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The Three Steps To Successful Patenting
[Step No. 3]

This is the last in a three part series: The Three Steps To Successful Patenting, and all you need to ever know about the patents, the patent law, judicial review and the substantive law of substantial evidence. That’s a lot for just three monthly articles, and I think it meets expectations. Those expecting more may call or leave messages.

In a previous article, Step No. 1 addressed the question: What kinds of inventions will the patent office accept as valid subject matter for a patent? The answer is better understood in the negative: no mathematic formulas or theories, no products of nature, and nothing that is contrary to the commonly accepted knowledge of the natural sciences, are allowed. That means no perpetual motion machines will be accepted. The last perpetual motion applicant tried to demonstrate a working model and he, the offer, and the application, were rejected. Undeterred, he attempted to jump the White House fence in a direct appeal to the Commander in Chief and was similarly rejected. This time it was by the Secret Service, who happens to have a reputation.

Under the category of law or fact, Step No. 1 is the fact question: Is the invention an apparatus, composition of matter, new method or process or a new use of an old device? Once the U.S. Patent Office makes up its mind, there’s no turning back.

Step No. 2 was about novelty. The question is whether the application claims an invention, which is not disclosed in a single publication or in a single prior device, composition, method, or new use of an old device. If the invention can be shown within the four corners of an issued or published patent or application, operation, or in an actual device, then the invention is not novel. As a matter of fact, the patent application is denied, and rightfully so. If it wasn’t we would have 15 patent applications a day for the ballpoint pen.

Step No. 3 is called the obviousness test and is like no other. It’s the next step for an invention that has already passed Step No. 2. It’s a mixed question of fact and law, something like product liability, where the question is whether a device is unreasonably dangerous in design or manufacture or if there is a failure to warn about a product defect. It’s more an intuitive question: Would a person skilled in the art in which the invention fits have found it obvious to construct the invention given the knowledge that this reasonably skilled person would be expected to have? An example might be the improvement of a golf club. While the concept of a single golf club with means for multiple club use may be a golfer’s dream and within the imagination of every golfer, the details of how this device could be made, or operate, may not be. It would take a person reasonably skilled in the art of mechanics to make a working design, or as expressed in the patent law, a reduction to practice.

Let’s say someone did make a working design and now the examiner is faced with the task of searching the patent database for a patent showing a multi-use club. The examiner, applying Step 2, first will search the Patent Office database for a single patent or single published application, called a reference, disclosing the invention. Lacking that single reference, the examiner will search for one reference that discloses most of the inventive features and then search for a second reference that discloses the missing pieces. That’s Step No. 3. The protocol is then to show that for one skilled in the art, it would be obvious to add the missing parts in the first reference, using some of the parts disclosed in the second reference.

If this test of “obviousness,” is to be properly applied, it must be by a strict rule of law, and that’s why the obviousness test is called a mixed question of fact and law. In Step No. 3, first come the facts disclosed by the two references and then the application of the law to determine if there is substantial evidence to show the parts missing in one reference can be added though the second reference.
This test is difficult for an examiner or a putative infringer attempting to prove an issued patent is invalid. It can be illustrated by my fellow patent attorney Howard, who says, “I have never seen a rejection based on obviousness, I could not have overturned.” However, even Howard, as good as he is, sometimes makes a trip to the Federal Circuit. The reason is that most practitioners, mostly all inventors, and those who would choose to use a patented device without permission do not properly understand the legal test for obviousness.

The problem is the test for obviousness seems to be too “obvious,” and that is where the law comes in to protect the inventor and patentee. In applying the obviousness test, it is necessary to put aside our prejudices about what people should know and limit ourselves to what is known as shown by the two patent references found by the examiner when searching the patent data base. That’s called substantial evidence and it the only acceptable proof of what one skilled in the art would know about combining the elements in the two separate references.
‘Hindsight’ is the final word. Any one can make a Wright Bros. Flyer, having seen it hanging at the Smithsonian. That’s hindsight, looking behind and seeing what the Wright’s did. As in the case of a trade secret, the fact that something has been accomplished, in the case of the Wrights, by an aerodynamically curved wing and warping structure is enough to give someone the necessary hindsight to pursue the same or a comparable solution. That means the test of obviousness is not the assumption, conjecture, or surmise and speculation of someone with the feeling of, “I could have done that if I needed to do it but I didn’t need it, so I didn’t make it, but if I did need it, I would have thought of it- easily. After all, necessity is the mother of invention, and besides, I’m sure I have seen it before.”
Legally, something more is required bringing us to a short lesson in ‘evidence,’ something as a law student I never understood until I studied the Rules of Evidence for the bar exam. Evidentiary rules are not the same as the procedural rules for the Patent Office, as bound up in 37 Code of Federal Regulations. Those are rules of procedure that specify the patent application process. The order of an application, how to file an application, an amendment to, or an appeal for an application represent examples of those rules. The rules of evidence are not procedural but substantive law, and for an administrative agency, as the Patent Office is, are codified for use with the Federal Administrative Procedure Act, the same Act that applies to all Federal Agencies.

For a long time (to me it seemed forever) no one ever seemed to have a clear understanding of the standard for review of an examiner’s decision rejecting an application. Some said the rejection was reviewed on the standard of arbitrary and capricious. That meant any plausible rational used in the rejection would meet the standard of review. Lacking that plausible rational, the examiner would be overturned.

Another standard favored by the federal courts was ‘clear error.’ That was said to be the strictest standard for the patent examiner to meet because under strict scrutiny, the Patent Office was subject to whatever rational the courts fashioned to the purpose. Clear error was whatever a three judge panel at the Court of Appeals for the Federal Circuit said it was when it saw it, and if it saw it, the examiner was reversed. It’s something like calling a balk in baseball. The justices knew it when they saw it.

Supporting the Patent Office, the test was of deference to the examiner’s expertise as one skilled in the art or with deference to the expertise of the agency. That meant the invention was too complicated for the court, something that might happen in a state court in a trade secret case.

The mist cleared when Mary Zurko and Sang Su Lee appeared. Zurko was a Supreme Court decision. Sang Sue Lee was decided by the Court of Appeals, one step down, but an incremental extension of Zurko’s general requirement of substantial evidence for a Patent Office rejection in the special case of obviousness.

Mr. Lee’s invention was a method for automatically displaying functions of a video display device. The steps within the method, as claimed and examined by the court were 1) determining if a demonstration mode is selected; 2) if said demonstration mode is selected, automatically entering a picture adjustment mode having a picture menu screen displaying a list of a plurality of picture functions; and 3) automatically demonstrating selection and adjustment of individual ones of said plurality of picture functions.

While one reference described a television set having a menu display by which the user can adjust various picture and audio functions, it did not include a demonstration of how to adjust the functions. However a second reference described a game's video display as having a "demonstration mode" showing how to play the game but did not make any mention of the adjustment of picture or audio functions. The examiner filled in the missing pieces in the first reference by declaring, “It would have been obvious to a person of ordinary skill to combine the teachings of these references to produce the Lee system.”

Mr. Lee appealed to the Board of Appeals. His position was the second reference simply explained how to play a video game but had no, and that the prior art provided no, teaching or motivation or suggestion to combine these references or that such combination would produce the Lee invention. The Board, in a statement going down in the lowest depths of patent legal history said, “It was not necessary to present a source of a teaching, suggestion, or motivation to combine these references or their teachings because a conclusion of obviousness may be made from common knowledge and common sense of a person of ordinary skill in the art without any specific hint or suggestion in a particular reference.” That meant substantial evidence was not required if the examiner thought he or she had common sense. A bad choice of words, and one not countenanced by the rule of substantive evidentiary law.

What the Lee court said was that for a meaningful judicial review, the Patent Office decision had to be supported by substantial evidence. This means the Patent Office must present a full and reasoned explanation of its decision by findings of fact and the grounds thereof, as supported by the agency record, and then explain its application of the law to the found facts by a process that is by which is logical and rational. In the case of Lee, the Patent Office failed to provide any fact evidentiary base for its conclusion of obviousness. As we all know, every conclusion must be shown to have been rationally made by the existence of provable facts and common sense logic connecting those facts to the conclusion.

The rule of substantial evidence is that missing parts of one reference cannot be remedied by general conclusions about what is basic knowledge or common sense. All of the facts used for the decision must be shown to have been disclosed within the four corners of at least one of the two references. That means the suggestion, teaching, or disclosure of adding the missing parts from one of the references, to the other reference, must be shown to have been expressed in at least one or the two combined references, or disclosed in some other written record or device.

The lesson is - if it can’t be found in print or in a functioning device, it can’t be used to reject a patent. Since Mr. Lee went to the Court of Appeals for the Federal Circuit in 2002, is now the reason why we have so many granted patents, and why an inventor would never accept an obviousness rejection without admissible or substantial evidence.

My apologies for taking so long to reach this “obvious,” conclusion.

Mr. Rosenblatt, a Registered Patent Attorney with the U.S. Patent and Trademark Office, practices in the e commercial law of technology and the Internet and the law of patents, trademarks, and copyrights. He is a Florida Supreme Court Certified Mediator, a Florida Bar Certified Approved Mediator for Computer Law Disputes, and is admitted to the Northern, Middle, and Southern, U.S. District Courts for Florida.

Any questions or comments may be directed to Mr. Rosenblatt at (321) 727-7626; FAX: (321) 821-1922 or by email to jirosenblatt@earthlink.net Past articles may be viewed at http://www.joelirosenblatt.com.
Copyright 2006 Joel I. Rosenblatt; All rights reserved.