Newman Says Obviousness is Matter of Foresight Not Hindsight

Judge Pauline Newman, CAFC

For most of us patent prosecutors, Judge Newman is our hero.  Not only is she “one of us” (former corporate chief patent counsel for FMC Corporation), but, as a Federal Circuit judge, she definitely “gets it” in terms of the statutes, the case law, and the technology.  Unfortunately, she has too often been the lone voice “crying in the wind” when the Federal Circuit goes astray.  See CAFC Says “Patented Invention” Does Not Include Methods for Newman’s vociferous (and “spot on”) dissent in Cardiac Pacemakers, Inc. v. St. Jude Medical, Inc. on the meaning of “patented invention” in 35 U.S.C. § 271(f).  Sometimes Judge Newman brings valuable wisdom to an otherwise “mind-numbing” majority opinion.  See Not Losing the Forest for the Trees: Newman Concurs in Ariad where Newman’s concurring opinion concisely captured the essence (and not simply the form) of the “written description” requirement, and why the patent in Ariad Pharmaceuticals v. Eli Lilly &Co. fell short of that requirement.

But on some occasions, the patent planets align and Judge Newman gets to write the majority opinion in a Federal Circuit case.  And fortunately for us patent prosecutors, In re Vaidyanathan is one of those cases where Newman waxed very eloquent in saying:  “Obviousness is determined as a matter of foresight, not hindsight.”  More importantly for us prosecutors, she provided us with useful case law precedent to challenge rejections which are long on conjecture and speculation, but extremely short on facts, evidence, logic, or reasoning.  In short, Judge Newman flattened a factually unsupported and badly reasoned obviousness rejection under 35 U.S.C. § 103 in Vaidyanathan.

Vaidyanathan is a case that many of us patent prosecutors unfortunately see for more often than we would like to.  The invention in Vaidyanathan related to a guidance and control method for munitions such as missiles or unmanned aircraft where an autonomous reflex response is based on a neural network model of a biological response.  The claimed method was designed for the “endgame” stage of flight when the munition was very close to the target, at which stage the system would guide and control the munition by calculating trajectory commands using a neural network trained in using a genetic algorithm.  The neural network provided “high level” guidance commands to an autopilot, which converted those commands to signals that directed the actual movement of the munition.

The Board of Appeals and Interferences (Board) affirmed the Examiner’s rejection of Claims 1-2 and 4-9 as obvious in view of a combination of two references:  U.S. Pat. Nos. 6,473,747 (“Biggers”) and 5,435,503 (“Johnson”).  Claim 3 was rejected in view of these two references, and further in view of a third reference, U.S. Pat. No. 6,449,603 (“Hunter”).  On appeal to the Federal Circuit, the applicant argued that:  (1) the Board misinterpreted claims 8 and 9, leading the Board to conclude erroneously that the additional limitations in these Claims were taught by Biggers; and (2) neither the Examiner, nor the Board, made sufficient findings or adequately explained their reasoning.  In fact, the PTO Solicitor tried to substitute new reasoning for that supplied by the Board concerning how the asserted references should be interpreted, which the applicant responded to in their brief.

Judge Newman, writing for a Federal Circuit panel that included Judge Dyk (concurring in result) and the soon-to-be retiring Chief Judge Michel, let the Board, as well as the PTO Solicitor have with both legal barrels.  First, Newman agreed with the applicant that the “PTO has offered divergent views of what Biggers describes and means in relation to” the claimed method.  Of particular note was the Board’s third Finding of Fact (“FF3”) relating to the interplay between the neural network component and the autopilot component of the Biggers system, and which the applicant was particular critical of.  FF3 said that:

“Biggers teaches sending angle of attack commands to the auto pilot system of the missile.  [Reference citation omitted].  Although flow diagram box 44 in fig. 3 of Biggers is not explicitly discussed by Biggers, a person of ordinary skill in the art would understand that box to denote the auto pilot alluded to by Biggers.

FF3 was relevant to step (c) of Claim 1 where the desired trajectory calculated by the neural network in claimed step (b) is provided as input into an autopilot.  The Board had found that the trajectory or “angle of attack” commands generated by the Biggers neural network were sent to the autopilot for implementation, and thus that this aspect of claimed step (c) was taught by Biggers.

In response, Newman’s opinion observed that, other than a particular citation Biggers (the “Reference citation” omitted in the above quote which Newman characterized as making “no reference to the neural network”), the Board “did not discuss Biggers Figure 4, or the Biggers specification,” but instead cited box 44 in Figure 3 “as providing implicit support for this aspect” even though “not explicitly discussed.”  Newman observed that box 44 showed the “angle of attack” trajectory commands output of the neural network, but made no mention of an autopilot.

The PTO Solicitor, recognizing the problems with the Board’s reasoning and fact finding, including FF3, tried to gloss over this problem, saying ““substantial evidence supports the Board’s finding that block 44 of Figure 3 denotes the missile’s autopilot system.”  But Judge Newman would have none of that:

This statement is not tied to any description within Figure 3, or any language in the specification, or any other source of “substantial evidence.”  Apparently recognizing this gap, the [PTO] Solicitor also presents an explanation of Biggers that differs from that provided by the Board.  The Solicitor now states that Biggers’ Figure 4 provides support for finding that Biggers teaches the input of trajectory information produced by the neural network into an autopilot, which then controls the missile to fly the desired trajectory.  Contradicting the applicant’s explanation of Biggers, the PTO reasons that the “zero A of A command” sent to the auto-pilot in step (72) is itself a “trajectory command” provided by the neural network in the sense required by the applicant’s claim 1 step (c).  However, neither the Board nor the Examiner made such findings regarding step (72), and the Board’s opinion states that the Board found Biggers’ autopilot teaching not in Figure 4, but in block (44) of Figure 3.  The PTO Solicitor now argues, for the first time, that Figure 4 is sufficient to show that commands from the neural network are input into the autopilot in at least one phase of the Biggers method.  (Emphasis added.)

The PTO also argued that the “the Johnson reference describes an autopilot that receives and implements guidance commands from a guidance function, and that this is evidence of how traditional autopilots were known to function.”  The PTO Solicitor also added his “spin” to this additional PTO argument based on what the “Background” section in the applicant’s specification, as well as the Biggers reference taught.  The applicant addressed these new PTO arguments in their Reply Brief, including pointing out that what the Solicitor said regarding the “Background” and Biggers “do not show what the [PTO] Solicitor states.”

In presenting the “back and forth” argument between the applicant’s reply brief and the PTO/PTO Solicitor, Newman’s opinion observed that the PTO thus provided yet another (third) explanation for “why Biggers teaches the input of trajectory commands from the neural network into the autopilot—one to which the applicant had no opportunity to respond or provide rebuttal evidence before the Board, although he has attempted to respond in his Reply Brief on this appeal.”  Newman additionally observed that the PTO Solicitor “now retreats from the Board’s finding that Biggers teaches that the trajectory commands produced by the neural network are input into a separate autopilot function” and instead argued that “autopilot functions were well known, and that neither Biggers nor the claimed invention altered the basic understanding of autopilot functions.”  This “third retooling of the PTO position” as Newman characterized it “casts serious doubt upon the sufficiency of the support for any set off findings relating the teachings of Biggers.”  In addition, Newman bluntly stated that “the PTO’s new explanation cannot of itself provide substantial evidence for the Board’s findings, for our review is constrained by the facts that were developed during the Board proceeding.”  The Board’s affirmance of the Examiner’s obviousness rejection in Vaidyanathan was already in serious trouble with Newman:

We conclude, on the evidence and arguments presented, that the Board did not persuasively explain how a person of ordinary skill in the art would conclude that Biggers taught that the trajectory commands produced by the neural network are to be input into a separate autopilot function.  The PTO’s shifting positions do not assist in appellate review.  (Emphasis added.)

The Board’s distress would continue as the applicant next argued that the Board erred as a matter of law in failing to make any findings as to certain aspects of obviousness, especially the “level of ordinary skill in the art” (better known to many of us as the “PHOSITA”).  While agreeing with the PTO Solicitor that an explicit statement on the PHOSITA “is not always necessary in evaluating obviousness,” Newman nonetheless chastised the Board, as well as the Examiner, for “their conclusions of obviousness without providing any evidentiary support or reasoning for why a person of ordinary skill in the field of the invention would have deemed it obvious to select and combine various steps from different references, in the manner of the applicant,” citing In re Zurko.  If it wasn’t already apparent, the Board ruling in Vaidyanathan was now in serious “hot water” with Newman.

Judge Newman’s opinion in Vaidyanathan then reached fitting climax (to the further growing discomfiture of the Board) in her response to the PTO Solicitor’s views on the impact of KSR International Co. v. Teleflex Inc.  In my opinion, the PTO Solicitor, perhaps in desperation, made a fatal reference in citing KSR International to Newman for the proposition that “a combination of elements from different prior art references is likely to be unpatentable if it would involve nothing more than the predictable use of prior art elements according to their established functions.”  That gave Newman the entrée to affirm applicant’s rebuttal that “while [KSR International] relaxed some of the formalism of earlier decisions requiring a “teaching, suggestion, or motivation” to combine prior art references, it did not remove the need to anchor the analysis in explanation of how a person of ordinary skill would select and apply the teachings of the references.”  Ouch!

The applicant’s complaint that the “Board simply reasoned from the hindsight knowledge of his successful invention” teed up Judge Newman’s pithy quote which I referred to at the beginning of this article.  But it gets even better at this point as Newman makes the following blistering (and for us patent prosecutors useful) statement (citing one of my favorite PTO rules, 37 CFR § 1.104(c)(2), when the Examiner fails to explain where and why the reference cited is deemed relevant):

[KSR International] did not free the PTO’s examination process from explaining its reasoning.  In making an obviousness rejection, the examiner should not rely on conclusory statements that a particular feature of the invention would have been obvious or was well known.  Instead, the examiner should elaborate, discussing the evidence or reasoning that leads the examiner to such a conclusion.  (Emphasis added.)

Double Ouch!  Newman also cites MPEP § 706.02 ((“Prior art rejections should ordinarily be confined strictly to the best available art.”).  And in the “piece du resistance,” Newman further adds, citing my patent attorney brother’s favorite PTO rule, 37 CFR § 1.104(d)(2) (“When a rejection in an application is based on facts within the personal knowledge of an employee of the Office, the data shall be as specific as possible, and the reference must be supported, when called for by the applicant, by the affidavit of such employee, and such affidavit shall be subject to contradiction or explanation by the affidavits of the applicant and other persons):

If it is not possible for the examiner to provide this type of information, the examiner might choose instead to provide an affidavit detailing the examiner’s own personal knowledge (as a person approximating one.  [Citation to 37 CFR § 1.104(d)(2)].  Where, as here, prior art references are cited to support an obviousness rejection, the references themselves need not in every case provide a “specific hint or suggestion” of the alteration needed to arrive at the claimed invention; the examiner’s analysis “may include recourse to logic, judgment, and common sense available to a person of ordinary skill that do not necessarily re-quire explication in any reference or expert opinion.”  [Citation omitted.]  In these cases the examiner should at least explain the logic or common sense that leads the examiner to believe the claim would have been obvious.  Anything less than this results in a record that is insulated from meaningful appellate review.  [Citing Zurko.]  If the examiner is able to render a claim obvious simply by saying it is so, neither the Board nor this court is capable of reviewing that determination.

Triple Ouch!  The approving reference above by Judge Newman to 37 CFR § 1.104(d)(2) can be extremely valuable to a patent prosecutor in those instances when an Examiner make statements, such as, “the [feature] is well-known in the art” (but are unable to point you to any reference that show this “feature” is “well-known”), or simply cites to you a lengthy passage in a reference (but never bothers to tell you what in that lengthy passage corresponds to the claimed “feature(s)”).

So there you have it, the Board’s decision in Vaidyanathan effectively “dissected and rejected” by our “champion of champions” on the Federal Circuit, Judge Newman.  Most significantly for us patent prosecutors, it provides us with valuable ammunition to confront and rebut PTO rejections having no basis in fact, evidence, law or “rational reasoning, to use the phrase from In re Kahn which was cited with approval by the Supreme Court in KSR International.  Also, while this decision is labeled as “non-precedential,” it is still citable as precedent under Federal Circuit Rule 32.1 if identified as such.

What is truly sad (besides those who blithely ignore and unfairly criticize this “sage” of the Federal Circuit) is that, like “all good things,” Judge Newman’s tenure as an active jurist on the Federal Circuit must eventually “come to an end.”  We can only hope and pray (possibly a faint hope requiring significant prayer on our part) that Newman will be replaced by a comparable jurist (if that’s possible) when she reaches Senior status.  But let’s now celebrate and raise a toast, a 21-gun salute and at least 3 “Huzzahs!” to “one of our own,” the Grande Dame of the Federal Circuit, for a job “very well-done” in Vaidyanathan.  (And with a tear in my eye, my apologies to Judge Newman for “waxing lyrical.”)

© 2010 Eric W. Guttag


Warning & Disclaimer: The pages, articles and comments on do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of

Join the Discussion

8 comments so far.

  • [Avatar for blue]
    February 3, 2011 07:12 pm

    she is my hero!

  • [Avatar for EG]
    May 22, 2010 09:04 am


    Thanks for focusing on the important stuff. As “Overplayed” seems to suggest, I’m certainly not saying the applicant has a “winner” here. That wasn’t my point. Instead my point which you noted is that the Board and the PTO got their “heads” handed to them for such drivel for rejections.

    In fact, I feel sorry for the PTO Solicitor who had to play this miserable hand of cards dealt to them; they obviously wanted the deck reshuffled and redealt. Judge Newman (who also wasn’t born yesterday) knew the PTO Solicitor wasn’t happy with the cards they, but also wasn’t going to let them get off the hook with feeble statements like “the findings of fact are supported by substantial evidence.” Newman believes in toeing the legal line, and God Bless her for it. Like the MasterCard commercial, she’s “priceless” and will be sorely missed by us patent prosecutors once she steps down (hopefully not for at least a little while longer). Thanks for your comment.

  • [Avatar for Blind Dogma]
    Blind Dogma
    May 21, 2010 11:14 pm

    far harsher words and broader damnations exist

    Please provide – I want to add them to my cite collection.

    On the other hand – the broadness of claim 1 is a killer. It’s amazing that neither the examiner nor the Board could kill that overly broad claim.

    By and large – sloppy. sloppy sloppy. And to think that the Office and Board have the opportunity to select cases that they think they have the best chances at winning (otherwise, they kick them out of the appeal process early). In this regard, while the particular application may not survive in its present state, the CAFC has b_tch-slapped the Office big time here.

  • [Avatar for EG]
    May 21, 2010 07:07 pm


    I forgot to add “interesting” at the end of the first sentence. My apologies for that error.

  • [Avatar for EG]
    May 21, 2010 07:07 pm


    I find your comment that my “description is sensational and over the top.” That’s not the opinion of other patent attorneys I’ve talked to.

    Your comment that the “footnote and unaddressed rejections suggest the application is going nowhere” is far more “over the top” than anything I said in this article. All that footnote 2 at the end says is:

    In its Statement of Facts, the PTO points out that the appealed claims do not limit the ’203 application’s invention to a specific use of a neural network based on the specific reflex response that is the primary matter described in the specification, and thus suggests that the appealed claims are too broadly drawn to distinguish the invention from the combination of Biggers and Johnson. This aspect may warrant attention on remand.

    The “suggestion” is what the PTO asserted, not what Newman said. At most, what Newman said is “PTO you may still consider that issue and may bring up that issue up again” if there’s another appeal in this case. It hardly suggest that this application is going nowhere.”

    I also don’t know what stronger language you suggest Newman might have used to condemn these rejections and still remain in the realm of judicial decorum. What she said was pretty blunt and frank that these rejections were factually unsupported, as well as based on “conclusory statements” (Newman’s words not mine which come right out of the In re Kahn case).

    I also wasn’t born yesterday. You can clearly read between the lines in Newman’s opinion that the PTO Solicitor wasn’t happy with the cards dealt him by the Board or the Examiner. In fact, Newman was pretty explicit that the PTO Solicitor was “retrreating” from one the Board’s findings of what Biggers teaches (see page 12, top paragraph, last sentence). Newman rightly smelled something wrong with the Board’s and the Examiner’s positions and findings of fac from the “tepid” support by the PTO Solicitor (including the desperate assertion that the Board’s findings were supported by “substantial evidence”)

    Others like you may have different opinions about this case, and you have a perfect right to express them. But I’m sticking by what I said in this article.

  • [Avatar for Overplayed Hand]
    Overplayed Hand
    May 21, 2010 05:13 pm

    Eric your description is sensational and over the top. The opinion is a vacatur and remand to teh Board to cure inconsistencies in USPTO position. The final footnote and unaddressed rejections suggest the application is going nowhere. While I appreciate your emphasizing Newman’s sharpest language, far harsher words and broader damnations exist. She did not invoke them.

  • [Avatar for EG]
    May 21, 2010 02:12 pm

    Robert K S

    Thanks for the information. This case should be made precedential because of its extremely signifcant importance to patent prosecution. Frankly, I can’t recall any other case that has so much to offer on why rejections by the PTO must have “rational reasoning” and be factually supported. In other words, no conjecture, speculation, conclusory statements, and similar rhetorical nonsense.

  • [Avatar for Robert K S]
    Robert K S
    May 21, 2010 01:41 pm

    There is now a not-so-small movement to coordinate the submission of motions to have the case made precedential under the following rule. Importantly, anyone can submit the request and it does not require en banc review.

    Federal Circuit Rule 32.1 (e) Request to Make an Opinion or Order Precedential; Time for Filing. Within 60 days after any nonprecedential opinion or order is issued, any person may request, with accompanying reasons, that the opinion or order be reissued as precedential. An original and 6 copies of the request must be filed with the court. The request will be considered by the panel that rendered the disposition. The requester must notify the court and the parties of any case that person knows to be pending that would be determined or affected by reissuance as precedential. Parties to pending cases who have a stake in the outcome of a decision to make precedential must be given an opportunity to respond. If the request is granted, the opinion or order may be revised as appropriate.