Still More on the Supreme Court Ruling

Patently-O has a piece by Professor Joshua Sarnoff on the ruling. Sarnoff has quite a resume, apparently:

Professor Joshua Sarnoff, Assistant Director of the Glushko-Samuelson Intellectual Property Law Clinic and a Practitioner-in-Residence at the Washington College of Law, American University. Professor Sarnoff filed an amicus brief in support of Petitioner KSR.

Professor Sarnoff’s analysis of the ruling, once again, has some bearing on edupatents.

The fundamentals of the case are about whether combining two previously known inventions necessarily leads to a new, patentable innovation. Writes Sarnoff, quoting th opinion:

The Court rephrased the question as “whether a pedal designer of ordinary skill, facing the wide range of needs created by developments in the field of endeavor, would have seen a benefit to upgrading Asano with a sensor.” Slip op. at 20. The Court thus focused on evidence regarding the state of the automotive design art. Further, the Court noted that “[f]or a designer starting with Asano, the question was where to attach the sensor. The consequent legal question, then, is whether a pedal designer of ordinary skill starting with Asano would have found it obvious to put the sensor on a fixed pivot point. The prior art discussed above leads us to the conclusion that attaching the sensor where both KSR and Engelgau [the inventor] put it would have been obvious to a person or ordinary skill.” Slip op. at 21.

This may all sound like common sense. But common sense has fairly little to do with the way in which the obviousness standard has been applied at the time, which is why this ruling was needed. It imputes the hypothetical “person with ordinary skill in the art” with a modicum of imagination.

Sarnoff continues,

In summary, the Court’s test focuses on predictability and expected functions of combinations, rather than the inventive skill required to achieve them, and the Court’s holding relied on evidence regarding the motivations in the marketplace at the time of invention (but not regarding subsequent commercial success and other secondary factors). The Court’s focus thus will likely lead to greater Patent Office and lower court reliance on evidence regarding the nature of the person having ordinary skill in the art, the general state of the art and problems in it, and (possibly) secondary considerations that would tend to show the (un)predictability of the result or the lack of motivation to solve problems that would lead to the claimed combination.

In the case of educational software, the “art” in question could be argued to be software development. The “edu” in edupatents may well be made mostly irrelevant by this ruling, and that would be a good thing. It would mean that a technique that is generally known in the field of software development could not be made patentable simply by applying it to an education-specific domain.