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[Isaac]

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

Just to be clear, a long felt need by the industry accompanied by a failure of everyone in the industry other than you to solve the underlying problem is an indicator of nonobviousness.

[G8ZoST]

Back to the drawing board, then:

- If there is a perceived lack/problem in the prior art, which the applicant discloses, then this can be cited by the examiner as motivation to combine.

- At the same time, while there may have been a motivation to combine, the fact that nobody tried the precise combination disclosed in the application (which is, presumably, novel) despite the perceived lack/problem shows that this is not an obvious combination to try.

[JimIvey]

- If there is a perceived lack/problem in the prior art, which the applicant discloses, then this can be cited by the examiner as motivation to combine.

No.  The examiner cannot cite your own specification against you (aside from admitted prior art).  Your specification does not pre-date your specification.

Also note that citing a problem in the prior art does not, in and of itself, suggest a solution. 

Let me try an example.  If I say that wood screws don't work well in plastic lumber (have a tendency to soften the plastic when driven too fast and pull out), what combination have I suggested?  I believe special wood screws for plastic lumber are coated with teflon.  Was that suggested by the problem?  I would have thought of slow driving screws with bigger threads (like those used in particle board). 

You can debate about whether each solution is obvious, but stating that the plastic softens around fast-driven screws -- without more -- doesn't suggest a solution.  More must be shown to establish what solutions to that problem would have been obvious to the ordinary artisan.

- At the same time, while there may have been a motivation to combine, the fact that nobody tried the precise combination disclosed in the application (which is, presumably, novel) despite the perceived lack/problem shows that this is not an obvious combination to try.

No.  If someone had actually tried it, anticipation (Section 102) would be adequate.  Obviousness is exactly for things that would have been obvious to try even if no one actually did.

Long-felt need goes further.  Suppose you can document that, for decades, people said don't use plastic lumber because wood screws pull right out and no one knows what to do about it.  Suppose you can document that screw manufacturers and plastic lumber manufacturers have spent substantial sums on research of the problem without success.  Such can be used as evidence to show that any successful solution to the problem is not obvious.

Long-felt need is just one of many ways to show non-obviousness.  It doesn't come into play in every case.

Regards.

[khazzah]

- If there is a perceived lack/problem in the prior art, which the applicant discloses, then this can be cited by the examiner as motivation to combine.

No.  The examiner cannot cite your own specification against you (aside from admitted prior art). 

Agreed. But note that Applicant's Admitted Prior Art (AAPA) is not strictly limited to statements in the background or stuff literally labeled "prior art". If you make a statement in your detailed description that says "conventional solutions have tried for years to solve the problem of how to get wood screws to work in plastic" then you have admitted that this particular problem was known, not simply by you, but by POSITAs. Your choice of words has turned a statement in your spec into AAPA, even though such statements are not generally APAA.

I believe special wood screws for plastic lumber are coated with teflon.  Was that suggested by the problem?  I would have thought of slow driving screws with bigger threads (like those used in particle board). 

The type of admitted problem I refer to above may or may not be enough to provide a rationale for combining.

I agree that in Jim's example, the problem does not suggest the solution. In the case I blogged about and OP referred to mid-thread, the admitted problem ("conventional two-piece game calls are easy to lose") comes closer to suggesting the solution ("a one-piece game call"). Some of the comments to my blog post point out that framing the problem is important, ie, you want to do it in a way that does not give the Examiner a roadmap to an obviousness analysis.

Long-felt need is just one of many ways to show non-obviousness.  It doesn't come into play in every case.

I don't have stats, but I'm comfortable saying that it comes into play in a very small percentage of cases.

Probably because declaration evidence -- which is what you need for secondary considerations such as long felt need -- is expensive and subject to scrutiny in litigation. As I believe we discussed on this very board. Also, I think many practitioners are unfamiliar with secondary considerations, and with declaration evidence, and are thus leery (maybe even "afraid") of venturing into this uncharted territory.

[JimIvey]

I agree that in Jim's example, the problem does not suggest the solution. In the case I blogged about and OP referred to mid-thread, the admitted problem ("conventional two-piece game calls are easy to lose") comes closer to suggesting the solution ("a one-piece game call"). Some of the comments to my blog post point out that framing the problem is important, ie, you want to do it in a way that does not give the Examiner a roadmap to an obviousness analysis.

Karen's point is really, really important.  Background sections (and yes, other parts of the application can be admitted prior art) all too often lead the reader right up to the solution of the invention.

To carry forward my prior example, consider that the background section also stated that teflon coatings on metal are used to reduce friction but no one has ever thought to put such a coating on a wood screw.

One of my rules of thumb is that the solution of the invention you're going to try to cover shouldn't be guessable from the background section.  In the above example, you can almost hear the reader saying, "Let me guess ... you're going to coat the screws with teflon so the plastic lumber doesn't soften."  If someone not particularly skilled in the art can read your background section and guess your solution, you're going to have obviousness problems.

For this sort of invention in which a solution in one field is employed in a non-analogous (or at least not directly related) situation, I don't discuss the solution in the background section.  And, when I do discuss it, I make it clear that the solution is only used in different situations and try to explain how conventional thinking about the instant problem makes adaptation of the solution in a different situation counter-intuitive.

Let me try to illustrate in the context of my example....

The raison-d'etre of screws is that they are to fasten, to hold.  Lubricating a screw with a teflon coating is counter to the very reason for being of screws, reducing their ability to hold and fasten.  However, when driven into plastic lumber, the lubricant actually increases holding friction.  In particular, reducing the friction produced by driving the screw into the plastic lumber causes the plastic lumber to remain hard and retain its shape, thereby resulting in significantly greater surface contact area between the screw and the plastic lumber.  Thus, the lubricant is used in this context to increase, rather than reduce, holding friction between the fastener and the fastened material.

I hope that illustrates my point.

Regards.

[G8ZoST]

One mor attempt to summarize, maybe I've got it now:

- Admitted prior art can occur anywhere in the spec. Statements in the background section are taken to be APA, while statements in the description can be APA depending on the wording.

- A problem stated in the description that is not explicitly claimed to have been known in the prior art is your own motivation, and can not be cited as motivation to try in an obviousness argument.

- A problem known in the prior art can be cited as motivation to try in an obviousness agrument.

- Motivation does not mean that specific solution offered would have been obvious to try.

- A 'long felt need' is a known problem in the prior art + a history of unsuccessful attempts to solve the problem and counts as a factor against obviousness.

[Isaac]

One of my rules of thumb is that the solution of the invention you're going to try to cover shouldn't be guessable from the background section.  In the above example, you can almost hear the reader saying, "Let me guess ... you're going to coat the screws with teflon so the plastic lumber doesn't soften."  If someone not particularly skilled in the art can read your background section and guess your solution, you're going to have obviousness problems.

From a practical standpoint, I don't see any reason to argue with this.  Jim is completely correct about the use an examiner will make of the background.

But from a legal standpoint, the examiner's use of the background is not justifiable by anything other than tradition.  The background section can rightly include anything that will help understand the invention including some things that are the inventor's own work.  There is no guidance in the MPEP or the PTO rules that says that the background section is admitted prior art.  In fact, the MPEP says that the background should contain prior art and other stuff.

From MPEP 608.01(c)  (emphasis added)

http://www.uspto.gov/web/offices/pac/mpep/documents/0600_608_01_c.htm

"A paragraph(s) describing to the extent practical the state of the prior art or other information disclosed known to the applicant, including references to specific prior art or other information where appropriate. Where applicable, the problems involved in the prior art or other information disclosed which are solved by the applicant's invention should be indicated."

In fact, the examiner's presumption that the background is prior art is treated as a rebuttable presumtion in the patent office.  All that should be necessary to overcome the presumption is a declaration from the inventor that the disclosed information is the inventor's own work.  You don't want to get in that position, but if you do, don't just cave.

[khazzah]

Good summary. I've made a few corrections/clarifications.

One mor attempt to summarize, maybe I've got it now:

- Admitted prior art can occur anywhere in the spec. Statements in the background section are taken presumed to be APA, while statements in the description can be APA depending on the wording.

- A problem stated in the description that is not explicitly claimed to have been known in the prior art is your own motivation, and can not be cited as motivation to try in an obviousness argument.

- A problem known in the prior art can be cited as motivation to try in an obviousness agrument.

- Motivation does not mean that specific solution offered would have been obvious to try.

- A 'long felt need' is a known problem in the prior art + a history of unsuccessful attempts to solve the problem and counts as a factor against obviousness. Long felt need must be presented as evidence, not simply attorney argument.

- Motivation does not mean that specific solution offered would have been obvious to try.

Correct.

Obviousness is a legal conclusion. A prima facie case for obviousness requires a showing that all the claimed elements were taught by the combination of references *and* a rationale for combining the references. An Applicant can attack the PF case as being deficient. Or if the Examiner did present a PF case, the Applicant can rebut with secondary considerations.