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January 07, 2019


There was a lot to digest in the Office Guidance, but at the end of the day I see only a modest pullback and those examiners wanting to use the weapon of 101 will continue to do so (primarily because the Office attempted to include the mess of contradictory cases without taking a stand to actually resolve any of the contradictions.

A couple of examples:

The pull back due to the Berkheimer effect and the plain fact that examine to show “conventional” is far more daunting than the usual requirement to show anticipation or even obviousness (the new Prong One) remains mired with the inclusion in the Prong Two protocol of cases that would simply be overturned with Prong One IF Prong One were actually used and stopped there.

The Prong Two contradiction between maintaining exclusions of “in a particular technical area” AND concomittantly trying to introduce a “particular application is good enough” protocol - these two are mutually exclusive and any attempt to maintain both achieves neither.

The Office flat out stated that the state of Common Law is contradictory.

Flat out states this.

As noble as the attempt is to try to take a step out of the process of making Common Law themselves (as has been noted — by the CAFC itself — application of the “gift” from the Supreme Court’s Alice/Mayo Two Step IS engaging in writing law through the Common Law process); one cannot state that the current state of law is contradictory, and then turn around and try to incorporate both sides of the contradiction into the new protocol.

On another blog it was noted a recent Supreme Court comment, in a case completely untethered to direct issues of patent law, and made in relation to a potential willingness by the Supreme Court to throw out its own prior precedence.

Justice Cavanaugh in the oral arguments of the Franchise Tax Board of California v. Hyatt case provided (from the write-up at SCOTUSBLOG):

"Kavanaugh was skeptical. In his view, strict adherence to that changed-circumstances principle would have prevented many past overrulings. Instead, Kavanaugh suggested, overruling is proper when a precedent is “egregiously wrong,” has “severe practical consequences,” and generates “no reliance.”

Given that even now with the latest attempt by the Executive branch to put forth protocol to apply the common law as written by the courts (and in small part, by the executive branch itself), these three factors remain on the table, one had to wonder if the Court will extract itself from its own Gordian Knot by simply making the entire knot disappear.

Personally, I am, well, skeptical, that the Court can overcome its addiction to legislating from the bench in the policy area of innovation protection. The addiction to wax nose mashing is simply too powerful.

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