Details:
Ex parte Reisinger
Appeal 2009-007401, Appl. No. 10/1797,494, Tech. Center 3600
Decided August 31, 2010
The technology for this application was postage metering. The claims on appeal were directed to a postage metering device which receives delivery options (e.g., overnight delivery, signature required, etc.), determines a specific postage code representing these options, and prints a barcode which includes the postage code.
The Examiner rejected for obviousness, combining three references: the Uno patent, which disclosed a mail processing device receiving delivery options and selecting a postage class; the Guenther patent, which disclosed printing a barcode; and a Technical Advisory memo to the U.S. Postal Service which noted that postage code barcodes were under consideration for adoption by the USPS.
The Applicant noted that the USPS memo which discussed possible adoption of the bar codes predated the priority date of the application by six years. The Applicant then used this fact to argue the secondary consideration of "long felt need" / "failure by others":
As the Examiner stated [in the Answer], "contentions that the referenced patents are old are not impressive absent a showing that the art tried and failed to solve the same problem notwithstanding its presumed knowledge of the references. The reason why Appellant argued that the USPS minutes and the Uno reference are supportive of patentability, rather than a basis for precluding patentabilty, is precisely because they demonstrate a long standing problem with no solution.
The USPS minutes are evidence that the use of product codes has been considered as a requirement by USPS for many years, without implementation. Since the Uno reference precedes the USPS minutes, this is also evidence that those of ordinary skill in the field, having knowledge of the USPS minutes, are also presumed to have knowledge of the Uno reference. Nevertheless, no implantation of requirements for product codes in the United States has occurred, and the Examiner has been unable to cite any more relevant prior art that is more contemporaneous with the filing date of the present application, that even considers such implementation.
Appellant's point is not simply that the Uno reference has an old filing date, and is not simply that the USPS has many years ago proposed the use of product codes but still has not implemented any requirements relating thereto. Appellant's point is that if this (alleged) evidence of obviousness is the only evidence of obviousness that the Examiner has been able to compile, the aforementioned circumstances associated with both of those references are more persuasive in support of patentability than in support of precluding patentability.
(Emphasis added.)
The Board was not persuaded by the "long felt need" / "failure by others" argument, primarily because the Applicant had not tied the lack of adoption of the product codes by the USPS to a "problem in using the codes."
We find the Appellant's argument that the claims on appeal are patentable because they demonstrate a long standing problem with no solution unpersuasive. This argument appears to implicate the doctrine of long felt need. Evidence of long felt need must show that the problem solved by appellant's invention was known but not solved prior to the invention. See Al-Site Corp. v. VSI Int '1, Inc., 174 F.3d 1308, 1325 (Fed. Cir. 1999). To show failure of others, the evidence must establish that others skilled in the art tried and failed to find a solution for the problem solved by the appellant. Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1540 (Fed. Cir. 1983).The Board then affirmed the obviousness rejection.
In the instant case, Appellant argues that despite a decade of considering the product code, it is still not required by the USPS as of today. However, this is not evidence that there is a "problem" in using product codes. Appellant has not established that the reason product codes are not used today is because there is a problem in using the codes. Also, the Appellant has not established that others skilled in the art tried and failed to find a way to use product codes.
My two cents: I agree with the result, though not the Board's particular phrasing of its rationale. Sure, the lack of adoption of the claimed used of product codes does show a problem, of some kind. But that's so vague as to be useless. There are all kinds of "problems" with adopting new features, i.e., reasons why particular features might not be adopted by industry. Cost and the feasability of implementation are probably the two biggest "problems" with adoption of new features. Yet those two "problems" point away from patentability / toward obviousness.
So, though the Board didn't come out and say it, seems to me that your evidence of long felt need / failure of others had better show that the reason others failed is something other than commercial considerations.
In this case, I think the Applicant missed on several counts. First, the Applicant merely showed that no solution was adopted -- which isn't the same as showing that anyone actually tried. Second, the Applicant didn't show any reason for failure at all.
Seems like the Applicant slammed his head into MPEP 2145 VIII:
ReplyDeleteARGUING ABOUT THE AGE OF REFERENCES
"The mere age of the references is not persuasive of the unobviousness of the combination of their teachings, absent evidence that, notwithstanding knowledge of the references, the art tried and failed to solve the problem." In re Wright, 569 F.2d 1124, 1127, 193 USPQ 332, 335 (CCPA 1977) (100 year old patent was properly relied upon in a rejection based on a combination of references.). See also Ex parte Meyer, 6 USPQ2d 1966 (Bd. Pat. App. & Inter. 1988) (length of time between the issuance of prior art patents relied upon (1920 and 1976) was not persuasive of unobviousness).
This also seems to be another example of how arguing Graham secondary factors is fraught with peril. It is not clear that the Applicant used a 132 dec (as he probably should have, if he was arguing long felt need). In either case, though, the Board found a way to undermine the "evidence."
I wish that there was a good guide on how to avoid the legion pitfalls awaiting the Applicant foolish enough to try to arguing secondary Graham factors.
"I wish that there was a good guide on how to avoid the legion pitfalls awaiting the Applicant foolish enough to try to arguing secondary Graham factors."
ReplyDeleteIt wasn't that the applicant was foolish for arguing Graham, rather it was his argument that was foolish.
"It wasn't that the applicant was foolish for arguing Graham, rather it was his argument that was foolish. "
ReplyDeleteBefore we judge and second guess the Applicant, as patent prosecutors love to do, we need to remember that as attorneys we are sometimes placed into bad situations where we make the best arguments possible. Sometimes the very nature of the prior art leaves only a narrow window to wiggle in.
Don't characterize this as a 'bad' argument, unless you are willing to provide a better alternative.
Having practiced other areas of law, I find patent prosecutors to be the most egotistical asshats of them all - which is saying something. Other areas of legal practice tend to appreciate that opposing counsel may of inherited a bad fact pattern. Unfortunately, this empathy is a quality almost completely missing in the snarkfest of patent prosecution.
I am also happy to proffer a source of this phenomenon - as patent prosecutors you never have to suffer through inter partes hearings and trials. You just sit in a little office somewhere and slowly feed your assessment of yourself as the master practitioner. Unfortunately, an occasional beat down is good for an attorney and the nearest most patent prosecutors come to this is a second or third 103 rejection after a couple of RCEs.
"Don't characterize this as a 'bad' argument, unless you are willing to provide a better alternative."
ReplyDeleteAmend/abandon?
"Unfortunately, an occasional beat down is good for an attorney and the nearest most patent prosecutors come to this is a second or third 103 rejection after a couple of RCEs.
ReplyDelete"
lulz, all too true.
One thing I've discovered over the years is a difference of opinion regarding what constitutes "failure of others."
ReplyDeleteSome people seem to think that one needs to submit evidence of actual failed attempts by others to fulfill the need, as in failed experiments, commercial products that proved to be unsafe, etc.
Other people seem to think that the absence of a solution following a longfelt need is enough to shift the burden on non-obviosness, under the theory that, if the solution is so obvious, why has no one provided it before?
As far as I know, the Courts have not ever spoken clearly on which view is correct. Has anyone here ever seen this issue resolved?
>As far as I know, the Courts have not ever
ReplyDelete>spoken clearly on which view is correct.
>Has anyone here ever seen this issue resolved?
In short, No. But I'll comment on what you said.
The Board's cite to Stratoflex says evidence of actual failed attempts by others is required. [Note that I haven't read Stratoflex, so I'll assume the Board got the holding right.]
But your real question about burden-shifting, right? Ie, exactly when does the Applicant need to present such evidence.
>absence of a solution following a longfelt
>need is enough to shift the burden on >non-obviousness
So the Applicant can make a different showing: evidence of no-solution-after-long-felt need. Once the Applicant makes that showing, the burden shifts back to the PTO/infringer to show obviousness once again?
I have heard that long-felt-need and failure-of-others were intertwined. Your comment provides an explanation of how the two fit together.
So maybe what is clear is that one needs to submit evidence