The USPTO rejects patent applications based on "prior art" either because the claims of the application are anticipated (all claim elements appear in a single prior art reference) or because of the claims of the application are obvious.  To show that a patent claim is obvious the USPTO may establish a prima facie case of obviousness by combining the teachings of two or more prior art references and/or by proposing a modification to a prior art reference.

MPEP 2145(IV) states that, "One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references," citing In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).  This statement does not make sense because if the references as combined/modified still fail to recite or suggest all of the elements of an applicant's claim, then it would appear that the USPTO has not stated a prima facie case of obviousness.

A recent Federal Circuit case suggests that the MPEP's blanket statement is at best an oversimplification.  In In re Glatt Air Technologies, 630 F.3d 1026, 2011 U.S. LEXIS 79 (Fed. Cir., January 5, 2011), the Federal Circuit reversed a finding by the Board of Patent Appeals and Interferences (the "Board") that a patent claim was obvious.  Specifically, the Court held that the USPTO had failed "to make a proper prima facie case of obviousness."  Id. *10 (Page cites are to LEXIS pagination). 

Without getting into the details of the invention, the disputed claim was written in Jepson format, where the preamble before the words "the improvement comprising" is admitted prior art.  Id. *4 & 9.  The USPTO rejected the disputed claim 5 over a combination of the preamble of Claim 5 and a reference called Naunapper.  Id. *5.  The Board affirmed an Examiner's rejection of claim 5 on obviousness grounds.  The Board stated that Naunapper "would inherently or necessarily be capable of performing the same function recited by the claimed shielding means"  Id. *7 (Quoting the Board). 

In finding that the Board had failed to state a prima facie case of obviousness, the Court did not address whether the Board could properly combine the references (the preamble and Naunapper).  Instead, in apparent contradiction to MPEP 2145(IV), the Court focused on whether Naunapper -- a single reference -- taught a claimed function:  "shielding."  The Court found that, "The Board's finding that Naunapper teaches shielding the nozzle to prevent particles from prematurely entering into the initial spray pattern is not supported by substantial evidence because Naunapper does not teach shielding *** Because Naunapper does not teach shielding, we conclude that the Board has failed to make a proper prima facie case of obviousness."  Id. (Bold added).

Therefore, In re Glatt Technologies appears to be an example of where the Court did find nonobviousness by attacking a reference individually -- specifically, the Court held that the USPTO failed to state a prima facie case of the obviousness of claim 5.  Although neither MPEP 2145(IV), Keller, nor Merck were cited, this case appears to do exactly was MPEP 2145(IV) says cannot be done -- to "show nonobviousness by attacking references individually where the rejections are based on combinations of references."  MPEP 2145 (IV). There are indeed many cases where an applicant needs to argue that references cannot be combined or modified as proposed by the USPTO.  But In re Glatt Technologies appears to be a case where it was sufficient to show that one of the references did not teach what the USPTO found that it did.

It is common for patent applications to have a background section that discusses, among other things, the unmet needs that the claimed invention addresses.  A recent Federal Circuit opinion shows how a statement regarding unmet needs can be used against a patent applicant or owner.  Therefore, when drafting patent applications, it may be prudent not to discuss the unmet needs addressed by the claimed invention.

In affirming a ruling that the patents in dispute were obvious and therefore invalid, the Federal Circuit in Tokai Corp. v. Easton Enterprises, 2011 U.S. App. LEXIS 1915 (Fed. Cir. Jan. 31, 2011) relies in part on language in one of the disputed patents.  Tokai states that the invention involves simple mechanical parts, but that this alone does not render the invention obvious.  Id. *28, citing KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).  But Tokai notes that, "it is also undisputed that a need for safer utility lighters was recognized in the art as of the priority date."  Id.  For support, Tokai cites a statement in one of the patents that, "a need exists for a lighting rod having enhanced safety characteristics***."  Id. citing '775 Patent, col.1 ll.20-25 (Bold added). 

Tokai then rules the patents obvious and invalid, stating:  "Accordingly, the undisputed facts in this case—including the state of the prior art, the simplicity and availability of the components making up the claimed invention, and an explicit need in the prior art for safer utility lighters—compel a conclusion of obviousness as to the subject matter of each of the asserted claims."  Id. citing KSR Int'l Co. v. Teleflex Inc., 550 U.S. at 419-420 (Bold added). 

It is quite possible that these patents would have been held obvious and invalid even without the explicit statement of need in at least one of the disputed patents.  The point made here is that the statement in the patent did not help.  In light of Tokai, those now drafting patent applications may want to consider not discussing the needs that the claimed invention seeks to alleviate. 

My post on Bilski mistaken refers to Justice Steven's concurring opinion as a dissent.  It is obviously not a dissent since he concurred in the judgment and agreed that Bilski's claims did not present patenable subject matter.

But, Justice Stevens did differ markedly from the majority opinion.  Justice Stevens argued for a rule barring business method patents.  The majority opinion had five votes for rejecting an outright categorical ban on all business method patents.  Therefore, Justice Steven's opinion is a minority position that presents an argument for such an outright ban.  In that sense, they only received 4 votes and can be said to have lost on that important issue.

Doing patent applications for a flat fee makes a lot of sense.  In setting the fee, the practitioner looks initially at the complexity of the invention.  Another variable, is the number of embodiments.  The number of embodiments is a delicate area because in general, as a practitioner, you want to encourage an inventor to disclose a reasonable range of embodiments.  All of the above means that the practitioner must conduct at least a partial interview before being able to quote a flat rate.  The practitioner also needs to provide some legal advice about the desirability of having a reasonable number of embodiments, and not limiting the disclosure to a single embodiment.

A flat fee automatically takes the practitioner's efficiency, experience and skill into consideration.  The practitioner should set the fee within the range that the practitioner believes would typically be charged by other practitioners of similar experience and skill for drafting a patent application of similar complexity.  If a practitioner is inefficient and takes more than the usual number of hours for such an application, then the practitioner must absorb the hardship of working more hours for less money.  On the other hand, if the practitioner is more efficient that the average patent attorney, then I can see no reason why the practitioner should not receive that benefit. 

What the flat fee does is it allows a fee to be set taking into consideration a range of considerations, including all of the considerations required by USPTO and state bar ethics rules regarding avoiding excessive fees.  Not all of those considerations are discussed here.  I have discussed the ones I feel are most pertinent. 

A flat fee benefits the client by providing predictability to the cost of the preparation of a patent application.  I think a lot of the complaints about fees in the legal profession stem from cases where billing by the hour leads to unexpectedly large fees.

There may be case where a flat fee is not practicable.  If the complexity of the application and the scope of the invention are not clear, then it may not be practicable to set a flat fee.  But, those are probably the exceptions.

USPTO Manual on Patent Examining Procedure (MPEP) Section 2143 describes exemplary rationales for supporting an obviousness rejection.  In stating these exemplary rationales, the MPEP relies, in part, on the U.S. Supreme Court's decision in KSR International Co. v. Teleflex Inc., 550 US 398 (2007). 

In Crocs Inc. v. I.T.C., 598 F.3d 1294 (Fed. Cir., February 24, 2010), the Federal Circuit reverses an International Trade Commission (ITC) finding that a patent on footwear is obvious.  The claimed invention is a shoe (e.g., a clog) held onto a person's foot by a foam strap riveted to a foam base of the shoe.  Id. at 1308.  The strap wraps behind and supports the achilles tendon.  Friction between the foam strap and the base holds the foam strap in place even when the foam strap is not in contact with the achilles tendon.  Id. at 1309.  The points of novelty include using a strap made of inelastic foam and using the friction between the foam strap and the base to hold the foam strap in place.  Id. at 1308 - 1310. 

The ITC relied on two prior art references:  1)  an Aqua Clog -- a base without a strap; and 2)  Aguerre, teaching a sandal with a flexible strap.  Although the Crocs opinion does not refer to the MPEP, it is instructive to note which of the MPEP's rationales would support the ITC's obviousness rejection and how the Federal Circuit's opinion would refute hypothetical rejections based on these MPEP rationales.   

Three MPEP's rationales that could have been used by the ITC are that the claimed invention:  1) Combines prior art elements according to known methods to yield predictable results; 2)  Substitutes one known element for another to obtain predictable results; and 3)  Is obvious based on some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill in the art to modify a prior art reference.  MPEP Section 1243, Rationales A, B, and G.  The Court's findings in Crocs would refute obviousness rejections under any of the above MPEP rationales.   

The first rationale under the MPEP would be that the claimed invention is just a combination of prior art elements according to known methods to yield predictable results.  MPEP 2143A.  Under this rationale, the prior art must include "each element claimed."  Id.  This rationale first fails because the ITC's prior art combination did not include the claimed foam strap.  Crocs at 1308.  This rationale also fails because the use of the foam strap "yields more than predictable results; thus it is non-obvious."  Id. at 1309 citing KSR, 550 U.S. at 417.

The second rationale under the MPEP would be that the claimed invention is just a simple substitution of one known element for another to obtain predictable results.  MPEP 2143B. This rationale first fails because one skilled in the art would not have considered a foam strap to be a reasonable substitution for the elastic strap of Aguerre.  "Rather, the prior art showed that foam was an unsuitable material for shoe straps."  Id. at 1308 - 09.  The MPEP rationale also fails because using the foam strap instead of Aguerre's elastic strap yields more than predictable results.  An elastic strap is always in contact with the achilles tendon pushing the foot forward into the shoe.  The foam strap is not in continuous contact and "facilitates a loose anatomical fit that makes the claimed invention more comfortable than prior art products." Crocs at 1309.

The third rationale under the MPEP would be that the some teaching, suggestion, or motivation in the prior art would have motivated one skilled in the art to modify a prior art reference.  MPEP 2143G. But the Federal Circuit found that, "The record shows that the prior art would actually discourage and teach away from the use of foam straps."  Crocs, at 1308. 

Thus, all of the MPEP rationales that could have been used to support the ITC's obviousness rejection fail under the Court's findings in Crocs.  Thus, Crocs is instructive about the types of arguments and evidence that can be used to overcome an obviousness rejection under the MPEP. 

When drafting patent claims, even minor differences in wording can be important. In 2006, I attended a seminar given by Steve Shear of Silicon Valley Seminars, http://www.patentseminars.com, called "Patents and Patent Claim Drafting."  One of the points taught was that the use of "coupled to" was risky. That was because reciting that element A is "coupled to" element B might be read as requiring that element A be directly connected to element B. It is safer to recite that element A is "coupled with" element B, since ... << MORE >>

An inventor seeking a patent attorney needs to be aware of what conflicts of interest are and how a patent attorney will screen for any potential conflict of interest at the beginning of an inventor interview.  In fact, the patent attorney will typically screen for a potential conflict of interest before even scheduling an appointment for the inventor interview. 

A patent attorney cannot accept the inventor as a client if doing so would result in a conflict of interest between the patent attorney's duties to a current client and to the inventor.  Some types of conflicts of interest can be waived by the clients -- but that is beyond the scope of this article.  This article will also not address potential or actual conflicts of interest between a former client of the patent attorney and a potential client.

In screening for potential conflicts of interest, the patent attorney will have at least three goals, which should be communicated to the potential client, the inventor.  These three goals include:  1)  Not forming an attorney/client relationship with the inventor until the patent attorney has determined that there is no potential or actual conflict of interest that would be created by accepting the inventor as a client: 2)  Not receiving any confidential information from the inventor until the patent attorney has determined that there is no actual or potential conflict of interest; and 3)  Obtaining from the inventor, the information necessary to determine whether an actual or potential conflict of interest would be created by the patent attorney accepting the inventor as a client.  This article will discuss two types conflicts of interest and how a patent attorney screens for each type before or at the beginning of the inventor interview.

One type of conflict of interest is based primarily on the relationship between a current client and a potential client.  For example, suppose the inventor conceived of an invention while working for Company A.  The inventor now works for Company B.  Now suppose the patent attorney represents Company A as a current client.  There is at least a potential conflict of interest that would prevent the patent attorney from representing the inventor.  Perhaps the inventor is under some legal obligation to assign the invention to Company A.  If that is an issue, the attorney cannot represent both Company A and the inventor. 

The above is an example of a conflict of interest that is based on the relationship between a current client of the patent attorney and a potential client of the attorney -- the inventor.  To identify this type of conflict, the patent attorney will ask the inventor questions about current and previous employers and about the identity of others who might have some interest in or knowledge about the invention.  Therefore, the inventor should be prepared to answer questions about these subjects.  The inventor should initially, just answer questions posed by the patent attorney without volunteering any confidential information.

Patent attorneys also deal with what are sometimes called "subject matter" conflicts of interest.  In this type of conflict, the attorney may have a current client that the inventor does not know, has never met, and has no relationship with.  But the current client may have an invention that is too similar to the invention that the inventor has.  For example, suppose the patent attorney represents a current client who has invented and is obtaining a patent for a talking toaster.  Suppose the inventor has invented a talking microwave oven. 

In representing the current client before the U.S. Patent Office, the patent attorney has a duty to disclose to the Patent Office "all information known to [to the patent attorney that is] material to patentability***."  37 CFR Section 1.56.  The patent attorney has this duty because he is representing the current client before the U.S. Patent Office.  Therefore, if the inventor, who is the potential client, tells the patent attorney about his invention, but wants the patent attorney to keep the information secret, the patent attorney might still have no choice but to reveal the talking microwave oven to the Patent Office, because it may be material to the patentability of the talking toaster.  That is, the patent attorney may have a duty to take some action on behalf of the current client, that is contrary to the interests or wishes of the potential new client, the inventor.  This situation could actually give rise to a variety of trouble scenarios -- some of which may be discussed in a later posting.  The patent attorney could not accept the inventor as a new client.

Therefore, the patent attorney should avoid hearing about any details of the inventor's invention until the patent attorney determines whether there is a subject matter conflict.  This can be done by the patent attorney first asking very generally what the inventor wants to do, for example, possibly file a patent application.  The patent attorney may then ask the inventor to state in very general terms the type of invention he wants patented.  Is it a mechanical invention?  Is it a computer-related invention?  Then the questions get progressively more detailed.  If it is a computer-related invention, is a robotic invention?  If at some point, the patent attorney determines that there is a substantial risk of a subject matter conflict of interest, the patent attorney will tell the inventor that the patent attorney cannot accept the inventor as a client.  This will be done before the patent attorney obtains any details that would be material to the patentability of the invention of the current client.  In other words, the interview must be handled with caution and care.  The inventor should not volunteer details about the invention until the patent attorney is assured that there is no subject matter conflict of interest.

If no actual or potential conflict of interest would be created by the patent attorney accepting the inventor as a client, then and only then, should confidential information be obtained.  The rest of the inventor interview can then proceed. 

When drafting patent claims, one important goal is to describe the invention and how to make and use the invention.  35 U.S.C. Section 112.  Another goal is to write claims that read on all disclosed embodiments.  Thus, another interesting point about Rolls-Royce, PLC v. United Technologies Corp., 2010 U.S. App. LEXIS 9201 (Fed. Cir. May 5, 2010), discussed below, is that the Court construed an independent claim to not read on an embodiment disclosed in a patent application drawing.  Rolls-Royce involved an appeal under 35 U.S.C. Section 146 from a ruling on an interference.  The details of the interference are not important to this discussion.  However, the Federal Circuit was required to determine whether independent claim 23 in United Technologies Corporation's '931 application rendered obvious independent claim 8 of Rolls-Royce PLC's '077 patent.  In discussing this issue, the Federal Circuit ruled -- contrary to UTC's arguments -- that claim 23 did not read on an embodiment disclosed in Figure 5 of the '931 application.  The opinion did not specifically discuss whether another independent claim of the '931 application read on Figure 5.   

Both the '931 application and the '077 patent related to swept fan blades used in turbofan jet engines.  These blades rotate about an axis of rotation.  The opinion explains that the prior art taught that to "reduce shockwaves, blades sweep either rearward or forward."  Id. *2.  The opinion further explains that, "A blade bent toward the relative velocity vector is swept forward; a blade bent away from the velocity vector is swept rearward.  The relative velocity vector is the magnitude and direction of the air flow that hits the leading edge of a fan blade.  The relative velocity vector is a combination of axial and circumferential air flow."  Id. *2-3.

The claimed shape of the blades was the primary claim construction issue.  In particular, claim 23 of the '931 application recited in part, "A fan stage of a ducted fan gas turbine engine that is rotatable about an axis of rotation and defines a downstream direction along the axis of rotation."  Id. *5.  Claim 23 further recited "a leading edge [of a blade] that defines a variable sweep angle in a direction perpendicular to the axis of rotation ***."  Claim 23 further recited an outer portion of the blade with the leading edge "translated forward ***."  Id. *9.  A key issue was the meaning of "translated forward." 

The District had interpreted "translated forward" to mean "moving axially forward ***."  Id. *12.  That is, the outer portion of the blade moved forward along the axis of rotation.  UTC argued for a broader construction that included movement "forward toward the relative velocity vector."  Id. *15.  The Federal Circuit described UTC as contending that, "movement in any direction -- axial or circumferential -- is movement toward the relative velocity vector."  That is, under the UTC's proposed claim construction, "either purely circumferential or purely axial movements are encompassed by the term 'translated forward.'"  Id. *15-16. 

The Federal Circuit noted that Figure 5 of the '931 application showed movement of the outer region of the blade in the circumferential direction.  But the Court noted that the specification of the '931 application did not use the term "translated forward" to describe the embodiment of Figure 5.  "Instead, the specification describes the movement in Figure 5 as 'displaced circumferentially.'"  Id. *17.  The Court then stated that, "This court's construction of 'translated forward' ('moved forward toward the axial direction') excludes the embodiment of Figure 5."  The Court stated, "Although reluctant to exclude an embodiment, this court must not allow the disclosed embodiment to 'outweigh the language of the claim, especially when the court's construction is supported by the intrinsic evidence.'" Id. *17, quoting TIP Sys., LLC v. Phillips & Brooks/Gladwin, Inc., 529 F.3d 1364, 1373 (Fed. Cir. 2008).

In this case, it appears claim 23 did not read on Figure 5 primarily because the specification described Figure 5 as showing a blade that is "displaced circumferentially" instead of describing the blade as being "translated forward" toward the relative velocity vector.  Because of this, the Court refused to allow the claimed direction "forward" to encompass two directions at right angles to each other.  Id. *17.  That is, both the axial direction and the circumferential direction.  Thus, this is an example of  a disclosed embodiment that was not claimed by an independent claim.

In general, as a practice suggestion, it appears that practitioners can prevent failures to claim disclosed embodiments by some combination of expressly defining important terms, using the same terminology consistently throughout the specification and the claims, and by checking that the claims and the specification are consistent with each other.  Some practitioners prefer not to expressly define terms.  A rigid or poor definition can be worse than no definition at all.  This concern is a vaild one, but if a term used in both the specification and the claims does not have a precise meaning in the art, then a broad definition is probably best.  Opinions differ on this issue.

In Rolls-Royce, PLC v. United Technologies Corp., 2010 U.S. App. LEXIS 9201 (Fed. Cir. May 5, 2010) the Federal Circuit prefaces a discussion of obviousness with this language:  "To preclude hindsight in this analysis, this court flexibly seeks evidence from before the time of the invention in the form of some teaching, suggestion, or even mere motivation (conceivably found within the knowledge of an ordinarily skilled artisan) to make the variation or combination."  Id. *27-28 (Bold added).  There is nothing in this quote stating that the motivation may come from a design need or market pressure.  Instead, the Federal Circuit only specifically refers to motivation arising from the "knowledge of an ordinarily skilled artisan." 

The Federal Circuit's language does not strictly track the language used by the U.S. Supreme Court in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 417, 421, 127 S. Ct. 1727, 167 L. Ed. 2d 705 (2007) when it addressed whether an invention was obvious to try and therefore obvious.  KSR stated that, "When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp."  Id. (Bold added).  Thus, in KSR, motivation could come from design needs and market pressures.

A version of a flexible TSM test is seen in this quote where the Federal Circuit addresses an argument that the invention would have been an easily predictable and achievable variation:  "For all of these reasons, the record contained no evidence that would have suggested to or motivated an ordinarily skilled artisan to sweep the fan blade forward in the outer region. Thus, the record supports the district court's conclusion that this variation would not have been obvious."  Rolls-Royce at *29 (Bold added).  This language could be used to argue against a rejection of an application based on lack of suggestion or motivation.  So these pre-KSR arguments are still available under this decision, as long as one uses the terms suggestion and motivation in a flexible way.

But, in discussing "obvious to try", the Federal Circuit did swing back into greater consistency with KSR by acknowledging that motivation could include design needs and market pressures.  "A particular course or selection is not obvious to try unless some design need or market pressure or other motivation would suggest to one of ordinary skill in the art to pursue the claimed course or selection."  Id. at *31. 

Thus, the Rolls-Royce opinion ultimately steers back to greater consistency with KSR.  Nonetheless, the first quotation, taken literally, is a more "flexible" version of the overruled Teaching, Suggestion, Motivation test.  And strictly speaking, the KSR did not repudiate a more flexible TSM test:  "We note the Court of Appeals has since elaborated a broader conception of the TSM test than was applied in the instant matter."   KSR, 550 U.S. at 421-422.  But this flexible TSM test was not before the Court in KSR. 

MPEP 2141 (III) acknowledges that a flexible TSM test may be used to make obviousness rejections and includes a flexible TSM in a list of possible bases for rejecting a claim as obvious.  But in Rolls-Royce, the Federal Circuit uses, in part, a flexible TSM test to reject a finding of obviousness.  Time will tell how far the Federal Circuit will go in putting some teeth into a more flexible version of the TSM test.