Obviousness
The problem of
defining obviousness has become a loose cannon that threatens relationships
central to the functioning of our patent system. The fair and effective
implementation of a recent Supreme Court decision that expanded the capacity of
the PTO to raise objections based on obviousness rests on the ability to obtain
an understanding of the relevant relations that comprise both the technical and
the contextual support for a given patent application. The soundness of the
Court’s decision follows from whether in a majority of the instances the
required knowledge can be derived from an investigation of the appropriate
subject domains. Validation of the current system depends crucially on the
ability of all impartial arbiters (e.g., the PTO and the courts) not only to be
able to properly assess the technical merit of the claims but, as importantly, to
be able to gain access to the unique contextual information that is
necessary to form an accurate assessment of the inventive spark that generated
a particular application.
Unfortunately, history books are not written about every little project. Is it reasonable, therefore, to expect that an examiner can be provided with the appropriate mindset of any given application domain as it existed at any arbitrary point in time, and not only for the context of an application but for all of the relevant prior art? At the very least, the subsequent acceptance of a particular successful idea will likely erode, or even totally eliminate from current recollection, the competing contemporaneous interpretations in play at the time of conception. At the worst, none of the subtleties of a given place and time and topic will survive at all. Any judgment of what constitutes an accurate, or even reasonable, view of past circumstances must then be completely fabricated.
Some definitions and conventions remain to be defined in the determination of what procedure should be used to assess obviousness. Is it possible for a specific idea not to be in the public domain or explicitly known to one with normal skill in the art (i.e., not be a generally known fact that exists in a public knowledge archive) yet still be considered obvious? Has all obvious information been catalogued or is there, for any given application domain, a collection of basic principles and a set of inference rules that operate on known facts and relations with a scope whose results are obvious? Certainly it can’t be the case that one with ordinary skill in the art will know all the obvious facts and relations in a given domain from prior learning, or when asked, will provide the correct answer directly without any experimentation or analysis. Yet, accurately defining an empirical or analytic toolkit for each relevant time and domain begins to shift the process of defining ordinary into something extraordinary.
It would perhaps be beneficial to take a look at how these conventions, these choices, play out in today’s patent system. In a recently ended patent prosecution, we were confronted with a run of objections composed of sets of precedents cobbled together with serial abandon. Particularly vexing were references to terms and concepts that were not in the original proposal or even in any of the cited precedents. When one set of objections was removed through counterargument, it was subsequently replaced with an entirely new set of objections that was stitched together with a substantially, or completely, replaced set of precedents. This was the brave, new, post-KSR-Teleflex world in operation. All these objections resulted in additional delays as well as increased legal costs for the retention of a patent attorney’s services. Who was to gainsay the examiner’s unbridled logic? Not, apparently, the Court.
Unfortunately for the PTO, the principal reference used by the writers of the patent that was the prime justification for the initial objection, the first in the string of sets of cobbled precedents, was a book written by my thesis advisor. As I was there at the creation, I know what the terms meant at the time, uncolored by any subsequent co-option. I could support these interpretations because I still possessed the many underlined, annotated and yellowing references of the day. But alas, even armed with this specific knowledge and experience, our application was repeatedly rejected by the ability of the examiner, more powerfully armed by the Court’s obviousness decision, to assert new objections that rose each time phoenix-like out of the ashes left by the combustion of his earlier arguments.
How can this onerous system be corrected? Is it the case that an appreciable degree of arbitrary and unfair compromise with respect to an unreachable truth must always be confronted when filing a patent (even if the other problems brought on by years of insufficient staffing and funding habitually imposed on the PTO by Congress were rectified)? Are the examiners guaranteed to always be placed in a compromised position when it comes to the historical integrity of their judgments of innovative contributions? Is it not patently impossible for those responsible, but initially and irreversibly removed from the environment at issue, to pass judgment on what facts and relations led to what intentions and understanding in so many diverse fields?
Actually, this is not just a rant due to a five-year, slow-motion frustration with the PTO. I do believe that a workable solution exists. There are, in fact, contemporaneous histories that have been, and continue to be written about almost every little domain of science and technology. These histories are the articles in the ubiquitous journals and trade magazines whose numbers have exploded to cover practically everything that has been done over the last half century. We use them already as a major source of prior art. Now, if the inventive ideas can be presented in a manner sufficient to demonstrate utility in a patent application and if these claims can be shown to be novel in that they cannot be found to occur in any prior art, then all that should be needed is to demonstrate objectively that the ideas are non-obvious is to show that the constitutive concepts that led to the invention were accessible to the public, or to the relevant population of interested parties, and that the claimed innovative relations in the patent application were not independently assembled and made known by anyone during a reasonable time after all the required components were in the public domain. If all the elements have been publically available for a reasonable time, nothing extra need be done. If, however, one or more of the critical concepts is restricted knowledge, then a choice must be made. In order to be inoculated against claims of obviousness related to the sequestered material, a filer might choose to release what could rightfully be maintained as privileged data and kite it through the public square. If no one picks up on the relation of interest, the claim is non-obvious. If the connection is made by another, it is obvious.
While this proposed obviousness assessment procedure contains a certain degree of chance (e.g., someone with exceptional skill in the art might take interest and replicate the innovative relations), it avoids the level of capriciousness and interpretative creativity one often feels when responding to an objection by the PTO that is frequently less than compelling. As any patent attorney will affirm, appreciable randomness exists in the current application process as well, taking the form of the stochastic assignment of a particular examiner and his associated proclivities.
In those cases where all the constituent evidence is in the public domain, there is the additional benefit in that the examiner is relieved of the specific responsibility of determining whether privately-held information is itself obvious. While this proposal will not resolve all of the issues associated with the determination of obviousness, such as in cases where the release of privileged information would be giving too much away from the point of view of the applicant, the proposed mechanism should facilitate the resolution of a good proportion of the submitted cases. These covered cases would include those where all the constituent ideas were already in the public domain as well as those cases where there is no contention over the obviousness of privately-held information. (Nota bene: A helpful trade that should be in play here is that the more potent the privileged information, the more likely it will be declared non-obvious if kept privileged; the less potent the privileged information, the less likely it is to lead to the independent formulation of the invention if made public.)
The only decision that remains is to establish what a fair time is for the gestation of a new invention formed out of multiple public ideas. Is it six months, two years? Five years seems to be forever in this day and age. Can an argument be made that this interval should vary across domains? Some domains require extensive experimentation – the creation of cell lines, the completion of clinical trials, and the like. On the other hand, fortune, and the PTO, should favor the prepared mind. The determination of what is agreed to be a reasonable interval to obtain a patent should also be factored in. Even though there is a tension between ensuring timeliness of issuance and the need to allow the fair dispersal of information where access to what was initially privileged data would bestow a crucial advantage to the independent formation of the claims of interest, establishing an appropriate window is likely a far easier task to accomplish than to repeatedly be forced to conjure up the existing technical intent of some past time. Likewise, the interpretation of the historical meaning of terms, often crucial in establishing context, could be sorted out using citations from the contemporaneous literature.
Consideration should also be given to an idea along the lines of a provisional patent, wherein parties could file applications whose content would not be disclosed until a reasonable gestation period has culminated. Consistent with this logic and in order to preserve the intent of the gestation period, there should be no temporal advantage given to earlier filings. All successful claims are to be considered born de novo on the gestation date, and should be granted equal claim to patent rights. [Should the initiation of a gestation process be entirely the responsibility of the filer, or is there some part for the PTO, or even the courts, to play? Who determines that the public information, given the set of constitutive concepts, is adequate to support the claims, and when is this determination made? How are overlapping claims, in both time and content, to be resolved? Is this a process that the PTO could handle through issuing a set of guidelines on what constitutes required support for a claim or do all the complexities alluded to above require assistance from the courts?]
In addition, the proposed assessment mechanism should provide a service through the generation of a body of unbiased obviousness case law that could be used to render guidance to the PTO and the courts in the administration of the unresolved applications and, in particular, to appropriately set the bar for what constitutes a knowledge standard for one practiced in the art. It also could serve as a counterbalance to outlier examiner decisions that are not consistent with independent evidence of practitioner capabilities. While such a resource would certainly be helpful in the prosecution of new applications, its utility in the assessment of challenges to existing patents where all the issues are increasingly made uncertain by the passage of time could well prove pivotal in many cases. It might be argued that the quality of skill evinced in the literature sets the bar higher than it would be based only on ordinary skill in the art, but ordinary was already right up there with obviousness on the nebulosity scale.
It is proposed that the contemporaneous literature can be shown not only to be useful in the determination of novelty, but for obviousness as well. A claim is novel if it doesn’t exist in prior art. A claim, with its stipulated utility, is proposed here as non-obvious if it doesn’t appear on the heels of the entry into the art of the set of necessary and sufficient ideas required for support of the claim (it is important to note that ‘entry into the art’ includes the corpus of common sense as well as the version of the ever expanding base of public world knowledge that existed in support of the relevant domain at the time of the application). [Extend this discussion with more details on the original definition of the utility of a claim as well as on the earlier, now somewhat tarnished, teaching-suggestion-motivation convention and its impact on the definition of obviousness. Describe how ideas in applications transition from one classification to another (e.g., non-obvious to obvious) based on disclosure or on the existence and use of identical, similar, or conflicting ideas in the art (the relevant published literature and patent corpora). Discuss how it might seem all too easy to equate obviousness with disclosed ideas, especially as time passes. There clearly are concepts that are beyond the ken of one with ordinary skill in the art. Proof of that assertion can be had by searching out the inner complexities of practically most any nontrivial endeavor and perusing their often incomprehensible descriptions documented in the public record. There is an interesting area of unintended consequence in the application of a sliding scale for ordinary. According to a straightforward interpretation of the PTO rules, if the people who congregate in a given domain possess a level of ignorance that is much higher than in another domain, they are accorded a much lower level of required insight or spark to obtain a patent. Since ordinary is an empirical measure, there is no absolute application of logic or even common sense, then, that can be used to establish a patent’s worthiness. It is not just the specific concepts that change across domains, but the process of reasoning itself. This awkward reality is brought about largely because of the need to address obviousness through the flawed constructs favored by the Court.]
An important distinction can be made based whether an application’s claims are derived from new findings or from novel associations of existing facts or relations. In the determination of obviousness, there is a benefit to be gained for claims based on new ideas in that they are apt to be less entangled with existing lore. An uncomfortable reality in play here is that this categorization of obvious ideas is actually a classification applied to a continuous spectrum of relevant properties. While utility and novelty have surer footing (e.g., specific physical relations or discrete temporal events) in the historical record, obviousness depends much more on ephemeral relations that existed among the contemporaneous participants. What is required is an objective mechanism to sort out at least a portion of the existing cases without making the review process itself inventive. [Include an expanded description of the evolving relations among utility, novelty, and obviousness as knowledge shifts from being the result of an inventive spark to being accepted as common lore. Also include a description of the more general criteria for inventiveness and the abilities of a normal practitioner in the art. Go back to the earlier legislation and litigation for the exact wordings used (e.g., issues like Graham and predictable variations).] How does one determine what or who represents normal practice in the art and where does that determination lie on the nebulosity scale?
There is a slippery slope between what constitutes novel associations and generally accepted relations in a given domain [Find the definition in the references for the scope of an application domain and explore it here.] at a given time (e.g., in the 1980s computer vision and graphics were isolated principally due to the lack of and requirement for expensive and experimental equipment to create results in the latter domain). The only objective evidence for what was present in the contemporaneous soup of theoretical ideas that led to the inventive proposals in the patent application discussed above is what results appeared in which, initially independent, literature when. [Expand the obvious proposal defense to explicitly demonstrate the assembly of elements into the claims and use it to support the gestation period. Describe how the proposed mechanism turns the whole obviousness dilemma on its head and converts the inventor’s nemesis into a benefactor.]
Decisions on utility or obviousness are often based on the evaluation of ideas that can emerge from the evolution or merger of application domains – a process that often has more to do with the practicability and cost of implementing the relevant ideas than whether the proposed ideas were created out of whole cloth. If antigravity or teleportation were to become achievable, the juxtaposition of existing ideas might, in consequence, have their utility potentiated. Making these assessments – often in times of rapid change, with the merging of disparate knowledge bases, and especially now while operating under the new rules that allow the PTO to cobble precedents with abandon – may well cross the line from debatable to outright arbitrary. Given an objective examination, these assessments, based on uncertain contextual reconstructions, can’t reasonably be expected to measure up to the empirical, objective and contemporaneous determination mechanism that is being proposed here.
Many of these concerns may be viewed as an imbalance among the properties currently used to establish the validity of a patent. A patent needs to be useful, novel and non-obvious. Of these, it is likely that utility has the surest footing and obviousness the weakest. The approaches used to date can be characterized by an over-dependence and perhaps an inappropriate reliance on one of the properties: obviousness. More recently, this reliance on obviousness to disqualify a patent has increased. The weakness in this approach is the dependence on a current understanding of the level of the knowledge in the relevant area by a group of relevant individuals at some point in the past.
On the other hand, the assessment of novelty is one situation where pragmatics enters into the equation. In particular, the ability of the patent office to keep up with an exponentially growing, rapidly changing marketplace, such as in digital imaging, is a challenging task, and the PTO is falling behind. A better solution might be found by recruiting the vested interests of the marketplace and utilizing the far greater resources that are available through the digital connectivity of the interested parties. This collective wisdom could be brought to bear on the novelty of any given patent. Combined with the nine month review period in the new patent reform legislation, this new environment might develop into a mechanism that provides more balance and less litigation.
In the scenario presented here, the major patent decision is for the PTO or, ultimately, the courts to make a determination as to the strength of the set of constitutive concepts in the public domain (the soundness of the logical and scientific relations, how clearly they were presented, how many times, and in what venue(s)) as sufficient evidence leading to the claims. A determination of the relation between the constitutive concepts and the claims is clearly more objective than assessing the state of ordinary skill (who commonly knew what when) in some domain at some past time. When a validated set of concepts remain uncombined during a reasonable gestation period, it is signal testament that the dependent patent claims are non-obvious and the proposed process secures this finding by providing an objective, empirical test administered to the relevant population at the appropriate period in time. It is the primacy of an exceptional, insightful spark that is being rewarded here – and deservedly so, for everyone else demonstrably allowed an opportunity that is currently valued to slip on by.
As a final observation, perhaps Obviousman could be recruited to serve on the Court as the 10th man and, as in baseball, that position could be used to represent the sense of the people – in this case, their common sense. While pointing out the irony of obvious as one of the meanings of patent would be an anathema to our superhero, Obviousman could, at the very least, use his powers to save Justices such as Antonin Scalia from being exposed to too much irrational gobbledygook.
Brian C. Madden