Failure Can Be Good US4,233,942 - Animal Ear Protectors

Failure Is Good

In my pre­vi­ous post I dis­cussed the recent trend of the USPTO to con­sider every­thing obvi­ous — well per­haps that’s not a com­pletely fair assess­ment, but cer­tainly the bar for obvi­ous­ness rejec­tions has been set much lower of late.

In that last post I dis­cussed a num­ber of con­cep­tual cat­e­gories of argu­ments that can be made to rebut this low­ered bar, includ­ing par­tic­u­larly unex­pected results as a basis for non-obviousness.  How­ever, given the duty of can­dor to the USPTO that all appli­cants have, you can’t argue unex­pected results unless you actu­ally have such results; but at what point are results unex­pected rather than, say, merely some­what sur­pris­ing?  That is, at what point can you fairly make a claim for real unex­pect­ed­ness such as would (we hope) get the USPTO to accept the argu­ment that the inven­tion obtained is not obvious?

 A big part of the answer turns out to be that it’s become more and more impor­tant to include neg­a­tive results as well as pos­i­tive ones, in order to show that merely com­bin­ing the var­i­ous ele­ments of the inven­tion doesn’t inevitably lead to suc­cess; rather, things are unpre­dictable enough that — to some extent at least — the inven­tion was some­thing you stum­bled onto.

A good hypo­thet­i­cal exam­ple is an unex­pected result when mix­ing paint pig­ments.  Nor­mally of course we’d expect that pig­ments of red, green and blue can be mixed to obtain a whole rain­bow of col­ors, with each par­tic­u­lar color quite pre­dictable from the amount of red pig­ment, green pig­ment and blue pig­ment added.

Sup­pose, how­ever, that in the course of mix­ing up dif­fer­ent col­ors we dis­cover one par­tic­u­lar com­bi­na­tion of red, green and blue pro­duces a com­pletely dif­fer­ent and uniquely explo­sively flu­o­res­cent color from what we expect — say as a result of some unex­pected inter­ac­tion that occurs between the pig­ments only for this par­tic­u­lar ratio of pig­ments.  Aha!  This explo­sively flu­o­res­cent color is an entirely unex­pected result, a sweetspot that unex­pect­edly man­i­fests out of an infi­nite num­ber of pos­si­ble pig­ment com­bi­na­tions.  It’s unex­pected, so we argue that it can’t be obvi­ous, and, if we’re lucky, we’ll get a patent out of that par­tic­u­lar com­bi­na­tion as a result.

If you’ve been pay­ing atten­tion, at this point you should have two ques­tions, both of them very prac­ti­cal.  First, is that sin­gle com­bi­na­tion of col­ors a saleable com­bi­na­tion, that is, there’s some real value in the com­bi­na­tion that we hope is patentable because it’s unex­pected?  And, sec­ond, if that com­bi­na­tion is indeed saleable and not just a freaky one-off, is there suf­fi­cient pro­tec­tive value in terms of copy­ing that one sin­gle unique com­bi­na­tion of pig­ments?  Or to put it dif­fer­ently, we’re talk­ing about a claim of very very nar­row scope, for example:

1. A com­po­si­tion of mat­ter com­pris­ing 5% red pig­ment R, 37.2% green pig­ment G and 57.8% blue pig­ment B.

And we should really worry quite a bit when we see a claim this nar­row, because it just reeks of a sit­u­a­tion where the scope of pro­tec­tion is so lim­ited that any­one can find a workaround with very lit­tle effort.

The Janus-Faced Dilemma

The answer to the above?  Well, there’s no sim­ple answer, because there’s an inevitable ten­sion between the lim­it­ing scope that unex­pect­ed­ness imposes (out of all those pos­si­bil­i­ties, all of the com­bi­na­tions come out neg­a­tive except just that unex­pected one) and the greater like­li­hood of non-obviousness that that lim­ited result­set provides.

But at the very least, show­ing neg­a­tive results helps make the argu­ment that the actual result is at least pretty unpre­dictable if not flat-out unex­pected.  To make this point clearer, let’s con­sider the fol­low­ing hypo­thet­i­cal set of exper­i­ments we include in our patent application:

Exper­i­ment 1. 50% R was com­bined with 25% G and 25% B.  The color obtained was a nor­mal color.

Exper­i­ment 2. 5% R was com­bined with 35% G and 60% B.  The color obtained was a nor­mal color.

Exper­i­ment 3. 5% R was com­bined with 38% G and 57% B.  The color obtained was a nor­mal color.

Exper­i­ment 4. 5% R was com­bined with 37.2% G and 57.8% B.  The color obtained was not nor­mal, but instead was explo­sively fluorescent.

Exper­i­ment 5. 6% R was com­bined with 38% G and 56% B.  The color obtained was a nor­mal color.

Con­sider how much more effec­tively this set of exper­i­ments shows the unique­ness of the 5/37.2/57.8 com­bi­na­tion of Exper­i­ment 4 is than would a sim­ple list­ing of Exper­i­ment 4 only.  Sci­en­tists aren’t used to report­ing their fail­ures; but the more fail­ures  you report the more you can make clear how unpre­dictable your results ended up being when you actu­ally obtained them.

Or let’s put it another way.  An Exam­iner sit­ting in an office at the USPTO (or other patent office) has no idea whether or not what you did was dif­fi­cult; and, with the ben­e­fit of hind­sight, it’s really tempt­ing for that Exam­iner to say that your excit­ing result was just the prod­uct of rou­tine and rote manip­u­la­tions on your part.

Show­ing neg­a­tive results is often a use­ful way of rebut­ting this ten­dency.  All those exam­ples of neg­a­tive results show how uncer­tain your progress was, and how unex­pected the result you finally obtained.

Take the “ani­mal ear pro­tec­tors” of US4,233,942, which I’ve repro­duced in the graphic at the top of this post.  If it turned out that tubes slightly shorter were so uncom­fort­able to the ani­mal it chewed them off, and that tubes slightly longer caused it to howl for hours, but that there was no real cor­re­la­tion until you tried just exactly the length shown, and then the ani­mal loved them and wouldn’t take them off, not even for a squeaky toy — well, writ­ing down all those fail­ures would make the suc­cess stand out more as unex­pected, and there­fore (we hope) non-obvious.

At least that’s the theory.