Motivation for combining the element is the sole purpose of the element...

[Robert K S]

I'll just add that if one prosecuted applications based on one's guess at what might or might not hold water with examiners, one would probably never get full-deserved-breadth claims allowed for one's clients.  It's better to know the law and the regs and not be afraid to take issues to the Board or to the Courts if one believes the PTO is not following the law.

[Isaac]

The TSM test was to make things easier for the PTO.  KSR did not eliminate the TSM test but rather indicated that it is just one way to show obviousness.  Without the TSM test, a showing of obviousness goes back to Graham. 

While it is true that Graham is the basis for obviousness, KSR does not require doing the analysis completely from scratch everytime the examiner does not use TSM.   KSR describes a number of methods for analyzing obviousness without employing TSM.  Yes, those methods do require specific fact finding, but arguments that rely solely on the examiner not citing a motivation to combine are not going to be successful if the examiner is not doing a TSM based analysis.   Instead you have to identify specific holes in the analysis that the examiner did use.

For example, if the examiner's indicates that your invention merely uses a known technique to improve similar devices (methods, or products) in the same way  (See MPEP 2143), it would be unconvincing to respond that the examiner did not establish a motivation to combine ala TSM.

DDP described a rejection where the examiner said "PHOSITA would combine Ref A with Ref B to arrive at your invention because Ref B shows it is possible to do X, therefore, if PHOSITA desired to do X to Ref A, he could".   The quoted statement strongly suggests to me that the Examiner was doing fact finding supportive of a "uses a known technique to improve similar devices" type rejection.  If so, I wouldn't expect the examiner to back off of the rejection even if you argue that no motivation to combine was provided.

[dab2d]

 

And one would motivated to do so because it would add data storage capability to an ordinary windshield, right?  NO!!

Jim, This is where I think you hit the nail on the head for the problem I presented. Is the sole ability/intended use of the added element motivation in and of itself enough to combine it with anything else. It is my thought that you must provide a proper motivation in which one would want to add that sole ability/intended use to the base reference.

I also agree with Khaz's statement of

It's the combination that should be desirable, right? IOW, a POSITA makes this combination in order to achieve a benefit. So I'd say: Examiner hasn't explained why a paint brush user would benefit from having an additional putty knife function. [That's the reasoning that's missing.]

This is the only case that I have come across that may deal with the point, but I need to review it further.

"Trade-offs often concern what is feasible, not what is, on balance, desirable. Motivation to combine requires the latter." Winner Int'l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 (Fed. Cir. 2000)

[JimIvey]

While it is true that Graham is the basis for obviousness, KSR does not require doing the analysis completely from scratch everytime the examiner does not use TSM.   KSR describes a number of methods for analyzing obviousness without employing TSM.  Yes, those methods do require specific fact finding, but arguments that rely solely on the examiner not citing a motivation to combine are not going to be successful if the examiner is not doing a TSM based analysis.   Instead you have to identify specific holes in the analysis that the examiner did use.

Of course.  If obviousness is not based on TSM, failure to cite a proper TSM does not vitiate the finding of obviousness.  However, I was addressing the tossing up of any motivation at all for combination regardless of its source.

For example, if the examiner's indicates that your invention merely uses a known technique to improve similar devices (methods, or products) in the same way  (See MPEP 2143), it would be unconvincing to respond that the examiner did not establish a motivation to combine ala TSM.

In my mind, that's a variation of a TSM analysis.  For example, a teaching of a yard stick and a teaching that a meter stick can be extended by connecting multiple meter sticks end-to-end with scotch tape can be viewed as providing the motivation to extend a yard stick by taping multiple yard sticks end-to-end.

However, I'm not aware of any obviousness analysis other than TSM (or similar variants such as the one Isaac identified) in which detailed factual findings of Graham (including the level of ordinary skill in the art(s) at the time the invention was made) are not required.

I think the PTO understands this as evidenced by the proffering of motivations to combine, even if purely imagined motivations without adequate support in the record.

I'd also say that the TSM test goes further than that required by Graham.  Accordingly, I think a solid TSM analysis is difficult to overcome, more difficult that an ordinary obviousness finding adhering strictly to Graham.

DDP described a rejection where the examiner said "PHOSITA would combine Ref A with Ref B to arrive at your invention because Ref B shows it is possible to do X, therefore, if PHOSITA desired to do X to Ref A, he could".   The quoted statement strongly suggests to me that the Examiner was doing fact finding supportive of a "uses a known technique to improve similar devices" type rejection.  If so, I wouldn't expect the examiner to back off of the rejection even if you argue that no motivation to combine was provided.

I might have misread that.  I thought DDPM was saying that the examiner equated "feasible" with "obvious".  Some examiners here have said that, for some arts, feasible = obvious.

I didn't think of it as a "known technique to improve analogous things" rejection.  As I try to wrap my mind around that sort of obviousness analysis, my mind leaps right to doctrine of equivalents analysis -- does the same thing in the same way to achieve the same result (with a healthy dose of "substantially"s sprinkled in there).

A couple decades ago, I wrote a paper suggesting using some obviousness analysis to determine equivalence.  That idea popped up in dicta (dissenting or concurring opinion) in the Fed Cir. a few years later -- sorry, don't have the cite.  Now, it's coming full circle -- using DoE analysis to determine obviousness. 

I think it was Learned Hand that said "that which infringes if later, anticipates if before."  My thought was to stretch that symmetry to equivalents and obviousness.

"Trade-offs often concern what is feasible, not what is, on balance, desirable. Motivation to combine requires the latter." Winner Int'l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 (Fed. Cir. 2000)

Looks like good authority to me.  However, to use it, you'd want to Sheppardize it to make sure it's still good law.  It expresses the law as I understand it.

Regards.

[khazzah]

For example, if the examiner's indicates that your invention merely uses a known technique to improve similar devices (methods, or products) in the same way  (See MPEP 2143), it would be unconvincing to respond that the examiner did not establish a motivation to combine ala TSM.

In my mind, that's a variation of a TSM analysis. 

We're definitely arguing semantics now -- but "known technique to improve similar devices in same way" is not TSM to me.

To me, TSM is a *specific* motivation to combine specific features from references, where the motivation be either explicit or implicit. Whereas I view the rationales in MPEP 2143 as *general* motivations.

The S.C. recognized that specific motivations are hard to find, but that general motivations can also be appropriate to show obviousness in many different scenarios.

One of ordinary skill in the art would be motivated to combine the references because [insert a motivation that actually motivates, as in makes the thing better in some way without defeating its raison d'etre].  This motivation was known to those of ordinary skill in the art as evidenced by [prove that the motivation was known by those of ordinary skill in the art].  Since [provide actual evidence that the ordinary artisan knew of this motivation before the invention was made], the ordinary artisan knew this motivation at the time the invention was made.

Anything short of that fails to make a prima facie case of obviousness.

Hmm. I definitely agree that [motivation that actually motivates] is required. And when a court looks at invalidity, I agree that [motivation known by POSITA] and [motivation known at time of invention] would be required. You'd probably need need expert evidence on this point.

That said, I doubt that the Board will reverse simply because the Examiner didn't make factual findings that [motivation was known by POSITA] and [motivation was known at time of invention]. The Board seems to do a lot of fact finding on their own.

Several folks here have pointed out that the BPAI gets things wrong. If that's true here, lack of these explicit findings on the record is something you can bring up at the Fed. Cir.

[klaviernista]

This is the only case that I have come across that may deal with the point, but I need to review it further.

"Trade-offs often concern what is feasible, not what is, on balance, desirable. Motivation to combine requires the latter." Winner Int'l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 (Fed. Cir. 2000)

What about arguing the text of KSR itself?  I.e., that the obvious analysis under KSR still requires the examiner to provide “some articulated reasoning with some rational underpinnings to support the conclusion of obviousness. . . ?”  In your instance, it sounds like the examiner took reference A and reference B, and summaril concluded that it would be obvious to combine them.  But even in the days of KSR, a "conclusion" that something is obvious, without more, is NOT enough to establish a prima facie case of obviousness.   

This plays into the line of arguments Karen and Jim have been proposing in this thread.  Not only is conclusory analysis not sufficient, but conclusory analysis about what OOSA would have know at the time the invention was made is not permitted.

Zurko might be a decent case to play on as well.  But in the interest of disclosure I will say that the validity of that case has been hotly debated on this board.

[JimIvey]

Hmm. I definitely agree that [motivation that actually motivates] is required. And when a court looks at invalidity, I agree that [motivation known by POSITA] and [motivation known at time of invention] would be required. You'd probably need need expert evidence on this point.

That said, I doubt that the Board will reverse simply because the Examiner didn't make factual findings that [motivation was known by POSITA] and [motivation was known at time of invention]. The Board seems to do a lot of fact finding on their own.

Emphasis supplied.

That's exactly how I perceive things.  So, if the Federal Circuit makes the law (or at least adds details where the statute is not perfectly clear), and the BPAI is supposed to faithfully implement that law, how does one reconcile the differences between the two?

Several folks here have pointed out that the BPAI gets things wrong. If that's true here, lack of these explicit findings on the record is something you can bring up at the Fed. Cir.

(emphasis supplied).

I don't think that's in doubt -- at least not to me.

However, the reason I feel so strongly about misapplication of the law by examiners and the BPAI is that most applicants can't afford to take every application to the Federal Circuit.  And, they shouldn't have to. 

I don't mind (and in fact strongly support) putting applications through the paces to minimize issuance of patents that shouldn't issue.  However, there's really no justification in stretching the law to the extent that virtually no applications will ever issue. 

Obviousness law requires more than just recitation of just any motivation with a hint of plausibility to combine references. 

Regards.

[khazzah]

when a court looks at invalidity, I agree that [motivation known by POSITA] and [motivation known at time of invention] would be required.

That said, I doubt that the Board will reverse simply because the Examiner didn't make factual findings that [motivation was known by POSITA] and [motivation was known at time of invention].

Emphasis supplied.

That's exactly how I perceive things.  So, if the Federal Circuit makes the law (or at least adds details where the statute is not perfectly clear), and the BPAI is supposed to faithfully implement that law, how does one reconcile the differences between the two?

You won't be surprised to see I don't have a good answer for that. If you're cynical, you could say the BPAI understands what they should do, but is flagrantly ignoring their duty simply because they can. If you're less cynical, maybe you say that the BPAI doesn't get it.

Several folks here have pointed out that the BPAI gets things wrong. If that's true here, lack of these explicit findings on the record is something you can bring up at the Fed. Cir.

(emphasis supplied).

I don't think that's in doubt -- at least not to me.

Oh, all right -- I'll agree that when the BPAI affirms obviousness without motivation-known-by-POSITA and motivation-known-at-time-of-invention is contrary to Fed Cir precedent.

Though a slightly narrower question is this: can the BPAI do it's own fact finding on these points? Or does Fed Cir precedent require the BPAI to reverse if the *Examiner* didn't put these 2 in the record?

However, the reason I feel so strongly about misapplication of the law by examiners and the BPAI is that most applicants can't afford to take every application to the Federal Circuit.  And, they shouldn't have to. 

You said "most applicants". I'd go farther and say that it only makes economic sense to go the Fed Cir in a small percentage of cases.

I don't mind (and in fact strongly support) putting applications through the paces to minimize issuance of patents that shouldn't issue.  However, there's really no justification in stretching the law to the
extent that virtually no applications will ever issue. 

I think maybe you're exaggerating here. I don't recall reading anything that says allowance rates are plummeting to zero. Or even that the affirmance rate at the Board is 90% percent.

Obviousness law requires more than just recitation of just any motivation with a hint of plausibility to combine references. 

Regards.
[/quote]

[Robert K S]

can the BPAI do it's own fact finding on these points? Or does Fed Cir precedent require the BPAI to reverse if the *Examiner* didn't put these 2 in the record?

  The BPAI is perfectly empowered to issue new grounds of rejection in an appeal decision, implying de novo review.

[JimIvey]

I don't mind (and in fact strongly support) putting applications through the paces to minimize issuance of patents that shouldn't issue.  However, there's really no justification in stretching the law to the
extent that virtually no applications will ever issue. 

I think maybe you're exaggerating here. I don't recall reading anything that says allowance rates are plummeting to zero. Or even that the affirmance rate at the Board is 90% percent.

I'll address this in two ways.

First, in my own practice, allowance rates are dramatically different between the first 12 years and the last 8 years.  Of course, it might be the particular arts of my practice -- software and e-commerce, primarily.  When I handle a mechanical case, I don't see much difference between 10-15 years ago and now.

What I'm seeing now in computer-related arts are much better reasoned rejections, but only appearing on the second or third non-final Office Actions.  Not enough has played out in my practice to see how the post-Dudas Office handles the law.

Second, in a theoretical perspective:  To the extent the BPAI supports the proposition I'm railing about here -- that mention of any remotely-plausible motivation to combine, regardless of when it might have been known and by whom, is sufficient to support a rejection for obviousness -- I'd say that any claim for just about anything could be rejected as obvious.

I don't think that casual disregard for the law and reason is currently happening in the entirety of the BPAI, but there are notable examples of it.  The best (worst) example that I've seen recently is the post-Bilski (pre-SCt Bilski) BPAI decision that said (i) that one can monitor resource usage of processes executing in a computer without use of a computer; (ii) that adding a computer to a claim that is non-statutory solely for the failure to recite a computer does not make the claim statutory; and (iii) that computer-readable media and computers themselves are not statutory articles and apparatuses, respectively, but are instead processes and subject to abstractness limitations of Bilski and such.

As the influence of Dudas trickles up, I think we'll see more BPAI decisions like that one.

Regards.

[Joe M.]

I don't want to detract from the substantive discussion going on here but I wanted to share that I prepared a response to an OA today where the only thing the Examiner said was that it would have been obvious to combine the elements of reference A with the well known elements of reference B. The examiner didn't even bother to say why it would have been obvious or how the resultant combination would have been beneficial. Although I have seen some improvements in the communications from the PTO since the Kappos era began, I still routinely get these types of OAs.

IMO, the more poorly written the OA is, the more difficult it is to formulate a rationale response that doesn't alienate the examiner. It can be a very frustrating process.

[still_learnin]

I think maybe you're exaggerating here. I don't recall reading anything that says allowance rates are plummeting to zero. Or even that the affirmance rate at the Board is 90% percent.

First, in my own practice, allowance rates are dramatically different between the first 12 years and the last 8 years. 

I'll stipulate that allowance rates have dropped significantly. But your original comment was "virtually no issuance". There's a difference between the two. That's all I was trying to say. I'll stop being a lawyer now and picking apart every statement. Sorry -- it's hard to turn off the lawyer bit.

I don't think that casual disregard for the law and reason is currently happening in the entirety of the BPAI, but there are notable examples of it. 

Amen to that. You all know I'm *not* an apologist for the Board. I don't have clients willing to appeal to the Fed. Cir., so all I can do about this is vent on my blog.

As the influence of Dudas trickles up, I think we'll see more BPAI decisions like that one.

Hmm. You're saying Dudas has influence after he's gone? Or maybe you really meant Kappos?

The best (worst) example that I've seen recently is the post-Bilski (pre-SCt Bilski) BPAI decision that said (i) that one can monitor resource usage of processes executing in a computer without use of a computer; (ii) that adding a computer to a claim that is non-statutory solely for the failure to recite a computer does not make the claim statutory; and (iii) that computer-readable media and computers themselves are not statutory articles and apparatuses, respectively, but are instead processes and subject to abstractness limitations of Bilski and such.

Several post-Bilski-v-Kappos decisions (Ex parte Proudler and Ex parte Birger) reach the same result. These new cases use the cloak of "abstract idea" but the shoddy analysis is essentially the same as before. I railed about these two decisions on my blog. 

BTW, this has been a very interesting discussion for me. Thanks to all contributors.

[Isaac]

I'll stipulate that allowance rates have dropped significantly. But your original comment was "virtually no issuance". There's a difference between the two. That's all I was trying to say. I'll stop being a lawyer now and picking apart every statement. Sorry -- it's hard to turn off the lawyer bit.

More recent data suggests that allowance rates have increased substantially and that affirmance rates of the board aren't anything like 90%.

[JimIvey]

I'll stipulate that allowance rates have dropped significantly. But your original comment was "virtually no issuance". There's a difference between the two. That's all I was trying to say. I'll stop being a lawyer now and picking apart every statement. Sorry -- it's hard to turn off the lawyer bit.

I never said that there are currently virtually no issuances.  Let's take a quick look at what I really said.

there's really no justification in stretching the law to the extent that virtually no applications will ever issue. 

I clarified that point here:

Second, in a theoretical perspective:  To the extent the BPAI supports the proposition I'm railing about here -- that mention of any remotely-plausible motivation to combine, regardless of when it might have been known and by whom, is sufficient to support a rejection for obviousness -- I'd say that any claim for just about anything could be rejected as obvious.

(emphasis supplied)

So, to be absolutely clear, if the law supports a rejection of obviousness with no more than any proffered, ex post facto motivation to combine references, it would be virtually impossible to overcome such a rejection.

I am not saying that virtually no patents are issuing now.  I was merely hypothesizing a result from an interpretation of the law that I find clearly erroneous.

As the influence of Dudas trickles up, I think we'll see more BPAI decisions like that one.

Hmm. You're saying Dudas has influence after he's gone? Or maybe you really meant Kappos?

Yes.  No.  I'm referring to people hired by and trained in the PTO during Dudas's tenure moving up into supervisory positions and into the BPAI.

Regards.

[khazzah]

I never said that there are currently virtually no issuances. 

Sorry, my bad.

So, to be absolutely clear, if the law supports a rejection of obviousness with no more than any proffered, ex post facto motivation to combine references, it would be virtually impossible to overcome such a rejection.

Ah. I understand now. Agreed.

As the influence of Dudas trickles up, I think we'll see more BPAI decisions like that one.
...
I'm referring to people hired by and trained in the PTO during Dudas's tenure moving up into supervisory positions and into the BPAI.

Interesting. Hadn't thought of it this way. So even if examination gets better (from an Applicant's point of view) as a result of Kappos influence and directives, there will be a substantial lag in the Kappos effect at the BPAI. Or, put another way, we've yet to even feel the impact of the Dudas effect at the BPAI.