– Groucho: Now, here is a little peninsula, and, eh, here is a viaduct leading over to the mainland.
– Chico: Why a duck?
– Groucho: I’m alright, how are you? I say, here is a little peninsula, and here is a viaduct leading over to the mainland.
– Chico: Alright, why a duck?
– Groucho: (pause) I’m not playing “Ask Me Another,” I say that’s a viaduct.
– Chico: Alright! Why a duck? Why that…why a duck? Why a no chicken?
Indeed, why a duck? In the case of this post, to illustrate a point that’s been kicking around in my (febrile) mind about obviousness as it now tends to be applied by the USPTO. Let’s roll up our sleeves and start, shall we?
“So A Duck Gets Stuck To A Jet Engine …”
In the panel above we have the mysterious equation of Duck + Jet Engine = ? What can this mean? Is it some mystic cypher? Is it a Zen koan? A gnostic conundrum? No, of course not, it stands for our new invention. Thus, Duck + Jet Engine = …
And there we go, our invention, to whit, a jet-powered duck. Patentable right, and really pretty clever, less time in transit, a lot more challenging a target for hunters. Admittedly it isn’t cheap, but then neither are genetically engineered dogs (or children), and it’s a lot more interesting that the standard-model duck after all …
Not so fast, says the patent office. After all, ducks are well-known aren’t they? And jet engines, we’re all familiar with them? So the combination of a duck and a jet engine, it’s just putting together two well-known things, nothing exciting about that; in fact, not only is it not exciting, it’s obvious, in the technical (patenting) sense of the word. And so, instead of getting glory from admiring hunters whose skills are now being challenged in a whole new way and, to boot, the grant of a patent from the USPTO, we get a 35 USC § 103 obviousness rejection instead.
At this point, you probably think I’m kidding right? Well, yes, I am, but only sort of. There’s certainly a standard doctrine that says that once you’ve got a set of pigments, say, that you know for a couple of combinations make a couple of colors, it’s obvious to make other colors by different combinations of the same pigments. And there are lots of similar situations where obviousness is pretty … well, obvious, for example when you use chemical A in one case and you’re told that it’s pretty obvious to do what you did when you used very-closely-related chemical B instead. But however common ducks and jet engines are, they’re not like pigments or related chemicals, and it doesn’t seem very plausible that the combination would be the least bit obvious.
But these days, I’m not so sure that the USPTO would agree. A number of years ago, for example, I worked on a case where the unique combination of two well-known cancer drugs was rejected by the USPTO as being obvious — but keep in mind that these drugs are very close to being lethal even when used singly, so just throwing together any old bunch of them isn’t necessarily a very obvious thing to do … especially if what you’re aiming to do is to cure someone with the combination rather than kill her. And I also worked on a case of an invention that produced a microscopically thin membrane with holes in it — a process that required several million dollars worth of machines usually used to make computer chips. Pshaw, said the USPTO, it’s just the same as any other membrane with holes in it; in fact, it’s not even any different from a window screen, which, after all, has a solid bit with openings going through.
Consider the logic there. How much is a window screen like a membrane that in the case I’m discussing is about 10,000 times thinner than a human hair? If I took one of the planets in the solar system, squashed it flat and blew holes in the squashed piece using nuclear weapons, would that be obvious because it’s really just like a screen on a window, solid bits, holes and all?
I admit I’m glossing it over slightly — if you’re a patent person, for example, you might be yelling “obvious to try isn’t obvious!” or other things like that. But honestly I’m not convinced that I’m especially off base in what I’m saying; in fact, I really do suspect that my jet-powered duck would be rejected for obviousness just because ducks and jets are well-known. And, the patent office would probably add, we’ve all seen the combination of birds with jet engines,1 so how is the powering of a Duck by a jet engine not obvious given these facts?
Which leaves the question, why is the USPTO being this way? And what can you do to try to counter these kind of arguments?
Why Obviousness Rejections Are Now Common
Although I don’t like a lot of the logic the USPTO uses to come up with obviousness rejections, I admit that I see the basic problems stimulating the move to more of these rejections, which is basically that a lot of patents — particularly software patents — have been issuing based on some pretty predictable combinations of already-existing elements.
Take, for example, a user interface comprising a dropdown box for a first selection combined with a radio check box for a second selection. A purely invented example, but the kind of thing you see all the time in software patent applications, a combination of a set of pretty stock elements to make an overall invention. How patentable is this really? Was it so incredibly innovative to combine a dropdown box with a radio check box, so much so as to deserve about 20 years of exclusivity?
I think the answer to the above is clearly not; the problem is that there’s no easily defined dividing line between the mere combination of known elements and the entirely non-obvious combination of these elements, especially in a world where there are so many known things that can be combined, at least in theory. And although I admit that the US Supreme Court and the US Patent Office have developed various intellectual constructs for determining the cutoff, I remain to be convinced that, when it comes right down to it, any of that prevents the (non-obvious) baby from being thrown out with the (obvious) bathwater.2
Some Thoughts on How to Argue Against Obviousness Rejections
Given the above, the question becomes how to argue against these sorts of obviousness rejections. At first you might think that it’s just a matter of pointing out the non-obviousness of the exact configuration of elements, in this case, the exact configuration of duck + jet. So you could argue that there are many ways of combining a duck with a jet engine, for example the two below:
And, your argument would continue, given the superabundance of such potential configurations, the particular combination obtained that successfully produces a jet-powered duck is entirely non-obvious.
To which our hypothetical Examiner would probably reply “yes, but even given a large number of potential configurations, it would be well within the capacity of one of ordinary skill of duck arranging to obtain the claimed configuration by mere routine experimentation.” And, therefore, the combination is still obvious.
Hmmmm. what to do? One of the best strategies these days seems to be to make clear the unexpectedness of the combination, assuming of course that such unexpectedness exists. You can see how the logic works: in an art like software, the combination of well-known and simple elements like a dropbox and a radio click button will always produce the same predictable results. On the other hand, even in some areas of software (the more complicated the better) and certainly in the chemical and biological arts there are a lot of situations where no amount of routine experimentation reveals the working combination(s); rather, it’s a matter of trial and error, of unexpectedness.
Here’s an only slightly absurd example of the above. Consider the following claims:
1. A bird-propulsion system comprising a bird and a jet engine, where the jet engine provides propulsion to the bird.
2. The bird-propulsion system of claim 1, where the bird and the jet engine are mechanically linked by a linking means.
3. The bird-propulsion system of claim 2, where the rear-end of the bird is joined to the proximal end of the linking means, and the front tip of the jet engine is joined to the distal end of the linking means.
4. The bird-propulsion system of claim 3, where the bird is genetically engineered to have graphene-based bones capable of handling the forces imposed on these bones by the propulsive forces generated by the jet engine.
5. The bird-propulsion system of claim 4 additionally comprising fire-retardant feathers.
6. The bird-propulsion system of claim 5, where the fire-retardant feathers are selected from the group consisting of fire-retardant coated feathers and feathers genetically engineered to be fire retardant.
7. The bird-propulsion system of claim 6, where the feathers are genetically engineered to be fire retardant.
8. The bird-propulsion system of claim 7, where the genetic engineering comprises overexpressing ____.
Okay, take a breath! Now, claims 1-3 are increasingly narrowed claims, where we hope that the specific configurational limitation of claim 3 will be enough to overcome an obviousness rejection. Of course given general knowledge of how ducks fly and jet engines run, it’s going to be pretty hard to argue that this particular configuration is non-obvious. So we also have more clever innovations that also happen to be complex — and complexity always makes for a good argument for non-obviousness, especially because complex systems tend to offer up unpredictable results.
The first of these innovations is that the duck3 is genetically engineered to have graphene-containing bones; graphene is the new wonder material, it confers incredible strength, so incorporating it into bones should robustify enough to go … supersonic!
But perhaps our Examiner will say that the use of graphene is obvious, since this is a known material of known superlative strength. So claims 5-8 add in fire retardant feathers; and our hope is that, by the time we get down to claim 8’s genetically engineered feathers — where the overexpressed protein was a completely unexpected result — by this time there’s so much unobvious stuff going on that the Examiner will allow something.
If I were inclined towards temperate behavior, I’d cut my losses and conclude at this point. But given that this is a soliloquy on ducks, I feel duty bound to add the following reference from popular culture4 which, upon rereading in light of the above discussion, ends up no more nonsensical than some of what’s going on in obviousness rejections these days.
BEDEMIR: Quiet, quiet. Quiet! There are ways of telling whether she is a witch. CROWD: Are there? What are they? BEDEMIR: Tell me, what do you do with witches? VILLAGER #2: Burn! CROWD: Burn, burn them up! BEDEMIR: And what do you burn apart from witches? VILLAGER #1: More witches! VILLAGER #2: Wood! BEDEMIR: So, why do witches burn? [pause] VILLAGER #3: B--... 'cause they're made of wood...? BEDEMIR: Good! CROWD: Oh yeah, yeah... BEDEMIR: So, how do we tell whether she is made of wood? VILLAGER #1: Build a bridge out of her. BEDEMIR: Aah, but can you not also build bridges out of stone? VILLAGER #2: Oh, yeah. BEDEMIR: Does wood sink in water? VILLAGER #1: No, no. VILLAGER #2: It floats! It floats! VILLAGER #1: Throw her into the pond! CROWD: The pond! BEDEMIR: What also floats in water? VILLAGER #1: Bread! VILLAGER #2: Apples! VILLAGER #3: Very small rocks! VILLAGER #1: Cider! VILLAGER #2: Great gravy! VILLAGER #1: Cherries! VILLAGER #2: Mud! VILLAGER #3: Churches -- churches! VILLAGER #2: Lead -- lead! ARTHUR: A duck. CROWD: Oooh. BEDEMIR: Exactly! So, logically..., VILLAGER #1: If... she.. weighs the same as a duck, she's made of wood. BEDEMIR: And therefore--? VILLAGER #1: A witch! CROWD: A witch! BEDEMIR: We shall use my larger scales! [yelling] BEDEMIR: Right, remove the supports! [whop] [creak] CROWD: A witch! A witch! WITCH: It's a fair cop.
- Admittedly usually in the somewhat bloodier context of Aves frappe. [↩]
- This is especially true in light of the fact that it’s very easy to make an obviousness rejection, much easier than making a novelty rejection, where a single reference must contain all the elements of the invention. Given this fact, why wouldn’t a time-strapped Examiner make more and more rejections based on obviousness rather than lack of novelty? [↩]
- Actually bird; I’ve made these claims generally applicable to any kind of bird, not just ducks. Not sure how well this will work for hummingbirds, but given the willful suspension of disbelief required to accept a duck + a jet engine, a hummingbird + a jet engine isn’t really that much more of a stretch, is it? [↩]
- Monty Python, to be precise. If you don’t know Monty Python you probably ought not be reading my posts, as the bases for much of my logic may be rather opaque. [↩]