Combating Hindsight Reconstruction in Patent Prosecution

• Jurisdiction: United States,Federal
• Publication year: 2015
• Citation: Vol. 64 No. 4

Combating Hindsight Reconstruction in Patent Prosecution

Ashley Allman Bolt

COMBATING HINDSIGHT RECONSTRUCTION IN PATENT PROSECUTION

ABSTRACT

The common saying "hindsight is 20-20" rings true in many different areas; in patent law specifically, hindsight bias has the potential to affect a patent examiner's determination of whether an invention is "obvious" under 35 U.S.C. § 103. The examiner may permissibly rely upon a combination of prior art references to find that a claim would have been obvious to a person having ordinary skill in the art. However, the examiner may not use "that which only the inventor taught . . . against its teacher." Structural flaws within the examination process place pressure upon examiners to reject claims upon first examination, regardless of the content of those claims. The Supreme Court's decision in KSR International Co. v. Teleflex Inc. rejected the patent applicant's primary guard against hindsight bias: the Federal Circuit's teaching-suggestion-motivation test as the sole test for obviousness. This has left the patent applicant with little to combat obviousness rejections based on hindsight bias but the "secondary considerations" of Graham v. John Deere Co. of Kansas City, which are rarely available at the prosecution stage.

This Comment proposes a framework that focuses on the question of whether an examiner has impermissibly relied upon hindsight to combine references in determining obviousness. This framework provides an avenue for discussion between the patent examiner and the prosecuting attorney and provides substance to be considered by decisionmakers on appeal. The intent of the framework is to consider whether the examiner conducted the process of the examination in a fair and reasonable manner with full appreciation of what a person having ordinary skill in the art would have concluded when faced with the prior art. The proposed framework puts forward ten factors which should be considered in the totality of the circumstances, similar to the Wands factors for enablement or the DuPont factors for likelihood of confusion in Trademark Law.

These ten factors are not intended as an all-inclusive list but as examples of inquiries that may bear on the question of hindsight, of which there are likely many more. The adoption of this framework may increase the burden on examiners as well as their supervisors, but this Comment argues that the

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benefit of adopting this framework, providing recourse to patent applicants who may be unfairly deprived of patent claims they deserve, outweighs the cost. The rejection of nonobvious patent applications thwarts one of the primary purposes of patent law: incentivizing innovation.

Introduction............................................................................................1139

I. The Requirement of Nonobviousness.......................................1140

A. Passage and Initial Interpretation of the Patent Act of 1952 .. 1141
B. The Development of the TSM Test as a Guard Against Hindsight Bias ......................................................................... 1144
C. The Supreme Court Intervenes with KSR................................ 1148

II. Prosecution Difficulties Following KSR................................1150

A. Patent Examination Process.................................................... 1151
B. Changes in the MPEP Post-KSR ............................................ 1152
C. Development of the Secondary Considerations of Graham ..... 1154
D. Inadequacy or Impracticality of Secondary Considerations in Prosecution .............................................................................. 1155

III. Framework for Determining Use of Impermissible Hindsight........................................................................................1156

A. Degree to Which References Show or Suggest All Elements of the Claim ................................................................................. 1157
B. Degree to Which the Rationale to Combine is Reasonable ..... 1158
C. Degree to Which Results Are Predictable ............................... 1159
D. Degree of Compatibility Among Cited References.................. 1160
E. Degree of Analysis of the Reference as a Whole ..................... 1161
F. Degree to Which Combination Changes the Principle of Operation................................................................................. 1162
G. Degree to Which References Teach Away from the Applicant's Combination ......................................................... 1163
H. Degree to Which References Are Analogous to the Application .............................................................................. 1165
I. Number of References Combined............................................ 1167
J. Degree to Which Rejection Cites Inapplicable Case Law....... 1168

IV. Potential Impact on Patent Examination and Appeal..........1170

Conclusion................................................................................................1172

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Introduction

Empirical studies have shown that, once aware of an invention, jurors are much more likely to find that the invention would have been obvious.¹ This Comment explores the effect of that type of hindsight bias not on jurors during a trial but instead on obviousness determinations during patent examination. To obtain a patent, the rule has long been established that the claimed subject matter must be nonobvious. The 1952 Patent Act required that the patent examiner determine whether the invention in the patent application would have been obvious to a person having ordinary skill in the art (PHOSITA) at the time of invention.² If so, the invention did not meet the requirements for patentability.³ After the Leahy-Smith America Invents Act went into force in 2013, the timing has changed: the standard is now whether the invention would have been obvious to a PHOSITA at the time of filing.⁴ For the purposes of this Comment, though, the underlying theme is the same: according to the text of the statute, the examiner must view the claimed invention from a point in time prior to its examination when determining obviousness.

Viewing the claimed invention at the time of filing the patent application—or at the time of invention—is problematic since "[h]umans are cognitively incapable of ignoring what they have learned . . . as required for the proper ex ante analysis."⁵ This phenomenon is commonly called the "hindsight bias."⁶ In the context of patent prosecution, "[o]nce the [examiner] knows that the invention exists today, it can be difficult to prevent hindsight bias from affecting the [examiner's] analysis" of the nonobviousness requirement.⁷ Reliance upon hindsight creates a bias against patentability because the

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examiner views the invention as it exists and therefore merely as a trivial advance in the start of the art.

courts and legal scholars have struggled to formulate a test for nonobviousness that compensates for the possibility that an examiner has impermissibly "take[n] into account the ex post fact that the invention was actually achieved"⁸ to reject patent claims as obvious. Current patent applicants who suspect the presence of hindsight bias in their rejections for obviousness have few avenues through which to address their concerns beyond arguing technical distinctions. For that reason, this Comment proposes a framework for determining whether an examiner has impermissibly relied upon hindsight in her rejection. The framework includes a number of factors that can weigh in favor of (or against) hindsight while considering whether the examination process was conducted in a fair and reasonable manner, with full appreciation of what a PHOSITA would have concluded when faced with the cited prior art.

This Comment proceeds in four parts. Part I explains the history of nonobviousness and the standards that courts have developed to combat reliance upon impermissible hindsight. Part II examines the process of patent examination and the difficulties encountered in patent prosecution after the Supreme Court's decision in KSR International Co. v. Teleflex Inc. It also explains why objective indicia of nonobviousness are an impractical solution to the hindsight problem in the context of patent prosecution. Part III proposes the framework for determining whether an examiner has employed impermissible hindsight to reject claims as obvious under section 103 by considering a number of factors, most of which are directed toward the process of examination. Finally, Part IV analyzes the potential impact on patent prosecution and appeals if the proposed test were adopted.

I. The Requirement of Nonobviousness

Since 1793, the requirements for patentability of an invention have included novelty and utility.⁹ As the patent system developed, however, the judiciary began to acknowledge a need for an additional element.¹⁰ This judge-made element would further the goal of incentivizing innovation by

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protecting only substantial advances in the state of the art rather than natural technological evolution. In early cases such as Hotchkiss v. Greenwood, courts required "that degree of skill and ingenuity which constitute essential elements of every invention" for an advance to be patentable.¹¹ The standard of what constituted an "invention" was never clear,¹² which prompted lawmakers to take notice. Section A of this Part describes the passage as well as early interpretation of the Patent Act of 1952 in the seminal case of Graham v. John Deere Co. of Kansas City and its successor cases. Next, section B chronicles the Federal Circuit's development of the teaching-suggestion-motivation (TSM) test for obviousness and describes the ways in which that test was a helpful guard against the hindsight bias. Finally, section C explains the Supreme Court's rejection of the TSM test as the sole test for obviousness in KSR and its insistence on...