EU Pundit : Issues of the European Union: U.S. Patents Prior Art Obviousness: KSR : USPTO : Utility and Design : Form and Function : Look and Feel and What the Invention Does : The Ordinary Course Without Real Innovation is Not Patentable

Only an inventor knows how to borrow, and every man is or should be an inventor. — Ralph Waldo Emerson

Albert Einstein on Creativity linked from Brandautopsy.com "Borrowing Brilliance"

Jenson: Albert Einstein Quotes - The secret to creativity is knowing how to hide your sources.

Utility Patents and Design Patents

The United States Patent and Trademark Office, pursuant to U.S. federal laws and decisions of the courts, grants utility and design patents, defined by the USPTO at its website as follows:

"A utility patent may be granted to anyone who invents or discovers any new and useful process, machine, article of manufacture, compositions of matter, or any new useful improvement thereof. A design patent may be granted to anyone who invents a new, original, and ornamental design for an article of manufacture."

Essentially, an invention viz. discovery can thus be patented for its FORM (design, the way it looks and feels) and/or FUNCTION (what it does), given the legal limitations on "prior art" and "obviousness" found further below.

Pro-patent forces argue that "anything under the Sun that is made by man" can be patented, but that rose-colored rainbow standard meets inter alia the Biblically recorded reality barrier that "there is nothing new under the Sun":

"What has been will be again,
what has been done will be done again;
there is nothing new under the sun" - Ecclesiastes 1:9 NIV Bible

Patent terminology: Utility and Design, Function and Form

Place of Application	Patent Parameter	Patent Parameter
At the USPTO	Utility	Design
	Normal Terminology	Normal Terminology
In Arts & Architecture	Function	Form
Laymen's Language	What it Does	How it Looks and Feels

What are the two basic requirements for patentability?

Nondisclosure in Prior Art
Not Obvious to a Phosita (a person of ordinary skill in the art)

Place of Application	Commentary	Patent Rule	Patent Rule
At the USPTO	The "business" of the USPTO is "patents" and who is going to sabotage their own business?	The claimed invention can not be disclosed in prior art	The invention can not be obvious to "a person having ordinary skill in the art", a so-called "phosita"
		Normal Terminology	Normal Terminology
In the Arts & Architecture	No comparable patents exist in art or in architecture and thus these disciplines are more creative	Original	Avant-garde

The blog The Prior Art referred a couple of years back to a wry comment made in oral arguments by United States Supreme Chief Justice Roberts about the U.S. Circuit Courts (including the Federal Circuit) being obligated to follow U.S. Supreme Court decisions:

"Chief Justice Roberts: Well, they don't have a choice, right? They can't say, I don't like the Supreme Court rule so I'm not going to apply it, other than the Federal Circuit.

(Laughter in the court.)

This rebuke seems to indicate that as Roberts sees it, the Federal Circuit has a habit of blowing off Supreme Court precedent."

The Stanford Technology Law Review has a note on
New Insights on the "Death” of Obviousness:
An Empirical Study of District Court Obviousness Opinions"
by Sean M. McEldowney which concludes:
"On the surface, these results seem to support the notion that the Federal Circuit has effectively gutted the standard of obviousness."
[McEldowney then goes on to suggest it may not be so simple.... (but we suspect it IS that simple).] 2006 STAN. TECH. L. REV. 4 http://stlr.stanford.edu/STLR/Articles/06_STLR_4

The Federal Circuit in the USA is made up primarily of persons with technical degrees. This is a regrettable error in the make-up of this court, because their technology interests make them biased in favor of patents. The Federal Circuit has in fact been all but ignoring recent U.S. Supreme Court dictates, and have been getting reversed regulary for so ignoring them.

Those dictates are, here via the Wikipedia article on KSR v. Teleflex:

"Main article: KSR v. Teleflex

The Supreme Court reversed a decision by the Court of Appeals for the Federal Circuit based on how the lower court defined the capabilities of a PHOSITA. KSR v. Teleflex was decided by a unanimous Supreme Court on April 30, 2007.

Importantly, Justice Kennedy's opinion stated, "A person of ordinary skill is also a person of ordinary creativity, not an automaton." Although the Court's opinion acknowledged other Federal Circuit cases that described a PHOSITA as having "common sense" and who could find motivation "implicitly in the prior art," Kennedy emphasized that his opinion was directed at correcting the "errors of law made by the Court of Appeals in this case" and does not necessarily overturn all other Federal Circuit precedent.

Once the PHOSITA is properly defined, KSR v. Teleflex described how obviousness should be determined:

In determining whether the subject matter of a patent claim is obvious, neither the particular motivation nor the avowed purpose of the patentee controls. What matters is the objective reach of the claim. If the claim extends to what is obvious, it is invalid under §103. One of the ways in which a patent's subject matter can be proved obvious is by noting that there existed at the time of invention a known problem for which there was an obvious solution encompassed by the patent's claims.

which was applied to the facts before the Court with the following:

The proper question to have asked was whether a pedal designer of ordinary skill, facing the wide range of needs created by developments in the field of endeavor, would have seen a benefit to upgrading Asano with a sensor."

What are the consequences of KSR?

At LawPundit we previously quoted the unanimous decision in KSR in an opinion written by Justice Kennedy:

"Often, it will be necessary for a court to look to interrelated teachings of multiple patents; the effects of demands known to the design community or present in the marketplace; and the background knowledge possessed by a person having ordinary skill in the art, all in order to determine whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue. To facilitate review, this analysis should be made explicit.... As our precedents make clear, however, the analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ."

Kennedy hammers the new standard home with a clear rejection of the formalistic conceptions attaching to the previous "helpful insights" of the TSM test:

"Helpful insights ... need not become rigid and mandatory formulas; and when it is so applied, the TSM test is incompatible with our precedents. The obviousness analysis cannot be confined by a formalistic conception of the words teaching, suggestion, and motivation, or by overemphasis on the importance of published articles and the explicit content of issued patents. The diversity of inventive pursuits and of modern technology counsels against limiting the analysis in this way. In many fields it may be that there is little discussion of obvious techniques or combinations, and it often may be the case that market demand, rather than scientific literature, will drive design trends. Granting patent protection to advances that would occur in the ordinary course without real innovation retards progress and may, in the case of patents combining previously known elements, deprive prior inventions of their value or utility." [emphasis added by LawPundit]

What are the consequences of KSR when properly applied in cases like Apple v. Samsung and to Apple's claims to exclusive proprietary patent rights in "bounce-back" software code applications or to various obvious "man-machine interactions" such as human touch controls of digital displays?

It is quite clear that the Supreme Court would throw those Apple patents out without blinking an eye as being no different in principle as a pedal designer of ordinary skill adding a sensor, i.e. a combination of previously known elements.

There is no inventive step in such compositions and no invention worthy of patent protection. The law can not permit a situation in which obvious developments in normal course of the state of the art become proprietary exclusive rights of greedy monopolistic companies who are just combining various features of prior art. However, that is a wisdom that the judges on the present Federal Circuit -- uniquely RESPONSIBLE for patent appeals -- are having difficulty understanding.

Place of Application		KSR Standard	KSR Standard
United States Supreme Court		Advances that would occur in the ordinary course without real innovation are obvious	A phosita of ordinary skill has common sense, ordinary creativity and is not an automoton

Conclusion, Quo Vadis?

Maybe legislators in reforming patent law and judges in handling patent cases should heed the words of Henry Ford :

"I invented nothing new. I simply combined the inventions of others into a car. Had I worked fifty or ten or even five years before, I would have failed."

— Henry Ford