“What started as a joke has become a research exercise based on the question: ‘How do sheep send messages to one another in this digital age?’”
The arrival of a U.S. Patent and Trademark Office (USPTO) office action citing no less than six earlier patents directed to various sub-combinations in the features of the main independent claim in an application which I was handling prompted the present note.
Readers may recall the decision of Judge Rich In re Winslow 365 F.2d 1017 (C.C.P.A. 1966):
We think the proper way to apply the 103-obviousness test to a case like this is to first picture the inventor as working in his shop with the prior art references — which he is presumed to know — hanging on the walls around him.
However, Boltzmann’s entropy formula S = k log W where S represents entropy, a concept associated with a state of disorder, randomness, or uncertainty, and W represents the number of possible states in the relevant system, leaves an unforgettable impression on those who have studied it. Even if the fields from which the earlier patents might be selected are restricted to relevant general classifications, the number of combinations of six references which might have been collected together from the body of prior art in the relevant technical field randomly and without knowledge of the invention is mind-boggling.
Even then, a small amount of purposeful prior art redesign by the examiner was needed to arrive at the full set of features claimed.
In contrast, the warnings against hindsight in the USPTO Manual of Patent Examining Procedure at 2141 and 2145 are relatively brief, and it is difficult to conclude that examiners take them seriously.
Hindsight Bias in Literature and Life
Credible warnings can be found in literature. Arthur Conan Doyle illustrates the problem by the following exchange between Sherlock Holmes, Dr Watson and a visiting client Jabez Wilson in “The Red-Headed League”:
“Beyond the obvious facts that he has at some time done manual labour, that he takes snuff, that he is a Freemason, that he has been in China, and that he has done a considerable amount of writing lately, I can deduce nothing else.”
Mr. Jabez Wilson started up in his chair, with his forefinger upon the paper, but his eyes upon my companion.
“How, in the name of good-fortune, did you know all that, Mr. Holmes?” he asked. “How did you know, for example, that I did manual labour. It’s as true as gospel, for I began as a ship’s carpenter.”
“Your hands, my dear sir. Your right hand is quite a size larger than your left. You have worked with it, and the muscles are more developed.”
“Well, the snuff, then, and the Freemasonry?”
“I won’t insult your intelligence by telling you how I read that, especially as, rather against the strict rules of your order, you use an arc-and-compass breastpin.”
“Ah, of course, I forgot that. But the writing?”
“What else can be indicated by that right cuff so very shiny for five inches, and the left one with the smooth patch near the elbow where you rest it upon the desk?”
“Well, but China?”
“The fish that you have tattooed immediately above your right wrist could only have been done in China. I have made a small study of tattoo marks and have even contributed to the literature of the subject. That trick of staining the fishes’ scales of a delicate pink is quite peculiar to China. When, in addition, I see a Chinese coin hanging from your watch-chain, the matter becomes even more simple.”
Mr. Jabez Wilson laughed heavily. “Well, I never!” said he. “I thought at first that you had done something clever, but I see that there was nothing in it after all.”
Credible warnings can also be found in real life. In her book entitled “The Challenger Launch Decision”, University of Chicago Press, 1996, Professor Diane Vaughn explains that:
Turner, in Man-made Disasters, notes the tendency for a problem that was ill-structured in an organization to become a well-structured problem after a disaster, as people look back and reinterpret information ignored or minimized at the time, that afterward takes on new significance as signals of danger. After the Challenger incident, the SRB joint problem became a well-structured problem as the tragedy made salient and selectively focused attention on the NASA decisions that seemed to lead inexorably to it. The information then was strung together in post-tragedy accounts that presented a coherent set of signals of potential danger that was not characteristic of the situation as it existed for NASA and Thiokol managers and engineers in the work group prior to the tragedy. Furthermore, even the most detailed of these post-disaster accounts extracted actions from their historical and organizational context in a stream of actions, the sequence of events and structures of which they were a part. Robbed of the social and cultural context that gave them meaning, many became hard to understand, controversial and, in some cases, incriminating. The result was a systematic distortion of history that obscured the meaning of events and actions as it existed and changed for the participants in the situation at the time the events occurred. (emphasis in the original).
The hindsight fallacy can be verified in my personal experience. What started as a joke has become a research exercise based on the question: “How do sheep send messages to one another in this digital age?”
The many people that I have asked over a period of years range from individuals with an interest in computers to others who work at supermarket check-outs. Not a single person in some years of telling this joke has ever been able to guess the answer, either immediately or with gentle prompting.
The answer, of course, is that the sheep use baa code.
An individual trained in the manner of thinking characteristic of examiners in the USPTO and elsewhere would regard the answer as obvious. Children are taught at an early age the sound that sheep make and will have routinely observed sheep making such sounds during their childhood. Today, almost everything we purchase carries a bar code, and those on check-outs handle such items all day every working day. Given this fact pattern, surely it is straightforwardly obvious to translate bar code for humans to baa code for sheep. Following the reasoning of Justice Kennedy in KSR v. Teleflex 550 U.S. 398 (2007), the answer flows from “recourse to common sense” to which recourse should not be denied by rigid preventative rules. However, when you ask the question of real people, the question creates puzzlement and real people simply cannot make the link even when they are reminded that the sound a sheep makes is a baa.
Let’s Not Wait for Hindsight to Address the Problem
A search through the European Patent Office (EPO) decisions database under art. 56 EPC revealed approximately 25,200 issued decisions, but if the keyword “hindsight” is added the total shrinks to 45. Thus, in both the United States and Europe, it is arguable that the need to avoid hindsight bias deserves greater attention than it is currently given.
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