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Source link: http://archive.mises.org/5956/patent-law-baby-steps/

Patent Law: Baby Steps

November 29, 2006 by

Supreme Court Hears Arguments in KSR summarizes the oral arguments for KSR International v. Teleflex, an important patent case pending before the Supreme Court. The question involves whether it should be more difficult to obtain a patent for a claimed invention in a patent application.

In our patent system, a patent may be obtained if four criteria are satisfied: (a) if it is the type of thing that the patent statute covers, i.e. “statutory subject matter” (this is pretty broad, of late–it includes any practical invention–”anything under the sun that is made by man”–this is “Section 101″ of the US Patent Act); (b) has “utility” (pretty easy to satisfy, unless it does not work at all, like a perpetual motion machine, or if it has only “negative” utility, e.g. a weapon that would destroy all life on earth–Section 101 again), (c) which is “novel” (this means new–section 102); and (d) which is “non-obvious” (section 103).

This last–non-obviousness (called “inventive step” in most other countries)–is usually the most difficult hurdle to overcome. This is because many things are “new” combinations of existing things or elements, but “would have been” considered “obvious” to a hypothetical “person having ordinary skill in the art” (PHOSITA).

In other words, an invention is not novel if you can find a single prior art “reference” (say, a previous patent or article) that fully describes it. But if the invention is a combination of elements that is a new combination of elements and not all found in a single reference, then it is novel. So then the Examiner has to find multiple references that teach all the elements.

Now originally, the Supreme Court held that simply aggregating old elements together does not pass the patentability test if the elements are each performing the same functions that they were already known to perform. (See pp. 36 et seq. of this brief.) But the Court of Appeals for the Federal Circuit (CAFC), the federal appellate court with exclusive appellate jurisdiction in patent law cases since it was established in 1982, has held that a claimed invention cannot be held obvious unless the patent office can show some proven “‘teaching, suggestion, or motivation’ [TSM] that would have led a person of ordinary skill in the art to combine the relevant prior art teachings in the manner claimed.” That is, the CAFC’s approach has allowed mere aggregations to be patented so long as there is no evidence suggesting that the elements be combined. (Here one gets a glimpse of the utter arbitrariness and inherent vagueness of IP law and its complete dissimilarity to real property law.)So under current practice, using the example above, the PTO Examiner has to find two or more references that show all the elements of the claimed invention, AND he must somehow show some other teaching or reference that suggests combining the references. For example, suppose it’s known to make brooms with straw bristles; and it’s known to use plastic for a variety of purposes. Someone tries to patent a broom having plastic bristles. Let’s assume this is novel–no one has done this before. Is it “obvious” to combine plastic (which is known to be widely used, and as a substitute for other materials) with the standard broom design (also well known)? What if the Examiner can’t find an article where someone muses, “Say, you know, you could use plastic instead of straw in a broom if you want–…”?

The point is that quite often, you can get an invention patented by making sure it includes some fairly trivial feature that makes it “novel” and then, when the Examiner tries to argue well, this is just obvious, you tell him he has to prove it by finding an explicit TSM (teaching, suggestion or motivation) out there that suggests combining the elements. (And let’s face it: all inventions are combinations of existing prior art; this is the nature of progress.) In other words, under the current TSM test, claims “cannot be held invalid . . . no matter how trivial might be the differences” from the prior art unless evidence suggesting the difference is found in the art.

In the current case, KSR manufactures gas pedals that can be adjusted for the height of the driver and uses electronic signals rather than a mechanical cable to accelerate when the pedal is pushed. Both features were developed separately but Teleflex sued KSR claiming that KSR’s combination of the two features infringed on a patent it was issued in May 2001. KSR argues that the patent should be invalidated because the combination of the two features is obvious. They want the Supreme Court to overrule the CAFC, which “held that the prior art did not render the claimed invention unpatentable because they had not proven, beyond genuine dispute and by clear and convincing evidence, that there was a suggestion or motivation to combine the teachings of the prior art in the particular manner claimed by the patent at issue (U.S. Patent No. 6,237,565).”

So what will the Court do? It is possible the TSM test may be modified or dropped, and I hope it is. This would mean it is easier for the patent office to show that a claimed invention is obvious, since it will not have to show a TSM to combine well-known elements that the patent applicant has merely aggregated in an obvious way. The presumption may be shifted, so that if all the elements claimed are shown in multiple references, the patent applicant has to show that the invention is non-obvious, rather than the PTO (or opponent at trial) having to show some TSM to aggregate or combine the well-known elements.

It’s interesting that some companies are against the TSM test (that is, they are in favor of making it more difficult to obtain patents), and some are in favor of it. “Critics of the test argue that this has made it too difficult to prove that a claimed invention is obvious.” The Coalition for Patent Fairness, for example, which incldes high-tech companies like Intel, Cisco Systems and Hewlett-Packard, seems to be in favor of revision of the current test. “The tech companies [Microsoft Corp., Cisco Systems Inc., Intel Corp. and others] want to put a damper on all the patents on all the patents on business methods, designs and undeveloped technologies that casues them to spend lots of money to defend.” (One of their concerns is “patent trolls – companies that exist primarily to make money from patents through litigation instead of commercialization”–but as I’ve noted, the hostility against patent trolls is misplaced. They are no different than any other patentee who takes advantage of the corrrupt and unjust patent system.)

But pharmaceutical and biotechnology research-based companies such as Johnson & Johnson, GE and DuPont, for example, have filed briefs “arguing that major changes to the patent system would jeopardize billions of dollars invested in product innovation. They want to protect pharmaceutical and chemical products from generic manufacturers and counterfeiters. These companies oppose any change to the test since it might make it difficult to patent known drugs for new uses.

I am hopeful the Court will decide to narrow or drop the TSM test, but even if they do, it’s only a mild improvement to this horrible morass of artificial and unjust law.


Person November 29, 2006 at 1:33 pm

And some areas of physical property law are tricky or warrant reform.


Sione November 29, 2006 at 11:16 pm


Instead of your usual sniping and bitching, how about stating YOUR position regarding IP, how you derive it and how you verify it. That would allow others the chance to evaluate whether you have a logical position and whether your view is tenable.


Person November 29, 2006 at 11:42 pm

No thanks Sione, I’ll stick to pointing out the flaws in the arguments others present.

quasibill November 30, 2006 at 7:11 am

I always thought that the “non-obviousness” element was the easiest way to attack the concept of patents. It’s complete and utter bunk, calling for a subjective determination that can be masqueraded as objective. After all, what is obvious to you? How about compared to what is obvious to Stephen Hawking? Compared to what is obvious to the janitor at the local high school?

Well, none of that is important, after all. The only person that gets to judge obviousness is an appointed government official with “legal” training. And more often than not, this official merely determines which litigant has supported his political patron more to determine whether the invention is obvious.

It’s all smoke and mirrors, no substance.

Person November 30, 2006 at 12:18 pm


How about this: The examiner finds ~5 (or more) people versed in the art. He poses to them the problem solved by the patent. He asks them to list ways to solve that problem. If one of them mentions the method listed in the patent, it’s obvious.

Now, what is wrong with that method of defining obviousness?

Sione November 30, 2006 at 12:45 pm


re Definition of Obviousness

Depends on which five (or more) people experienced in the art the examiner approaches.
Depends on what experience they have.
Depends on what he asks them and how the questions are asked precisely.
Depends on the context.

Your method is arbitrary and, in practice, it will end up no better than the present morass. Know why? Start by asking five or more people experienced in IP (choose carefully).


Person November 30, 2006 at 12:56 pm

Sione: That’s true. It also depends on the mood of the examiner and the people he asks, how much rain there is that day, who knows more about what, and many other factors.

In other words, the same “arbitrarity” that happens in every matter of law there is.

John November 30, 2006 at 1:43 pm

The obviousness question can best be resolved by asking who should bear the burden: shouldn’t the applicant be burdened to prove why he/she deserves a patent that can potentially earn millions. Right now, the burden is on the PTO to prove obviousness by finding some motivation for trivial items. This unfair burden has obviously resulted in questionable patents being issued. Instead, why not have the PTO determine whether the submitted application is obvious or not, and then if the PTO says it’s obvious, have the applicant be burdened to prove via secondary considerations such as unexpected results, difficult problem solved, etc. that he/she really has a nonobviousness patent. This way, the burden rightfully rests on the party that has the most to gain.

Mike D. November 30, 2006 at 9:59 pm

Here is an egregious example of a patent being offered for an obvious packaging of non-original work.

Blackboard’s US patent 6,988,138
From NoEduPatents

English Translation of the Blackboard Patent Claims

The following is a listing of the 44 claims in Blackboard’s U.S. patent #6,988,138, along with an interpretation of each claim. The initial text interpretation of each of the 44 claims were written by Michael Feldstein, who is not a lawyer. This information does not constitute legal advice.

A summary of the patent claim:

Summary: “We, Blackboard, invented a system that allows students to interact online with instructors in a course setting. We also invented a method that tracks for each user which data files they are able to read and write, how the data files are transmitted across the network from and to a user’s personal computer via an intermediate server, and finally the means by which course data files are presented and organized for each user.”

Claim 1 and Claim 36 are the “independent” claims and therefore the most important ones. The other claims are “dependent” on one or both of the independents.

A literal translation of the two independent claims:

“We (Blackboard Inc.) invented the Idea of creating a computer program for faculty and students who wish to share course files over the Internet. Our computer program will simultaneously accommodate several faculty members, several students, several courses, and several course files. All course files will be stored on a central server and be accessible by students and faculty with their personal computers. The course files will travel to and from the server over a network. Our computer program will keep track of who is authorized to create, read, and modify each file on the server. The authorization will depend upon the particular course being taught, the faculty member who is teaching it, and the students who are enrolled in the course.

In particular, our computer program will be able to perform the following steps: a) ensure each user is able to access and manipulate the appropriate course file depending on their authorization; b) designate which courses will be in the system and, accordingly, associate the set of files that go together with that course; allow the authorized user to transmit those files to the server for storage; and allow the authorized users to access and manipulate those files. c) if the user is a student, ensure that the student is able to access the student files; d) if the user is not a student, ensure that they are also able to access their authorized files.”

For the complete critique go to:


Sione December 1, 2006 at 10:18 am


In that case it has been established your test of obviousness is wrong. It is flawed and your question has been answered.


Nick Robinson May 6, 2009 at 1:22 am

Hi there,

I saw your blog post very interesting.i am Nick Robinson,a community member at Patents DOT Com(a comprehensive free patent search engine).Will like to talk(through email) to you,is this the right time to talk about or should we talk during weekends ?

Nick Robinson


Graeme Murray July 18, 2009 at 3:21 am

Hello. Is it a prerequisite of IP law that a patent be understood by one’versed in the art’?

Graeme Murray July 18, 2009 at 3:24 am

Oops! I forgot to ask. May I quote you in the book that I am writing on the patent myth?

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