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[ManOfManyBadIdeas]

I am very surprised to see failure of others listed as a secondary argument. It seems
to me that it is practically the only clear cut and pure test for obviousness, when it is
available. If the problem has been recognized, and at least a few (sometimes many)
POSITAs (sometimes far exceeding the POSITA level) have failed to solve the problem,
that's as pure a test as one can imagine. The only argument I can see against it is that
the POSITAs didn't have the references turned up by the examiner in front of them,
but those references would have been searched with the solution sitting in front of
the examiner, often with specific features of the solution as the search target. That's
practically the definition of impermissible hindsight.

Same thing bothers me when thinking about the "motivation to combine". If they had the
motivation, why didn't they "combine"?

[ManOfManyBadIdeas]

Still would like to hear what others think about this, but I have continued
thinking about this, and here is the only explanation I can come up with.
Failure of others and other "secondary" arguments are called secondary
not due to being less convincing, but according to the order in which
arguments should be considered. The "primary" obviousness tests are
supposed to be always available for any invention, and so should be
considered first. The "secondary" arguments are not always available
and can drastically vary in the their strength from case to case. I think
the hope is that the "primary" tests are simpler and the majority of cases
can be resolved without invoking "secondary" arguments. I am not sure about
the primary arguments really being simpler, but I think that's the somewhat
idealistic view of it from the point of view of the law.

[JimIvey]

I'll take a guess as to why failure of others is not a more highly revered measure of obviousness or lack thereof.

First, obvious to one of ordinary skill in the relevant technologies is the standard.  So, if someone else tried and failed, you'd have to at least establish that they are of at least ordinary skill in the relevant technologies.

Second, the standard is obviousness in view of any prior art references as defined by Section 102.  If failure of another is to prove non-obviousness, you're going have to show that they were familiar with all available prior art -- or at least all the prior art cited during examination.

Once you've established that the other is of ordinary skill in the relevant technologies and is familiar with all information that qualifies as prior art, then I'd think that failure of that other would be pretty compelling evidence of non-obviousness.  Although, there's always the possibility that your solution was realized by the other and they just chose not to do it that way -- in other words, the fact they didn't chose your approach might not prove that your approach was non-obvious to them.

Those are probably some of the reasons it's only a secondary consideration.

Regards.

[ManOfManyBadIdeas]

I'll take a guess as to why failure of others is not a more highly revered measure of obviousness or lack thereof.

First, obvious to one of ordinary skill in the relevant technologies is the standard.  So, if someone else tried and failed, you'd have to at least establish that they are of at least ordinary skill in the relevant technologies.

Second, the standard is obviousness in view of any prior art references as defined by Section 102.  If failure of another is to prove non-obviousness, you're going have to show that they were familiar with all available prior art -- or at least all the prior art cited during examination.

I did not mean this as a failure of another, but rather as failure of many others. Failure of one POSITA is way too weak
a test.

To some degree these are the steps you outline would have to be followed anyway in the standard obviousness test.
Except in the standard test they are done for an imaginary POSITA, whereas if failure of other can be shown, there
are some very real POSITAs who have attempted it, so some arbitrariness is removed from the test.

Comparison of the standard test to the real world I think reveals its flaws. You have mentioned that the POSITAs have
to be shown to be familiar with all available prior art. That's an impossible standard in real life. Obviously nobody knows
everything. And if you look at the way "primary" obviousness test is conducted, it's inevitably skewed by impermissible
hindsight. Because the question is typically "given THIS prior art, would it be obvious to combine the teachings to
arrive at the answer?". That's why I think express motivation to combine in prior art are quite important. Without it
you are comparing the inventor trying to solve a problem (can you solve this problem given your knowledge and access
to trillions of pages of information?), with a POSITA conjured by an examiner/agent, who is instead given a different problem
(can you solve this problem given your knowledge and these few hundred pages of information?). I think you will agree that
presenting only a tiny subset of all available information is a very strong suggestion at the solution.

I am not looking at it from the point of view of "what does article 103 says", which I think makes it obvious that I am
not a lawyer. I am trying to figure out how to interpret article 103 in a way that makes sense And it doesn't make
any sense to me trying to imagine what a POSITA with all the knowledge in the world would do. May just as well
imagine omnipotent god and declare all inventions obvious One can also say that having all the knowledge is like having
none of it, since a huge part of problem solving is making a choice what information is relevant and what information
isn't.

That's why I think that when you have a reasonably large number of POSITAs attempting to solve a problem, and they
did not come up with a solution you do not have to worry about constructing an abstract POSITA. You do not have to
worry about whether the knowledge you endow that POSITA with constitutes impermissible hindsight. The real world
POSITAs will have some of the relevant knowledge in common, some of it will differ, and they will have reasonable skills
in searching for information they consider relevant in light of the problem they are facing. And the combination of all
that will be the *relevant* prior art.

Once you've established that the other is of ordinary skill in the relevant technologies and is familiar with all information that qualifies as prior art, then I'd think that failure of that other would be pretty compelling evidence of non-obviousness.

I guess my view of this is that the "standard" POSITA test has to be conducted to closely resemble
the real world situation when a number of POSITAs are facing the problem solved by the invention. Because
that's in my view the definition of non-obviousness. The problem is that the real world proof of
POSITAs working on something is hard to show in many cases. It's simply not available. But it's as pure a
test as there is.

Although, there's always the possibility that your solution was realized by the other and they just chose not to do it that way -- in other words, the fact they didn't chose your approach might not prove that your approach was non-obvious to them.

Cue in another secondary test - unexpected results

Those are probably some of the reasons it's only a secondary consideration.

Regards.

Thanks for humoring me. It's probably a bit too impractical of a discussion, but I can't help it.
I have to try to make sense of things, my brain fails otherwise.

[JimIvey]

Sorry, this is way too long for me to read and address in detail today.

If by failure of others you mean long-felt need, I might agree with you.  The problem with long-felt need again is proving it.  And, one of the subtleties is that of claiming intended results rather than the means to achieve the results.

And, one point I may not have made well could use some clarification.  Just because others didn't do something doesn't mean they couldn't.  Long-felt need at least addresses that by showing high motivation to solve the particular problem, suggesting that the would have done it if they could.

Sorry for the skimpy thought.  I have to leave it at that.

Regards.

[ManOfManyBadIdeas]

Sorry, this is way too long for me to read and address in detail today.

If by failure of others you mean long-felt need, I might agree with you.  The problem with long-felt need again is proving it.  And, one of the subtleties is that of claiming intended results rather than the means to achieve the results.

And, one point I may not have made well could use some clarification.  Just because others didn't do something doesn't mean they couldn't.  Long-felt need at least addresses that by showing high motivation to solve the particular problem, suggesting that the would have done it if they could.

Sorry for the skimpy thought.  I have to leave it at that.

Regards.

Ah, I think I may be getting a better grasp on what "failure of others" means then. So it means one or more
documented attempts of particular individuals failing at solving the problem?

To me failure of others means that there was motivation to solve the problem, otherwise why would the
"others" try? So failure does imply an attempt, but I absolutely agree that it doesn't necessarily mean
a fair attempt. So perhaps long felt need is closer in meaning to what I called "failure of others". I think
these two categories overlap when the number of "others" that failed is more than just a few, and that's
the situation that I am trying to describe.

[JimIvey]

Ah, I think I may be getting a better grasp on what "failure of others" means then. So it means one or more
documented attempts of particular individuals failing at solving the problem?

To me failure of others means that there was motivation to solve the problem, otherwise why would the
"others" try? So failure does imply an attempt, but I absolutely agree that it doesn't necessarily mean
a fair attempt. So perhaps long felt need is closer in meaning to what I called "failure of others". I think
these two categories overlap when the number of "others" that failed is more than just a few, and that's
the situation that I am trying to describe.

Honestly, I'm not familiar with a "failure of others" secondary consideration.  It doesn't mean it doesn't exist, but I assumed for the sake of argument that it did, or that you had some specific failure of others in mind.  Long felt need is a specifically ordained secondary consideration.

Long felt need can be a bit challenging to show.  And, it's hard to come up with hypothetical examples.  An easy one is cold fusion.

Many of the world's top minds have been trying for decades to achieve cold fusion.  Many, many research dollars have been dedicated to finding a solution.  Since the quest for cold fusion started decades ago, you can't dismiss it as something people have just started to work on.  The magnitude of research efforts shows that, if a solution was obvious, someone would have found it by now.

While things less than cold fusion can be non-obvious, it's tougher to show that a significant number of minds have been diligently working at smaller needs.

The difficulty all comes down to using what others have or have not done to show what they could or could not have done.  For cold fusion, it seems to be a safe bet that, if others could have achieved it, they would have.  For new metal paperclip designs, that's a tougher argument to make.

Regards.

[Robert K S]

Honestly, I'm not familiar with a "failure of others" secondary consideration.  It doesn't mean it doesn't exist, but I assumed for the sake of argument that it did, or that you had some specific failure of others in mind.  Long felt need is a specifically ordained secondary consideration.

  They both originate, if it is not quoting in turn, directly from the same sentence in Graham.  "Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented."  383 U.S. 1, 18

[ManOfManyBadIdeas]

I am going to combine the teachings of JimIvey and Robert KS in a possibly
non-obvious manner now Perhaps the answer really is within the question
of where the statement originates, namely the Supreme Court. The failure
of others, long-felt need etc. are not part of 35 USC, thus it's not the law.
So, it's not the primary obligation of the patent office to entertain these
notions. However they may want to reconsider denying a cold fusion patent,
due to a monkey wrench and a piece of wire being elements well known in the art
and their combination being obvious to try. Because their decision
being overturned by a court citing the Supreme Court, and with unflattering
remarks about USPTO competence, is also a consideration, albeit secondary.

[JimIvey]

Perhaps the answer really is within the question
of where the statement originates, namely the Supreme Court. The failure
of others, long-felt need etc. are not part of 35 USC, thus it's not the law.

You might benefit from a semester of law school.  Our legal system is a common law system.  Since opinions of courts are binding on subsequent legal considerations of courts applying the law, courts do make law and the Supreme Court most certainly does make law.

In short, it's the job of courts to determine what 35 USC means, and what they decide is binding on us.  Here's another way to think of it:  when the Supreme Court sets forth a test for obviousness, it remains the law of the land until Congress changes 35 USC 103.  Before you say that will never happen, that's exactly how paragraph 6 of Section 112 got added; Congress didn't like a court decision.

Now, we can all debate whether this is the way it ought to be, but the fact remains that it's the way it is, like it or not.

Regards.

[ManOfManyBadIdeas]

Perhaps the answer really is within the question
of where the statement originates, namely the Supreme Court. The failure
of others, long-felt need etc. are not part of 35 USC, thus it's not the law.

You might benefit from a semester of law school.  Our legal system is a common law system.  Since opinions of courts are binding on subsequent legal considerations of courts applying the law, courts do make law and the Supreme Court most certainly does make law.

In short, it's the job of courts to determine what 35 USC means, and what they decide is binding on us.  Here's another way to think of it:  when the Supreme Court sets forth a test for obviousness, it remains the law of the land until Congress changes 35 USC 103.  Before you say that will never happen, that's exactly how paragraph 6 of Section 112 got added; Congress didn't like a court decision.

Now, we can all debate whether this is the way it ought to be, but the fact remains that it's the way it is, like it or not.

Regards.

I thought it was called judicial activism and is generally frowned upon

More seriously, I do lack in terminology, but would it make more sense if I rephrase it?
The law introduced by Supreme Court is secondary to the law passed by Congress, and
so the tests present in the SC law are secondary to the test present is 35 USC.
Something like that? That would make Fed Court decisions tertiary I guess...

[Isaac]

I thought it was called judicial activism and is generally frowned upon

More seriously, I do lack in terminology, but would it make more sense if I rephrase it?
The law introduced by Supreme Court is secondary to the law passed by Congress, and
so the tests present in the SC law are secondary to the test present is 35 USC.
Something like that? That would make Fed Court decisions tertiary I guess...

I think you've got things backwards.   The federal courts with the Supreme Courts at the top get the last word on interpretations of federal law.   After a federal court rules, the options are to appeal to a higher federal court or to get Congress to pass new laws.  When the issue is interpretation of the Constitution, Congress cannot force its interpretation of the Constitution on the courts.   Congress is left with the options of amending the Constitution or ratifying a new treaty.

Congress simply does not pass legislation that covers all of the details.  Federal agencies and the courts are charged with filling in the gaps by passing regulations and issuing court decisions interpreting federal statutes.  The courts get the last word until Congress passes new statues.  I'll go one step further and suggest that this process makes common law countries more flexible and efficient. 

Of course, when we don't like a court decision, then efficiency is called activism.

[ManOfManyBadIdeas]

I thought it was called judicial activism and is generally frowned upon

More seriously, I do lack in terminology, but would it make more sense if I rephrase it?
The law introduced by Supreme Court is secondary to the law passed by Congress, and
so the tests present in the SC law are secondary to the test present is 35 USC.
Something like that? That would make Fed Court decisions tertiary I guess...

I think you've got things backwards.   The federal courts with the Supreme Courts at the top get the last word on interpretations of federal law.   After a federal court rules, the options are to appeal to a higher federal court or to get Congress to pass new laws.  When the issue is interpretation of the Constitution, Congress cannot force its interpretation of the Constitution on the courts.   Congress is left with the options of amending the Constitution or ratifying a new treaty.

Congress simply does not pass legislation that covers all of the details.  Federal agencies and the courts are charged with filling in the gaps by passing regulations and issuing court decisions interpreting federal statutes.  The courts get the last word until Congress passes new statues.  I'll go one step further and suggest that this process makes common law countries more flexible and efficient. 

Of course, when we don't like a court decision, then efficiency is called activism.

This is the way I see it. Congress can overrule the Supreme Court, The Supreme Court cannot overrule the Congress
(ok, sometimes it can declare that Congress contradicts itself, namely that two pieces of legislation are in
conflict, but that's closer to proofreading than to rule making). I think the hierarchy is pretty clear here.
The courts in their interpretation are bound to operate within the borders set by the Congress. I think it's
reasonable to call the courts contribution to the law secondary, they can't contribute if they have nothing to
interpret.

[JimIvey]

This is the way I see it. Congress can overrule the Supreme Court, The Supreme Court cannot overrule the Congress

Here's the make-up of US patent law:

• Congress (and the President) pass laws.
• The Supreme Court fills in gaps in those laws, applying the laws to situations not specifically addressed in the law.
• With respect to patents, the Federal Circuit fills in gaps left by the Supreme Court.
• With respect to enforcement, US district courts fill in gaps left by the Federal Circuit.
• With respect to prosecution, the USPTO Board of Patent Appeals and Interferences (BPAI) fills in gaps left by the Federal Circuit.

All of that law is binding on patents (in order of decreasing authority).

You can choose to ignore all authority except for the first, but all that authority applies to you and your patents/applications.

Regards.

[ManOfManyBadIdeas]

All of that law is binding on patents (in order of decreasing authority).

That's basically my reason right there to say that calling the SC contribution secondary
makes sense.