’t happening.
“Personally, it seems to me that the more the USPTO refuses to address the issue, the more leverage it gives applicants when appealing before the PTAB as the issue comes down to reversing the rejections or having to be able to justify to the Federal Circuit why the USPTO does not train Examiners on how to determine skill level, etc.”
Gl, I’m sure NOBODY ever tried anything like that before.
“If you’re someone who files appeals on a regular basis, it’s a good issue to tee up. ”
Great, gl w/ that.
“and that the failure to determine skill level (or improperly implicitly determined skill level) affected the conclusion of obviousness. ”
Right, and that last part knocks it out of around 99% of cases, as I mentioned with the caveat I mentioned above.
…
“and that the failure to determine skill level (or improperly implicitly determined skill level) affected the conclusion of obviousness. ”
In the entire history of patent prosecution, this has happened exactly zero times.
…
As Graham v. Deere has not been overturned, the determination of skill in the art is highly relevant. As every other word in a rejection invokes the person of ordinary skill in the art, the determination of skill is highly relevant. The fact that the USPTO has indoctrinated Examiners to believe that the determination of ordinary skill is not relevant indicates that the determination of skill in the art is highly relevant.
…
But ipguy, since “Breeze” has not been personally affected (as for as he can tell), then nobody should care about the issue you bring up.
…
Feel free to cite even one case where the examiner’s failure to resolve the level of ordinary skill in the art was dispositive.
…
Graham v. Deere.
(Were you not paying attention?)
3.1.2.2
Yes, but argument isn’t enough, is it? If the level of skill in the art is a matter of fact, and a fact in dispute, you need to adduce evidence in support of your argument, don’t you?
3.1.2.2.1
MaxDrei,
Perhaps you have not followed who has the onus. Challenges to an improper reach of a prima facie rejection keeps the onus on the examiner.
So your call for “more than argument” is accurate – but likely not how you intended, as the “mere argument” equates to the bald examiner assertion.
3.1.3
“PHOSITA is someone who would combine these disparate references together”
100% based
2
Motivation to Combine (MTC) and Reasonable Expectation of Success (RES) should come in at step 5, where the court decides as a matter of law whether the patent claim is obvious. The Graham factors are predicate facts that that inform the court’s legal determination. Based on those facts, the court decides as a matter of law whether the claim is obvious. This is tantamount to deciding whether a skilled artisan would have been motivated to create the claim and would have foreseen success in doing so. Ergo, MTC and RES are restatements of the ultimate legal obviousness inquiry. Patent jurisprudence has gone awry by treating MTC and RES as subsidiary questions of fact. That’s my view, anyway.
2.1
This is pretty much what I was going to write. Thanks for saving me the effort.
2.1.1
I also enjoyed reading the answer at #2. It might be a silly question, but what does “success” mean under the US jurisprudence?
I know what it means under the EPO’s problem-solution approach to obviousness, but how do you know in the USA what constitutes “success”? Estimates of sales figures, perhaps?
2.1.1.1
In this context, reasonable expectation of “success” just means the skilled artisan would have expected to successfully combine the proffered prior art references, to successfully do or be whatever the claim purports to do or be.
FWIW, I once spent 30+ pages unpacking how MTC and RES should come into the obviousness analysis: 48 AIPLA Q.J. 1 (2020).
2.2
When Graham v. Deere was decided (1966), biotechnology had not yet come onto the scene. With biotech, one has a variety of potential art to consider, all over the world, including journal articles (publish or perish), abstracts, poster sessions, and slide shows. The possible combinations of references are numerous, as are the possible modifications of individual references. (This applies to the chemical arts as well, but to a lesser extent.)
Requiring a showing of motivation to combine/modify references helps to protect against improper hindsight reconstruction. Examiners often say the motivation is further improvement, or cite motivation that they glean only from the specification but then claim that is not the only basis, without providing an alternative. I would welcome seeing it added as an additional fact question, actually.
2.2.1
The key here is not “motivation” of ONE item per se, but (with emphasis), “motivation to combine.”
The references themselves — for ALL that they teach — must provide for a combination.
What you point to is the improper hindsight “jigsaw puzzle EDGE” syndrome, in which one edge “fits,” and the examiner calls it a day (when none of the other edges as discussed by the reference as being tied in together fit).
It’s a constant battle to educate examiners on the proper meaning.
2.2.1.1
Not just the examiners . . .
1
Reasonable expectation of success, like synergy, is an senseless basis for patentability. If something is obvious to try, it’s obvious. Whether it works or not does not circle back to negate the fact that it was obvious to try in the first place. Even things with a reasonable expectation of failure can be obvious.
Besides numerous magical incantations, what logic leads to the conclusion that an artisan would be motivated to do something yet hold back because the results might be uncertain? Or do we just think we should reward the guys who slog through all the obvious possible solutions until he hits on the one that works best?
1.1
[D]o we just think we should reward the guys who slog through all the obvious possible solutions until he hits on the one that works best?
It really matters how hard it is to slog through all the obvious possible solutions. The logic of patents is that up-front capital must be spent to find a solution to a problem, but once the solution is found, it is often easier for those who did not spend the capital to profit from the solution than it is for those who did spend the capital. That makes it impossible for the initial investors to profit from the R&D expenditures, and patents are a mechanism alter that dynamic and allow only the investors to profit from the discovery.
Where it will require a lot of capital to slog through all of those possibilities, it makes good sense to reward the one who does the slog and finds the optimal solution. Otherwise, it may well be that no one will ever undertake the work necessary to do that slog.
Where it requires little capital to do that slog, there is a good argument for not rewarding the discovery with a patent. On the other hand, it may just be too complicated to run a system that has to make the distinction between “little” capital and “lots” of capital requirements. In that case, it may be that the best achievable outcome is obtained by awarding patents for those who undertake the slog in both “low” capital circumstances and “high” capital circumstances, just so that one does not end up in the “valley of death” of R&D where “slog” investigations are never funded, or funded only by charitable ventures (i.e., underfunded).
1.1.1
Wrong and wrong.
Obvious to try is simply not the same as obvious.
ONE reason – among many — could be “for financial” aspects.
But to assert that as THE driver (only or even main) is a serious misunderstanding of the patent system.
Such leads to the insidious danger of a “must make” attitude.
1.1.2
The reply comments that suggest that we do think we should reward the guys who slog through all the obvious possible solutions. This suggests that factual non-obviousness is not the test for patentability. Something more along the lines of it’s patentable if it is either non-obvious or obvious but hard and expensive to do it. It seems a doctrinal cheat to first establish non-obviousness as the test for patentabilty, then establish an exception to that test for things that are obvious but require a bit of time and expense. We should just come out and say it: It is patentable whether it is obvious or non-obvious depending on how much it takes to get to the thing that works.
1.1.2.1
DC,
What do you think of the letter of the law vis a vis:
“Patentability shall not be negated by the manner in which the invention was made.“
1.2
Also, worth noting that the CAFC considers that “slog[ging] through all the obvious possible solutions” is not an instance of “obvious to try” if it really is a slog.
(internal citations and quotations omitted). Bayer Schering Pharma v. Barr Labs, 575 F.3d 1341, 1347 (Fed. Cir. 2009).
1.3
“Even things with a reasonable expectation of failure can be obvious.”
Yeah bro, but “obvious”, according to the courts that made up the patentability standard under 103, ain’t the standard. It’s a bizarro obviousness to a very specific judicial construct of a hypothetical imaginary person that is but a legal fiction created over decades but many many judge’s rulings. They really should codify all 100 quirky things about this fictional construct which is involved in the actual standard so that people aren’t so confused but they constantly don’t. Thus people like yourself remain confused.
“what logic leads to the conclusion that an artisan would be motivated to do something yet hold back because the results might be uncertain?”
I don’t think it was logic that was the basis for that thought process, it was empirical observation of actual people irl and what they tend to do. Which is exactly that, in some circumstances.
“Or do we just think we should reward the guys who slog through all the obvious possible solutions until he hits on the one that works best?”
If there is enough possibilities I see no reason why not if the outcome is sufficiently uncertain. “Innovation is 1% inspiration and 99% persperation” is the old timey saying I believe. Tho it’s rare for people to be doing that and then claiming to have done that in order to argue for their claim’s patentability.
1.3.1
I am surprised 6 that you did not include the caveat in 103 regarding “Patentability shall not be negated by…”
Slogging be captured in a “how” that cannot negate patentability.