America-Israel Patent Law

On Fields Medal Winners, Obviousness, and Patent-Eligibility

I came across this article about Manjul Bhargava, a Princeton professor who was recently awarded the Fields Medal, considered the Nobel Prize of mathematics.  What sets him apart from most mathematicians is not just the fact the he improved on Gauss (!) in an old branch of mathematics, number theory, but his passion for explaining his work clearly to the not-so-mathematically minded.  It was this paragraph, though, that caught my eye as a patent practitioner:

Elegance and simplicity are two of the highest goals of all mathematical expression. “A not-so-elegant proof would be like a corn maze, where you can’t see where you’re going,” explains Wood. “An elegant proof is like a road where you can see where you’re going.” Ng says: “When he explains his work to you, it seems like it’s obvious. And you think, ‘Oh well, there can’t be much to it because it’s so obvious.’ Then you realize that it’s actually very profound. There are problems that people have been working on for hundreds of years and have made no progress. Manjul somehow managed to see something no one else could.”

One the things that has bothered me almost since my first day in this profession is the unwillingness of many examiners to recognize the failure of others as evidence of non-obviousness.  I routinely have to tell clients (with a sigh) that the fact that no one before them solved the particular problem they've solved, let alone in the particular way they've solved it, is often insufficient to overcome an obviousness rejection.  Sure, examiners (and judges) aren't supposed to use hindsight in view of the invention itself, but when you present an elegant solution to a problem, you're sometimes inviting the assertion by lesser lights that your solution was obvious.

And according to recent US court decisions, if you're working in the area of algorithms, then you must be working with an abstract area or preempting someone else's research or something like that, so your invention shouldn't even be eligible for patenting.  Because, you know, you're just a Fields Medal winner, whose work has broad application to many number theory problems.

Which One Washes? Of Notices to File Corrected Application Papers and Related Trivialities

In Czarist Russia, one of the local government enforcers, a Cossack and known anti-Semite, approaches the town rabbi. 

“I understand you Jews have a book called ‘Talmud’”. 

“Yes”, says the rabbi.

“I understand you teach this ‘Talmud’ to children”. 

“Sometimes”, says the rabbi.  “If the child is intelligent.”

“If a child can learn Talmud, then I can learn Talmud.  I want you to teach me Talmud!” said the man.

“Well, before we teach a child Talmud, first we test him to see if he’s ready.”

“So test me!” says the Cossack.

“Alright.  There are three questions to this test.  First question: two men go up on a roof.  They both come down the chimney. One comes out clean, the other comes out dirty.  Which one washes?”

“The dirty one, of course!”

“No, the clean one”, says the rabbi.

“The clean one?” asks the Cossack with incredulity.

“Yes.  The dirty one looks at the clean one, assumes he too is clean, and goes home.  The clean one looks at the dirty one, assumes he is dirty, and promptly bathes.”

“Aha”, says the Cossack.

“Now for the second question.  Two men go up on a roof.  They both come down the chimney. One comes out clean, the other comes out dirty.  Which one washes?”

“The clean one!”

“No, the dirty one”, says the rabbi.

“The dirty one?  You just told me the clean one!” bellows the Cossack.

“The clean one looks at his hands, sees he is clean, and goes home.  The dirty one looks at his hands, sees he is dirty, and promptly bathes.”

“Aha”, says the Cossack.

“Last question”, says the rabbi.  “Two men go up on a roof.  They both come down the chimney. One comes out clean, the other comes out dirty.  Which one washes?”

“The dirty one!”

The rabbi shakes his head.

“The clean one!”

Again the rabbi shakes his head.

“Then which one washes?” asks the Cossack in exasperation.

“If two men go up on the same roof, and they both come down the same chimney, one is going to come out clean and the other come out dirty?” the rabbi asks.

The relevance of that story (which I first heard from the late Sy Kleinman and which I’m pretty sure appears in The Big Book of Jewish Humor) will become apparent momentarily. 

Among the things you might never deal with as an attorney at a large firm, but about which you’ll learn quite a bit about when you’re a patent practitioner at a smaller office, are the nitty-gritty details of the process of filing documents with the USPTO.  One particular aspect of this that yours truly and his cohorts have noticed since the AIA came into full force in 2013 is the extent to which the USPTO’s pre-examination minions have been trained to prize anal retentiveness over common sense – or even following the USPTO’s own rules – in the processing of new patent applications.  That this needlessly wastes budget-constrained applicants’ money is of no moment to the PTO.

To provide one example from the many, many available, the USPTO requires patent applications that contain drawings to include a “Brief Description” of those drawings.  This section is usually written, “FIG. 1 is a perspective view of a portion of a widget mounted to an associated portion of a whatchamacalit in accordance with the method of the present invention.”, or similarly.  Later, the application will relate to each drawing in detail.  Now, it sometimes happens that Fig. 1 actually contains Figs. 1A, 1B and 1C.  And the specification later relates to each of 1A, 1B and 1C.  But if the “Brief Description of the Drawings” refers to Fig. 1 when in fact Figs. 1A, 1B and 1C are present, watch out!  You’re likely to get the following notice from the PTO:

Question for students of English: what is the PTO saying?  That the drawings must be fixed?  That the specification must be fixed?  That both require amendment?  Clearly whoever concocted this form letter didn’t get high marks in school for the clarity of his writing.

In our experience, when this has occurred (infrequently, and usually in applications we haven’t drafted ourselves), the filing of a replacement specification in which the “Brief Description of the Drawings” refers to each of Figs. 1A, 1B and 1C, etc., has placated the mole men. 

We recently received a report from a colleague who received one of these notices. He wasn’t surprised to get the notice.  But he was surprised that in an identical application, filed the same day and containing the same text and drawings, he didn’t receive such a notice.  Nor, for that matter, did a third application, containing the same text and drawings but now an issued patent.  A patent the validity of which is unlikely to be impugned on account of the “Brief Description of the Drawings” referring to Fig. 1 and not Figs. 1A, 1B and 1C.

Which leads us back to the rabbi’s question: which one washes?