Obviousness, hindsight, KSR

Obviousness, hindsight, and KSR
Training the human neural network: by Novasdid (CC BY-SA 4.0)

The 2007 KSR v. Teleflex Supreme Court (SCOTUS) decision is why the patent examiner, ignoring hindsight issues, just used your teaching against you to reject your patent application claims as being “unpatentable” (obvious) under 35 USC 103.  Unfortunately, the US patent “obviousness” rules and regulations still have some “bugs.” 

The patent examiner has just reviewed your patent application and has sent you an office action. Why did the examiner write all these “rejected under 35 USC 103 as being unpatentable over (various citations)” statements? It almost looks like the examiner just copied your claim, interspersed it with various citations matching some of the claim words, and concluded with “therefore it would have been obvious to one of ordinary skill in the art…”

This statement might look to you like a standard formula that the USPTO could use to reject almost anything. It is. Why does the USPTO work this way?

Why do obviousness rejections exist?

Some background: Without obviousness rejections, your patent could soon be swamped by many other competitor patents that claim the smallest, most trivial changes to your work. So there needs to be something to prevent this. Obviousness acts like an invisible “force field” that keeps competitors from getting too close to your work. The USPTO attempts to set the depth of this “shielding” or “force field” by trying to determine, often years later, what a person having ordinary skill in the art (PHOSITA) would think was obvious.

The big problem is “hindsight bias”. Lots of non-obvious things look obvious in hindsight. Here the legal system is attempting to cope, with varying success, with a very complex underlying problem of pattern recognition. Once you see the solution to a puzzle, it is hard to see anything else.

Hindsight bias?  Inconceivable!

Before 2007, the USPTO used anti-hindsight rules in an attempt to minimize hindsight problems. However, in the 2007 KSR v. Teleflex case, SCOTUS made what, in my opinion, was a fundamental error. Dictionaries define hindsight (somewhat incompletely) as: “understanding of a situation or event only after it has happened or developed”. SCOTUS tends to turn to the dictionary whenever they don’t understand a subject. Here, they ran this incomplete dictionary definition into the ground. They argued that the earlier anti-hindsight rules were too “rigid”, and that “common sense” should be used. They held that hindsight could be avoided by just considering if the invention would be obvious “at the time of the invention”.

Unfortunately, SCOTUS failed to provide a time machine. What they gave us instead is a meaningless phrase and a legal fiction.

In reality, you have just shown the examiner the solution to a puzzle. You have thus “trained the examiner’s neural net” to view this solution as “obvious.” However, SCOTUS doesn’t understand this. Instead, they have told the examiner that hindsight bias isn’t a real problem.  Thus, your examiner can dismiss your “hindsight” rebuttals by merely stating that under the newer, post-KSR, USPTO rules (MPEP 2141.01 III): “Content of the prior art is determined at the time the invention was made to avoid hindsight.” Really? While you are back in that era, can you invest in some stocks for me?

In other words, thanks to the KSR ruling, the present USPTO rules can be paraphrased as Don’t bother us about “hindsight”, we’re not listening. SCOTUS says that we don’t have to!

Other ways to rebut obviousness rejections

Fortunately, you are not totally out of luck. You have other ways to rebut obviousness rejections. Examiners often misquote the citations and have gaps in their reasoning. Further, the examiner’s proposed combination is often a Frankenstein monster that differs significantly from the claim.  You can also try to defend based on Secondary considerations. So you can do things to defend your claims. However, US patent law does have a “bug” (or feature) here.

Cleaning up obsolete case law: time to revisit In re Gorman

re Gorman
Spiderweb

35 USC 103 rejections: Ever have something rejected as “obvious” in view of a combination of 5+ references?  The re Gorman case is how such absurd rejections are rationalized.

Patent examiners must follow the Manual of Patent Examining Procedure (MPEP). According to MPEP 707 section 7.37.07, arguments that the examiner used an excessive number of citations are presently found to be “unpersuasive”.  Section 7.37.07 is based upon an old case In re Gorman, 933 F.2d 982, 18 USPQ2d 1885 (Fed. Cir. 1991).  However, Gorman uses reasoning that is now obsolete and unsupported due to patent law developments since 1991.

Some key aspects of the In re Gorman decision were:

When it is necessary to select elements of various teachings in order to form the claimed invention, we ascertain whether there is any suggestion or motivation in the prior art to make the selection made by the applicant. Interconnect Planning Corp. v. Feil, 774 F.2d 1132, 1143, 227 USPQ 543, 551 (Fed.Cir.1985). ” ‘Obviousness can not be established by combining the teachings of the prior art to produce the claimed invention, absent some teaching, suggestion or incentive supporting the combination.’ ” In re Bond, 910 F.2d 831, 834, 15 USPQ2d 1566, 1568 (Fed.Cir.1990) (quoting Carella v. Starlight Archery and Pro Line Co., 804 F.2d 135, 140, 231 USPQ 644, 647 (Fed.Cir.1986)).

The extent to which such suggestion must be explicit in, or may be fairly inferred from, the references, is decided on the facts of each case, in light of the prior art and its relationship to the applicant’s invention. As in all determinations under 35 U.S.C. Sec. 103, the decisionmaker must bring judgment to bear. It is impermissible, however, simply to engage in a hindsight reconstruction of the claimed invention, using the applicant’s structure as a template and selecting elements from references to fill the gaps. Interconnect Planning, 774 F.2d at 1143, 227 USPQ at 551. The references themselves must provide some teaching whereby the applicant’s combination would have been obvious

However, since 2007 KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, the “teaching, suggestion or incentiverequirement for combining citations is no longer required (although still allowed).  When this part of the 1991 Gorman court’s reasoning, shown in the first paragraph above, is removed, it becomes clear that the legal and logical underpinning of their 1991 decision no longer applies!

Yet they persist… Under present rules, MPEP 707 section 7.37.07, based upon the now obsolete 1991 Gorman legal reasoning, still acts as a roadblock for any applicant who attempts to argue that the examiner did:  “engage in a hindsight reconstruction of the claimed invention, using the applicant’s structure as a template and selecting elements from references to fill the gaps.”

At present, there is no upper limit to the number of citations that an examiner can apply, and indeed I personally have seen combinations of eight citations used in obviousness rejections. Some 35 USC 103 rejections look more like ransom notes, where the examiner parses the applicant’s claim into various sentence fragments, and then computer-matches these with corresponding sentence fragments from other citations.

Note to USPTO:  At present, MPEP 2145 cites In re Gorman as justification for combining 13 prior art references in a 35 USC 103 (obvious) rejection! Indeed, MPEP 2145 teaches no upper limit. Under the present post-KSR rules, where hindsight is not viewed as being a problem, an examiner could, in theory, write a pure “ransom note” type rejection. Just use the applicant’s claims and assign each claim word to a different reference.