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[fb]

I'm trying to understand the difference between Long Felt Need (which if you have it, seems to rebuff obviousness), and Market Demand (which if you have it, seems to imply obviousness). My learning of Demand comes from passages such as this:

"When there is a design need or market pressure to solve a problem, and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp."

But the "design need or market pressure" part seems to be the same thing as Long Felt Need.

What is the difference?

[khazzah]

What is the difference [between Market Demand and Long Felt Need]?

You hinted at it yourself: the first is part of a prima facie case of obviousness and the second is an indicator which can be used to rebut a prima facie case of obviousness.

To be more specific, the Examiner can make a Prima Facie case by a) finding all the elements in the prior art and b) showing why market pressures would lead to your combination. The "market pressures" part is usually something like "combination makes the device stronger/faster/cheaper," since it's presumed consumers want these advantages.

Then you can rebut this prima facie case of obviousness by submitting *evidence* that your invention has a) solved a problem where others have b) tried and c) failed. (That's Long Felt Need.)

Then the fact finder (Examiner, Board of Appeals, or court) weighs the Examiner's arguments against your arguments and decides who is more persuasive.

[fb]

I see. Market pressure is a constant, but long felt need requires someone to have tried and failed. If nobody has tried and failed, then there is no long felt need, even though there is still market pressure.

[khazzah]

If nobody has tried and failed, then there is no long felt need

Yep. That's part of the definition of Long Felt Need.

Note that Long Felt Need is but one market-related "secondary consideration" which is recognized as an indicator of non-obviousness.

Another that comes to mind is Commercial Success, which can be paraphrased as "my product did markedly better in the marketplace than its competition because of the feature claimed in my patent application (in prosecution) or issued patent (in litigation)."

[OMG IP]

also, as a general opinion, if you're going to stick to your guns and argue secondary considerations is the reason for patentability, you might as well start researching "appeal brief"...

[NJ Patent1]

I have to respectfully "dissent in part" with khazzah.  "Failure of others" is a separate consideration, among the non-exaustive list of secondary considerations.  "Long felt need" is a "cry in the wilderness" from the art or market for a solution to some vexing problem, however you have characterized it.  But I agree with khazaah that market pressure to look for a solution to a particular vexing problem, to embark on a research program, is not the same as motivation "to do what Applicant has done".  How "predictable" is the art we are talking about?  This can be an important consideration in separating market pressure to combine known elements from pressure to solve a problem. 

 I have to agree with OMG, if you are hanging your hat on secondary considerations, you are headed to the Board, and maybe the CAFC.  Choose your secondary consideration(s) wisely, in my experience it is a tough roe to hoe.  But if it is all you have...

[fb]

I'm just getting the ducks lined up, to add to the primary non-obvious considerations. The invention is similar in situation to yellow sticky-notes, which according to obviousness rules, should have never been patented:

People have been using paper on their desks for hundreds of years. People have been using scotch tape on their desks for many (100?) years. And people have been applying the scotch tape to the paper (to hold it to things on the desk) for many (100?) years. Thus it is incredibly obvious to any human with no skill in any art to include the adhesive on the paper.

So, somebody is beating the primary obviousness considerations.

[khazzah]

I'm just getting the ducks lined up, to add to the primary non-obvious considerations. The invention is similar in situation to yellow sticky-notes, which according to obviousness rules, should have never been patented ... So, somebody is beating the primary obviousness considerations.

Are you implying that they are doing so with secondary considerations? I wouldn't assume so. In my experience, presenting evidence of secondary considerations is unusual.

[fb]

Yes I was, because like my situation, the two components (paper and adhesive tape) could not be more obvious. They are currently used together, by everyone with a desk, and they are even touching already (tape on the paper). It can't get more obvious than having been already used for 100 years by everyone with a desk. The only difference is that their invention saves you the step of placing the tape on the paper yourself. So it had to be secondary considerations, such as: After 100 years, nobody had ever thought of placing the adhesive on the paper. And of course, being 3M, they were able to market it successfully.

[khazzah]

It can't get more obvious than having been already used for 100 years by everyone with a desk. The only difference is that their invention saves you the step of placing the tape on the paper yourself. So it had to be secondary considerations, such as: After 100 years, nobody had ever thought of placing the adhesive on the paper. And of course, being 3M, they were able to market it successfully.

Hmm. Well, in the specific type of case you posit -- components that have literally been around for 100 years and a strong motivation to combine -- maybe you're right. I dunno.

I just know that, in general, evidence of secondary considerations is rare. In fact, I just found a number for how rare: research by Hal Wegner (well known patent commentator) shows that as of Jan. 11, less than 10% of cases that went to the BPAI included secondary considerations evidence.

Now, applications that go to the BPAI are not necessarily a good substitute for all applications -- it stands to reason that cases that go to the BPAI are considered valuable by their owners and are reasonably strong. So it's possible that this statistic tells us nothing about the bigger set of applications that become issued patents. (I think that's the data set you're talking about).

OTOH, my experience and that of my colleagues (local and virtual) is that Examiners are rarely persuaded by secondary considerations, in which case these cases woudl be the very ones that went to the BPAI.

If you spend much time wondering why the most-obvious-patent-of-the-week was issued and yours wasn't, you'll drive yourself crazy :-)

[NJ Patent1]

Khazzah: Thanks for the interesting statistic from a reliable source.  The number may be low because the 2ndary considerations are just not there (e.g. no sales), or because they are in the nature of a “scale-tipper” or “tie breaker” and aren't needed unless obviousness is otherwise too close to call. 

I too have a case, now on its 2nd RCE, in which I’m trying to use commercial success and acceptance in the relevant art to "nudge" the Examiner.  This is only the second time in 14 years that I’ve invoked 2ndaries.  Hardly a statistically significant datapoint, but it fits the pattern. Being as objective as I can, the evidence is really pretty good.  But the Examiner just yawns and I’m on my way to the BPAI.  CU there BF!

[Oh, Crud]

Yes I was, because like my situation, the two components (paper and adhesive tape) could not be more obvious. They are currently used together, by everyone with a desk, and they are even touching already (tape on the paper). It can't get more obvious than having been already used for 100 years by everyone with a desk. The only difference is that their invention saves you the step of placing the tape on the paper yourself. So it had to be secondary considerations, such as: After 100 years, nobody had ever thought of placing the adhesive on the paper. And of course, being 3M, they were able to market it successfully.

Hmm.  Have to argue that this example (postit notes) is maybe not such a great example of a case of drop-dead-obvious-must-have-been-2°-considerations.

The sticky note was more than just tape adhesive on paper.  If that's all it was, it wouldn't function because the user could not readily have released a top sheet from its next down neighbor.  "Just tape" on the back of the sheet would have torn the paper of the next sheet down, the same way routine adhesive tapes tore an attached paper when one tried to remove it.

I haven't read the patent, but I'd bet (someone else's) big bucks that it had more to it than tape on the back of paper, like claiming easily removable partially adhesive papers, or repositionable adhesive papers, etc.

Just sayin'.

[fb]

Yes but it is incredibly obvious, to any human who rips even one paper, that a less-sticky adhesive is needed. Incredibly obvious. And guess what: If it does not stick enough, you need a stronger adhesive.

To me, this is what the Office has boiled obviousness down to: The assumption that all humans have the same ability to see a situation and apply an "obvious" fix to it. Of course in reality, the range of this ability in people goes from zero to infinity.

[Oh, Crud]

To me, this is what the Office has boiled obviousness down to: The assumption that all humans have the same ability to see a situation and apply an "obvious" fix to it. Of course in reality, the range of this ability in people goes from zero to infinity.

To answer your post in reverse order:  I'm a frequent complainer of the way the Office treats obviousness, so yer preachin' to the choir here.

Yes but it is incredibly obvious, to any human who rips even one paper, that a less-sticky adhesive is needed. Incredibly obvious. And guess what: If it does not stick enough, you need a stronger adhesive.

Turns out according to lore that the adhesive papers were actually protected by USP 3691140 to "ACRYLATE COPOLYMER MICROSPHERES" and USP 3857731 to "ACRYLATE MICROSPHERE-SURFACED SHEET MATERIAL" (claim 1 of each of which, respectively, posted below).  Rather than being patented as not too sticky, sticky paper. 

Sometimes the non-obviousness of a thing is in how it gets done rather than what it is. 


1. Infusible, non-polar organic liquid dispersible, non-polar organic liquid insoluble, inherently tacky, elastomeric copolymer microspheres consisting essentially of about 90 to about 99.5 percent by weight of one or more oleophilic, water-emulsifiable alkyl acrylate esters, at least one of said esters being selected from the group consisting of iso-octyl acrylate, 4-methyl-2-pentyl acrylate, 2-methylbutyl acrylate, and sec-butyl acrylate and about 10 to about 0.5 percent by weight of one or more monomers selected from the group consisting of trimethylamine methacrylimide, trimethylamine p-vinyl benzimide, ammonium acrylate, sodium acrylate, N,N-dimethyl-N-(.beta.-methacryloxyethyl) ammonium propionate betaine, 1,1-dimethyl-1-(2-hydroxypropyl) amine methacrylimide, 4,4,9-trimethyl-4-azonia-7-oxo-8-oxa-9-decene-1- sulphonate, 1,1-dimethyl-1-(2,3-dihydroxypropyl) amine methacrylimide, and maelic anhydride , said copolymer having been prepared by aqueous suspension polymerization in the presence of an anion emulsifier at a level above said emulsifier's critical micelle concentration.


1. A repeatedly usable pressure-sensitive sheet material comprising a substrate having bonded thereto a binder material, said binder having partially embedded in and protruding from its exposed surface inherently tacky elastomeric copolymer microspheres consisting essentially of

a. about 90 to about 99.5 percent by weight of one or more oleophilic, water-emulsifiable alkyl acrylate esters, at least one of said esters being selected from the group consisting of iso-octyl acrylate, 4-methyl-2-pentyl acrylate, 2-methylbutyl acrylate, and sec-butyl acrylate and correspondingly

b. about 10 to about 0.5 percent by weight of one or more monomers selected from the group consisting of trimethylamine methacrylimide, trimethylamine p-vinyl benzimide, ammomium acrylate, sodium acrylate, N,N-dimethyl-N-(.beta.-methacryloxyethyl) ammonium propionate betaine, 1,1-dimethyl-1-(2-hydroxypropyl) amine methacrylimide, 4,4,9-trimethyl-4-azonia-7-oxo-8-oxa-9-decene-1-sulphonate, 1,1-dimethyl-1-(2,3-dihydroxypropyl) amine methacrylimide, and maleic anhydride.

[khazzah]

Turns out according to lore that the adhesive papers were actually protected by USP 3691140 to "ACRYLATE COPOLYMER MICROSPHERES" and USP 3857731 to "ACRYLATE MICROSPHERE-SURFACED SHEET MATERIAL" (claim 1 of each of which, respectively, posted below).  Rather than being patented as not too sticky, sticky paper. 

Sometimes the non-obviousness of a thing is in how it gets done rather than what it is. 

I'll call and raise you one.

Often the patentability of a thing lies in the technical details that accomplishes the cool function. You often need technical details because the function itself is usually either new use of old structure or predictable combination of known elements. But if you have some magic that you used to achieve that result, and you put that magic in your claim ... this significantly increases your chance of getting a patent.

Sounds like 3M's patent on the post-it was just that ... a patent on the cool adhesive that actually achieved the result -- paper that stuck to another paper yet was at the same time easily removable -- when the idea of "stick one paper to another so that it's easily removable" might well be considered obvious.