"Thankfully the Patent Office and the Courts have chosen to largely ignore the Supreme Court test "
Of KSR v. Teleflex, IPWatchDog writes:
The “common sense” test urged by the Supreme Court, however, ignores that fact that after one learns of something it is always common sense. In essence, the Supreme Court test is overly simplistic and unrealistic. Thankfully the Patent Office and the Courts have chosen to largely ignore the Supreme Court test, but that only adds to the confusion for inventors.
Of "what happened" in KSR, Wikipedia writes:
Justice Kennedy's opinion stated, "A person of ordinary skill is also a person of ordinary creativity, not an automaton." He acknowledged that his description of a person having ordinary skill in the art (PHOSITA) does not necessarily conflict with other Federal Circuit cases that described a PHOSITA as having "common sense" and who could find motivation "implicitly in the prior art." (...) The opinion does denounce procedures that bar the use of "common sense" in multiple instances, including where "[r]igid preventative rules that deny factfinders recourse to common sense, however, are neither necessary under our case law nor consistent with it."
Of the attention paid to KSR, Wikipedia writes: The USPTO Board of Patent Appeals and Interferences (BPAI) is citing KSR in about 60% of its decisions related to obviousness irrespective of whether it affirms a patent examiner's rejection or reverses the rejection.
Of searching prior art, IPWatchDog writes:
So how is it possible that an inventor who searches cannot find prior art? This is typically a result of failure to adequately describe the invention and then searching only limited characterizations of their invention. For example, most inventors will look at what they have invented and then do a word search to see what else is out there. Frequently nothing will be found, not because there is nothing that could be found, but because the description searched is unnecessarily limiting.
Looking back to the invention of the transistor, one recalls that at the time of the invention, the word "transistor" had not been coined. Somehow, the Bell Labs people uncovered the work of Lilienfeld.
The “common sense” test urged by the Supreme Court, however, ignores that fact that after one learns of something it is always common sense. In essence, the Supreme Court test is overly simplistic and unrealistic. Thankfully the Patent Office and the Courts have chosen to largely ignore the Supreme Court test, but that only adds to the confusion for inventors.
Of "what happened" in KSR, Wikipedia writes:
Justice Kennedy's opinion stated, "A person of ordinary skill is also a person of ordinary creativity, not an automaton." He acknowledged that his description of a person having ordinary skill in the art (PHOSITA) does not necessarily conflict with other Federal Circuit cases that described a PHOSITA as having "common sense" and who could find motivation "implicitly in the prior art." (...) The opinion does denounce procedures that bar the use of "common sense" in multiple instances, including where "[r]igid preventative rules that deny factfinders recourse to common sense, however, are neither necessary under our case law nor consistent with it."
Of the attention paid to KSR, Wikipedia writes: The USPTO Board of Patent Appeals and Interferences (BPAI) is citing KSR in about 60% of its decisions related to obviousness irrespective of whether it affirms a patent examiner's rejection or reverses the rejection.
Of searching prior art, IPWatchDog writes:
So how is it possible that an inventor who searches cannot find prior art? This is typically a result of failure to adequately describe the invention and then searching only limited characterizations of their invention. For example, most inventors will look at what they have invented and then do a word search to see what else is out there. Frequently nothing will be found, not because there is nothing that could be found, but because the description searched is unnecessarily limiting.
Looking back to the invention of the transistor, one recalls that at the time of the invention, the word "transistor" had not been coined. Somehow, the Bell Labs people uncovered the work of Lilienfeld.
posted by Lawrence B. Ebert at 7:46 AM
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