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.