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[G8ZoST]

Background sections have shrunk in light of KSR, and remarks regarding motivation in all but the most peripheral

So am I correct in assuming that, in order not to give the examiner ammunition for an obviousness rejection, a common strategy now is to disclose the invention 'naked', with as little context as possible, and that the examiner (or other readers) now basically have to piece together what the advantages of the invention are or what problems it solves?

If so, is there then a danger of running afoul of the 'usefulness' requirement, i.e. if the examiner can't figure out what the heck the disclosed invention is good for, then he may just consider it not useful?

(I'm new to this entire patenting business, and the changes in applications over the past decade seem to have been substantial. So I'm just trying to get to grips with some of the current fundamentals. Reading patent blogs helps, but then some question, such as the above, are never directly addressed there. Plus the two patent attorneys I've worked with so far seem to have quite different approaches in a lot of things. Any thoughts on this are therefore very welcome!)

[JimIvey]

Background sections have shrunk in light of KSR, and remarks regarding motivation in all but the most peripheral

I was taught to write minimal background sections as far back as 1991.  It's not a new thing (or shouldn't be).

So am I correct in assuming that, in order not to give the examiner ammunition for an obviousness rejection, a common strategy now is to disclose the invention 'naked', with as little context as possible, and that the examiner (or other readers) now basically have to piece together what the advantages of the invention are or what problems it solves?

Quite the contrary.  Your own specification cannot be used to show your invention is obvious.  However, your specification can be used to show that subsequent inventions by your client's competitors are obvious.

Moreover, the purpose (and requirement) of the specification is that it teach.  I see far too many patents and applications in which the specification is so utterly obfuscated (presumably in an attempt to avoid the rare importation of spec limitations into the claims) that I doubt the spec teaches much, if anything.

If the spec has a limitation or two that sneak into your claims, your claims are narrower than you would have liked.  If the spec fails to teach, you have no valid claims.  Which is worse?  On which side should you err?

If so, is there then a danger of running afoul of the 'usefulness' requirement, i.e. if the examiner can't figure out what the heck the disclosed invention is good for, then he may just consider it not useful?

Utility is much easier than that to meet.  If the application is so obscure as to fail to show utility, I think enablement is a distant dream.

Regards.

[G8ZoST]

Thanks about the clarification regaring the usefulness threshold.

Regarding enablement - the spec can teach how to make something, but without the purpose of that mechanism being clear.

And if I have parts that e.g. disclose (in the description) that "a combination of A and B was chosen over the common combination of D and C to overcome the problems that the latter combination has in regard to..." or "the combination of A and B was chosen because of the observed decreas in operational errors over the established combination of C and D", then why can't the examiner use these as a part of an obviousness rejection in the style of "it would have been obvious to a POSITA to combine known part a A and known part B to obtain a decrease in operational errors"?

[Isaac]

So am I correct in assuming that, in order not to give the examiner ammunition for an obviousness rejection, a common strategy now is to disclose the invention 'naked', with as little context as possible, and that the examiner (or other readers) now basically have to piece together what the advantages of the invention are or what problems it solves?

I don't think that is a fair summary.  There is no goal to disclose as little as possible.  It is true that people do avoid putting some material in the background section of the applications, in some cases electing to put the material elsewhere.   I cannot think of any reason to identify a problem to be solved in the background of a patent application.  That information is better placed in the detailed description as an aspect of embodiments of the invention.

If so, is there then a danger of running afoul of the 'usefulness' requirement, i.e. if the examiner can't figure out what the heck the disclosed invention is good for, then he may just consider it not useful?

I don't believe so.  For most inventions, it is trivially easy to meet the usefulness requirement of US 101. The usefulness requirement does not require that the invention be better than the prior art or that the invention solve an identified problem, novel or otherwise.  If the invention works and accomplishes a useful goal, even a goal accomplished in the prior art, then the usefulness requirement of US 101 is met.

For example, if a message delivery system gets a message from point A to point B, then the system is useful.  Even if the goal of the invention is to avoid congestion, congestion avoidance does not have to be pointed out in order to meet 101.

Making it difficult for the examiner to understand the invnetion can result in other problems.

(I'm new to this entire patenting business, and the changes in applications over the past decade seem to have been substantial.

You've asked a fairly sophisticated question.  There is a reasonably recent usefulness discussion dealing with red screws in this forum.


Jim says that your specification cannot be used to show your inveniton is obvious.  Either he's omitted a few qualifying words, or he has made a statement with which I disagree.  It is only the applicant's discussion of his own work in a patent application that cannot be used to show obviousness.  Things in the specification related to other things can be used to show obviousness.

[Isaac]

And if I have parts that e.g. disclose (in the description) that "a combination of A and B was chosen over the common combination of D and C to overcome the problems that the latter combination has in regard to... or "the combination of A and B was chosen because of the observed decreas in operational errors over the established combination of C and D", then why can't the examiner use these as a part of an obviousness rejection in the style of "it would have been obvious to a POSITA to combine known part a A and known part B to obtain a decrease in operational errors"?

An examiner might attempt to use the information in that way, but it would be improper to do so without showing that your observation was known or at least predictable.  Identifying a non obvious problem is inventive activity.

Also, were using C&D known or were they just things you tried and rejected?   Perhaps even C&D are unknown and non-obvious.

Of course a sophisticated examiner would not make it so apparent that he was drawing on your specification.  But he might well start there to get his ideas.

[still_learnin]

Moreover, the purpose (and requirement) of the specification is that it teach.  I see far too many patents and applications in which the specification is so utterly obfuscated (presumably in an attempt to avoid the rare importation of spec limitations into the claims) that I doubt the spec teaches much, if anything.

I have a different take on this. I practice in the computer and electrical area. I find that many specifications disclose a lot, but almost all of what is disclosed is already known and is at most tangentially related to the novelty. Instead, I find tidbits about the novelty sprinkled here and there.

If the spec has a limitation or two that sneak into your claims, your claims are narrower than you would have liked.  If the spec fails to teach, you have no valid claims.  Which is worse?  On which side should you err?

That's a rhetorical question, right? You err on the side of enabling, even if that results in the the extra information being imported into the claims.

My point is that some practitioners spend many words and pages on enabling the wrong thing. The claims should focus on the novelty, and the spec should enable the claims. If the invention is a fuel filter, the spec doesn't need to explain how to assemble a car, or explain how the car as a whole operates.

[JimIvey]

I have a different take on this. I practice in the computer and electrical area. I find that many specifications disclose a lot, but almost all of what is disclosed is already known and is at most tangentially related to the novelty. Instead, I find tidbits about the novelty sprinkled here and there.
...
My point is that some practitioners spend many words and pages on enabling the wrong thing.

I practice in the same areas and agree wholeheartedly!  In some applications, you can almost hear the author say "Hey!  I understand this part!"  Unfortunately, that part isn't even remotely new.  Then, the part that seems important sounds a bit like "and then we pull a rabbit out of this hat."

Years ago, I heard a very experience practitioner say that software patents are easy and every practitioner in "the [Silicon] Valley" writes them.  I countered that such doesn't mean that every practitioner in the Valley ought to write them.

If the spec has a limitation or two that sneak into your claims, your claims are narrower than you would have liked.  If the spec fails to teach, you have no valid claims.  Which is worse?  On which side should you err?

That's a rhetorical question, right? You err on the side of enabling, even if that results in the the extra information being imported into the claims.

It may or may not be a rhetorical question.

I agree here as well.  The OP sounded as if it would be great to write the entire spec as obfuscated as possible.  I've had the misfortune to have to read specs like that, and I wanted to nip that in the bud of a new practitioner.

I've railed in here about specifications in which nearly every sentence includes "may or may not".  See my sentence above?  What did it teach you?  Can any sentence teach anything when it qualifies every verb with "may or may not"?  I think such a sentence may or may not teach something.

I think it's reasonably arguable that a sentence that includes "may or may not" as qualifying the main verb teaches absolutely nothing.  There are patents out there in which, if you remove every sentence that teaches nothing by inclusion of that phrase, you're left with about 3-5 sentences in the specification.  Ironically, some of those sentences often describe "the invention" directly, so the specification still may unnecessarily narrow the claims.

My specifications have been described by some as "narrow" (including someone in here long ago).  I don't have a problem with that as long as my claims are broad.  Pretty much all of the "narrowness" of my specs comes down to "may" vs. "can" and mention of "the present invention" -- both of which have been discussed at length in these forums.

Regards.

[blakesq]

Jim,

Are you sure about your below statement?  The background section is part of the spec, and I have had rejections (I believe 103, but they may have been 102) made by the examiner based on the background section.  Or are you distinguishing the background from the rest of the spec?

snip:

Quite the contrary.  Your own specification cannot be used to show your invention is obvious.  However, your specification can be used to show that subsequent inventions by your client's competitors are obvious.

[khazzah]

And if I have parts that e.g. disclose (in the description) that "a combination of A and B was chosen over the common combination of D and C to overcome the problems that the latter combination has in regard to... or "the combination of A and B was chosen because of the observed decreas in operational errors over the established combination of C and D", then why can't the examiner use these as a part of an obviousness rejection in the style of "it would have been obvious to a POSITA to combine known part a A and known part B to obtain a decrease in operational errors"?

An examiner might attempt to use the information in that way, but it would be improper to do so without showing that your observation was known or at least predictable.  Identifying a non obvious problem is inventive activity.

Of course a sophisticated examiner would not make it so apparent that he was drawing on your specification.  But he might well start there to get his ideas.

Therein lies the problem. When your spec contain statements about reasons for combining, it's possible for the Examiner to read your spec and incorporate this into his thinking process. The law does prohibit this behavior:

It is impermissible to use the claimed invention as an instruction manual or "template" to piece together the teachings of the prior art so that the claimed invention is rendered obvious.
In re Fritch (Fed. Cir. 1992)

However, unless the Examiner literally points to statements in your spec when explaining his rationale for combining, how are you even going to know that's what he did. The Examiner may not himself realize that these statements in your spec are coloring his thinking.

[Isaac]

However, unless the Examiner literally points to statements in your spec when explaining his rationale for combining, how are you even going to know that's what he did. The Examiner may not himself realize that these statements in your spec are coloring his thinking.

It is difficult, but applicants and the Board do manage to catch examiners at it on occasion.

I don't see how an examiner can search and apply art to your claims without using your application as a kind of template.  We cannot have an examiner typing random search terms into workstations for an infinite amount of time (no disparagement of examiners intended).  The examiner must instead try to find/construct the claimed invention from the prior art and then justify what he's done.

Prior to KSR the justification part was included techniques for avoiding impermissible hindsight.  Under KSR, the finder of fact is tasked with being aware of the dangers of hindsight and to avoid doing anything impermissible using cosmic awareness.

[JimIvey]

Are you sure about your below statement?  The background section is part of the spec, and I have had rejections (I believe 103, but they may have been 102) made by the examiner based on the background section.  Or are you distinguishing the background from the rest of the spec?

I suppose you're right.  Generally (and in my own informal parlance), I don't consider the background section to be part of the specification. 

And, technically speaking, you can do really dumb things in the specification (outside of the background) to help show that your invention is obvious -- things like making unwise admissions as to prior art in portions of the spec outside the background section.  That's probably the sort of thing Isaac was referring to.

My point is that your own specification -- aside from admitted prior art -- can't be used to provide any teaching, suggestion, or motivation for claimed elements or their combination.  My point was to address this point made by the OP:

So am I correct in assuming that, in order not to give the examiner ammunition for an obviousness rejection, a common strategy now is to disclose the invention 'naked', with as little context as possible, and that the examiner (or other readers) now basically have to piece together what the advantages of the invention are or what problems it solves?

Describing in the spec that the disclosed embodiment(s) solve(s) this or that problem shouldn't make showing obviousness of the claimed invention any easier.

Regards.

[G8ZoST]

Wew. Thanks for the answers - quite a few aspects in there that I'll have to ponder some more.

My main question is answered, i.e. that usefulness is not a high bar and that it especially does not require an improvement over the prior art, or that an invention need to be particularly good at what it does.

And just to clarify:

I did not want to suggest that I would consider writing a spec that actively tries to obfoscate what the invention is. Of course the spec (in my cases in the field of software) has to be enabling, and I take great care to ensure this. An average programmer, given the spec, should be able to implement the invention without undue experimentation.

I'm just not sure about putting in motivation, i.e. explaining why something is done as it is.
While the examiner may not be allowed to use this information against you, I'm sure that (if he takes the time to read the spec) it influences how he thinks about the obviousness of the disclosed matter. We're all human, and to avoid hindsight may be a legal requirement, but it is not something we're particularly good at, no matter how hard we try.

[khazzah]

I'm just not sure about putting in motivation, i.e. explaining why something is done as it is.

I don't generally discuss reasons for including particular features and/or reasons for implementing something in a specific way. For the reasons discussed so far in this thread. I also leave out stuff the inventor provides that I consider to be "marketing material."

But there are others who believe that you should explain to the Examiner why your invention is deserving of a patent. One of my blog posts points to some of these other viewpoints: http://allthingspros.blogspot.com/2010/05/unconventional-views-on-what-to-include.html

[JimIvey]

I'm just not sure about putting in motivation, i.e. explaining why something is done as it is.

To show obviousness, the examiner must show that the motivation or whatever of the combination was obvious to the ordinary artisan no later than the filing of your application and cannot use your application to show that.  The examiner will have to find another source for that.

Describing motivation can be helpful.  Suppose using a specific type of database in an embedded system provides an advantage that's counter-intuitive and that isn't provided by other types of databases.  Explaining that can provide a good foundation for countering an obviousness rejection based on the notion that the various types of databases are all interchangeable with one another.

Regards.

[G8ZoST]

I think I finally got the difference between an applicant's motivation and a motivation felt by POSITAs, i.e. a "long-felt need", thanks to a  post  today in "All things pros":

"Statements about what the inventors understood as deficiencies in the prior art can't be used as a motivation to combine. However, statements about long felt need must be about what POSITAs perceive as a deficiency, in order to be effective. In re Gershon, 372 F.2d 535, 538 (CCPA 1967) (in order to show a long-felt but unmet need for the claimed invention, the objective evidence must show that the need was a persistent one that was recognized by those of ordinary skill in the art). "

i.e. your own motivation is part of the inventive steps and does not hinder non-obviousness, whereas a generally felt need does.

--> Don't include any motivation of others (I would assume that this goes for the background section as well as the description), but you may include your own motivation that was not felt by POSITAs at the time of filing. (I'd still think being careful here is a good idea since the examiner may unintentionally use such motivation in his judgement of obviousness.)