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.

CLS Bank v. Alice Corporation

CLS Bank v Alice
Confusing directions

CLS Bank v Alice Corporation: what is patentable? Perhaps I was too optimistic in my earlier “Prometheus bound (or at least distinguished)” post.

The May 10 Federal Circuit court decision, “CLS Bank v Alice Corporation” shows that the Federal Circuit is unfortunately still spinning its wheels with regards to determining basic questions about what is patent-eligible.

The good news is that the decision’s various logical problems, and the logical problems with the underlying Supreme Court decisions, are being widely publicized.  Indeed interest in this decision was so high that the Federal Circuit Court servers crashed under the load of everyone trying to download the decision at once!

If you are interested in seeing the present state of the art in regards to cutting-edge legal confusion, you can download the Federal Circuit decision at:


Note added in 2020:  An alternate title for this article could have been “the insanity begins“, but arguably the insanity actually started a bit earlier with the earlier Mayo v Prometheus case.  However, CLS Bank v Alice dialed the insanity “up to eleven“.

In retrospect, the original 2012 dissenting opinion by Judge Moore (joined by Judges Rader, Linn, and O’Malley) clearly shows that nearly half the Federal Circuit judges realized that the Federal Circuit (and as it turns out, later the Supreme Court) were about to go seriously “off the rails” with regards to patent eligibility.

Here is what the Judges wrote in 2012 (see page 88 in the above file):

I am concerned that the current interpretation of § 101, and in particular the abstract idea exception, is causing a free fall in the patent system. The Supreme Court has taken a number of our recent decisions and, in each instance, concluded that the claims at issue were not patent-eligible. See Bilski, Prometheus, Myriad (under consideration)…

Holding that all of these claims are directed to no more than an abstract idea gives staggering breadth to what is meant to be a narrow judicial exception…

My colleagues erroneously apply Prometheus’s “inventive concept” language by stripping away all known elements from the asserted system claims and analyzing only whether what remains, as opposed to the claim as a whole, is an abstract idea…This approach is inconsistent with the 1952 Patent Act, and years of Supreme Court, CCPA, and Federal Circuit precedent that abolished the “heart of the invention” analysis for patentability…

Moreover, my colleagues’ analysis imbues the § 101 inquiry with a time-dependency that is more appropriately the province of §§ 102 and 103… Under my colleagues’ approach, however, a system claim that passes § 101 when the patent issues could later magically transform into an abstract idea simply because certain computer hardware elements no longer seem inventive.”

So these judges, writing in 2012, analyzed the problem with total clarity and foresaw exactly what would happen.  Too bad the Supreme Court apparently ignored this opinion!

With the passage of time, dissenting opinions often become majority opinions. In this context, the 2012 dissenting opinion by Moore, Rader, Lin, and O’Malley spells out exactly how, when, and why the patent eligibility legal framework went amock. It also gives a good clue as to how to fix these problems.


Prometheus bound (or at least distinguished)

Mayo v. Prometheus patent eligibility, 35-USC-101
Prometheus having a bad day

Before Alice, there was Mayo v Prometheus: In an ancient Greek myth, the Titan god Prometheus is chained to a mountain by the god of blacksmiths (Hephaestus/Vulcan). Why talk about ancient Greek myths?  Because the story is not unlike the present patent eligibility mess created by the Supreme Court’s unfortunate, 2012, “Mayo Collaborative Services vs. Prometheus Laboratories, Inc.” holding. Unfortunately, the high-tech industry is Prometheus.

This case involved two medical diagnostics patents (6,355,623 and 6,680,302), in which SCOTUS held that patents that incorporate “laws of nature” may not be patent-eligible “unless they have additional features that provide practical assurance that the processes are genuine applications of those laws rather than drafting efforts designed to monopolize the correlations“.

Are there any inventions that don’t operate according to natural law?  What else is a patent claim but a drafting effort designed to monopolize a particular invention?  What exactly are “additional features” and “practical assurance” Here the Mayo v. Prometheus decision provides little or no guidance.

The decision’s use of “natural law”, as well as gratuitous citation of various examples from physics as well as medicine, is unfortunate for us scientifically trained types.  This is because the three-dimensional nature of the universe, the forward direction of time, and everything else about the world are all based on laws of nature!

Thus unless read narrowly, this decision would produce an unconstitutional result (it would eliminate all patents, hence violating Article 1 section 8 of the constitution).  So the ruling must be read narrowly, because the SCOTUS upholds the constitution and is never wrong, right?

What is worse, the Supreme Court then cited Mayo as a precedent for its later Alice ruling. Why be partially off the rails, when one can be totally off the rails?

I had hoped that this would get sorted out.  The Federal Circuit is composed of judges, some of whom actually know something about laws of nature and patents.  Their job is to clean up problems like this.  I had hoped that they would “chain” the overly expansive Mayo v. Prometheus holding by various subsequent lower court holdings.  They can’t totally overturn Mayo v. Prometheus, but they could have certainly brought some sense to it by nibbling away at the interpretation.

The Federal Circuit indeed made some attempts to do this, such as in the Rapid Litigation v. Cellzdirect case. However, taken as a whole, the various Federal Circuit decisions have been very mixed, and indeed self-contradictory.  In short, the Federal Circut has not really done its job here.

The USPTO has also attempted to do some damage control, again with mixed results. The underlying problem is that they do not have enough legal clout.

A similar case, Athena Diagnostics, Inc. v. Mayo Collaborative Services, is presently pending at the Supreme Court.  Let us hope that SCOTUS takes it, and gets it right this time.