Why A Duck? US2010/0154283 - Feathered Duck Decoy Skirt + US5,722,512 - Jet Aircraft Shipping Stand

Why A Duck?

- 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.

 

  1. Admit­tedly usu­ally in the some­what blood­ier con­text of Aves frappe. []
  2. 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? []
  3. 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? []
  4. 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. []