by Dennis Crouch
The Federal Circuit recently issued an important decision regarding the analogous art doctrine in Netflix v. DivX, No. 22-1138, — F.4th — (Fed. Cir. Sept. 11, 2023). The Patent Trial and Appeal Board’s sided with the patentee, holding that a key prior art reference was not analogous art. On appeal, the Federal Circuit has partially affirmed, but vacated and remanded on a procedural ground. This case also raises questions about the value of explicitly stating the problem solved within the patent document, and perhaps directly in the patent claims.
The statutory obviousness test requires a comparison of the claimed invention and the prior art from the perspective of a person having ordinary skill in the art (PHOSITA). 35 U.S.C. 103. Although prior art is generally defined by Section 102(a), courts have concluded that for obviousness purposes, a PHOSITA would only consider “analogous” prior arts. A prior art reference is considered analogous if it fits either of two prongs:
- Is the art is from the same field of endeavor, regardless of the problem addressed
- Is the reference reasonably pertinent to the particular problem with which the inventor is involved.
An oddity of the analogous art test is that it generally takes a binary approach—either a reference qualifies as analogous art and is considered as valid prior art, or it is deemed non-analogous and categorically excluded. This differs from typical evidence law, where the bar for relevance is low but the fact-finder must still weigh the probative value of the evidence. An alternative approach could apply a more flexible test assessing how closely related a reference is to the field of endeavor or problem addressed, rather than a threshold yes/no question. Under this view, references closely related to the invention would be given greater weight as prior art, while more distantly related references would be considered but afforded less significance in the obviousness analysis. Rather than wholesale exclusion, references could be evaluated along a spectrum. While this incremental approach may have some merits, the Federal Circuit has to date applied the analogous arts test in a binary fashion.
In the case at hand DivX owns US8472792, a patent related to encoding, transmitting, and decoding multimedia files to enable “trick play” functionality like fast forwarding. Netflix filed an IPR challenging claims of the ‘792 patent as obvious over a primary reference (Zetts) in view of a secondary reference (Kaku).
Kaku discloses using AVI files and index chunks to reproduce motion images in digital cameras, and the IPR focused on whether Kaku qualifies as analogous art to the ‘792 patent. The Board determined Kaku did not qualify as analogous art under either the “field of endeavor” or “reasonably pertinent” tests. On appeal, Netflix argued the Board erroneously required “magic words” within the petitioner briefing to identify the field of endeavor and that its briefing was sufficient to identify AVI files or encoding/decoding multimedia as potential fields of endeavor. Netflix also challenged the Board’s reasonably pertinent analysis.
On appeal, the court agreed with Netflix that the PTAB abused its discretion by requiring explicit identification of a field of endeavor using specific “field of endeavor” language within the briefs. The court explained that its precedent does not mandate using “magic words” and that Netflix’s briefing, taken as a whole, sufficiently identified potential fields of endeavor. The court remanded for the Board to reconsider the field of endeavor issue under the appropriate standard.
However, the court affirmed the Board’s finding that Kaku was not reasonably pertinent to the ‘792 patent’s problem of facilitating trick play in streaming multimedia. The court found substantial evidence supported the Board’s determination that Kaku addressed a different problem related to image compression and camera memory limitations.
Unlike many patents, the ‘792 patent clearly articulated the goal of enabling trick play functionality directly in the claims. When a patent identifies the purpose or advantage of the invention in its claims, it limits the scope of applicable prior art compared to a patent with vague, generic claims. This is especially true because many patentees intentionally refuse to directly state the problem being addressed within the specification. By including “enabling trick play functionality” in every claim, the ‘792 patent restricted the field of endeavor and pertinent prior art to references focused on trick play features.
This case raises this question: Should best practices for patent drafting include an explicit statement of the particular problem the invention seeks to solve? As the patent owner here demonstrated, doing so may limit the applicable scope of prior art during litigation. On the other hand, a narrow articulation in the patent itself may make the claims more vulnerable to workarounds. What do you think?
The vast majority of US Examiners, including Primary Examiners and even SPEs, have no understanding of what is a “Field of Endeavor” or how to determine the “Problem” being solved. The Examiner will attempt to find some generic point of commonality between the reference and the application, and “determine” that to be the Field of Endeavor. As for the “problem” being solved, MPEP 2141.01(a) is still citing KSR.
The field of endeavor is…INVENTING! Yeah, that’s it!
An Examiner once cited a reference disclosing industrial equipment to modify a reference disclosing exercise equipment against a claim directed to exercise equipment. I argued the secondary reference was non-analogous, being that it was not in the field of endeavor or directed to the same problem the inventor was addressing. The Examiner replied it was the same field of endeavor as the references were directed to the field of MECHANISMS.
This draws a parallel (even as Paul does not recognize it) to the thread on design patents.
For Paul, the (loosely) equivalent of “field of endeavor” for utility inventions ‘being’ inventors is mirrored to the “field of endeavor” for design inventions ‘being’ professional designers.
With this level of ‘framing,’ everything actually possible is de facto obvious.
I have thought a lot about the binary application of analogous art because I also find that aspect of the law interesting. A thought experiment for everyone here –
Lets say you have a specification that deals with a computer network. The specification appears to improve some aspect of the computer network. But the specification also includes a single paragraph dealing with something totally unrelated – a flower, or oil refining or whatever. The specification cites no reason that the paragraph is in there or what functional relationship it has to the allegedly novel system.
Claim 1 is directed to the computer context and the improvement. Claim 2 depends from 1, and adds a nonanalogous feature that has no bearing on the computer network. Something like, wherein the network is located in a building within 200 miles of a particular flower. That limitation is taken verbatim from the specification.
A search is performed and two references are applied to Claim 1 to render it obvious. Applicant does not dispute the obviousness of Claim 1. A tertiary reference dealing with flowers is applied to Claim 2. Applicant argues Claim 2 is nonobvious because 1) Flowers are a different field (zing!) than computers and 2) there is no reason that flowers are reasonably pertinent to the alleged computer problem. Therefore, reference 3 is nonanalogous and Claim 2 is nonobvious. Propositions 1 and 2 are – in fact – true.
Questions –
1) Assuming no other references relate flower locality to the claimed field of computer networking, is claim 2 nonobvious?
2) If claim 2 is obvious, what doctrine either allows the application of art to the claim or allows for the claim to be found obvious despite a feature not being taught?
3) Is claim 2 otherwise patentable, i.e. are there any 101 or 112 problems with it?
4) Is there any mechanism by which the PTO can force the applicant to strike the Claim 2 limitation other than by rejection?
5) Do any answers change if Claim 1 is anticipated by a single art rather than being obvious?
Obviously the point of the questions is that it seems ridiculous that a claim should issue because of a possibly omnipresent feature that is unrelated to an alleged advancement that is otherwise anticipated or obvious, and yet there is no mechanism to do so except perhaps the judicial exceptions or judicial-exceptions-lite doctrines that ignore claim language.
Chatgpt (3.5) answered thusly:
The scenario you’ve described raises several interesting questions about patent law. While I can’t provide legal advice, I can offer some general insights into how these questions might be addressed:
Assuming no other references relate flower locality to the claimed field of computer networking, is claim 2 nonobvious?
Claim 2 may still be considered obvious even if there are no other references directly linking flower locality to computer networking. The determination of obviousness is a fact-specific inquiry and considers whether a person having ordinary skill in the art (PHOSITA) would find the claimed invention obvious in light of the prior art. If the addition of the flower locality feature does not provide a non-obvious or unexpected improvement to the claimed computer network, it may still be considered obvious.
If claim 2 is obvious, what doctrine either allows the application of art to the claim or allows for the claim to be found obvious despite a feature not being taught?
The doctrine of obviousness under 35 U.S.C. § 103 allows the application of prior art to a claim. If the addition of the non-analogous flower locality feature does not change the obviousness analysis for Claim 2, it may still be found obvious. The key is whether a PHOSITA would have combined the prior art references to arrive at the claimed invention in a manner that is obvious.
Is claim 2 otherwise patentable, i.e. are there any 101 or 112 problems with it?
Patent eligibility (under 35 U.S.C. § 101) and compliance with the written description and enablement requirements (under 35 U.S.C. § 112) are separate considerations from obviousness. As long as Claim 2 meets the statutory requirements for patent eligibility and provides an adequate written description and enablement, it may be patentable on those grounds.
Is there any mechanism by which the PTO can force the applicant to strike the Claim 2 limitation other than by rejection?
The USPTO can reject Claim 2 based on obviousness or other statutory grounds during the examination process. The applicant may then choose to amend or remove the limitation voluntarily. However, the USPTO typically does not have the authority to force an applicant to make specific claim amendments; it’s up to the applicant to respond to the examination actions.
Do any answers change if Claim 1 is anticipated by a single art rather than being obvious?
If Claim 1 is anticipated by a single prior art reference, it may be rejected on the grounds of anticipation. In that case, Claim 2 may still be examined separately for obviousness, and the non-analogous flower locality feature would still be considered as part of the examination.
In summary, patent law involves complex legal and factual analyses, and the determination of patentability, obviousness, and other issues depends on the specific details of each case. Whether Claim 2 is found non-obvious or patentable will depend on the specifics of the prior art and the arguments made during the patent examination process. Additionally, the outcome may be influenced by court decisions and evolving patent law standards, which can change over time.
“ Is claim 2 otherwise patentable, i.e. are there any 101 or 112 problems with it?”
Love how the super powerful computer managed to provide a non-answer that would deserve zero points on a test and sanctions if you provided it to a court.
“managed to provide a non-answer that would deserve zero points on a test and sanctions if you provided it to a court.”
I realize that this is a low bar, but at least that ‘super computer’ has already bypassed your ability to engage on the merits.
The hypothetical is too silly to be of any use.
It is a bit silly, but I do see the “thought experiment” being attempted, as well as the logical flaw in that thought experiment.
There is an unstated premise that 35 USC 103 must catch and deny claims that have [“obvious” – in a purely colloquial sense] disparate amalgamations of claim elements. One might think of this as the “fish and a bicycle” effect.
The logical flaw of course is that 35 USC 103 serves its purpose, but that purpose is NOT what Random may purport it to be (leave it to an examiner to not fully understand the role of obviousness in patent examination).
Random, I would suggest that you instead treat this as an “incredible claim of utility,” a la perpetual motion machines, or (currently) workable fusion.
See link to en.wikipedia.org
I enjoyed the Wikipedia page, but it does not reveal to me how an objection to patentability based on “incredible utility” would actually be expressed by a PTO Examiner.
Would it be under 35 USC 101, eligibility, rather than 103 patentability, and to the effect that the purported “utility” falls short of being “credible”?
As utility (credible or otherwise) is not measured under 103 [kind of the point of my pointing Random to elsewhere than 103], the answer should be obvious [pun intended].
“A tertiary reference dealing with flowers is applied to Claim 2. Applicant argues Claim 2 is nonobvious because 1) Flowers are a different field (zing!) than computers and 2) there is no reason that flowers are reasonably pertinent to the alleged computer problem.”
Applicant should be sanctioned. If a limitation relating to a “disparate” art is expressly recited in the claim, then art describing that limitation is “analogous” to the claimed “technology” BY DEFINITION. This is especially true when the “technology” in the claim is LOGIC itself applied to some arbitrarily (or intentionally) recited content or meaning. But it is true in other contexts as well. There is no reason why prior art should be limited to a single “analogous art” field of multiple arts are plainly implicated in the claim.
You are reaching some of the silliness of the hypo that Breeze alludes to.
“Applicant should be sanctioned. If a limitation relating to a ‘disparate’ art is expressly recited in the claim, then art describing that limitation is ‘analogous’ to the claimed ‘technology’ BY DEFINITION.”
Huh?
He is most likely viewing 103 as being merely separate 102 items.
Lots of examiners do this.
It’s not complicated. If I claim
1. A computer, wherein said computer is configured for gaming, wherein said gaming includes a game whose goal is building cheeseburgers on a zero gravity spaceship within a specified time limit.
… the “analogous art” that can be cited here is computers, games, food prep and space travel.
Now, if the patentee wants to ADMIT for the record and for all purposes that everything is in the art, exactly as recited in the claim, either expressly or obviously, except for element X, then that admission could narrow the scope of the recited art that needs to be recited but it doesn’t change the fact that the admitted prior art is analogous.
Does this not contradict your prior position that “data is data” and not me can thus disregard the contextual nature OF the data?
You seem to want it to be a ‘no-brained’ that context DOES matter at the same time that your longstanding position is that context does NOT matter.
“Now, if the patentee wants to ADMIT for the record and for all purposes that everything is in the art, exactly as recited in the claim, either expressly or obviously, except for element X, then that admission could narrow the scope of the recited art that needs to be recited but it doesn’t change the fact that the admitted prior art is analogous.”
So everything in the claim except element X is admitted prior art?
Huh?
You’ve lost it.
“So everything in the claim except element X is admitted prior art?”
Congrats on following a simple hypothetical, albeit apprehensively. Again, I’m not sure what’s confusing to you (or anybody) about this.
Perhaps it’s just how high the level of silly there is, and why — for whatever reason — you cannot grasp it, Malcolm.
I suppose that this is because people just want to attribute so minimal level of intelligence to you, despite no evidence of such present.
“By including ‘enabling trick play functionality’ in every claim, the ‘792 patent restricted the field of endeavor … to references focused on trick play features.”
Is this correct? The opinion says, “Unlike the reasonable-pertinence test, the field-of-endeavor test does not look to the problem that the patent purports to address. It is enough that the prior art reference falls within the relevant field of endeavor of the patent-in-suit.” pp.10-11 (citing In re Clay, 966 F.2d 656, 658–59 (Fed. Cir. 1992)). It cites approvingly to a journal article for the proposition that “Courts generally take an expansive view of what constitutes analogous art” with respect to the field-of-endeavor test, and says “The field of endeavor is ‘not limited to the specific point of novelty, the narrowest possible conception of the field, or the particular focus within a given field.” pp. 10 (citing Unwired Planet, LLC v. Google Inc., 841 F.3d 995, 1001 (Fed. Cir. 2016) among others).
I am slightly surprised that nobody has yet made any reference to PCT Rule 5.1 (what the specification “shall” disclose about the invention). One would like to think that when a country signs up to an International Convention, it makes at least a token effort to comply with its mandatory provisions.
Rule 5.1(a)(iii) says that “[t]he description shall… disclose the invention, as claimed, in such terms that the technical problem (even if not expressly stated as such) and its solution can be understood…” (emphasis added). I think that it is safe to say that U.S. rules already require that much. We are not, in other words, out of compliance with the rules of the PCT.
PCT Rule 5.1 explicitly makes provision that the technical problem may not be stated expressly. The point in contention is whether it would be better to state the technical problem expressly. This is not a dispute over whether U.S. practice should comply with the minimum standards set by PCT Rule 5.1 (it should and it does), but whether U.S. practice should require something that PCT Rule 5.1 makes optional.
Can you say more, Greg. I can see that US law requires the solution to be understood. But for “the problem” to be understood, must there not be a “background” section in the specification? Not yet convinced that a specification that lacks a Background section is certainly compliant with the PCT Regs.
Perhaps there is a difference between chem/bio and the engineering arts? I mean, in chem/bio, an enabling disclosure of the solution inevitably renders “the problem” apparent. But I am sceptical whether that is so, in the computer-implemented invention space.
MPEP § 601.I provides that
In other words, the USPTO’s official policy is that there should be a “background” section. I think that qualifies as “at least a token effort to comply with” the demands of PCT Rule 5.1.
In any event, there is nothing magic about naming a section “background,” so long as the content and context are provided somewhere in the application text. Naturally, it is a help to the reader in locating the relevant disclosures if one follows the standardize arrangement that MPEP § 601 recommends, but it is not an indispensible essential.
Fair enough, Greg. Can’t argue with any of that.
Perhaps a nit, MaxDrei, perhaps merely your (continued) lack of appreciation of US patent law (however sad that may be, given the amount of time you spend on US Patent Law Blogs), but Greg’s statement (putting aside his gaslighting ‘nothing to see here’ hidden link), of
“In any event, there is nothing magic about naming a section “background,” so long as the content and context are provided somewhere in the application text.”
is clearly in error, as anything — literally anything — stated by applicant in the background section IS “magically” taken as applicant admitted prior art. This is so even if the item is not actually prior art.
There are drawbacks to specifying the problem. However, in some marginal cases, a drafter may choose to trade off the advantages of not specifying the problem for better assurance that the Examiner’s search is narrowly tailored. This is a commonly encountered tradeoff.
Entirely agree.
Also, this most always a discussion held between the client (who may not be ‘directly’ the inventor) and the practitioner.
Wt’s comments are on point (and – as usual – Greg’s comments are in the weeds) in regards to the type of tradeoffs that include your comment.
The CAFC’s emphasis on « the field of endeavor » and the « problem » is welcome, it provides strong arguments to traverse ‘103 rejections based on references which belong to non-analogous arts.
In my view, it is preferable to define the field of endeavor so as to include the specific field of use of interest to the applicant. Beyond a particular desired effect, each field of use features a host of various requirements which must be met by the claimed invention in addition to achieving the desired effect. The need to meet these requirements typically eliminates lots of alternatives which could have been contemplated in theory.
For example, if the field of endeavor is defined as a pressure sensor for automobiles, the automobile context implies numerous requirements (mass production, cost, choice of material, temperature, vibrations, etc). Pressure sensors for other fields of use (e.g. household appliance, space, manufacturing, oilfield, etc) feature entirely different requirements. The meaning of the « problem » to be addressed by the inventor as referred to in the CAFC decisions may then encompass the host of requirements relevant to each field of use, even when, as it is common, they are only implicit in the specification.
But it is helpful to document the advantages achieved by the invention in respect of these other requirements and provide if possible evidence of these advantages by test data or other relevant information.
I do not think that your “field of use” emphasis is cost efficient.
That is, the level of effort expended in such additional detail (especially if done properly), does not buy you much given that “OR pertinent to a problem” creates such huge overlap as to make any of the “tight” considerations that you want to invoke to be easily waived away by examiners, APJs and even Article III Judges.
The mention of “field of use” in the context of “analogous” prior art reminds me of the era when surgical staplers were new and USPTO Examiners would formulate objections to their patentability based on prior published details of office stapler constructions.
And then there is the old example from the early editions of the EPO Examination Guidelines, namely fishing hook vs crane hook.
I see from the post that “analogous” is that which is caught by at least one of the two given “prongs”. But with each “prong” the hole gets deeper. I mean, how does the decider decide fairly, predictably and consistently what precisely is the “problem” and with precision what is the “field of endeavor”?
Not sure I am following you MaxDrei.
Why exactly is following of either prong necessarily makes the hole deeper?
All I had in mind, anon, is that the courts have decreed that the enquiry into what is “analogous” must start by digging down far enough, first to settle what is the “field of endeavor” and what is the “particular problem with which the inventor is involved”. Only after you have done that can you start digging into whether the art is “analogous”.
At the EPO, to render it objective, the enquiry into patentability involves settling what was the universal world-wide state of the art and, then, what was (in the light of that state of the art) the objective problem for the notional PHOSITA (the “particular”subjective problem that the individual human inventor thought they were “involved” in being a distraction to objectivity).
But perhaps in the stipulated US enquiry the inclusion of the word “is” is an instruction from the court to make the enquiry objective, from the reference point of a notional “inventor” (rather than the real individual(s) who “was” named as inventor). Which is it, anon? Do you know?
You lost me (still) on the phrase “digging deeper” which carries a rather certain meaning in US dialogue.
You also seem to want to invoke a type of “real person” into the legal setting, and it is unclear why you would posit your last questions in such a framework.
We’ve had numerous discussions on the legal fiction of Person Having Ordinary Skill In The Art, so your choice is just not clear.
Can you rephrase?
Dennis wrote:
“A prior art reference is considered analogous if it fits either of two prongs:
Is the art is from the same field of endeavor, regardless of the problem addressed
Is the reference reasonably pertinent to the particular problem with which the inventor is involved.”
My doubts arise from the inclusion in this formulation of the word “is” in the phrase “the inventor is involved”. Which inventor? The named one or a notional one?
??? The named one is not related to the application of 35 USC 103 in the determination of prior art — clearly — the putative reference is a the legal fiction known as Person Having Ordinary Skill In The Art.
Are you doing that ‘throw your feces against the wall’ thing again?
The emphasis I advocate on the “field of use” in connection with the “field of endeavor” is based on my decade-long experiences of corporate patent lawyer. I have been struck by how narrowly specialized “real life” skilled persons are and how they ignore fields of use which are different from their own field, even when apparently close. This becomes clear when one looks at the complex of technical/commercial requirements which is unique to each specific field of use.
I understand this may be an uphill battle to convince an examiner and even a patent attorney in private practice. But there may be factual arguments to make the case.
anon, I do understand that the lens through which obviousness is assessed is the notional person skilled in “the art”. But who decides which art, and who decides what was the problem? We who practise before the EPO know. It falls to the Applicant to announce in the specification of the application as filed what is the field and the problem, and the court gives full faith and credit to that announcement. The Office searches for art in that field and composes obviousness objections based on that field and that problem, looking for hints or suggestions. What could the notional skilled person have done, to solve the problem? What would the skilled person have done?
In this way, for better or worse, Applicants re in control. They set not only the field but also the problem. Those Applicants who get the best results out of the PTO are those who procure a good quality patentability search before they start drafting the specification.
But in the US, if an engineering Applicant files a specification with no prior art background section, and no comparative data in the specification, the court has only the claim, with which to fix “the problem”. To me, that seems not enough. It leaves it open to the court to define the problem in such a way as to get to the desired result, whether “obvious” or “not obvious”, according to the gut feeling of the decision entity.
But hey, maybe it is a good thing, to set up a system in which those Applicants with funds to do a thorough pre-filing patentability search derive from such activity no advantage over impecunious Applicants?
And in reply to francis hagel, I wish I could appreciate his concerns but I can’t. Perhaps that is because my field is engineering rather than chemistry.
What I find interesting about francis’s musings is that they DO come from an apparent error of NON-PATENT viewpoint.
His being a corporate patent lawyer has apparently clouded his recollection of being a patent lawyer.
By this I mean that it simply does not matter what REAL WORLD (actual) people may or may not do in regards to what they choose to inform themselves with as in regards to prior art.
The legal fiction (non-real person) that is PHOSITA does not care. francis attempting to convince an examiner of what a REAL person would consider is thus legal error, and he SHOULD be facing a VERY STEEP uphill battle.
Real people 1gn0ring legal prior art is simply not a path to overcoming that legal prior art.
As to MaxDrei, I still see WAY too much “EPO Uber Alles” in his attempt to even frame the discussion as to “WHO” gets to decide :which art,” and “the problem.”
You need to understand that US law does not adhere to your well-known single ‘block’ that you have traveled around (and around and around and around and around).
Your notion of “it falls to the Applicant to announce” is just not how US patent law works. This is an error of yours in sliding away from the legal fiction – who has no care whatsoever as to what an applicant ‘announces’ – and merely cares about the state of the art at the time of filing. Applicants simply are NOT in the control that you seem to think that they have.
This is not to say that your statement of, “Those Applicants who get the best results out of the PTO are those who procure a good quality patentability search before they start drafting the specification.” is in error.
It is not.
But the lack of error of that statement is just not on point to your assertion of what CONTROLS the State of the Art, and as most ALL know, no matter just how good a patentability search may be, Examiners WILL come up with (sometimes very novel, often times very B A D) combinations that may not have been caught in that patentability search (and sometimes in direct contradiction to that patentability search).
Further, the thought of “To me, that seems not enough” only shows YOUR lack of appreciation of patent profanity and the REASON why US practice IS as it is (this is the same OLD problem that you have been active on these boards for well over a decade now, but your focus on shilling for things EPO has kept you from understanding what has been provided to you: my old adage of the stack of dead horses next to that well of wisdom that I have so often led you to).
And no, it is NOT ‘a good thing” to make the system dependent on the wealth of the applicant – that way be the Sport of Kings, and only accelerates capture by the ‘already monied.’
And lastly, not sure why you think francis is chemical arts based – nothing in his comments indicate that (quite the opposite, his pressure sensor example is MUCH MORE ‘engineering.’ (by the by, ‘chemical engineering’ is one branch of engineering).
“For example, if the field of endeavor is defined as a pressure sensor for automobiles, the automobile context implies numerous requirements (mass production, cost, choice of material, temperature, vibrations, etc). Pressure sensors for other fields of use (e.g. household appliance, space, manufacturing, oilfield, etc) feature entirely different requirements. The meaning of the « problem » to be addressed by the inventor as referred to in the CAFC decisions may then encompass the host of requirements relevant to each field of use, even when, as it is common, they are only implicit in the specification.”
If you think disclosing/defining/claiming it as a pressure sensor for an automobile is going to stop an examiner/APJ/Fed. Cir. J/accused infringer from arguing that a household appliance pressure sensor (or any of your other examples) is analogous prior art, you are kidding yourself. And the examiner/APJ/Fed. Cir. J will tell you so.
“ If you think disclosing/defining/claiming it as a pressure sensor for an automobile is going to stop an examiner/APJ/Fed. Cir. J/accused infringer from arguing that a household appliance pressure sensor (or any of your other examples) is analogous prior art, you are kidding yourself. And the examiner/APJ/Fed. Cir. J will tell you so.”
And they would be right because any other conclusion would be senseless.
Agreed.
Your comment reminds me of a story. I was involved long time ago in meetings between experts of different fields : the car industry and the oilfield industry (which requires equipment fit for use in the high temperature, very high pressure environment of deep wells). The goal was to share information regarding electronics compatible with high temperatures. But it became clear very quickly that no common ground could be found, because of the huge differences between the respective contexts (primarily a ratio of 1:1000 or more as to production magnitude and costs).
francis,
As much as I “bagged” on you above, I do enjoy your comments on differing contexts.
Two thoughts:
Last year in the USPTO’s own seminar on proper application of 35 USC 103, the Office stressed that an item of asserted prior art must be viewed for ALL of what it teaches, and therein the value of context very much MAY matter (and breadth of claims — read in light of the specification, without importing any unclaimed elements) may be a proper focal point for discussion on the merits of the present topic.
It’s nice to read your comment and your agreement that contexts do matter. You refer to a USPTO seminar on obviousness, do you know of any material relating to this seminar which would available to the public ?
As to US cases, I have been involved as in-house counsel for a client in more than 15 cases over the last decade and almost all have been granted fairly efficiently, a key feature being to draft claims with a well defined context (or field-of-use) limitation.
The case would lead to the conclusion that ideally some claims should specify the problem and some should not. However, a problem with specifying the problem being solved, is a statement of the problem is tantamount to an admission of the problem being known in the prior art.
At least at the EPO, where patentable invention is deemed to be the solution to a technical problem, the number of occasions (black swans, so to speak) where invention lies in perceiving the problem is vanishingly small. Normally, patentable inventions are non-obvious solutions to problems that were already appreciated by those working in the relevant “field of endeavor”.
The (no-brainer) challenge for drafters is that the inventor’s subjective “problem” turns out, after the PTO search, not to be a problem after all. So if the drafter announces in the specification that the invention lay in solving the inventor’s subjective problem, that suddenly looks, after the PTO search report, totally lame and signally undeserving of 20 years of exclusive rights.
“…here, wear my spectacles, they work for me.”
(yet again, MaxDrei and his EPO Uber Alles)
I wonder if there might not be an ambiguity in the word “problem” that is causing some confusion here? The lead case on “non-obvious problem” in the U.S. is Eibel Process Co. v. Minnesota & Ontario Paper Co., 261 U.S. 45 (1923). The “objective technical problem” in that case was that as one increased the flow speed of paper pulp beyond 500 ft/min, the resulting paper came out rippled instead of flat and smooth.
The Eibel people spent a lot of effort investigating why that was, and discovered that it was because of the tilt of a particular wire in the breast roll of the paper making machine. In other words, the “problem” in the machine design was the tilt of the wire. Once they made this discovery, the actual solution to the problem—adjusting the wire’s tilt—was quite easy and, well…, obvious. Diagnosing the machine defect, however, was not at all obvious.
When Eibel asserted its patent on the wire tilt against another paper manufacturer, the defendant argued that tilting the wire was obvious, and the First Circuit agreed. The Supreme Court, however, reversed the CA1 on the grounds that the problem was not obvious, and the discovery of the non-obvious problem made the whole patent non-obvious.
Note, however, that the “problem” here that made the patent non-obvious was not the “objective technical problem.” The whole world already knew—well before Eibel came along—that the paper will ripple if you run the pulp through the machine at a rate >500 ft/min. Admitting that you knew this objective technical problem would not in any wise have prejudiced the validity of the resulting patent. The “problem” that the Eibel inventors discovered was not the “objective technical problem” that their invention solved, but rather a different, non-obvious problem.
When one talks about phrasing the “objective technical problem,” this is never going to be the problem on which patentability is established. The “objective technical problem” is always going to be a problem that is known in the art. There is no downside to (from the perspective of one who hopes to make an Eibel Process argument) articulating the “objective technical problem” in the patent.
Oh sweet naïve child….
“The ‘objective technical problem’ is always going to be a problem that is known in the art.”
True. But as the term “objective” makes clear there must be evidence that the problem was known. Many EP OA’s I see will cite a portion of the reference and conclude something like, “From this the objective problem can be stated as…”
The Eibel case you discuss is similar to the rubber bottle stopper case from Patent Law 101. It’s not the solution of a problem that is known, it is the discovery of the cause of the problem and its subsequent solution, which as you note might be an “obvious” solution but one that does not defeat patentability.
[A]s the term “objective” makes clear there must be evidence that the problem was known.
Exactly. The “objective” technical problem must always be one that was known in the art, so there can be no problem in admitting that it was known in the art. There may be another problem that the patentee first discovered and that forms the basis of patentability, but that is the not the one that I was talking about in #1 below.
Many EP OA’s I see will cite a portion of the reference and conclude something like, “From this the objective problem can be stated as…”
Sometimes the EP examiner gets it right, and sometimes not. When the examiner gets it wrong, the applicant has a chance to respond and explain, and sometimes that convinces the examiner that s/he has wrongly formulated the objective technical problem. Sometimes it does not convince the examiner, and then the applicant has the opportunity to go to oral proceedings with a panel of three examiners, etc. and so forth.
Of course, sometimes the applicant thinks that the examiner is getting it wrong, but the applicant is actually the one getting it wrong. One way or the other, any system run by humans is going to have an error rate, and the best one can do is to try to hold that error rate to a minimum. I think that being explicit about the “objective technical problem” actually helps to achieve this minimized error rate, so we would do well to follow the EP approach on this particular point.
Whoa there folks. Caution when trying to compare practice at the EPO with that elsewhere.
At the EPO the term “objective technical problem” (OTP) is an artefact of the ferociously prescriptive and by now unassailable “problem-solution approach” to the enquiry into patentability. Decisive to the outcome is correct fixation of the OTP. The OTP is derived from a strict comparison between the “prior art starting point” (discovered with hindsight knowledge of the patent application) and the claim under consideration. It has a very specific and precise meaning. Mandatory is that the OTP shall be devoid of any trace of the claimed solution. It is a challenge to fix the OTP correctly. At the EPO a large part of the obviousness debate is to settle what is the OTP.
I doubt that in the USA the term “objective technical problem” has anything like the same clarity of definition. I suspect it means something different to every patent attorney that encounters the expression.
I doubt that in the USA the term “objective technical problem” has anything like the same clarity of definition.
We do not use the phrase “objective technical problem” in the U.S. I was deliberately borrowing the term from EP practice, because it is part of a structure in which EP practice functions better than our own. We would do well to follow the EP model of requiring that one articulate an “objective technical problem” from the state of the art.
Once one has formulated such an articulation of the OTP, it seems to me that we would do everyone a favor to include it in the patent text itself (much like the EPO requires the patentee to amend the text to include mention of the closest prior art). If the patent is worthy of grant at all, it should be possible to explain clearly in what sense the claimed invention constitutes a non-obvious advance over the prior art. The OTP is part of that clear explanation.
It’s not the solution of a problem that is known, it is the discovery of the cause of the problem and its subsequent solution
This is an important point, there is a difference between the problem and the source of the problem.
There is an iterative interrogative technique (first pioneered by Toyota and I was exposed to it many decades ago) called the “Five whys” or ask why 5 times. This approach essentially asks the inquisitor to looking deeper and deeper and deeper at a problem.
As result, the superficial problem may be different from the root problem. The problem with patent law is sloppy judges can mistake one for another.
Looking in from outside, what strikes me is the emphasis on the notion of a “field” of “endeavor”. I ask myself, endeavor to do what? Is the inventor to be deemed (as at the EPO) for the purposes of the enquiry into patentability, to have been trying to solve a problem in technology? Or is the “endeavor” that goes on in the USA something other than that?
Not sure how helpful it is to require applicants to tell us what problem the inventor was addressing. Often, the PTO search reveals that that problem wasn’t a problem at all.
I think it more important that applicant states with precision wording, i) what is the “field of endeavor” in which their invention resides and ii) what contribution the invention makes within that field of endeavor.
In pertinent part, our law (still) has: 35 USC 103:
Patentability shall not be negated by the manner in which the invention was made.
The concept of “by the manner” most definitely includes “aim of effort.”
We both allow and do not constrain inventions to EITHER purposeful effort (to solve a problem) OR serendipity.
An oddity of the analogous art test is that it generally takes a binary approach—either a reference qualifies as analogous art and is considered as valid prior art, or it is deemed non-analogous and categorically excluded.
It isn’t an “oddity” — it is written into the statute (i.e., “would have been obvious … to a person having ordinary skill in the art”). If the reference is not known to “a person … in the art” it cannot be used.
An alternative approach could apply a more flexible test assessing how closely related a reference is to the field of endeavor or problem addressed, rather than a threshold yes/no question.
And said “alternative approach” would be inconsistent with the statutory language.
This is especially true because many patentees intentionally refuse to directly state the problem being addressed within the specification. By including “enabling trick play functionality” in every claim, the ‘792 patent restricted the field of endeavor and pertinent prior art to references focused on trick play features.
If patentees don’t directly state the problem being addressed is that they don’t necessarily want to limit themselves to solving a particular problem. Maybe the same invention also solves a different problem. In that instance, a statement of a particular problem might limit the scope of the invention. There are lots of tradeoffs in drafting a patent specification/claims. This is just one of them.
Should best practices for patent drafting include an explicit statement of the particular problem the invention seeks to solve?
Not necessarily for the reasons I just discussed above. It all depends up what is more important — increased protection against invalidity assertions or increased claim scope with regard to infringement contentions.
I think your interpretation is too narrow for a person skilled in the art. Having been a research scientist for many years (20+ years prior to law school), I can say that this definitely doesn’t fit into the material and knowledge base a scientist maintains. There are many areas where a scientist is extremely knowledgeable about a topic, usually focused around their research or work. There are peripheral areas where a scientist has extensive knowledge but definitely not a full comprehension of the entire scope of the area. Then there are tertiary area where a scientist has some knowledge and some information, but definitely does not have a full understanding of the scope of the area. A real research scientist has a continuum of knowledge centered around their area of work that moves from expert at the center of their area and gradually grays out at the edges. Dennis’s proposed idea is actually a lot more realistic to how an actual scientist functions as opposed to the Court’s binary option. If a person skilled in the art has any connection to a real researcher or scientist, then a binary option is completely wrong.
I think your interpretation is too narrow for a person skilled in the art.
The standard is ordinary skill in the art — not extraordinary skill in the art. Also, most inventors are not research scientists.
The standard is that the claimed invention is obvious — not that it COULD have been developed by some lucky inventor who happens to have the correct peripheral and/or tertiary knowledge in these different fields.
There are peripheral areas where a scientist has extensive knowledge but definitely not a full comprehension of the entire scope of the area. Then there are tertiary area where a scientist has some knowledge and some information, but definitely does not have a full understanding of the scope of the area.
And who gets to define what that is? A person looking to invalidate the patent will always argue that one having ordinary skill in the art will have the desired knowledge in either the “peripheral area” or the “tertiary area.”
Dennis’s proposed idea is actually a lot more realistic to how an actual scientist functions as opposed to the Court’s binary option.
Dennis’s proposed approach would essentially be a giant loophole that would open the door to arguments that all prior art should be considered.
Art is either known or it isn’t. The art can either be applied or it cannot. These are binary decisions.
Further – it is critical to maintain the understanding that just because art may be prior, it does NOT follow that it meets the legal requirements for the term “prior art.”
Further still, this term is different for the different legal tests of anticipation under 35 USC 102 and obviousness under 35 USC 103.
TOO many seem to want to make mere existence enough. This would dem0l1sh the difference between 35 USC 102 and 35 USC 103, and is simply not what the legal term of obviousness means.
Many examiners in Group 1600 have PhDs and think exactly like DVan.
If a person skilled in the art has any connection to a real researcher or scientist, then a binary option is completely wrong.
I agree that if the PHOSITA has a strong connection to a real researcher, then the current approach is wrong. However, I think that it is fairly clear that the PHOSITA does not have much connection to a real researcher.
The PHOSITA is familiar with every paper in the PHOSITA’s own field—published in every language—on the same day that the paper publishes. As if this were not fantastical enough, the US PHOSITA is also familiar with the contents of confidential US patent filings made by other people on the day that they are filed. The US PHOSITA is not acquainted with the contents of patent applications filed outside the US, except that if a foreign application is subsequently brought into the US, then US PHOSITA suddenly becomes aware of the contents of those foreign-filed applications, as of their foreign filing date. In other words, the PHOSITA’s knowledge can increase retroactively.
This is not how any real, human researcher actually learns or thinks. The PHOSITA is a work of fiction. The PHOSITA’s manner of thinking is not meant to be a close analog to the mode of thinking of real, live inventors, so there is little to be gained by observing that real, live inventors do not function in the same manner that the PHOSITA is hypothesized to function.
“ If the reference is not known to “a person … in the art” it cannot be used.”
Conversely, if an “art” is expressly called out in the claim or if the specification defines a term in such a way that a specific “art” (or arts) is included with the scope of the claim, then that art (or arts) is admittedly known and “analogous” and can not be categorically excluded (at least not without embracing absurdity and reality-denial, which we know is a favorite pastime of applicants).
… but Malcolm is not anti-patent (as witness his perpetual animus to patentees)…
Should best practices for patent drafting include an explicit statement of the particular problem the invention seeks to solve?
I do not know whether prep-&-pros attorneys should regard this as a “best practice,” but the PTO should require that such a statement be included, just as they require that the text include an abstract. In a similar vein, the PTO should require that applicants phrase the claims in Jepson format.
The patentee should not be allowed to “hide the ball” about what they are trying to protect. The patentee should have a clear idea about what the patentee perceives to be the putative advance over the prior art and the problem that this advance solves. It is not at all unreasonable to expect the patentee to articulate those points clearly in the patent.