Jayson CohenOctober 25, 2005Jayson CohenOctober 25, 2005

Policing Obvious Patents – Motivation to Combine versus Synergy

Policing Obvious Patents – Motivation to Combine versus Synergy

(I claim fair use of all Copyrighted Cartoons herein.)(I claim fair use of all Copyrighted Cartoons herein.)

Introduction - The Selden PatentIntroduction - The Selden PatentBad Facts for Selden

Prior Art - Numerous patents and publications show all claimed features

The Lemelson of the Late 19th Century

Association of Licensed Automobile Manufacturers (A.L.A.M.)

1879 Filing BUT 1895 Issuance

Lower court: “[N]o instance is known to me of an idea being buried in the Patent Office while the world caught up to and passed it, and then embodied in a patent only useful for tribute.“ (Foreshadowing prosecution estoppel?)

Bad Facts for Selden

Prior Art - Numerous patents and publications show all claimed features

The Lemelson of the Late 19th Century

Association of Licensed Automobile Manufacturers (A.L.A.M.)

1879 Filing BUT 1895 Issuance

Lower court: “[N]o instance is known to me of an idea being buried in the Patent Office while the world caught up to and passed it, and then embodied in a patent only useful for tribute.“ (Foreshadowing prosecution estoppel?)

The Ford Challenge: 1903-1911The Ford Challenge: 1903-1911

Intro. - The Selden Patent – Claim 1 Boiled DownIntro. - The Selden Patent – Claim 1 Boiled Down

The combination with a road-locomotive,

[an engine]

[a drive train]

[a carriage].

The combination with a road-locomotive,

[an engine]

[a drive train]

[a carriage].

Intro. - The Selden Patent – Poster Child for No Motivation to Combine?Intro. - The Selden Patent – Poster Child for No Motivation to Combine?

Columbia Motor Car Co. v. C. A. Duerr & Co., 184 F. 893 (2d Cir. 1911)

The Appeals Court mostly got Patent Law right.

Prior art showed various sub-combinations in some form.

The evidence would likely have evidenced both motivation to combine and lack of synergy.

Other Problem Today: WD – Genus (Broad Claim) / Species (Narrow Spec.)

Columbia Motor Car Co. v. C. A. Duerr & Co., 184 F. 893 (2d Cir. 1911)

The Appeals Court mostly got Patent Law right.

Prior art showed various sub-combinations in some form.

The evidence would likely have evidenced both motivation to combine and lack of synergy.

Other Problem Today: WD – Genus (Broad Claim) / Species (Narrow Spec.)

“It is clear that . . . invention would not be shown in the mere combination of (1) a carriage, (2) a drive, and (3) a gas engine, or even a hydrocarbon gas engine. The elements were old and the combination neither novel {they mean not inventive} as producing any new result nor as showing any new co-operative action {Synergy!}”

“It is clear that . . . invention would not be shown in the mere combination of (1) a carriage, (2) a drive, and (3) a gas engine, or even a hydrocarbon gas engine. The elements were old and the combination neither novel {they mean not inventive} as producing any new result nor as showing any new co-operative action {Synergy!}”

Policing Obvious PatentsPolicing Obvious Patents

The Purpose of Obviousness (Public Policy) and the Two Tests

Motivation to Combine – Oetiker; Shaffer

Synergy – Sakraida; Shaffer

What’s really going on? Maybe?

Has the Federal Circuit overruled the Supreme Court?

The Purpose of Obviousness (Public Policy) and the Two Tests

Motivation to Combine – Oetiker; Shaffer

Synergy – Sakraida; Shaffer

What’s really going on? Maybe?

Has the Federal Circuit overruled the Supreme Court?

Agenda

What is the Purpose of Obviousness?What is the Purpose of Obviousness? Protects and Enhances the Public Domain

It can reward:– Pioneering Inventions– Nontrivial Improvements

It can prevent technically trivial patents– which can lead to competitive concerns and TOO MANY PATENTS

It can allow NEW PRACTICAL KNOWLEDGE to enter the art (without focusing on commercial prospects)!

Why does a “valuable” invention appear? (Professor Duffy)

Either: Inventor’s Efforts and Intellectual Contributions

Or: Other Factors – when changing fast, supposedly less “effort” needed.– Technological Change (Selden?, one-click patent?, Shaffer?)– Regulatory Change– Market Change

increased labor costs (Sakraida(?)); changing materials costs

Protects and Enhances the Public Domain

It can reward:– Pioneering Inventions– Nontrivial Improvements

It can prevent technically trivial patents– which can lead to competitive concerns and TOO MANY PATENTS

It can allow NEW PRACTICAL KNOWLEDGE to enter the art (without focusing on commercial prospects)!

Why does a “valuable” invention appear? (Professor Duffy)

Either: Inventor’s Efforts and Intellectual Contributions

Or: Other Factors – when changing fast, supposedly less “effort” needed.– Technological Change (Selden?, one-click patent?, Shaffer?)– Regulatory Change– Market Change

increased labor costs (Sakraida(?)); changing materials costs

What is the Purpose of Obviousness?What is the Purpose of Obviousness?

But-For Theory = Comparing the World Without and With a Patent But-For Theory = Comparing the World Without and With a Patent

Inventors Inventions

What is the Purpose of Obviousness?What is the Purpose of Obviousness?

But-For Theory

Patent as incentive to DEVELOP or DISCLOSE Inventions that would have been significantly delayed otherwise

Supposedly “Pure” Translation of the Constitutional Clause:

To Promote Progress in the Arts

Protects invention where large up-front investment needed

Drugs, Cutting Edge Technology, …

But-For Theory

Patent as incentive to DEVELOP or DISCLOSE Inventions that would have been significantly delayed otherwise

Supposedly “Pure” Translation of the Constitutional Clause:

To Promote Progress in the Arts

Protects invention where large up-front investment needed

Drugs, Cutting Edge Technology, …

What is the Purpose of Obviousness?What is the Purpose of Obviousness?

But-For Theory - Limitations

Impossible to Implement a “But For” Test – FTC Report

The “Fiction” of the world with and without a specific patent - “But for” pretends you can figure out what the patent adds in advance (ex ante)

Can’t always separate inventor’s contribution from “other factors,” like technological, regulatory, and market change.

Ignores Uncertainty of Invention – Risk Matters!– Development happen in fits and start - random– Investment in a research program versus a specific patent – FTC Report

Does not distinguish the quality of disclosure (imparting practical knowledge/enablement) from the fact of disclosure – Just having Patents can save Enablement / Reverse Engineering costs– Discounts the quality of patent disclosure relative to other forms

But-For Theory - Limitations

Impossible to Implement a “But For” Test – FTC Report

The “Fiction” of the world with and without a specific patent - “But for” pretends you can figure out what the patent adds in advance (ex ante)

Can’t always separate inventor’s contribution from “other factors,” like technological, regulatory, and market change.

Ignores Uncertainty of Invention – Risk Matters!– Development happen in fits and start - random– Investment in a research program versus a specific patent – FTC Report

Does not distinguish the quality of disclosure (imparting practical knowledge/enablement) from the fact of disclosure – Just having Patents can save Enablement / Reverse Engineering costs– Discounts the quality of patent disclosure relative to other forms

Synergy

(Results Focused)

Synergy

(Results Focused)

Tests of Obviousness (More in Appendixes – Slides 26-27)Tests of Obviousness (More in Appendixes – Slides 26-27)

Motivation to Combine

(POSITA Focused)

Motivation to Combine

(POSITA Focused)

v. v.

What is the test?What is the test?

Motivation to Combine – OetikerMotivation to Combine – Oetiker

In the Prior Art? From the Prior Art?

Explicit Suggestion? Implicit? Prior art as a whole?

“Such . . . motivation to combine prior art teachings can derive solely from the existence of a teaching, which one of ordinary skill in the art would be presumed to know, and the use of that teaching to solve the same or similar problem which it addresses.” Oetiker, {JLC-3:89-94} (Nies, J., concurring)

In the Prior Art? From the Prior Art?

Explicit Suggestion? Implicit? Prior art as a whole?

“Such . . . motivation to combine prior art teachings can derive solely from the existence of a teaching, which one of ordinary skill in the art would be presumed to know, and the use of that teaching to solve the same or similar problem which it addresses.” Oetiker, {JLC-3:89-94} (Nies, J., concurring)

The FTC Report {JLC-6 n.61, JLC-8 n.78, JLC-8:91-100} In re Sang Lee

In re Zurko

BUT In re Berg

Sakraida {JLC-12:17-23} – Prior art shown by: Patents

Publications

Affidavits

Testimony

The FTC Report {JLC-6 n.61, JLC-8 n.78, JLC-8:91-100} In re Sang Lee

In re Zurko

BUT In re Berg

Sakraida {JLC-12:17-23} – Prior art shown by: Patents

Publications

Affidavits

Testimony

Is there really a dispute in the Federal Circuit? What does Nies mean by “existence of a teaching”?

Is there really a dispute in the Federal Circuit? What does Nies mean by “existence of a teaching”?

FTC Conclusion {JLC-8:25-37}:FTC Conclusion {JLC-8:25-37}:

Motivation to Combine – OetikerMotivation to Combine – Oetiker

“A demand for specific and definitive motivating prior art references effectively raises the bar for finding obviousness – thus permitting more patents to issue – and does so in a way that raises competitive concerns to the extent that it violates “but for” principles. . . . Whether the goal is protecting against . . . hindsight or ensuring reviewable administrative records, a standard that requires suggestions or motivations exceeding what inventors actually need, or that rigidly insists upon concrete documentation of facts that by their very nature are not concretely demonstrable, could impair competition.”

“A demand for specific and definitive motivating prior art references effectively raises the bar for finding obviousness – thus permitting more patents to issue – and does so in a way that raises competitive concerns to the extent that it violates “but for” principles. . . . Whether the goal is protecting against . . . hindsight or ensuring reviewable administrative records, a standard that requires suggestions or motivations exceeding what inventors actually need, or that rigidly insists upon concrete documentation of facts that by their very nature are not concretely demonstrable, could impair competition.”

What I think: The FTC IS A LITTLE CRAZY!What I think: The FTC IS A LITTLE CRAZY!

Motivation to Combine – OetikerMotivation to Combine – Oetiker

Law is all about making the argument from actual evidence! We’ll see how this plays out in Shaffer.

What Nies is saying – take one: “existence of a teaching, which one of ordinary skill in the art would be presumed

to know”

Translation: You can look beyond the references actually combined to find a motivation, but you need other evidence

Does “But For” thinking contribute at all to the FTC’s conclusion? Duffy’s Technology change? Maybe – “what inventors actually need.”

PTO Reform, not law change: PTO has problems (1) looking beyond the few references combined and (2) documenting the general skill in the art Limited time, money, search capabilities, technical know-how

Accused Infringers do better gathering evidence: Ag Pro, Schlage Lock, Aeroquip, Cardiac Pacemakers

Law is all about making the argument from actual evidence! We’ll see how this plays out in Shaffer.

What Nies is saying – take one: “existence of a teaching, which one of ordinary skill in the art would be presumed

to know”

Translation: You can look beyond the references actually combined to find a motivation, but you need other evidence

Does “But For” thinking contribute at all to the FTC’s conclusion? Duffy’s Technology change? Maybe – “what inventors actually need.”

PTO Reform, not law change: PTO has problems (1) looking beyond the few references combined and (2) documenting the general skill in the art Limited time, money, search capabilities, technical know-how

Accused Infringers do better gathering evidence: Ag Pro, Schlage Lock, Aeroquip, Cardiac Pacemakers

Motivation to Combine – ShafferMotivation to Combine – Shaffer

Invention: Electrically Controlled Titration in a FluidInvention: Electrically Controlled Titration in a Fluid

Reactive Element - Low Pass Filter

Reactive Element - Low Pass Filter

Motivation to Combine – ShafferMotivation to Combine – Shaffer

Invention: Electrically Controlled Titration in a Fluid

Shaffer – “whether the prior art suggests doing what an applicant has done”

Where did the court look for the motivation? Two references of record – what the PTO used to reject.

Did it consider the level of skill in the art at the time of invention? No. Maybe nothing on the record.

We don’t know what the POSITA would know about electrical circuits at the time of invention.

We only know what those patents teach.

Invention: Electrically Controlled Titration in a Fluid

Shaffer – “whether the prior art suggests doing what an applicant has done”

Where did the court look for the motivation? Two references of record – what the PTO used to reject.

Did it consider the level of skill in the art at the time of invention? No. Maybe nothing on the record.

We don’t know what the POSITA would know about electrical circuits at the time of invention.

We only know what those patents teach.

Motivation to Combine – Shaffer; OetikerMotivation to Combine – Shaffer; Oetiker The Class Analyzes Shaffer in light of Oetiker

Shafer Still Wins Shafer Loses

Ming (but doubts – analogous art?) Michael (POSITA would know)

Jamie (no teaching in references) Cohen (?)

Laura (“)

Ryan (but doubts – analogous art?)

Your responses point to specific unsolved questions in Federal Circuit’s jurisprudence!

What’s going on with the “problem to be solved” part of the MTC test?

The Class Analyzes Shaffer in light of Oetiker

Shafer Still Wins Shafer Loses

Ming (but doubts – analogous art?) Michael (POSITA would know)

Jamie (no teaching in references) Cohen (?)

Laura (“)

Ryan (but doubts – analogous art?)

Your responses point to specific unsolved questions in Federal Circuit’s jurisprudence!

What’s going on with the “problem to be solved” part of the MTC test?

Motivation to Combine – ShafferMotivation to Combine – Shaffer

Did the Shaffer court investigate whether the motivation could come from the nature of the problem to be solved?

No.

No evidence on record that would point that way.

As far as we know, Shaffer was the one who discovered fluctuating voltage values at the electrodes during the prior art’s control of titration.

Some of you wanted to know whether the POSITA would have known about correcting voltage fluctuations. Whether the POSITA was “reasonably motivated to look to the electrical arts”? We need to know more about what the POSITA would have known!

– It’s not on this PTO record.

We also need to make sure the inventor gets credit for discovering the problem solved but ONLY if the inventor was actually the one.

– The POSITA could only have been reasonably motivated AFTER discovering the problem but not before.

– Hindsight has to be watched here.

Did the Shaffer court investigate whether the motivation could come from the nature of the problem to be solved?

No.

No evidence on record that would point that way.

As far as we know, Shaffer was the one who discovered fluctuating voltage values at the electrodes during the prior art’s control of titration.

Some of you wanted to know whether the POSITA would have known about correcting voltage fluctuations. Whether the POSITA was “reasonably motivated to look to the electrical arts”? We need to know more about what the POSITA would have known!

– It’s not on this PTO record.

We also need to make sure the inventor gets credit for discovering the problem solved but ONLY if the inventor was actually the one.

– The POSITA could only have been reasonably motivated AFTER discovering the problem but not before.

– Hindsight has to be watched here.

Motivation to Combine – ShafferMotivation to Combine – Shaffer

Federal Circuit Today – Nature of the Problem; Knowledge in the Art

Do we have to find the inventor’s specific problem somewhere in the motivating prior art to ding the patent?

Maybe not. The knowledge in the art as a whole may suggest (or imply) it.

Ruiz v. A.B. Chance Co., 357 F.3d 1270, 1276 (Fed. Cir. 2004) (citations omitted) (holding up sagging buildings with an underpinning system)

– “[T]his court has consistently stated that a court or examiner may find a motivation to combine prior art references in the nature of the problem to be solved. This form of motivation to combine evidence is particularly relevant with simpler mechanical technologies.”

If we don’t find the problem in the prior art, does the inventor win?

Probably. Identifying a problem and fixing it – that sounds like invention!

BUT finding the problem in the art may depend heavily on the scope of the art and skill – it’s all wrapped up in MTC:

– It matters how broadly the art is defined and how broadly the problem is defined.

– Broad – more likely to find a motivation fewer patents.– Narrow – less likely to find a motivation more patents.

Federal Circuit Today – Nature of the Problem; Knowledge in the Art

Do we have to find the inventor’s specific problem somewhere in the motivating prior art to ding the patent?

Maybe not. The knowledge in the art as a whole may suggest (or imply) it.

Ruiz v. A.B. Chance Co., 357 F.3d 1270, 1276 (Fed. Cir. 2004) (citations omitted) (holding up sagging buildings with an underpinning system)

– “[T]his court has consistently stated that a court or examiner may find a motivation to combine prior art references in the nature of the problem to be solved. This form of motivation to combine evidence is particularly relevant with simpler mechanical technologies.”

If we don’t find the problem in the prior art, does the inventor win?

Probably. Identifying a problem and fixing it – that sounds like invention!

BUT finding the problem in the art may depend heavily on the scope of the art and skill – it’s all wrapped up in MTC:

– It matters how broadly the art is defined and how broadly the problem is defined.

– Broad – more likely to find a motivation fewer patents.– Narrow – less likely to find a motivation more patents.

Motivation to Combine – ShafferMotivation to Combine – Shaffer

Summary - The scope of the test is not settled and could be broader.

Nies in Oetiker – Take 2 – from Slide 12 “Such . . . motivation to combine prior art teachings can derive solely from the

existence of a teaching, which one of ordinary skill in the art would be presumed to know, and the use of that teaching to solve the same or similar problem which it addresses.”

Seems to be about making sure the POSITA’s complete knowledge is fully accounted for when looking at the motivation.

FTC was on to something about attributing more insight to the POSITA, but Courts and the PTO still need evidence.

Summary - The scope of the test is not settled and could be broader.

Nies in Oetiker – Take 2 – from Slide 12 “Such . . . motivation to combine prior art teachings can derive solely from the

existence of a teaching, which one of ordinary skill in the art would be presumed to know, and the use of that teaching to solve the same or similar problem which it addresses.”

Seems to be about making sure the POSITA’s complete knowledge is fully accounted for when looking at the motivation.

FTC was on to something about attributing more insight to the POSITA, but Courts and the PTO still need evidence.

What is the Sakraida test for synergy?What is the Sakraida test for synergy?

Synergy – Shaffer; SakraidaSynergy – Shaffer; Sakraida

Use of Old Element with New Functions “A patent for a combination which only unites old

elements with no change in their respective functions . . . obviously withdraws what already is known into the field of its monopoly and diminishes the resources available to skillful men. . . .” Sakraida {JLC-12:53-58}, quoting Great A. & P.

AND/OR(?)

Need a new and/or unexpected combined result or function “result[ing] in an effect greater than the sum of the

several effects taken separately.” Sakraida {JLC-12:53-58}, quoting Anderson’s-Black Rock.

NOT “merely” a “more striking result than in previous combination”. Sakraida {JLC-12:86-86}

Use of Old Element with New Functions “A patent for a combination which only unites old

elements with no change in their respective functions . . . obviously withdraws what already is known into the field of its monopoly and diminishes the resources available to skillful men. . . .” Sakraida {JLC-12:53-58}, quoting Great A. & P.

AND/OR(?)

Need a new and/or unexpected combined result or function “result[ing] in an effect greater than the sum of the

several effects taken separately.” Sakraida {JLC-12:53-58}, quoting Anderson’s-Black Rock.

NOT “merely” a “more striking result than in previous combination”. Sakraida {JLC-12:86-86}

Test:Test:

Synergy – Shaffer; SakraidaSynergy – Shaffer; Sakraida

Elements - New Functions? No.

New, unexpected result? Maybe.

NOT “merely” a “more striking result”? Maybe.

Elements - New Functions? No.

New, unexpected result? Maybe.

NOT “merely” a “more striking result”? Maybe.

The Class Analyzes Shaffer in light of Sakraida

Shafer Still Wins Shafer Loses

Jack (new, unknown prob.) Alicia (old, “striking”)

Peter (“) Lindsay (hindsight)

Robert (old)

David (old)

The Class Analyzes Shaffer in light of Sakraida

Shafer Still Wins Shafer Loses

Jack (new, unknown prob.) Alicia (old, “striking”)

Peter (“) Lindsay (hindsight)

Robert (old)

David (old)

Shaffer Synergy Conclusion – “[T]his combination of elements evidences the discovery and solution of a heretofore unknown problem to produce a new, unobvious, and unexpected result, namely improved titration . . . .” {JLC-10:34-38}

Shaffer Synergy Conclusion – “[T]his combination of elements evidences the discovery and solution of a heretofore unknown problem to produce a new, unobvious, and unexpected result, namely improved titration . . . .” {JLC-10:34-38}

Questions: Did Shaffer claim this “improved” result? Will that get you anywhere in Sakraida?Questions: Did Shaffer claim this “improved” result? Will that get you anywhere in Sakraida?

Maybe what’s going on? Problem Solving.Maybe what’s going on? Problem Solving.

Oetiker, Shaffer, Sakraida: Obviousness on the ground has a lot to do with non-trivial problem solving – old problems and new ones

Oetiker, Shaffer, Sakraida: Obviousness on the ground has a lot to do with non-trivial problem solving – old problems and new ones

Statute: “subject matter as a whole would have been obvious at the time of invention to a POSITA”

Motivation to Combine: evidence must teach the SM as a whole POSITA as Problem Solver: The inventor solves some problem not

identified or not solved by prior art using a combination that the POSITA would not have thought to make.

Maybe, it’s best way we know how to answer the statutory question.

Synergy: New Result or New Functions for Old Elements POSITA as Pioneering Problem Solver: Finding new problems to solve to

create new results. Using old elements in new ways.

Discounts all of the problem solving that makes existing methods and devices better, faster, cheaper, …, using the same old elements.

Elements and Results, NOT invention as a Whole and POSITA Ex Ante

Statute: “subject matter as a whole would have been obvious at the time of invention to a POSITA”

Motivation to Combine: evidence must teach the SM as a whole POSITA as Problem Solver: The inventor solves some problem not

identified or not solved by prior art using a combination that the POSITA would not have thought to make.

Maybe, it’s best way we know how to answer the statutory question.

Synergy: New Result or New Functions for Old Elements POSITA as Pioneering Problem Solver: Finding new problems to solve to

create new results. Using old elements in new ways.

Discounts all of the problem solving that makes existing methods and devices better, faster, cheaper, …, using the same old elements.

Elements and Results, NOT invention as a Whole and POSITA Ex Ante

Bias toward High TechBias toward High Tech

Prof. Morris Theory: Synergy AND Motivation, AS APPLIED, may be biased against low tech, old technologies (mechanical, construction) in favor of high-tech industries.

Synergy - S.C. cases from Sakraida – seems more clear since synergy focuses on Pioneering Work - New Results and New Functions Sakraida (cow waste system)

Great Atlantic and Pacific (automatic moving grocery countertop)

Anderson’s-Black Rock (asphalt laying machine)

[Graham (tiller) - without synergy]

Motivation to Combine – F.C. - maybe Ruiz v. Chance, 357 F.3d 1270 (Fed. Cir. 2004) (building foundation

underpinning (screw anchor) system in the construction arts).– implied suggestion from the nature of the problem

BUT lots of Counter-Examples: Stratoflex (conductive Teflon); Medtronic (pacemakers).

Prof. Morris Theory: Synergy AND Motivation, AS APPLIED, may be biased against low tech, old technologies (mechanical, construction) in favor of high-tech industries.

Synergy - S.C. cases from Sakraida – seems more clear since synergy focuses on Pioneering Work - New Results and New Functions Sakraida (cow waste system)

Great Atlantic and Pacific (automatic moving grocery countertop)

Anderson’s-Black Rock (asphalt laying machine)

[Graham (tiller) - without synergy]

Motivation to Combine – F.C. - maybe Ruiz v. Chance, 357 F.3d 1270 (Fed. Cir. 2004) (building foundation

underpinning (screw anchor) system in the construction arts).– implied suggestion from the nature of the problem

BUT lots of Counter-Examples: Stratoflex (conductive Teflon); Medtronic (pacemakers).

Bias toward High TechBias toward High Tech

BOTH TESTS, AS APPLIED, seem to be biased in favor of high-tech and against low tech, old technologies (mechanical, construction)

That can be good May reward the really good inventions

Seems natural that less patentable invention in more mature arts

That can be bad Judges may think they are POSITAs in “simple” arts

Judges may discount objective evidence of nonobviousness

These are empirical questions – I don’t have the answers.

BOTH TESTS, AS APPLIED, seem to be biased in favor of high-tech and against low tech, old technologies (mechanical, construction)

That can be good May reward the really good inventions

Seems natural that less patentable invention in more mature arts

That can be bad Judges may think they are POSITAs in “simple” arts

Judges may discount objective evidence of nonobviousness

These are empirical questions – I don’t have the answers.

Last Topic – Has the S.C. Been Overruled?Last Topic – Has the S.C. Been Overruled?

Synergy will clearly be a losing argument in the F.C.

Did the F.C. effectively sweep away about a hundred years of S.C. precedents? I think so.

Are we okay with that? Some possible answers:

Yes– Because we hate synergy?– Because S.C. precedents left a gap that synergy was not

dispositive? (Republic -> American Hoist)– Because Congress gave the F.C. the reins in 1982?– Because the S.C. could always step in?

No– S.C. suggested synergy as a Constitutional matter! So there?!– Synergy works better than Motivation to Combine?– Graham alone is enough. We need synergy to limit patents.

Synergy will clearly be a losing argument in the F.C.

Did the F.C. effectively sweep away about a hundred years of S.C. precedents? I think so.

Are we okay with that? Some possible answers:

Yes– Because we hate synergy?– Because S.C. precedents left a gap that synergy was not

dispositive? (Republic -> American Hoist)– Because Congress gave the F.C. the reins in 1982?– Because the S.C. could always step in?

No– S.C. suggested synergy as a Constitutional matter! So there?!– Synergy works better than Motivation to Combine?– Graham alone is enough. We need synergy to limit patents.

Appendix 1Different Tests of Obviousness – My ReadingAppendix 1Different Tests of Obviousness – My Reading Motivation to Combine

Graham Factors – Prior Art, LOSITA, Differences

Was there a motivation to combine or modify? (Tells us what to do with Graham.)

If yes, would the invention have been obvious with all Graham Factors ?

If no, game over NOT OBVIOUS! (Oetiker)

Purpose? Polices Improvement Patents - Burden on PTO / AI

Focus – on POSITA (various classmates)

Motivation to Combine

Graham Factors – Prior Art, LOSITA, Differences

Was there a motivation to combine or modify? (Tells us what to do with Graham.)

If yes, would the invention have been obvious with all Graham Factors ?

If no, game over NOT OBVIOUS! (Oetiker)

Purpose? Polices Improvement Patents - Burden on PTO / AI

Focus – on POSITA (various classmates)

The Self-Operating Napkin: As you raise spoon of soup (A) to your mouth it pulls string (B), thereby jerking ladle (C) which throws cracker (D) past parrot (E). Parrot jumps after cracker and perch (F) tilts, upsetting seeds (G) into pail (H). Extra weight in pail pulls cord (I), which opens and lights automatic cigar lighter (J), setting off sky-rocket (K) which causes sickle (L) to cut string (M) and allow pendulum with attached napkin to swing back and forth thereby wiping off your chin. – Rube Goldberg

The Self-Operating Napkin: As you raise spoon of soup (A) to your mouth it pulls string (B), thereby jerking ladle (C) which throws cracker (D) past parrot (E). Parrot jumps after cracker and perch (F) tilts, upsetting seeds (G) into pail (H). Extra weight in pail pulls cord (I), which opens and lights automatic cigar lighter (J), setting off sky-rocket (K) which causes sickle (L) to cut string (M) and allow pendulum with attached napkin to swing back and forth thereby wiping off your chin. – Rube Goldberg

Synergy (post-Graham)

Graham Factors – Prior Art, LOSITA, Differences

Is there a synergy, either by new functions of old elements or new result in the combination? If no, game over OBVIOUS! (Sakraida)

If yes,– maybe other Graham Factors may come in to answer

whether the invention would have been obvious despite the synergy.

– Maybe NONOBVIOUS!

Purpose? Policing Pioneering Patents (?)

Burden nominally shifted to PO once no new functions or results.

Focus: PIONEERS, not necessarily real POSITAS – Focuses on the Result (various classmates): 2 + 2 > 4 ?

Synergy (post-Graham)

Graham Factors – Prior Art, LOSITA, Differences

Is there a synergy, either by new functions of old elements or new result in the combination? If no, game over OBVIOUS! (Sakraida)

If yes,– maybe other Graham Factors may come in to answer

whether the invention would have been obvious despite the synergy.

– Maybe NONOBVIOUS!

Purpose? Policing Pioneering Patents (?)

Burden nominally shifted to PO once no new functions or results.

Focus: PIONEERS, not necessarily real POSITAS – Focuses on the Result (various classmates): 2 + 2 > 4 ?

Appendix 2Different Tests of Obviousness – My ReadingAppendix 2Different Tests of Obviousness – My Reading