Thursday, May 03, 2007

Fulminations on KSR, Edison, Sound and Fury

Patently-O has a May 2 post entitled: KSR v. Teleflex: A Tale Full of Sound and Fury, Signifying Little? which includes some comments talking about Edison and the light bulb -->

Mark Nowotarski first wrote in the thread:

Consider Thomas Edison. According to your hypothetical, his light bulb (US patent 223,898) was obvious. The elements of his invention, (e.g. thin carbon filaments, mixtures of lamp black and tar, glass bulbs, vacuum, platinum lead wires, etc) were all known and there was a demonstrated market potential for light bulbs.

Are you saying then, that Thomas Edison did not deserve a patent?

G. wrote in response:

With respect to Thomas Edison I do not beleive any prior art at the time taught that passing electricity through carbon filaments in a glass vaccum would produce light. An argument that Mr. Edison might have made for non obviousness is that there was a long felt need for a light source at night. In the past people had used candles and gas lamps. Mr. Edison however discovered that when electricity is passed thorugh carbon filaments in a glass vaccum, light will illuminate. There is no teaching of this combination in the prior art.

Mark wrote in response:

Actually it was known that passing electricity through carbon filaments in a vacuum would produce light. It's an obvious extension of US181163 (Woodward) What was not known was how make the bulb last a long time.

IPBiz notes that the trouble is that at the time of filing (and issuance) of US 223,898, Edison did NOT know how to make the bulb last a long time either. Edison learned about filaments made from bamboo AFTER US 223,898 issued! See IPFrontline,

Joe Smith wrote:

Edison was trying to find a practical way to implement an idea that was about 50 years old and had to find new materials and new processes to make the device work. There is a substantial difference between the two.

There is separately a comment:

The Professor (Mandel) is right, KSR changes nothing. For one thing, the trend of SCOTUS under Roberts is to decide on the narrowest possible grounds. So it is doubtful that SCOTUS ever even intended KSR to drastically change the law, but that has not stopped some of you from interpreting it otherwise.

which IGNORES the Supreme Court's acceptance of an "obvious to try" standard, which invalidates In re Deuel, etc.

**Also, of the title of the post on Patently-O, note LBE's articleon patent reform 2005, sound and fury signifying what? was published in the July 18, 2005 issue of the New Jersey Law Journal.

**Patently-O had a comment about nonprecedential opinions:

Jim states, "All court opinions should be fully citable and fully binding."

I disagree with respect to "fully binding."

As the saying goes, bad facts make for bad law. Non-precedential opinions allow for courts to reach a reasonable result under the facts of the case without creating a rule that would cause bad results if applied to the facts of other cases.

Now that the Supreme Court has reviewed the nonprecedential opinion of KSR v. Teleflex, one wonders what the CAFC thinks about nonprecedential opinions.


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