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[khazzah]

While skimming through recent Fed Cir decisions that review BPAI decisions, I ran across something that fits right in to our recent discussion on Predictable Results rationale (that discussion starts here http://www.intelproplaw.com/ip_forum/index.php/topic,14971.msg77799.html#msg77799)

In re Schwemberger (http://www.cafc.uscourts.gov/images/stories/opinions-orders/10-1127.pdf) affirmed a BPAI decision, which in turn affirmed a 103 rejection. I didn't spend too long on the Fed Cir opinion. The more interesting part, to me, was the BPAI's Decision on Rehearing (http://des.uspto.gov/Foia/ReterivePdf?system=BPAI&flNm=fd2009001229-09-18-2009-2).

Interesting because it provides an in depth analysis of the Predictable Results rationale that we just discussed. Specifically, it explains how each element of the Predictable Results rationale (ie, "known technique", "ready for improvement", "predictable results") is applied to the facts of the case.

The one thing I haven't figured out yet is whether or not the rationale requires a POSITA to recognize a benefit of the predictable results. There is talk of a benefit, but that's described as an "additional apparent reason to combine".

[Isaac]

The one thing I haven't figured out yet is whether or not the rationale requires a POSITA to recognize a benefit of the predictable results. There is talk of a benefit, but that's described as an "additional apparent reason to combine".

I don't believe the analysis requires that POSITA must see a benefit.  That is a point of distinction between TSM and some of the alternative analyses described in KSR. 

[ManOfManyBadIdeas]

The one thing I haven't figured out yet is whether or not the rationale requires a POSITA to recognize a benefit of the predictable results. There is talk of a benefit, but that's described as an "additional apparent reason to combine".

I don't believe the analysis requires that POSITA must see a benefit.  That is a point of distinction between TSM and some of the alternative analyses described in KSR. 

If there is a benefit, and a POSITA doesn't recognize it, this predictable results rationale
cannot be used, since there are obviously unpredictable results. I suppose that in some
cases POSITA doesn't have to see a benefit of some feature in the combination, but only when
such feature indeed is useless.

[Isaac]

If there is a benefit, and a POSITA doesn't recognize it, this predictable results rationale
cannot be used, since there are obviously unpredictable results.

I think you're a bit confused here.  Of course the results must be known/predictable, but the examiner does not need to establish that the results are desireable or that the a desire to achieve the result would motivate a PHOSITA to make the invention.

[JimIvey]

I'll see if I can come up with an example to help myself understand this.

I claim a red sheet metal screw.  Suppose there are no red sheet metal screws.  Suppose there's no evidence that any ordinary artisan at the pertinent time had appreciated any reason why red sheet metal screws would be advantageous.

Sheet metal screws are known.  Red paint is known.  It is known by the ordinary artisan that application of red paint to a sheet metal screw in a conventional, known manner would result in a red sheet metal screw.

Hence, red sheet metal screws are obvious.

Is that it?  I think that's right.

I think where examiner's applying the predictable results construct might skimp is on the known, conventional manner of application (combination) and the predictability of the results being known to the ordinary artisan.  At least that's what I'd expect in some of the reject-by-any-means-necessary Office Actions I get.

Regards.

[khazzah]

I claim a red sheet metal screw.  Suppose there are no red sheet metal screws.  Suppose there's no evidence that any ordinary artisan at the pertinent time had appreciated any reason why red sheet metal screws would be advantageous.

Sheet metal screws are known.  Red paint is known.  It is known by the ordinary artisan that application of red paint to a sheet metal screw in a conventional, known manner would result in a red sheet metal screw.

Hence, red sheet metal screws are obvious.

Maybe. But saying combinations of known elements are obvious without providing a benefit or reason to combine them just doesn't seem, well .... fair. To me, that's tantamount to saying that just because a POSITA *could* combine the elements means that he *would* combine the elements.

There are thousands of combinations of types of screws and colors of paint. Out of all those thousands of combinations the inventor chose a particular kind of screw -- sheet metal -- and a particular color -- red. Why is obvious to pick that one? 

Now, if there was no particular reason that the inventor selected that combination, then maybe it's a "mere design choice," and maybe he doesn't deserve a patent.

But if the inventor can show that he had a reason for picking that combination (probably characterized as  a "benefit"), then doesn't he deserve a patent?

[JimIvey]

Maybe. But saying combinations of known elements are obvious without providing a benefit or reason to combine them just doesn't seem, well .... fair. To me, that's tantamount to saying that just because a POSITA *could* combine the elements means that he *would* combine the elements.

How about saying that combinations of known elements in known ways to produce known results are obvious? 

I'm not saying that I agree with it (not saying I don't, either).  I'm not saying I like it, either.  But, if sheet metal screws painted green are known, and the inventor just wants a patent on red because it appears to not yet be patented doesn't generate much sympathy in me.

On the other hand, if it's generally believed that painted sheet metal screws are not as good as unpainted sheet metal screws and the inventor has determined that typical red paint pigments increase metal-to-metal friction, then I think the red-painted sheet metal screws could be non-obvious.  Here, the results (of increased friction for the screw) is not a known result.

Regards.

[ManOfManyBadIdeas]

If there is a benefit, and a POSITA doesn't recognize it, this predictable results rationale
cannot be used, since there are obviously unpredictable results.

I think you're a bit confused here.  Of course the results must be known/predictable, but the examiner does not need to establish that the results are desireable or that the a desire to achieve the result would motivate a PHOSITA to make the invention.

I am not in disagreement with that. I was actually trying to say something to that extent in
the second sentence of my post. Interestingly, this low rejection bar I think cuts both ways,
it should be enough to overcome this type of rejection even if the only unpredictable result
of the combination is undesirable.

EDIT: JimIvey above gives an example of such undesirable, but unpredictable result.

[ManOfManyBadIdeas]

I claim a red sheet metal screw.  Suppose there are no red sheet metal screws.  Suppose there's no evidence that any ordinary artisan at the pertinent time had appreciated any reason why red sheet metal screws would be advantageous.

Sheet metal screws are known.  Red paint is known.  It is known by the ordinary artisan that application of red paint to a sheet metal screw in a conventional, known manner would result in a red sheet metal screw.

Hence, red sheet metal screws are obvious.

Maybe. But saying combinations of known elements are obvious without providing a benefit or reason to combine them just doesn't seem, well .... fair. To me, that's tantamount to saying that just because a POSITA *could* combine the elements means that he *would* combine the elements.

There are thousands of combinations of types of screws and colors of paint. Out of all those thousands of combinations the inventor chose a particular kind of screw -- sheet metal -- and a particular color -- red. Why is obvious to pick that one? 

Now, if there was no particular reason that the inventor selected that combination, then maybe it's a "mere design choice," and maybe he doesn't deserve a patent.

I will comment on the part that I emphasized. It isn't obvious why one would want to paint the screw that particular
color indeed. But if the patent application doesn't help to answer the question "why not other color?", then it's a
predictable result. It's not that the choice to paint it red is obvious, but the application doesn't disclose anything
over what's known/obvious about such combination.

But if the inventor can show that he had a reason for picking that combination (probably characterized as  a "benefit"), then doesn't he deserve a patent?

If the application discloses anything unpredictable about the combination or method of combining, then
I think at least this rationale cannot be used to deny the patent.

EDIT: You have brought up the novelty with relation to this rationale, and thinking of it in retrospect, I think
an interesting way to think of novelty and obviousness is both belonging to the same "difficulty" scale:

Well established --- Prior art --- Novel, but a predictable result --- Novel, but obvious --- Novel, non-obvious (hello invention!)

The bolded predictable result rationale is on the border between novel and prior art, between 112 and 113.

[khazzah]

On the other hand, if it's generally believed that painted sheet metal screws are not as good as unpainted sheet metal screws and the inventor has determined that typical red paint pigments increase metal-to-metal friction, then I think the red-painted sheet metal screws could be non-obvious. 

Here, the results (of increased friction for the screw) is not a known result.

Yeah, your contrasting hypos are definitely along the lines of what I was thinking. That red-paint-for-no-reason is not deserving of a patent, while red-paint-for-a-reason is more deserving.

So how would this particular hypo play out in practice? The Examiner has to allege "predictable results" as part of the Predictable Results rationale. What is the allegedly "predictable result" here?

The Examiner says ... what ... that the predictable result of using a known metal screw in combination with a known red paint is ... what ... a fastener that holds parts together as expected? And the Applicant comes back with "No, while that particular result (parts held together) is expected, I have another result which is not expected: increased friction"

[JimIvey]

So how would this particular hypo play out in practice? The Examiner has to allege "predictable results" as part of the Predictable Results rationale. What is the allegedly "predictable result" here?

Well, to really lay it all out precisely, I'd have to go back to KSR and parse it very carefully.

My intuitive sense is that a patent on a sheet-metal screw in isolation (i.e., not driven into a structure that is subsequently painted) and painted red is a very long shot, even if it provides advantages.  The result of painting a sheet-metal screw red is a red sheet-metal screw, plain and simple.  Screws are known.  Painting things is known.  Red paint is known.  If you want some known thing to be painted red, how to do that is very well known.  So, I'd say the examiner's argument is that the known screw and paint are applied in a completely well known manner to produce the predictable result of a screw with a red paint exterior.

However, I think the way to claim it for use in increasing the hold of the threads of the screw is to claim the method of painting a sheet-metal screw red and then driving the red-painted sheet-metal screw into at least one piece of sheet metal.  It would probably help to recite that it's a method to form a tighter bond between a sheet-metal screw and one or more pieces of sheet metal. 

At that point, you have the disincentive of driving a painted sheet metal screw into sheet metal (because all paints are, in the prior art, believed to reduce friction and increase the likelihood that the screw will fall out) and the unexpected result of increased friction due to the red paint pigments.

I think the odds are much better than claiming a sheet-metal screw painted red in and of itself. 

The examiner might say the same as above and say that driving the screw is well-known.  However, now we have the teaching away and the unexpected results.

Regards.

[JustAnotherExaminer]

The one thing I haven't figured out yet is whether or not the rationale requires a POSITA to recognize a benefit of the predictable results. There is talk of a benefit, but that's described as an "additional apparent reason to combine".

I don't believe the analysis requires that POSITA must see a benefit.  That is a point of distinction between TSM and some of the alternative analyses described in KSR. 

If there is a benefit, and a POSITA doesn't recognize it, this predictable results rationale
cannot be used, since there are obviously unpredictable results. I suppose that in some
cases POSITA doesn't have to see a benefit of some feature in the combination, but only when
such feature indeed is useless.

My response, of course, would be that just because you found a particular unpredictable result, doesn't mean I haven't found a particular predictable result.  Which opens a whole 'nother can of worms.

Lots of times there are multiple results.  A case will come along claiming to do abc because it makes xyz more efficient.  And I'm sitting there thinking, yeah, but it'd be stupid to do it that way, cause now your whole network has a huge security hole.  So there's generally a lot of trade-offs occurring for increasing efficiency/whatever and decreasing cost/complexity/whatever.  How many of those trade-offs need to be predictable to conclude a finding that the results are predictable?

[ManOfManyBadIdeas]

The one thing I haven't figured out yet is whether or not the rationale requires a POSITA to recognize a benefit of the predictable results. There is talk of a benefit, but that's described as an "additional apparent reason to combine".

I don't believe the analysis requires that POSITA must see a benefit.  That is a point of distinction between TSM and some of the alternative analyses described in KSR. 

If there is a benefit, and a POSITA doesn't recognize it, this predictable results rationale
cannot be used, since there are obviously unpredictable results. I suppose that in some
cases POSITA doesn't have to see a benefit of some feature in the combination, but only when
such feature indeed is useless.

My response, of course, would be that just because you found a particular unpredictable result, doesn't mean I haven't found a particular predictable result.  Which opens a whole 'nother can of worms.

If by can of worms you mean having to consider if the predictable results amount to teaching,
suggestion or motivation, then yes, I agree. But at least this particular can of worms, that doesn't
require the examiner to address motivation to combine, would then be closed.

Lots of times there are multiple results.  A case will come along claiming to do abc because it makes xyz more efficient.  And I'm sitting there thinking, yeah, but it'd be stupid to do it that way, cause now your whole network has a huge security hole.  So there's generally a lot of trade-offs occurring for increasing efficiency/whatever and decreasing cost/complexity/whatever.  How many of those trade-offs need to be predictable to conclude a finding that the results are predictable?

I think that to apply predictable results rationale, all of the results have to be predictable. If the
specification discloses *anything* a POSITA wouldn't expect, then one has to consider all of the
factors. I imagine one would need to compare the body of knowledge before and after the disclosure,
and ask a question, would a POSITA be more likely to use the combination after the disclosure?
If the answer is yes, then it's a patent. If it's a qualified yes (under some circumstances) then the
circumstances should be incorporated into the claim as a limitation.

[khazzah]

So how would this particular hypo play out in practice? The Examiner has to allege "predictable results" as part of the Predictable Results rationale. What is the allegedly "predictable result" here?

I'd say the examiner's argument is that the known screw and paint are applied in a completely well known manner to produce the predictable result of "a screw with a red paint exterior".
...
At that point, you have the disincentive of driving a painted sheet metal screw into sheet metal (because all paints are, in the prior art, believed to reduce friction and increase the likelihood that the screw will fall out) and the unexpected result of increased friction due to the red paint pigments.

Interesting. So, as you've noted before, the Examiner doesn't have to allege a "benefit" here, simply the "predictable result" of "parts work together as you'd expect".

So in our hypo, the Examiner has a PF case using the Predictable Rationale, but we can use Unexpected Results as a rebuttal.

[khazzah]

It isn't obvious why one would want to paint the screw that particular color indeed. But if the patent application doesn't help to answer the question "why not other color?", then it's a predictable result. It's not that the choice to paint it red is obvious, but the application doesn't disclose anything over what's known/obvious about such combination.

Ah, an explanation of why the Red-Screw-for-no-reason isn't "deserving" of a patent, in a manner which ties to the KSR language of Predictable Results.

It still seems strange to me to think of "screw with a red paint exterior" as a Result, but it may grow on me.