Sunday, February 27, 2011

Interesting angles on Federal Circuit's obviousness decision Tokai v. Easton

The recent Tokai v. Easton decision from the Federal Circuit has been getting a lot of buzz in the blogosphere. Here are some blog posts on Tokai which I found to be of particular interest: 

I concur with Patent Talk Northwest. Just this month I wrote two posts about how statements made by an Applicant can lead an Examiner to conclude – rightly or wrongly – that the Applicant has admitted a rationale for combining. These two posts are:


  1. Karen:

    You missed the key statement by the Federal Circuit of "It would have been obvious to one of ordinary skill and creativity to adapt the safety mechanisms of the prior art cigarette lighters … even if it required some variation in the selection or arrangement of particular components." The Federal Circuit isn't even requiring that all the elements be disclosed by the prior art ... close enough is good enough in horseshoes, hand grenades, and obviousness rejections.

    A long-felt need has long been an indicia of non-obviousness, which is why statements of such have been introduced into patent applications. The Federal Circuit (and SCOTUS) is simply ignoring the statement in 35 USC 103 that "[p]atentability shall not be negatived by the manner in which the invention was made."

    KSR was/is an abomination, and this case is just an evil spawn of KSR.

  2. >You missed the key statement by the Federal
    >Circuit ...

    Well, I missed posting about a lot of things in Tokai, since all I've done so far is link to other bloggers :-)

    But IPWatchdog does a good job of making the your point -- that Tokai didn't require the references to teach the exact "selection or arrangement" of components as claimed.

    Is that really new? The Fed Cir relied on a common-sense modification of the references back in PerfectWeb.

  3. "Is that really new?"

    Yes, it is.

    There is a difference between saying that "A and B were known and it would have been common sense to have A + B" and saying that "A and B were known and it would have been obvious to have A' + B'."

    If you cannot argue that the Examiner has failed to present a motivation (killed by KSR) and you cannot argue that the Examiner has failed to establish that the prior art teaches all of the claimed limitations, what is left to argue?

  4. PerfectWeb did not say "A and B were known and it would have been common sense to have A + B". Perfect Web relied on common sense for teaching a completely missing element.

    Whereas Tokai said "A and B were known and it would have been obvious to have A' + B". Right?

    So if anything, PerfectWeb is a stronger assertion than Tokai, namely: common sense can not only fill in a modification to an element, it can fill in the missing element itself.

    Master Lock is a third variation: common sense can provide the motivation to combine.

  5. I think KSR, Perfect Web, and Tokai all fall into the enumerated obviousness category that is "where there were a finite number of identified, predictable solutions and there is no evidence of unexpected results, an obvious to try inquiry may properly lead to a legal conclusion of obviousness."

    In Tokai, the primary difference that I see is that the trigger is blocked, whereas the valve is blocked in the prior art. Seeing as there are two things that one could block, and they were both identifiable, and the results were predictable, it appears that the CAFC viewed this case as being essentially like KSR, where there were only a few identifiable locations on the pedal assembly at which to attach the sensor.