Wednesday, March 11, 2009

Interesting comment thread on Patently-O

The comment thread to "law professors on the move" has a variety of observations, most totally unrelated to the current movements of certain law professors.

Of the European "problem and solution" approach to the issue of obviousness:

JAOI, there is a monumental thread from about 8 months ago, in this blog, in which I "took on all comers" on EPO-PSA (TSM). Maybe somebody can find it and show a link to it. I'm a bit busy right now, and anyway I have found that it takes about three days to get PSA across. 25 words is dangerous because then every reader thinks they have "got" PSA when, in fact, they are still clueless. Again, sorry. Try the EPO website. You can access the EPO's MPEP, called the "Guidelines for Examination" in which there is a rigorous and well-written treatment of PSA. Only snag is, it's written for readers who are already steeped in European practice, so it's a struggle for those steeped in a different TSM regime to "let go" their prejudices and instead go with the EPO flow.


Here's Max's post from that thread:

PSA's value is in framing the debate about obviousness and in reducing it to a debate about a gap between just two points that were fixed, even before the app was filed. Debate about this defined gap is utterly focussed and shuts out all the background "noise" that otherwise bedevils obviousness debate. The steps are:

1. Read what the inventor wrote in his app. Identify from the app the technical field and the contribution the inventor subjectively thinks he's made to it. That "contribution" can be presented (for the artificial purposes of the about to commence PSA debate)as the solution to a technical "problem"(even if in actual fact the act of "invention" was in reality more like a "discovery").

2. Do a prior art search (hindsight here, of course).

3. Imagine the PHOSITA on the date of the claim being tasked with achieving the "technical effect" that the claimed subject matter achieves. From what "realistic starting point" might that PHOSITA reasonably begin? There's your first fixed point. If you can't find one, you may be looking at Student's "Problem Invention".

4. Now address the claim. Break it down into "technical features". How many of those are within the disclosure of the starting point source (which we call D1).

5. If all features are in D1, D1 takes away novelty.

6. But they aren't. We have one or more tech features (X) that "characterize" the claim relative to D1. They establish novelty, and the jumping off point for the next step.

7. When you add magic ingredient X to D1, what technical effect does that yield? It might only be a mere alternative to the D1 embodiment but, more likely, it yields a performance difference.

8. Express that performance difference as a "technical effect".

9. You can express that technical effect as an "objective problem".

10. Revert to D1. Imagine the PHOSITA with D1 on the prio date, with no knowledge of the claim or the invention but given by his boss the task of modifying D1 in such a way that modified D1 will achieve the identified "technical effect".

11. Imagine perplexed PHOSITA on the prio date, ignorant of the claimed subject matter, at a loss what to do, so scouring the art for a hint, or a suggestion from that published art what mods to D1 might help him to achieve that effect. Remember, the PHOSITA at that date doesn't know that X will solve his problem because he lacks the power of hindsight. Either the published art tells him to try X, or it doesn't. If it doesn't, then X ain't obvious to the PHOSITA.

Whatever you might think about the artificiality of the aforementioned PSA treatment, it does have four merits, namely:

i) it's all over in a twinkling. Either you've obvious, or you're not;

ii) try as you will, you will find nothing to justify the assertion that PSA favours Applicant over Opponent, or Opponent over Applicant. It's fair to both.

iii) it "fits" with what real PHOSITA's do, in real research labs, so commands their respect; and

iv) even judges can relate to that.

That's why I'm a fan. Next."

You may also want to review the Australian standard of determining inventive step. Look at a case from Australia called Lockwood Security Products Pty Ltd v. Doric Products Pty Ltd [No2] [2007] HCA 21 (23 May 2007) decided by the Australian High Court. A practitioner named Bill Bennett from Pizzeys Patent & Trademark Attorneys wrote a good article on that case, and provides a good critique, so to speak, of the PSA test. (You can find Mr. Bennett's article with Google pretty easily.)

You should also check out the Patent Manual of Practice & Procedures of IP Australia (i.e. the Australian MPEP), particularly section on inventive step.

I think the Australians have the best approach. Just my opinion of course.


**Of Lemley's "Ending Abuse..." paper in BULR, Lionel Hutz wrote:

Lemley has written some good stuff in the past and he is knowledgeable in the area of patent law, but he co-wrote that paper about limiting continuations AND RCEs, which is just ridiculous. It was a solution in search of a problem. There was no evidence to support any benefit to such a limitation and it appeared to treat the RCE/continuations as a function of the practitioners and did not describe how examination might be changed to reduce the need for continuations.

Further, all the RCEs I have filed have been because the Examination I received was poor, and my continuations have generally been filed to pursue non-allowed claims.

In fact, Lemley and Moore barely talked about RCEs in "Ending Abuse..." The fact that later numbers showed RCEs to be the most abundant type of continuing application demonstrates that Lemley and Moore were wrong in "Ending Abuse..." as to the fundamental issue. Hutz apparently has missed the whole point.

***Of not "being heard" by a (previous) employer, something I heard about from someone else in a phone call on March 10-->

"Is this the same Examiner 6k who has posted numerous times about shooting down applications? "

Yes but I can look over nearly any app I allow a month later and view it as a new app and I can tell how I would still want to smack it down. Most allowances are not clear cut, they're me saying "I just don't feel like I have the art right now so it is time to allow". Which is allegedly what my "job" is according to many people here. I don't have infinite time to sink claims you know, examination does end on occasion.

This problem comes sharply into focus when I get a CON. When that happens the claims are usually a little more narrow than the already allowed ones and I go out and sink them. Pity, but that's the way of things, the more time you pay for me to search, the less claim you'll be left with at the end of the day.

"When was the last time any Examiner gave any weight to an alleged fact that, e.g., discovering the source of the problem was the key to the invention (i.e., in which the invention was made), and the solution naturally flowed from the problem? None that you know of? I didn't think so."

We don't give patents for keys to inventions, we give patents for inventions. You can take your keys to inventions and horde them all you like.

Personally I know the benefits of finding the source of the problem. At my job at a company we were having issues with a machine creating problems on the product at a certain step in the manufacturing process. I put forth the only realistic approach to finding the source of the problem and that wasn't recognized until right before I left. If they do spend the money to perform the "diagnostic" I guess you'd call it, then they'll save millions in the long run by finding and fixing the problem, but as of the time of my departure they didn't have the budget and manpower to spare. But, they probably eventually got around to it. Either way, the solution to the problem would likely be something as mundane as moving a hose 5 inches downward inside the machine and increasing the output a bit to compensate. That invention is not patentable but the "key" to the invention will have been innovative and very important. That said, my method of diagnosing the problem might have been inventive and patentable, but it was probably much more valuable as a trade secret.

I don't have time to talk further comedian, but I will say this, I'll give weight to a reasoned argument, but I can't speak for my fellows. I will also say though that most of those arguments are not used for a reason, and that reason is because there are much stronger arguments that weight against them being valid. In fact, I regularly address arguments that are somewhat unorthodox and I have yet to see one succeed.

"OK, that's just silly. 102 relates to all claim elements found in a single reference. "

Yes I'm sure he knows Jen, that's why he said that 103 was basically merged with 102. In essence when you make a TSM 103 you're basically saying that by having looked at the two references you can practically see with your mind's eye an embodiment flowing directly out of the primary reference that fulfills all limitations.

I know, I do this every day.

" Regardless, how, pray tell, does an Examiner get "worn down" under the current count system? I've *never* had it happen with an Examiner I have had a case with, and I would absolutely love to know how to do it because it would make my life so much easier and the client would be thrilled. Please, dish."

Half of your allowances probably did this already. 90% of your third RCE's did this.

"Claims to useful processes, machines, and products are being rejected everyday at the USPTO based upon Bilski. Should we have anticipated these rejections based upon the language of the STATUTE?"

It is funny how you can tell that the statute doesn't support those rejections right away but you had trouble figuring out what 103 said for years. In any event, it's my opinion that someone needs to step up and get those cases reigned in. You up for it? How about you and 5000 other attorneys willing to appeal every one of those cases?

***Separately, after Joe Miller wrote

Given the above post, I'm wondering if you could share some thoughts on some of the reasons for the virulently anti-professor bias of so many of the comments I see here at Patently-O.
It seems bizarre, for example, to suppose that only someone with patent prosecution experience could make valuable contributions to patent system policy formulation. Patent litigation, in which I have some experience, gave me a reasonable basis for policy engagement. Patent law also implicates administrative law, technology policy, the psychology of creativity, and much else besides. Open exchange on substance with others, who know things I don't, helps me greatly. Bile-filled invective doesn't.
Why so much negative feeling for, e.g., Prof. Lemley, who - among other things - remains actively engaged in patent litlgation and other i.p. litigation. Is it simply because he has proposed policy options that would, e.g., make it harder for some patent prosecution lawyers to make as much money in the same manner as they have in the past?
Again, I'm interested to know your thoughts on this ferocious disdain some of your commenters have for lawprofs.

there were numerous responses, but Joe Miller (Fire of Genius blog) made no response to these.

See previous IPBiz post on the Patently-O thread.


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