My Patent Pending

Appropriation of the Point of Novelty is no Longer a Test for Design Patent Infringement

DESIGN PATENT INFRINGEMENT OVERVIEW

On September 22, 2008, the intermediate appellate court for patent appeals, the Court of Appeals for the Federal Circuit (just below the US Supreme Court), held in the case of Egyptian  Goddess v. Swisa, that the two-test approach that the court had been using to determine design patent infringement had been one test too many. The first test was and remains what is called the “ordinary observer” test of the 1871 US Supreme Court case of Gorham v. White.  The second test was a relatively recent test the Federal Circuit was using once the alleged infringing item was found to be substantially identical, by a hypothetical ordinary observer, to the patented design. This second test was called the “point of novelty” test. The Federal Circuit held in Egyptian Goddess that the point of novelty test should no longer be used and that under the “ordinary observer” test: in order for the accused design to infringe the patented design, the accused design must reasonably be viewed as so similar to the claimed design that a purchaser familiar with the prior art would be deceived by the similarity between the claimed and accused designs, inducing him to purchase one supposing it to be the other.

 Desing patent infringement may remind the reader familiar with trademark cases of some of the issues surrounding trade dress infringement. So, to complete the thought, I provide a very brief overview of below:

TRADE DRESS & TRADE DRESS INFRINGEMENT OVERVIEW

 Trade dress may be described as the total image and overall appearance of a product as reflected in features such as size, shape, color, color combinations, design of a label, texture, graphics or sales techniques.

            When characterizing a particular trade dress of a product and assessing whether infringement of that trade dress has occurred, consideration is given solely to the aggregate of all the features that comprise the trade dress and not a subset of the features. Accordingly, a business or manufacturer may use particular elements or features of the trade dress of a competitor (senior user) so long as a distinctive combination of trade dress features of the senior user is not copied (to the point of confusing customers as to the source of the product having the copied features).

Is the Senior Trade Dress Protected?

            As may be compared with the ornamental aspects of design patent law, the degree of non-functionality and distinctiveness present in the trade dress is what determines the scope of the trade dress protection. This allows the owner of a particular trade dress to protect those distinctive product features that are not necessary to the use or purpose of the product, but rather serve to identify the manufacturer of the product AND (similar to the theory behind design patents) this limitation in scope prevents the owner from monopolizing a product via trade dress by claiming features that are necessary for the use or purpose of the product.

 

Is the Senior Trade Dress Infringed?

            Infringement of the protected trade dress of a senior user requires a finding of likelihood of confusion. Under the Trademark Law Revision Act of 1988 and controlling cases: A likelihood of confusion exists if the owner of trade dress is entitled to trade dress protection AND the allegedly infringing trade dress is likely to cause confusion, or to cause a mistake, or to deceive as to the affiliation, connection, or association of such entity with another entity, or as to the origin, sponsorship, or approval of the entity’s goods, services, or commercial activities by another entity. (See the Egyptian Goddess case for the parallels in this analysis present in design patent infringement.)

            Several factors are assessed by a federal trial court in determining whether the junior product is indeed infringing the trade dress of a senior product. While design patent law precedent flows through only one intermediate appellate court (i.e, the Federal Circuit), federal trademark law develops on a circuit-by-circuit basis. It may not be surprising to the reader that not all federal appellate circuits follow the same list for finding likelihood of confusion, but below are some common factors that are weighed:

1. Strength of the Trade Dress

            The higher the level of distinctiveness of the trade dress and the higher its tendency to identify the goods sold as emanating from a particular source (even if the source is unknown to the consumer), then the stronger the trade dress may be found by a court..

2. Degree of Similarity – The Subjective Eyeball Test

            Using the overall appearance akin to design patent analysis, one may ask: Does the combination of all the features which comprise the trade dress of the junior product create the same general overall impression of the trade dress of the senior product package – and, in doing so is the junior product likely to cause confusion as to the source of the product?

3. Proximity of Products & Channels of Distribution and Marketing

            Consider whether the junior product and senior product differ in content, geographic distribution, market position, and audience appeal and ask: is it likely that consumers will assume either that the junior goods are associated in some way with the senior user or are made by the senior user?

            If the senior user and the junior user distribute their products via the same retail outlets and market their products through the same channels or through similar advertising, a greater likelihood of confusion exits. Particularly, if the senior user and the junior user sell their products from the same retail outlets to the same purchasers, then there is a greater likelihood of confusion.

4. Likelihood that the Senior User Will Bridge the Gap

            The trial court may assess whether the senior user is likely to move into the market already occupied by the junior user. Of course, if the products are already competitive, then there is no gap to be bridged.

5. Evidence of Actual Confusion

            Through gathering individual instances of consumer confusion and/or survey evidence of consumer confusion, actual confusion can be measured. For evidentiary purposes, actual confusion for inexpensive or impulse purchases may be established through a showing of relatively low numbers of instances of actual confusion.

6. Intent of the Junior User’s Use of the Trade Dress

   If the junior user (i.e., later-in-time user) intentionally chose product features which closely resemble the features of an established manufacturer or business, that act alone may be sufficient to establish bad faith intent on the part of the junior user (to cash in on the senior user’s goodwill or reputation).

7. Sophistication of the Relevant Consumer Market

            The less involved the purchase, the more likely the consumers will be confused by the similarities in the trade dress. So, impulse items tend toward a likelihood of confusion when compared with purchases requiring a prudent review of performance specifications or trade journals.

Appellate Court Addresses Business Method and Software-Implemented Inventions

The intermediate appellate court for patents (Court of Appeals for the Federal Circuit) sitting en banc (all together, rather than a panel of three) held in In re Bilski (October 30, 2008) that process/method claims must be claimed either as physically transforming something into something else (e.g., an industrial or manufacturing process) or as a method tied to a machine. In doing so, they threw out their own test created ten years ago in State Street Bank & Trust v. Signature Financial Group, Inc., 149 F.3d 1368 (Fed. Cir. 1998), where they held that for a process to be a statutory process (i.e., one of the requirements for patentability), one must look to the result of the process and so the process must produce a useful, tangible, and concrete result. Tying a method to a machine is consistent with the Federal Circuit’s previous holding in In re Comisky, 499 F.3d 1365 (Fed. Cir. 2007). During this summer, the Board of Patent Appeals and Interferences (BPAI), in two cases appealed in the course of patent prosecution (Ex Parte Langemyr (May 2008) and Ex Parte Wasynczuk (June 2008)), has in essence required a tie of process to machine in a claim in order for a business-related patent claim to be eligible for examination as to its patentability in light of the state of the art.

The Federal Circuit in Bilski did not overturn State Street per se (see the dissent by Circuit Judge Mayer), nor did it invalidate what are called business method claims. Again, Bilski changes the first test (i.e., the statutory subject matter test) for a patentable method of business (and all other software-implemented inventions) from requiring a useful, tangible, and concrete result to requiring the steps of the method claim be tied to a machine doing/executing the process.

The concern patent attorneys have is the degree to which the claim must tie the process to the machine and/or what may be claimed as representative of the elements being transformed in the claimed solutions that define the scope of the patent claim. Particularly as to the tying of method to a machine, have no guidance from the Federal Circuit’s opinion in Bilski on this and so we look to the BPAI cases (like Langemyr and Wasynczuk) for suggestions. (BPAI cases may be appealed from the Patent Office to the Federal Circuit.)

NOTICE: US PATENT RULE CHANGES - ON HOLD

August 21, 2007: The US Patent & Trademark Office (USPTO) Published Changes to Practice for Continued Examination Filings, Patent Applications Containing Patentably Indistinct Claims, and Examination of Claim in Patent Applications (the "New Rules"), most of which had an effective date of November 1, 2007. THEN, on October 31, 2007, the United States District Court for the Eastern District of  Virginia issued a Preliminary Injunction enjoining the USPTO form implementing the New Rules. The resolution of this case is not expected to start until well into next year. The Court noted the retroactive aspects of the Rules as well as the burdens imposed to unlimited continuation practice and unlimited claiming. While the Court may question the authority of the USPTO in invoke the burdens, the US Congress continues its efforts at patent law reform in order to clarify and enable the USPTO to implement such rules as the New Rules (at least as to new applications).

Patentable Inventions under KSR Guidelines

On October 10, 2007, published in the Federal Register were the USPTO long-awaited examining guidelines as to patentability after the US Supreme Court opinion in KSR International Co. v. Teleflex Inc., 550 U.S. __ (2007). Prior to KSR, a patent applicant might have been able to rebut a rejection of a patent claim as being not patentable (to the Patent Examiner) due to obviousness: (a) if the Patent Examiner was relying on a combination of references published (or if a patent or patent application, filed) before the applicant’s invention date; and (b) if the combined references were not directed to the problem being solved by the applicant’s patent claim in question. Since KSR, the availability of references is less restricted and may be combined under a number of reasons enumerated in the new guidelines. One may almost presume that unless an element or step of a claim is new, then unless an unpredictable result or synergistic function results from the invention as claimed, then the claim may be found obvious by the Patent Examiner. Presuming the claim is read correctly and the cited references are applicable to the examination, the applicant may rebut such a rejection with evidence and/or arguments that: (a) the results of the claimed combination were indeed unexpected; (b) the elements in the combination do not merely perform the function that each element performs separately (i.e., the synergy rebuttal); and/or (c) a person of ordinary skill in the art (which is perhaps an arguable point) could not have combined the claimed elements by methods known at the time of the invention (e.g., due to technological limitations as the time). Presumably other rebuttals may apply. (MPEP §2145)

So it seems that by way of the patent application itself, once an applicant has thoroughly described to one of slightly less than ordinary skill in the general technical field, one or more solutions (and at least the best solution) to a problem (that is largely unstated but inferable), the applicant should provide at least one claim based on that description that distinctly claims a new element (or new step) among its elements (or steps) and if not, then the claim should be drawn to an unexpected result, a synergistic result and/or a previously technically fettered result.

http://www.uspto.gov/web/offices/com/sol/notices/72fr57526.pdf

Provisional Patent Applications Are Back in Style This Fall

A provisional patent application (PPA) is similar to a non-provisional patent application (NPA) in content but, unlike the NPA, may have informal drawings and may or may not have claims. The PPA is often the applicant’s first and best evidence of a reduction of the invention to practice. As such, it is not intended to be an instrument for examination but rather an instrument for reference. It has several useful properties, three of which are: (a) if prepared adequately, it provides an invention date; (b) numerous provisional applications may be filed, after the first filing, that contain the subject matter of the first and subsequent filings without invoking the new continuation limits of November 1, 2007; and (c) its claims are optional and not examined, i.e., the PPA is outside the November 1, 2007 rules requiring an examination support document (ESD) for NPAs having more than five independent claims and more than 25 total claims.

For example, an inventor may describe a first embodiment sufficiently enough to support a first PPA or NPA. Four months later, the inventor may have a second embodiment which taken with the first embodiment supports a second PPA or a continuation-in-part (CIP) of the NPA. Four months later, the inventor may have a third embodiment which taken the first and second embodiments supports a third PPA or a second CIP of the NPA (technically a CIP of the first CIP). Filing PPAs alone, before the one-year anniversary of the first PPA, a first NPA could be filed claiming priority to all three PPAs (whether any PPA was expressly abandoned or not…see below). This first NPA would have both of its allotted continuations (without petition and showing) available to it under the rules of November 1, 2007. However, filing no PPAs, the second CIP would be the second of the two-continuation allotment.

In the above scenario of multiple PPAs, if the inventor was interested in foreign/PCT filing as well, then consideration should be given to expressly abandoning each PPA before filing the next one so as to keep flexibility in the Paris Convention one-year priority date. (The benefit of an expressly abandoned PPA may be claimed by an NPA having common subject matter filed within one year of the PPA filing date.)

After an invention is described in what may be termed a complete invention disclosure, the time taken to draft a non-provisional patent application, including review cycles, can be measured in weeks and in some cases months — where the courts find six months to not be unduly reasonable. With the passage by the U.S. House of Representative of HR 1908 (and with the Senate’s S.1145 in committee), the days of the U.S. being a first-to-invent, rather than first-to-file jurisdiction, may be coming to an end. If (or when) the U.S. becomes a first-to-file jurisdiction, then in fields having highly competitive research and development, the time from invention disclosure to having a patent application on file might be measured in hours rather than months and most will most certainly be measured in days. Here again, the provisional patent application can be filed based on an adequate invention disclosure (supportive of claims one would wish to make in the eventual NPA) with subsequent improvements included in subsequent PPA filings.

In addition, if (or when) the U.S. becomes a first-to-file jurisdiction, U.S. inventors may become more mindful of filing a PPA prior to making a public disclosure and thereby preserve international or “absolute” novelty in the invention. The PPA may serve as a priority document for foreign applications, and/or an international application under the Patent Cooperation Treaty (PCT), filed within one year of the first PPA for which priority is claims under the Paris Convention. With the fast approaching elimination of the international search fee reduction by the USPTO as international search authority (ISA) for applicants having a previously-filed U.S. non-provisional patent application (see the PCT fee-related post below), the incentive for the co-pending U.S. application is diminished. The (South) Korean Intellectual Property Office (KIPO) may be selected by the U.S. applicant to provide the PCT international search and charges less than $300. With that U.S. international search climbing to $1,800, one or more PPAs followed by a PCT application having the patent office of South Korea designated as the ISA may provide broad pending protection with minimal filing fees. The decision to enter the U.S. national stage from the PCT and/or with what claims, may then be influenced by the results returned by the KIPO search.

Domestically, whether the PPA is filed to establish an invention date or merely prudently reserve the NPA continuation allotment, patentability searches may be contemplated by the applicant and may be cost-effectively staged as the invention unfolds in additional embodiments and under additional PPAs. As such, should the NPA require more than five independent claims or more than 25 totals claims, the uncertainties of the thoroughness of the search may be greatly reduced when the ESD is submitted due to these staged searches during the PPA phase.

In re Comiskey: Business Method Claims will be “Flooked” Unless Tied to a Machine

When Mr. Carl A. Lundgren’s claims to a method of determining bonus amounts to issue to managers were rejected by the USPTO as outside statutory subject matter due failing the “technological arts” standard, he appealed to the Board of Patent Appeals and Interferences (BPAI). While Judge Smith, dissenting in the precedential BPAI case of Ex Parte Lundgren, equated the Constitutional “useful arts” standard with the “technological arts” standard as modernly applied by the USPTO Examining Corp. and while Judge Barrett, dissenting-in-part, did not recognize the “technological arts” standard but neither did the Judge Barrett, find Mr. Lundgren’s claims being steps of a machine-implemented process having a useful, tangible, and concrete result, the majority of the Board writing the opinion found no statutory or case law basis for the “technological arts” standard for statutory process/method claims.

http://www.uspto.gov/web/offices/dcom/bpai/prec/2003-2088.pdf

So since Lundgren, one might naturally infer that so long as a business method claim is directed to a useful, tangible (real-world), and concrete (repeatable) result and that result was unexpected (see KSR) and/or provided for a new functionality in light of all published, pertinent references, then there was a chance at patentability once the multiple-year backlog was worked down in class 705.

But then enter Mr. Comiskey:

When the US Patent Examiner continued to reject the claims of Mr. Stephen W. Comiskey directed to a method and system for mandatory arbitration involving legal documents, such as wills or contracts, for being unpatentably obvious, Mr. Comiskey appealed to the BPAI (Ex Parte Comiskey) and the BPAI upheld the Examiner’s finding the claims to be obvious. Mr. Comiskey then appealed to the US Court of Appeals for the Federal Circuit (In re Comiskey, ___F.3d ___(Fed. Cir. 2007)). http://fedcir.gov/opinions/06-1286.pdf

Unfortunately for Mr. Comiskey, the Federal Circuit wished to consider the patentability of the subject matter being claimed. The USPTO urged the Federal Circuit consider the case on statutory subject matter ground because the PTO felt Mr. Comiskey’s independent method claims were directed to an unpatentable abstract idea, rather than a patentable process because neither independent method claim was tied to a particular machine or operated to change materials to a different state or thing (referencing Parker v. Flook, 437 U.S. 584 (1978)). Finding the method claims to be directed to an unpatenable mental process, Mr. Comiskey was given leave by the Federal Circuit to amend his method claims to combine the mental steps with a machine. Thereafter, the PTO can determine whether the amended claims yield a patentable combination or whether they are unpatentable for being the routine addition of modern electronics to an otherwise unpatentable invention.

More Statutory Subject Matter news from the Federal Circuit

As a manufactured representation of information, can a signal be statutory subject matter, say perhaps like the statutory “article of manufacture?” Unfortunately for Mr. Petrus Nuijten (and for Philips), after the BPAI affirmed his Patent Examiner's rejection of a signal being afforded patent protection, two judges of his three-judge panel of the US Court of Appeals for the Federal Circuit found a signal to be outside the statutory categories for patentability noting that “[a] transient electric or electromagnetic transmission does not fit within that definition.” So, claims are not statutory if they start with “A signal with embedded supplemental data…” (In re Nuijten, ___ F.3d___ (Fed. Cir. 2007)).

http://fedcir.gov/opinions/06-1371.pdf

PCT Int'l Search Fee Changes for US as ISA

When considering an international application (via the Patent Cooperation Treaty – PCT) where the US Patent Office is one of three competent international search authorities (ISA), it was not uncommon for the informed applicant to choose to have a US non-provisional patent filed at least one day before the PCT application was filed with the US Patent Office selecting the US as the ISA. This choice was often based on favorable considerations of:

(a) the PCT-dictated search timeline often resulted in search results long before the non-provisional had its first action on the merits and a claim to a US provisional application may have helped press the timeliness of the ISA (and this approach was particularly informative in backlogged art groups, especially for those technologies where the European Patent Office declared itself incompetent and as their euros have climbed versus the US dollar to where their search fee as ISA is over $2,000);

(b) getting a US application into the US Patent Office queue; and

(c) the reduction from $1,000 to $300 in international search fees.

Mindful that the international search fee is just one of the fees of a PCT application, applicants should make note that:

Effective Nov. 9, 2007, the reduction for the prior filed non-provisional patent application is eliminated and the international search fee will be $1,800 (per invention). The US Patent Office justifies this increase in part because their cost of conducting a patentability search is well over $1,800.

http://www.uspto.gov/web/offices/com/sol/notices/72fr51559.pdf

For applicants wishing to balance their budgets and still have both a US non-provisional and a PCT application on-file, please note that the (South) Korean Intellectual Property Office (KIPO) is the third competent ISA for US applicants and their international search fee is under $300.

NEW RULES

THE USPTO HAS PUT FORTH NEW RULES FOR CLAIM COUNTS AND CONTINUATIONS

PLEASE MAKE NOTE AS SOME CHANGES HAVE RETROACTIVE EFFECTS

New Claim Limits

UNLESS the applicant: (a) conducts a prior art search following the USPTO template (MPEP 719.05); (b) list references deemed most closely related to the subject matter of each claim; (c) explain the patentability of each claim; (d) show where the claim is taught in the body of the application itself and if, other than a type of small entity, (e) provide a mapping of the references to the claims by identifying claim limitations disclosed by each reference (termed an Examination Support Document, ESD); then ANY non-provisional patent application filed after October 2007 AND THOSE PRESENTLY PENDING that have not yet been examined for patentability must be limited to no more than five independent claims and a total of twenty-five claims (i.e., the 5/25 limits) whether by cancellation (and if filed after December 7, 2004, a request for reimbursement of fees filed within two months of the cancellation) or by restriction (paring out originally filed claims directed more than one invention). For applications filed after October 2007, those exceeding the 5/25 limits must have an ESD or suggested restrictions filed to leave the remaining claims within the 5/25 limits and do so within four months of the application filing date to avoid adversely affecting the patent term adjustment calculations. As for a presently pending application, rather than waiting for a pre-examination communication from the examiner in cases exceeding five independent and a total of twenty-five claims, proactive cancellation, election, or preparing and filing of an ESD should avoid adverse patent term adjustments. (37 CFR 1.704)

New Continuation Limits

A presently pending non-provisional patent application that, on August 21, 2007, was a grand-daughter (a continuation or continuation-in-part of a continuation or continuation-in-part) of an original application may be allowed a daughter application without a petition and showing that the amendment, argument, or evidence (which may include new claims in a continuation, but not an IDS) sought to be entered could not have been submitted during prosecution of the prior-filed application or prior to the close of prosecution in the application. All future grand-daughters of newly filed applications will require a petition and the required showing in order to have a daughter. Failure to surmount the showing leaves the daughter orphaned and subject to her family members, if published or issued, being prior art.

Effective November 1, 2007, no second Request for Continued Examination may be entered in the family line without a petition and the requisite showing. A second RCE may be filed without petition and showing prior to November 1, 2007.

APPLICABLE IMMEDIATELY-  PERTAINING TO MULTIPLE FILINGS HAVING COMMON SUBJECT MATTER

New Reporting Requirements: The sweep of the 5/25 limitation affects applicants having two more presently pending applications claiming the benefit of the priority date (i.e., the filing date) of a prior filed provisional or non-provisional patent application. The applicant must timely (e.g., by February 1, 2008) enter into the file of each application an identification of the other application. If one identified application contains a disclosure that supports at least one claim of another identified application, there is automatically a rebuttable presumption that the applications, when taken together, contain patentably indistinct claims (i.e., claiming obvious variations MPEP 804) and a rebuttal (i.e., a rebuttal effectively similar to that of an automatic one-way obviousness-type nonstatutory double patenting rejection) or a terminal disclaimer must be timely filed OTHERWISE the claims of the identified applications containing the presumed patentably indistinct claims will be totaled and applied to the 5/25 limit.

New CIP Obligation: If the continuation is a continuation-in-part (CIP) claiming subject matter supported in the parent application, such claims must be identified in the case. Another point to note about continuations-in-part is that divisional applications (which themselves are re-defined in the new rules) are limited to two continuations and these may not be continuations-in-part.

Practice Tip Remains Applicable: Applicant may attempt to avoid first action final rejection (i.e., receive a non-final rejection or allowance) after a final rejection by responding to the final action under 37 CFR 1.116 with a request for entry of an amendment, argument, and/or or new evidence

IN THE PROCESS OF DIGESTING THESE NEW RULES, ONE MAY DISTILL NUMEROUS CONCERNS

FOR EXAMPLE:

5/25 and the Examination Support Document (ESD): Client-Server-related inventions immediately come to mind where a system claim, a client-side claim, a server-side claim, a method claim and a software conveyance article claim exhaust the five independent claims that may be initially contemplated. What if means-plus-functions claims were desired for the server-side and client-side? The enabling disclosures of a pair of contemporaneously filed applications in this example may very well require the overlap that triggers the presumptive combining claims across applications. One might file with seven independent claims (as a way of adding the proposed means-plus function client-side and server-side claims) and suggest a restriction according to the new rules knowing that it will be the examiner that determines the actual restriction, if any. For such inventions, five independent claims may just not be enough at the initial filing, and so one may contemplate the Examination Support Document.

With all due respect to the USPTO, the ESD appears to suffer several of the same troubling characteristics possessed by the new accelerated examination procedure for original applications originating out of the US. One is continually aware that statements made by the applicant adverse to applicant’s position, i.e., admissions, are acutely given probative weight. (MPEP 2145, 2129, 2144.03) Statements required and made in an ESD (such as those directed to the reasonable certainty that no references more pertinent than those already identified are likely to the found in a source not relied upon in the search) may provide bases for charges of inequitable conduct (presumably by an allegedly infringing defendant).

Further, because the ESD is part of the application file history and asserted for purposes of patentability, the language used by the applicant in characterizing of the claims, given their broadest reasonable construction, relative to the references may be picked up again if a patent based on the application or its family members is asserted. That is, the characterizing language of the ESD could be expected to be used by the alleged infringer as an admission by the applicant that the claim scope must read as narrowly (or as broadly for invalidity purposes) as the applicant did in the ESD, i.e., more narrowly (or not as broadly) perhaps than the claim scope might have been constructed by a federal judge in a Markman procedure in a similar case where the file history did not contain an ESD.

One RCE: An RCE is not uncommon in a case when the first Office action on the merits is regrettably cursory. In such instances, the examiner digs into the case with more rigor after the applicant’s response to the non-final action and perhaps responds with a second non-final action, but may respond with a final action (or what some wags call the first real action on the merits). Arguments and amendments may be submitted in response to the final action (at least to preclude the first Office action of a subsequent RCE being a final action), but will not get entered without an RCE. In those happy cases where the RCE results in an NOA one must note that it is possible that in the meanwhile, the application, as a pre-grant publication (or re-publication), might be provided (perhaps at least two months after publication) to a prospective infringer who might return printed material (perhaps dug up in an invalidity search for and opinion of counsel) to the applicant as purported prior art directed to the claims being prospectively asserted. The reception by the applicant of this new art is most concerting when received after the NOA is mailed (and theoretically, this can timed by the prospective infringer because the file wrapper is viewable by the public - a record that includes the continuations and RCEs previously filed).

Prior to the new single RCE rules of November 1, 2007, the applicant could petition to withdraw the NOA, file an RCE with the new art with the hope of receiving a second NOA. With the single RCE rule, the entry of an IDS alone is an insubstantial showing (see USPTO “Claims and Continuations Final Rule” charts on this) to file a second RCE or a third continuation, leaving the applicant with the prospect of a re-examination post-issuance. It should be noted that although the new rules (37 CFR 1.178(d)) allow the applicant to request a continuation application be placed on the examiner’s Regular Amended Docket under the optional streamlined continuation application procedure, the prior-filed application in this exemplary instance is neither under final nor appeal (so withdrawing the NOA to return it to final is necessary). The RCE appears to be the most expedition means of getting an IDS in after withdrawing the NOA, and so the applicant may rather appeal after a final action rather than risk giving up the single RCE that may be used later as a countermeasure to a third-party post-allowance prior art mailing and rather than giving up one of the two continuations in the event there are improved embodiments in the family or a previously unclaimed embodiment is identified (or perhaps used like an RCE, if need be).

Risks of Inadequate Showings/ Denied Petitions:

For second RCE filed after November 1, 2007, a denied petition does not stay any period for reply that may be running. Such a risk may warrant the use of a continuation, if any remain, or the filing of an appeal.

For a third continuation, a denied petition causes the application to be treated as having a defective (and therefore no) priority and so its published family line becomes "killer" prior art, leaving no subject matter of the orphaned application patentable.

ISN'T IT OBVIOUS? KSR v. Teleflex

Michael Blaine Brooks, PhD(Engr.), PE(EE)

Patent Attorney & Professional Electrical Engineer

Dear Reader,

            On April 30, 2007, the US Supreme Court issued its ruling in the patent infringement case of KSR Int'l v. Teleflex, Inc., 550 U.S. ___ (2007). As part of its defense, KSR argued a patent claim being asserted by Teleflex would have been obvious to one of ordinary skill at the time of the filing of the application from which the issued patent was based. Such a defense may be characterized as attempting to invalidate a claim based on its obviousness as evidenced by the content of published literature available, and patents and published pending patents that were filed, prior to the application filing date. (If an allegedly infringed claim is found to be obvious at the time of filing and accordingly an invalid claim of the issued patent, then the complaint of infringement of such a claim could not stand. Issued claims are considered presumptively valid, and so, in order to make a convincing argument of obviousness with multiple references, the defendant must convincingly evidence via a motivation of the skilled artisan at the time of the invention to combine the references.)

            Principally, the issue raised in KSR focused on the degree of specificity that must be present in the teachings in the prior art references. That is, must each reference have teachings addressed to the field of endeavor and have been addressed to the particularly claimed solution of the patent in order for the reference to be available for a combination of such teachings in order to determine the obviousness of the claim? The intermediate court of appeal for patent cases, the Court of Appeals for the Federal Circuit (CAFC or Federal Circuit), addressed the matter on appeal from a federal district court and required KSR to make findings that each prior art reference for combination was directed to the problem being solved. The US Supreme Court in KSR disagreed with that level of specificity in teachings in order for the reference to be combined.

Rigid preventative rules that deny recourse to common sense are neither necessary under, nor consistent with, this Court’s case law.

To determine whether there was an apparent reason to combine the known elements in the way a patent claims, it will often be necessary to look to interrelated teachings of multiple patents; to the effects of demands known to the design community or present in the marketplace; and to the background knowledge possessed by a person having ordinary skill in the art. To facilitate review, this analysis should be made explicit. But it need not seek out precise teachings directed to the challenged claim’s specific subject matter, for a court can consider the inferences and creative steps a person of ordinary skill in the art would employ.

The diversity of inventive pursuits and of modern technology counsels against confining the obviousness analysis by a formalistic conception of the words teaching, suggestion, and motivation, or by overemphasizing the importance of published articles and the explicit content of issued patents. In many fields there may be little discussion of obvious techniques or combinations, and market demand, rather than scientific literature, may often drive design trends.

Under the correct analysis, any need or problem known in the field and addressed by the patent can provide a reason for combining the elements in the manner claimed.

It is common sense that familiar items may have obvious uses beyond their primary purposes, and a person of ordinary skill often will be able to fit the teachings of multiple patents together like pieces of a puzzle.

            Also in its non-precedential opinion that was taken up by the US Supreme Court, the Federal Circuit restated its position that an “obvious to try” reason for combining references cannot be used in finding obviousness. This portion of the Federal Circuit’s opinion received little notice prior to the US Supreme Court’s recent opinion as it was not precisely the question posed to the US Supreme court in KSR’s petition. Surprisingly (or perhaps not surprising if one is mindful of the US Supreme Court’s holdings in obviousness cases prior to the formation of the CAFC), the US Supreme Court breathed new life into the “obvious to try” reason for combining references and provided an outline to do so.

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 in the art has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.

            A careful read of this excerpt from KSR appears to present a two-prong test (with sub-prongs) for a reason to combine references to find obviousness: (1) design need or market pressure; and (2) finite number of identified, predictable solutions.

            Understandably, you may be asking, “What does this mean to my business, my patents, and my patent applications?” It would appear that the broadening of the references allowed to be combined during an invalidity-due-to-obviousness-analysis (as part of a trial on an issued patent) is in line with the analogous art that is allowed to be combined by a patent examiner during the obviousness analysis phase of patent application prosecution. This would mean that invalidating a claim may require less specific references when obviousness is the basis in either a federal trial or during a re-examination via the US Patent Office (where a substantial new question of patentability may be raised, and the patentee has a chance to save the challenged claim from being found obvious by argument and/or a narrowing amendment). Perhaps the broadest and deepest effect of KSR will flow from the interpretation by courts and implementation by the US Patent Office of the “obvious to try” reason for combining references in finding obviousness. If such a sea change does indeed take place, patent practitioners should expect, in addition to explicit and clear reasons for combining references from patent examiners in their obviousness rejections, that there may be an increase in the frequency of reasons akin to “obvious to try” (e.g., design choice and perhaps even the application of the two-prong “obvious to try” test presumably made available via KSR.)

            DISCLAIMER: While this communication is intended to be informative, due to the yet-to-be-promulgated effects of KSR, this communication is understandably speculative and should not be taken as legal advice for any particular matter. The reader should anticipate that in the next days and months, a string of patent invalidity for obviousness cases and appealed obviousness rejection cases will form the progeny of KSR, and from these cases, the full spectrum of the ramifications of KSR will be made apparent. In addition, one should expect the US Patent Office to revise, in short order, its Manual of Patent Examining Procedure (MPEP) to comport with its understanding of KSR.

http://www.supremecourtus.gov/opinions/06pdf/04-1350.pdf