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[JimIvey]

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

I'm not sure I understand.  The Supreme Court listed "failure of others" as a secondary consideration (thanks, Robert K S), not Congress.  The Supreme Court also laid out the "primary" considerations in determining obviousness.

Until Congress says otherwise, the Supreme Court is authoritative.  Ignore it if you like, but then you'd be ignoring the law.

Regards.

[ManOfManyBadIdeas]

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

I'm not sure I understand.  The Supreme Court listed "failure of others" as a secondary consideration (thanks, Robert K S), not Congress.  The Supreme Court also laid out the "primary" considerations in determining obviousness.

Until Congress says otherwise, the Supreme Court is authoritative.  Ignore it if you like, but then you'd be ignoring the law.

Regards.

 

You are absolutely right, I should have read the Robert K S quote more carefully. I guess I am back
to square one then. I just do not like these tests to be called secondary because in my
opinion they are of higher quality (less subjective) than the standard test. Comparing to
poker it would be like saying "whoever has the highest card wins, but you may also look
at secondary things, like somebody may have a straight flush or something". Maybe the SC
at the time have put it that way because it was mindful of its role and did not want to
appear to rewrite the statute? Just trying to rationalize.

[Isaac]

Maybe the SC at the time have put it that way because it was mindful of its role and did not want to appear to rewrite the statute? Just trying to rationalize.

Or maybe you should just drop the idea that courts play no legitimate role in developing the law. 

35 USC 103 tells us that inventions should not be patented if they are obvious despite being novel under 35 USC 102.  The clear meaning of the statutes is that inventions may be obvious even though nobody has previously made them.

What's also clear is that 35 USC 103 provides little guidance on how to actually determine obviousness.  The SC does not have to pretend not to legislate when Congress has left the details unspoken.

[khazzah]

I don't have the time to read Graham, so I really don't know why the SC chose the word "Secondary".

But I do know this: the Fed Cir has interpreted "secondary considerations" to mean "only needed if the Examiner makes a Prima Facie case of obviousness".

So 2ndary is absolutely a Good Thing. You don't even have to *bother* with 2ndary considerations if you can attack the Examiner's Prima Facie case instead (by showing that the combination Does Not Teach or that the Examiner's rationale for combining is flawed).

If these considerations *weren't* 2ndary, then we'd need to trot out 2ndary considerations (which typically requires declaration evidence) with every response to a 103.

[ManOfManyBadIdeas]

Maybe the SC at the time have put it that way because it was mindful of its role and did not want to appear to rewrite the statute? Just trying to rationalize.

Or maybe you should just drop the idea that courts play no legitimate role in developing the law.

I did!

[ManOfManyBadIdeas]

I don't have the time to read Graham, so I really don't know why the SC chose the word "Secondary".

But I do know this: the Fed Cir has interpreted "secondary considerations" to mean "only needed if the Examiner makes a Prima Facie case of obviousness".

So 2ndary is absolutely a Good Thing. You don't even have to *bother* with 2ndary considerations if you can attack the Examiner's Prima Facie case instead (by showing that the combination Does Not Teach or that the Examiner's rationale for combining is flawed).

If these considerations *weren't* 2ndary, then we'd need to trot out 2ndary considerations (which typically requires declaration evidence) with every response to a 103.

Thank you! I took the liberty to increase the font size of the post, because it fully
resolves the question in my opinion. I sort of stumbled one step in this direction in
the second post but then went 5 steps in a different direction

[Isaac]

I agree, and apparently there are many judges, too, who consider so-called "secondary" evidence very important and having equal, if not more bearing on overall persuasiveness of argument against obviousness rejections.  IMO, a good showing of secondary evidence is rock solid evidence against a prima facia case of obviousness, yet it seems many inventors only bust out secondary evidence (SE) when appealing, treating SE as a last-ditch effort.

There is good reason for this.  For one thing, much of the secondary evidence does not even exist at the time of filing.  You can fill your application with assertions of secondary evidence, but most of the stuff you need to prove market success, for example, is simply non-existence at the time an invention is ready for patenting.

Further, there is plenty of case law suggesting that secondary considerations simply won't overcome a strong prima facie case of obviousness.   See Sundance v. DeMonte Fabricating for a recent example.   Really about the only legal hurdle an examiner faces in electing not to give determining weight to your secondary condititons evidence is that he cannot simply ignore your submission.

Also the evidence for seconday considerations needs to be strongly tied to the particular issue in dispute during prosecution, and you won't even know what that is prior to  prosecution.  Evidence that does not form the proper 'nexus' with a disputed issue is wothrless.  Only by luck would pre filing evidence hit the mark.

Generally secondary evidence is diffiult and expensive to collect and probably won't win your case. Small wonder that other things are tried first.

[Robert K S]

It should be nigh impossible to overcome a strong prima facie case with evidence of secondary considerations.  (When I say "strong prima facie case", I mean a very well-reasoned 103 that has absolutely no evidentiary gaps, does not take judicial notice, does not resort to unsupported assertions of inherency or "common knowledge", etc.)  If someone else really invented before you (and disclosed all save some obvious step), it ought to be of no help to you that you've sold lots and he hasn't.  See the Dippin' Dots patent prosecution history for what is probably a good use of the commercial success secondary consideration to allow a patent, where the prima facie case was not actually fully met.  (I think the patent was eventually invalidated, though.)

Obviously I didn't review the whole evidentiary record, but on cursory glance Sundance v. DeMonte Fabricating doesn't seem like a well-decided case.  Patent A teaches X, Patent B teaches Y, it would've been obvious to combine X and Y to get Z.  Without knowing more, seems to me like a textbook case of hindsight-based conclusory reasoning: if it would've been so obvious, why didn't anyone do it, and reap the commercial benefits?  If there was more to the reasoning, it would have been nice if the opinion had included it.

Secondary considerations are probably best used as a way of swaying the examiner over to your side on a case that, if pressed all the way through the appeals process, in the end could not have been a win for the examiner.  In that sense, they are a little like the "icing on the cake".

[ManOfManyBadIdeas]

It should be nigh impossible to overcome a strong prima facie case with evidence of secondary considerations.

I agree with that, in theory. But, as Einstein (or Yogi Berra?) said, "In theory there is no difference between theory and practice.
In practice there is."  The standard test of obviousness is hard to make objective, there is always a subjective element to
it. I think in practice it has an element of contest of wit and eloquence, which is the lawyer's expertise. Which means a
good lawyer is capable of patenting stuff that ideally shouldn't be. That's why I think a confident lawyer would consider the
secondary evidence, well, secondary. It also means that a pro se inventor like myself faced with an examiner who is more
experienced in such matters, has a chance to lose cases that are solid patents, simply due to inexperience, even if the patent
is properly built (right claims, good spec). So if in those cases such evidence may very well be "secondary" to a lawyer, as he/she
will tear apart the examiners objections and go have a lunch, a pro se inventor will go, "uh, umm, lookie here, nobody thought
cold fusion was possible and I did it! Can I have a patent? Pretty please?". So it really depends on the point of view. It seems
that the courts allow for both possibilities, the lawyers can go after prima facie, and bring the secondary evidence when it comes
to that. But nothing prevents somebody from laying down everything in front of the examiner and hope he/she sees the
light.

EDIT: I should add that I am guessing that in the majority of cases that pass through the USPTO and the lawyers hands the
secondary evidence is not available/not very persuasive. That also affects the lawyer's point of view I think...

[dbmax]

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.

Here's a current hypothetical:

Examiner cites references A and B in 103(a) rejection of claim X in an unrelated field where no motivation should exist.

Reference C from the IDS  cites references to A and B, but discloses an alternative to X, while failing to disclose X.

Is the  failure of C to connect A and B and to disclose X, given C's ostensible motivation and access to the same prior art, in any way helpful in arguing non-obviousness of X?

Or is it more harmful that C establishes a motivation to connect where none existed before?

(eg. Given a pie tin and an injection molding machine he is motivated to invent a batting helmet rather than a frisbee)

Has anyone used this argument?

Regards,

db