When you think about it, patent examiners make industrial policy that affects the entire United States for up to 20 years. To be fair, the USPTO takes that responsibility pretty seriously. Still, examiners are human --- and a lot of them aren't experienced enough to have signature authority: their actions must be signed by their supervisors, who have to oversee multiple junior examiners. In many fields, the examining corps is pretty buried by the workload and doesn't have the time or other resources they'd like to have. [EDIT: In response to 'dkhenry, I agree, there's no excuse for the patent being discussed here.]
This examiner burden is exacerbated by three things:
First, patent examiners' performance is graded in part on the basis of a "count system," which provides at least some incentive for examiners to allow at least some claims [1].
Second, the statute mandates that a patent be issued unless the examiner can demonstrate that the application is not patentable.
Third, there's no requirement that a patent applicant conduct any kind of patentability search. An applicant and his patent attorney must disclose any "material" prior art of which they're aware, but the applicant need not do any kind of literature search. [EDIT: When you apply for a patent, you pay filing fees in part to help cover some of the cost of having a patent examiner do a search.]
Just imagine if a PhD candidate wasn't required to do a literature survey as part of her dissertation work, but instead her advisor and thesis committee were required to approve her degree unless they and their TAs could affirmatively demonstrate that her research was insufficiently novel. That's not unlike the way it works in the patent system. And now think of how much more national impact can result from the issuance of a patent compared to the issuance of a PhD degree.
Inventors and patent attorneys tend to fiercely oppose any proposal that patent applicants be required to conduct prior-art searches, on grounds that it would increase the cost of a patent application. But if an inventor wants a national industrial policy to be made in his favor that will last for as much as 20 years, it doesn't seem per se unreasonable for society to require him to do some due diligence first.
(Of course, as long as the law is what it is, patent applicants, including my own clients, will quite properly abide by the law as it is and not as some might think it ought to be.)
Richard Stallman once asserted, in testimony at the USPTO [2], that:
--snip--
Some years ago a professor I know patented Kirchoff's current law, which says that the electric currents flowing into a junction equal the currents flowing out. He did this to confirm, privately, his suspicion that the PTO could not handle the field of electronics. He never tried to enforce the patent which has since expired. I will disclose his name if you give assurances that he and his lawyer will not get in trouble for this.
Kirchoff's laws were formulated in 1845. If the PTO couldn't understand electricity after a century, how can we expect it to understand software in another decade or two.
If you were commenting on a patent on a complex technical subject then fine, this is on swinging. There is nothing other then gross negligence that can explain why this was approved.
"A method of swinging on a swing, the method comprising the steps of: a) suspending a seat for supporting a user between only two chains that are hung from a tree branch; b) positioning a user on the seat so that the user is facing a direction perpendicular to the tree branch; c) having the user pull alternately on one chain to induce movement of the user and the swing toward one side, and then on the other chain to induce movement of the user and the swing toward the other side; and d) repeating step c) to create side-to-side swinging motion, relative to the user, that is parallel to the tree branch."
Now go find prior art for this where it shows steps a, b, c, d. Not easy anymore is it?
Obviously, common sense should have played a huge part. But common sense by it self is not patent law. You still need evidence to support your common sense.
> One of the main requirements of patentability is that the invention being patented is not obvious, meaning that a "person having ordinary skill in the art" would not know how to solve the problem at which the invention is directed by using exactly the same mechanism.
"However, this did not preclude examiners from employing common sense. More recently [...], we explained that that use of common sense does not require a “specific hint or suggestion in a particular reference,” only a reasoned explanation that avoids conclusory generalizations."
Edit:
Also, what about bad ideas? Just because someone didn't demonstrate a specific method doesn't mean its non-obvious. Suppose I decided to pop an alert box on end-of-scroll for touch devices. It's a stupid idea. Do we want to grant a patent to someone just because no one demo'd such a bad idea?
That part is referring to motivation to combine references, or extend an existing reference.
The Federal Circuit precedent on the issue used to be that you needed an explicit suggestion or motivation (in prior art) to combine two references or do further work, in order for that combination to be prior art, which was fairly ridiculous, but it was the law. See, for example, In Re Lee, 277 F.3d 1338 ( http://bulk.resource.org/courts.gov/c/F3/277/277.F3d.1338.00...). Some choice quotes (i'm too lazy to pull out the cites the opinion itself is making):
"The factual inquiry whether to combine references must be
thorough and searching." Id. It must be based on objective
evidence of record. This precedent has been reinforced in
myriad decisions, and cannot be dispensed with.
...
"Our case law makes clear that the best defense against the
subtle but powerful attraction of a hindsight-based
obviousness analysis is rigorous application of the
requirement for a showing of the teaching or motivation to
combine prior art references."
There is also a still open question of the skill level of a person with ordinary skill in a given art and "obvious to try".
As for bad ideas, nothing in the law prevents you patenting useless or non-valuable things. We do in fact, grant plenty of patents on useless or non-valuable things.
As for whether we should, I personally don't believe we should, but the argument goes that "plenty of things that people thought were useless or bad ideas at the time turned out to be quite commercially valuable".
The Federal Circuit's TSM (teaching, suggestion, or motivation) requirement for showing non-obviousness was overruled by the Supreme Court in its 2007 KSR v. Teleflex opinion, available at http://scholar.google.com/scholar_case?case=5415246430487863...
KSR stressed the need for common sense in obviousness analysis; it also mentioned that "obvious to try" can be considered.
Yes, i'm quite aware (which is why i said "used to be"), I was simply explaining the quote in the MPEP that was cited by the parent, which was part of a discussion of what the law of obviousness used to be.
> As for bad ideas, nothing in the law prevents you patenting useless or non-valuable things.
Actually, section 101 of the patent statute expressly states that an invention must be useful in order to be patented. "Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title." (Emphasis added.)
There have been court cases in which patents were invalidated because their claimed subject matter had no discernible utility. See, e.g., the Janssen case: A patent claimed the use of a particular chemical formulation to treat Alzheimer's, but apparently there was zero evidence that the treatment actually had any effect. The case is summarized at http://www.pharmapatentsblog.com/2010/12/07/solving-utility-....
you could provide random videos of children playing randomly with their swings. At numerous points kids do get that trick to swing easily. I don't think it's hard at all.
Can I be considered prior art? Because I did that very thing as a kid over twenty years ago. In fact, I would say the method in question was common knowledge on the playground. Parents didn't like it because if the kid next to you did it then you stood the chance of bumping into each other unless you could get a matching rhythm going.
I also "discovered" that if you use your feet to twist the ropes around each other as you sit in the swing you eventually can cause a spinning motion in the opposite direction by lifting your feet from ground. Is there a patent for that? Did I miss my chance?
EDIT: oh wait, it seems the patent was either not granted or lapsed due to non-payment. I guess I don't have precedent for my twisting swing patent idea after all. Feel free to try it with my blessing.
Longer answer: yes, but only if the one single examiner handling this patent at the time had known of you, known how to contact you, and been able to obtain any information from you (and mind you, he/she likely could not have told you why he/she wanted the information).
The other problem is that while you did this over twenty years ago along with the others on the playground, where did any one of you publish anything describing your alternate swing method? Because to make a rejection stick, the patent examiner has to find some publication by you or one of your playground mates from twenty years ago disclosing to the public your new swinging method. This is because the position of the courts is that an applicant deserves a patent __unless__ the us patent office can prove otherwise (and "prove" pretty much means "prove to the level of a civil trial in court").
If the system were reversed, i.e. that applicant did not deserve a patent unless they (the applicant) could prove it was sufficiently new to deserve a patent, there would be far less of these "swinging on a swing" type patents.
When you are forced to spend 30+ minutes/day 120+days/year over the course of 8+years around a set of limited devices you tend to think of a lot of interesting ways to use them because otherwise it can get boring fast.
I wasn't forced to play with a swing, but there were a limited number of objects and we had to spend the time in the playground area during recess/lunch and couldn't leave school grounds. This was a suburban public elementary school in San Jose about 20 years ago.
My POINT was that parks don't have swings on branches. At least no park I've ever seen.
Even you apparently had to find a random picture on the internet. They must be sooo easy to find by going outside.
Edit: I think you are mistaking me for the parent comment-er. Notice I'm not him/her and my argument was only about not finding swings on branches at PARKS (because that's who I responded to).
"A method of swinging on a swing, the method comprising the steps of: a) suspending a seat for supporting a user between only two chains that are hung from a tree branch; b) positioning a user on the seat so that the user is facing a direction perpendicular to the tree branch; c) having the user pull alternately on one chain to induce movement of the user and the swing toward one side, and then on the other chain to induce movement of the user and the swing toward the other side; and d) repeating step c) to create side-to-side swinging motion, relative to the user, that is parallel to the tree branch."
Now go find prior art for this where it shows steps a, b, c, d. Not easy anymore is it?
I'm not sure what it matters if said invention is in one of various settings with repsect to prior art. Ultimately, the fact that it took 1/10 of a second to find an example of experimenters on a substantially similar context in a backyard makes this whole thing seem rather trivial. The variation of seat type or suspension technology is trivial, as are the N possible ways of generating momentum (a/k/a swinging).
Notice I didn't respond to that guy, I responded to the guy saying you'd find prior art at a park. I wasn't denying prior art existed, just NOT AT A PARK.
The pedantic difference between hanging a swing from a tree branch or from a metal frame does in fact play a major role in determining whether the patent would apply or not.
...What? He was saying that there are no swings hanging from branches in parks... He isn't saying prior art doesn't exist, just that it doesn't exist in parks. It is a clearly pointless and erroneous pedantic tangent. What are you on about now?
I wasn't even saying there isn't a park with swings hung from trees. As a guy with a young kid, I see a lot of parks. In two entirely different states. Saying "walk down the street and you'll see one" is false in both states. I've never seen a single one.
I accept the factual points of folks defending the patent examiners based on the patent system having more or less evolved-away both prior art and common-sense defenses based on the principle that neither constitute airtight proofs. Suppose everyone can more or less do X and more or less describe X. That should make X unpatentable but this criteria has goes from decisive to least-important-if-not-irrelevant when the system goes to the point of demanding absolute proof of the condition.
Yes, but this state of affairs is a defense of the patent examiners and the patent office only the sense of saying "hey, they're just covering their asses". Well, that's the it's-OK-to-be-a-despicable-cowardly-dog approach.
I can accept this as an explanation of the situation. I can't accept it if it phrased a defense.
There are no valid claims on this disclosure, see last page. The description is just a narrative: even though they can be used as evidence of prior art for future patents, they are not part of the IP given to the applicant.
This examiner burden is exacerbated by three things:
First, patent examiners' performance is graded in part on the basis of a "count system," which provides at least some incentive for examiners to allow at least some claims [1].
Second, the statute mandates that a patent be issued unless the examiner can demonstrate that the application is not patentable.
Third, there's no requirement that a patent applicant conduct any kind of patentability search. An applicant and his patent attorney must disclose any "material" prior art of which they're aware, but the applicant need not do any kind of literature search. [EDIT: When you apply for a patent, you pay filing fees in part to help cover some of the cost of having a patent examiner do a search.]
Just imagine if a PhD candidate wasn't required to do a literature survey as part of her dissertation work, but instead her advisor and thesis committee were required to approve her degree unless they and their TAs could affirmatively demonstrate that her research was insufficiently novel. That's not unlike the way it works in the patent system. And now think of how much more national impact can result from the issuance of a patent compared to the issuance of a PhD degree.
Inventors and patent attorneys tend to fiercely oppose any proposal that patent applicants be required to conduct prior-art searches, on grounds that it would increase the cost of a patent application. But if an inventor wants a national industrial policy to be made in his favor that will last for as much as 20 years, it doesn't seem per se unreasonable for society to require him to do some due diligence first.
(Of course, as long as the law is what it is, patent applicants, including my own clients, will quite properly abide by the law as it is and not as some might think it ought to be.)
Richard Stallman once asserted, in testimony at the USPTO [2], that:
--snip--
Some years ago a professor I know patented Kirchoff's current law, which says that the electric currents flowing into a junction equal the currents flowing out. He did this to confirm, privately, his suspicion that the PTO could not handle the field of electronics. He never tried to enforce the patent which has since expired. I will disclose his name if you give assurances that he and his lawyer will not get in trouble for this.
Kirchoff's laws were formulated in 1845. If the PTO couldn't understand electricity after a century, how can we expect it to understand software in another decade or two.
(applause)
--snip--
[1] http://www.ipwatchdog.com/2010/02/26/usptos-new-examiner-cou...
[2] http://www.uspto.gov/web/offices/com/hearings/software/sanjo...