It is well known that hindsight reconstruction is an insidious error that infects patent prosecution. The Federal Circuit has noted that it is a difficult task to avoid “subconscious reliance on hindsight” and tools are available to “inoculate the obviousness analysis against hindsight”. However, it is well known that practitioners could benefit in countering the pernicious problem of subconscious hindsight directed analysis with additional tools. This article is intended to provide an additional tool outlining a new analytical approach to detecting hindsight: 1) identification of a proxy problem upon which an “obvious” advantage is predicated, and 2) showing that either a) the proxy problem is secondary to the problem solved by the inventor and would have been insufficient to drive advancement of the art, and that the examiner has failed to show that a person of ordinary skill in the art (POSITA) would have regarded the proxy problem as sufficiently significant so as to require solution, or b) a showing that the proxy problem posed to POSITA presupposes the problem and its solution as solved by the inventor and is derivative. Once it is shown that the proxy problem is subsidiary or presupposes the problem solved by the inventor it becomes a less difficult task to show that the invention was not considered as a whole or that the problem was improperly phrased.
The first step in this approach is to identify a problem-solution statement that underlies the inventive step for the claim. See, for example, the Reply to Non-Final Office Action for Application Number 14/614,407 (hereinafter, “407” case) dated July 23, 2016, which was found persuasive. It is particularly important to first identify the problem solution statement that broadly captures the inventive concept. When properly articulated, the problem solution statement can readily expose hindsight reconstruction. In the “407” case “The problem solved by the instant invention was “to make a large ice luge without a large freezer.” The solution was “to make a large ice luge from a multiplicity of smaller but fairly large ice blocks”. This is a fairly simple invention not requiring specialized skills to be possessed by a POSITA. However, part of the inventive step was realization of the problem to be solved as framed by the problem and solution as stated above. The problem solution statement expressed in the form of a pseudo-claim could be “a method of making a large ice luge without using a large freezer by freezing a multiplicity of smaller but fairly large ice blocks and by arranging them to form a cascading ice luge.”
The second step is to identify the shared advantage proposed by the examiner or an adversarial litigant as motivation to modify the primary reference. In the “407” case the proposed shared advantage was “preserving the ice blocks and keep it [them] clean.”
Next the premise, i.e., the proxy problem, upon which the shared advantage is based, must be identified. In this case the proxy problem issue was sanitation and preservation of ice blocks. Often a proxy problem is not expressly stated but with only the shared advantage recited. It is necessary to deduce the proxy problem in these instances.
The fourth step is to show that the proxy problem posed by the examiner presupposes the inventive step and that the inventive step disclosed by the inventor is prerequisite to posing the question that is presented to hypothetical POSITA and that the problem posed to POSITA just so happens to require the inventors solution and is subsidiary or derivative the inventor’s stated problem to be solved. In this case the examiner, by focusing on a faux or counterfeit problem, focused on a subsidiary problem and its solution in isolation from the inventive act as a whole. The examiner thus presupposed the solution and placed it in the hands of an artisan and therefore the solution appeared to be obvious in hindsight, as noted in Mintz: “Once the problem and solution appear together in the patent disclosure, the advance seems self evident.” In this particular case, because the inventive step included realization and proper framing of the problem to be solved, to establish obviousness it is necessary for the examiner to establish that POSITA would have recognized the problem identified by the inventor and its solution. See Mintz, (“[M]ust prove by … evidence that a person of ordinary skill in the … arts at the time of the invention would have recognized the … problem recognized by the inventors and found it obvious to produce the … structure disclosed.”)[emphasis added]. In the “407” case the Reply also pointed out that the rationale for obviousness was cursory insofar as it did not establish that the proxy problem was a real problem that POSITA would have regarded as relevant and therefore insufficient to establish prima facie obviousness. In addition it can generally be shown in this type of case that in posing the proxy problem the examiner or adversarial litigant has erroneously phrased the problem to be solved. See Mintz, (“[T]he district court erroneously phrased the issue as whether it would have been obvious to simply ‘fix each point of intersection’ of each strand in order to solve that problem” This statement of the problem represents a form of prohibited reliance on hindsight.” [emphasis added] “The invention was used to define the problem that the invention solves. “In other words, when someone is presented with the identical problem [or a proxy problem which presupposes the relevant problem] and told to make the patented invention, it often becomes virtually certain that the artisan will succeed in making the invention.”
It should then be emphasized that by presupposing the problem identified and solved by the inventor the examiner failed to find motivation to solve the problem from the references or by common knowledge of POSITA, and that the rationale for obviousness therefore cannot pass muster. Furthermore, it should be pointed out that the examiner’s rationale fails to qualify as a legitimate rationale if it does not identify a principle abstracted from the solution. Consider, for example the first three exemplary rationales supporting obviousness from KSR v. Teleflex.
- Combining prior art elements according to known methods to yield predictable results.
- Simple substitution of one known element for another to obtain predictable results.
- Use of known technique to improve similar devices (methods, or products) in the same way.
All of these rationales are formulated in abstracted form, i.e., concepts. None of the rationales refer to any particular structures or limitations from any particular inventions. An examiner’s inadequate rationale might suggest modifying the widget from Smith with the doohickey from Jones because that would provide some obvious advantage. However such an explanation, without presenting a true rationale in abstract form shows that the examiner or adversary is unable to find a principle and is therefore relying on the invention rather than the prior art. it matters not whether an exemplary rationale from KSR or a rationale derived from common knowledge is employed by an examiner. A principle must be articulated. “For example, textbooks or treatises may include basic principles unlikely to be restated in cited references.” Dystar Textilfarben v. C.H. Patrick. In this case the basic principle of “vacuum packaging” was applied to the use of “airtight containers” to demonstrate obviousness. Without identifying or expressing an abstracted principle what is left is the inventor’s disclosure. If an adversary or examiner cannot find a principle explicitly expressed in references, then it should be required to state a principle derived from obvious knowledge of persons of ordinary skill in the art. The abstract principle should be derived from references or should be otherwise demonstrable through showing of real examples. According to the infamously abused KSR decision the USSC requires “a reason that would have prompted a person of ordinary skill in the art to combine the elements as the new invention does.” However, without identifying some rationale in abstract or generic form it is nearly certain that a proper analysis of the problem and its solution, solved by the inventor considered in the context of an adversary’s proposed shared advantage and its proxy problem, should provide the means to show the “reason that [allegedly] would have prompted a person” depends upon the inventor’s disclosure. Often a concluding statement for an argument that includes restatement of the proxy problem and an assertion that the proxy problem could not have motivated the inventor to solve the inventor’s real problem provides persuasive emphasis.
The approach outlined above can be utilized in defending both method and apparatus claims for simple inventions as well as highly complex inventions involving technology understood only by persons of particularly well developed skill in the relevant art.