It is well known that hindsight reconstruction is an insidious error that infects patent prosecution. The Federal Circuit has noted that it is a difficult task to avoid “subconscious reliance on hindsight” and tools are available to “inoculate the obviousness analysis against hindsight”. However, it is well known that practitioners could benefit in countering the pernicious problem of subconscious hindsight directed analysis with additional tools. This article is intended to provide an additional tool outlining a new analytical approach to detecting hindsight: 1) identification of a proxy problem upon which an “obvious” advantage is predicated, and 2) showing that either a) the proxy problem is secondary to the problem solved by the inventor and would have been insufficient to drive advancement of the art, and that the examiner has failed to show that a person of ordinary skill in the art (POSITA) would have regarded the proxy problem as sufficiently significant so as to require solution, or b) a showing that the proxy problem posed to POSITA presupposes the problem and its solution as solved by the inventor and is derivative. Once it is shown that the proxy problem is subsidiary or presupposes the problem solved by the inventor it becomes a less difficult task to show that the invention was not considered as a whole or that the problem was improperly phrased.
The first step in this approach is to identify a problem-solution statement that underlies the inventive step for the claim. See, for example, the Reply to Non-Final Office Action for Application Number 14/614,407 (hereinafter, “407” case) dated July 23, 2016, which was found persuasive. It is particularly important to first identify the problem solution statement that broadly captures the inventive concept. When properly articulated, the problem solution statement can readily expose hindsight reconstruction. In the “407” case “The problem solved by the instant invention was “to make a large ice luge without a large freezer.” The solution was “to make a large ice luge from a multiplicity of smaller but fairly large ice blocks”. This is a fairly simple invention not requiring specialized skills to be possessed by a POSITA. However, part of the inventive step was realization of the problem to be solved as framed by the problem and solution as stated above. The problem solution statement expressed in the form of a pseudo-claim could be “a method of making a large ice luge without using a large freezer by freezing a multiplicity of smaller but fairly large ice blocks and by arranging them to form a cascading ice luge.”
The second step is to identify the shared advantage proposed by the examiner or an adversarial litigant as motivation to modify the primary reference. In the “407” case the proposed shared advantage was “preserving the ice blocks and keep it [them] clean.”
Next the premise, i.e., the proxy problem, upon which the shared advantage is based, must be identified. In this case the proxy problem issue was sanitation and preservation of ice blocks. Often a proxy problem is not expressly stated but with only the shared advantage recited. It is necessary to deduce the proxy problem in these instances.
The fourth step is to show that the proxy problem posed by the examiner presupposes the inventive step and that the inventive step disclosed by the inventor is prerequisite to posing the question that is presented to hypothetical POSITA and that the problem posed to POSITA just so happens to require the inventors solution and is subsidiary or derivative the inventor’s stated problem to be solved. In this case the examiner, by focusing on a faux or counterfeit problem, focused on a subsidiary problem and its solution in isolation from the inventive act as a whole. The examiner thus presupposed the solution and placed it in the hands of an artisan and therefore the solution appeared to be obvious in hindsight, as noted in Mintz: “Once the problem and solution appear together in the patent disclosure, the advance seems self evident.” In this particular case, because the inventive step included realization and proper framing of the problem to be solved, to establish obviousness it is necessary for the examiner to establish that POSITA would have recognized the problem identified by the inventor and its solution. See Mintz, (“[M]ust prove by … evidence that a person of ordinary skill in the … arts at the time of the invention would have recognized the … problem recognized by the inventors and found it obvious to produce the … structure disclosed.”)[emphasis added]. In the “407” case the Reply also pointed out that the rationale for obviousness was cursory insofar as it did not establish that the proxy problem was a real problem that POSITA would have regarded as relevant and therefore insufficient to establish prima facie obviousness. In addition it can generally be shown in this type of case that in posing the proxy problem the examiner or adversarial litigant has erroneously phrased the problem to be solved. See Mintz, (“[T]he district court erroneously phrased the issue as whether it would have been obvious to simply ‘fix each point of intersection’ of each strand in order to solve that problem” This statement of the problem represents a form of prohibited reliance on hindsight.” [emphasis added] “The invention was used to define the problem that the invention solves. “In other words, when someone is presented with the identical problem [or a proxy problem which presupposes the relevant problem] and told to make the patented invention, it often becomes virtually certain that the artisan will succeed in making the invention.”
It should then be emphasized that by presupposing the problem identified and solved by the inventor the examiner failed to find motivation to solve the problem from the references or by common knowledge of POSITA, and that the rationale for obviousness therefore cannot pass muster. Furthermore, it should be pointed out that the examiner’s rationale fails to qualify as a legitimate rationale if it does not identify a principle abstracted from the solution. Consider, for example the first three exemplary rationales supporting obviousness from KSR v. Teleflex.
- Combining prior art elements according to known methods to yield predictable results.
- Simple substitution of one known element for another to obtain predictable results.
- Use of known technique to improve similar devices (methods, or products) in the same way.
All of these rationales are formulated in abstracted form, i.e., concepts. None of the rationales refer to any particular structures or limitations from any particular inventions. An examiner’s inadequate rationale might suggest modifying the widget from Smith with the doohickey from Jones because that would provide some obvious advantage. However such an explanation, without presenting a true rationale in abstract form shows that the examiner or adversary is unable to find a principle and is therefore relying on the invention rather than the prior art. it matters not whether an exemplary rationale from KSR or a rationale derived from common knowledge is employed by an examiner. A principle must be articulated. “For example, textbooks or treatises may include basic principles unlikely to be restated in cited references.” Dystar Textilfarben v. C.H. Patrick. In this case the basic principle of “vacuum packaging” was applied to the use of “airtight containers” to demonstrate obviousness. Without identifying or expressing an abstracted principle what is left is the inventor’s disclosure. If an adversary or examiner cannot find a principle explicitly expressed in references, then it should be required to state a principle derived from obvious knowledge of persons of ordinary skill in the art. The abstract principle should be derived from references or should be otherwise demonstrable through showing of real examples. According to the infamously abused KSR decision the USSC requires “a reason that would have prompted a person of ordinary skill in the art to combine the elements as the new invention does.” However, without identifying some rationale in abstract or generic form it is nearly certain that a proper analysis of the problem and its solution, solved by the inventor considered in the context of an adversary’s proposed shared advantage and its proxy problem, should provide the means to show the “reason that [allegedly] would have prompted a person” depends upon the inventor’s disclosure. Often a concluding statement for an argument that includes restatement of the proxy problem and an assertion that the proxy problem could not have motivated the inventor to solve the inventor’s real problem provides persuasive emphasis.
The approach outlined above can be utilized in defending both method and apparatus claims for simple inventions as well as highly complex inventions involving technology understood only by persons of particularly well developed skill in the relevant art.
Join the Discussion
32 comments so far.
AnonOctober 30, 2016 10:03 am
I do not see how discussing patent law issues is “inconsequential, impulsive chit-chat.”
Care to explain?
Tom BrodyOctober 30, 2016 08:24 am
I notice a similarity between Mr. Anon’s comments, and many of the comments that are posted to tne PATENTLYO blog. The similarity is using a patent forum for posting inconsequential, impulsive chit-chat.
AnonOctober 27, 2016 06:54 am
The advice is mutual (and if you cannot see the ad hominem, after having it pointed out, well, as Gene is apt to say, that is a YOU problem).
Peter KramerOctober 26, 2016 11:54 pm
Ad hominem? Now what new matter is being introduced? Eh genius?
Take a breath and read the exchange? I did and got LOL.
The troll moved from failed new matter and ultra vires to “presupposes that the Examiner will understand such a detailed explication of the limits of KSR ” and then to “apply this in every instance” [never happened], etc.
AnonOctober 26, 2016 11:42 pm
With all due respect – you have been the troll here.
Sad it is that you cannot comport yourself with any dignity when your pet theory has a simple point posted against it.
There has been no “demolishment” and certainly no moving of goalposts on my part.
Every one of your responses has been emotional ad hominem. Maybe you should take a nice deep breath and read the exchange here.
Peter KramerOctober 26, 2016 11:15 pm
I checked out Tom Brody’s paper on impermissible hindsight and it contains numerous valuable case law citations that are relevant to the matter of the proxy problem. Of particular interest is the category “Secondary Reference Provides an Advantage That is Not Needed By, and Not Relevant to, The Primary Reference”. When the advantage is not needed, that is generally because the proxy problem is illegitimate. Another case where the applicant successfully challenged the examiner’s choice of problem solved is BPAI Appeal 2011-010872 Ibrahim H. Ibrahim. In this case the Board also quite unexpectedly found the motivating rationales to be insufficiently cursory. Beware, however, an anonymous troll might accuse you of invoking new matter and making rebuttals that are ultra vires (LOL).
Peter KramerOctober 26, 2016 06:41 pm
Mr. Troll, your points were flat out demolished. Does new matter and ultra vires ring a bell? Or do you need to move the goal post again?
AnonOctober 26, 2016 04:37 pm
I am not “tr011ing” here, Mr. Kramer.
That’s the third response of yours that you have jumped to ad hominem instead of actually addressing the points that I have presented.
I “get” that you feel that your precious idea is threatened with a simple point that I presented, but it is your own lack of decorum here that is highligted by our exchange.
So I will repeat again: please stop the emotional responses.
Peter KramerOctober 26, 2016 04:18 pm
Maybe Mr. Anon troll can learn what new matter is before misusing the term and making a fool of himself. Ironically, trolling comments are emotionally driven.
AnonOctober 26, 2016 10:59 am
You continue to fight with ad hominem instead of understanding what I actually posted.
The more you struggle, the more my point becomes entrenched. Sadly, you seem oblivious to this.
Maybe take a step back and respond with less emotionalism.
Peter KramerOctober 26, 2016 09:20 am
“There is simply no way to control what art or what “problem” the examiner will take in their examination at which point the applicant is locked in.”
There is definitely a way to control how you respond to what art and what “problem” the examiner takes. That was what my article was about.
“but you should be aware of the limitation of taking that single instance and broadening it to a “apply this in every instance” type of general advice.”
You, Mr. anon, should beware of assuming that a single example implies that extrapolation was based on a single point. It wasn’t. I chose an illustrative example with an invention that was simple for anyone to grasp. The method is applicable to a wide variety of cases. BTW, that doesn’t mean it is a dead lock cinch in every case.
Peter KramerOctober 26, 2016 09:01 am
Perhaps you have forgotten your polemic was based on an assinine assertion that the prohibition against new matter is somehow introduced with this approach. And the notion that persuasive rebuttal “pushes examination to be done by the applicant” and is ultra vires is simple nonsense. Here’s a clue: All persuasive rebuttal “pushes” the prosecution. That’s its raison d’etre.
AnonOctober 26, 2016 07:19 am
Rather than the ad hominem of “that’s preposterous” (when it is not – perhaps you are unaware of the study presented “on that other blog” of a few years ago showing just how much examiners disregard what the applicant presents as “the problem”), perhaps you should read my critique a little more closely.
There is simply no way to control what art or what “problem” the examiner will take in their examination at which point the applicant is locked in.
As to the KSR situation, you do misinterpret what I stated. I did not state “don’t address,” but what I did state was that your version here was simply too slick and too involved for most examiners to grasp. You need a more blunt and forceful approach.
And of course it should be understood that I am speaking in more general tones – what worked for you in a single instance is great…
…for you in that single instance. But you should be aware of the limitation of taking that single instance and broadening it to a “apply this in every instance” type of general advice.
Peter KramerOctober 25, 2016 09:22 pm
@ Tom Brody
Thanks for mentioning your article. I’ll take a look.
Peter KramerOctober 25, 2016 09:15 pm
Regarding New Matter, I once amended a specification to include discussion of prior art cited by an examiner in the prior non-final office action. The examiner objected on grounds of introduction of new matter. Citing several cases, I won that argument handily.
Peter KramerOctober 25, 2016 09:11 pm
The notion that rebuttal showing the examiner’s reasoning relies on the inventive disclosure, a practice as old as sand, somehow invokes new matter, is ridiculous.
Peter KramerOctober 25, 2016 09:02 pm
“I will also add that this approach presupposes that the Examiner will understand such a detailed explication of the limits of KSR (which is simply way too Polly Anna).”
If you can’t argue with KSR et seq because an examiner presumably cannot understand it, what case should you use? Moe, Larry & Curly?
Peter KramerOctober 25, 2016 08:54 pm
Generally I do not comment to “anon” commenters. This is an exception.
The notion that the rebuttal technique presented above invokes new matter is preposterous. “New matter is that which is not found in the specification, drawings, or model, as first filed, and which involves a departure from the original invention. [Emphasis ours.]” Application of Ryohei Oda et al. 443 F.2d 1200 (USCC 1971) [internal citations omitted]. The notion that rebuttal showing the examiner’s reasoning relies on the inventive disclosure, a practice as old as sand, is ridiculous.
AnonOctober 25, 2016 04:05 pm
I certainly understand the issue of trying to squeeze one application into different sovereigns.
But that would be putting the horse before the cart to expect such drafting laziness to drive the best way to draft for the actual law in any one particular sovereign.
The answer is not “just file it.”
And it is certainly not “just pretend the law is the same everywhere.”
Paul ColeOctober 25, 2016 03:45 pm
The trouble is that US originating inventions are not patented only in the USA. There may be a PCT application followed by a regional phase application at the EPO, Chinese, Japanese, Korean, Indian and Russian applications amongst others.
So it is not just a question of finding a drafting formula that works well in the US but finding a formula that not only works well in the US but also works well in the other jurisdictions.
In my experience the same US specification is filed around the world and the resulting problems have to be coped with (and often are).
I am about to start a project to identify best practice, and what will be most useful will not be the folk who agree with the European view but those who disagree strongly and with a reasoned viewpoint in the hope that we can both refine our views and find approaches better than what we can do individually. Not easy but in my view worth trying.
Incidentally I will be at the AIPLA annual meeting Thursday through Saturday and would welcome meeting authors and commentators.
AnonOctober 25, 2016 06:13 am
Thanks Mr. Cole.
However, this is US jurisprudence we are talking about here.
I have seen several commentators take a “just use the EPO way” approach – without regard to the fact that the US has its own jurisprudence. The glasses that the EPO wears may work wonders for their eyesight, but it is simply an error to think that those same glasses work for someone else with a different vision.
Paul ColeOctober 25, 2016 12:50 am
Just for the record I was quoting the EPO Examination Guidelines verbatim since I thought these were useful background for the content of the paper which I consider a very helpful contribution.
AnonOctober 24, 2016 12:01 pm
I will also add that this approach presupposes that the Examiner will understand such a detailed explication of the limits of KSR (which is simply way too Polly Anna).
The phrase “I told you so” comes to mind (were I to be skeptical).
AnonOctober 24, 2016 11:19 am
In all fairness to Curious. Mr. Cole, I as well thought that you were being self-referential.
AnonOctober 24, 2016 10:54 am
Huge problem with this concept: this relies on an interaction between that which is in the domain of the examiner and that which is in the domain of the applicant, and the applicant is locked into the original submission (no new matter) PRIOR to any work done by the Examiner.
To the extent that this subtly pushes examination to be done by the applicant, this (notwithstanding any “best practices”) is ultra vires.
CuriousOctober 24, 2016 10:31 am
I think that the skilled reader would infer that I was referring to Peter Kremer’s very useful posting.
Really … I read a nearly 400 word post from you that was essentially a recap of your own article. When you wrote “[t]his is a thoughtful and useful paper,” I assumed it referred to your own article since you really didn’t discuss the substance of Kremer’s article.
Paul ColeOctober 24, 2016 09:22 am
I think that the skilled reader would infer that I was referring to Peter Kremer’s very useful posting. The misdirection contained in the last posting illustrates the importance of interpreting words in their overall context. That is, of course, better than cheap and unhelpful point-scoring.
CuriousOctober 24, 2016 08:48 am
This is a thoughtful and useful paper which I am adding to my permanent collection of writings on the subject.
Um — you wrote the paper — 8 years ago. You make it seem as if the paper was something you recently discovered and are now adding to your “permanent collection of writings.”
Paul ColeOctober 24, 2016 06:25 am
It is interesting to see a US practitioner highlighting the importance of problem/solution analysis which is not highlighted in recent US-originating papers that I have seen on the subject.
For a European review of KSR and a near contemporaneous reaction to it, see Paul Cole, KSR and Standards of lnventive Step: A European View, 8 J. MARSHALL REV. INTELL. PROP. L. 14 (2008), downloadable from
Note that this article was influential in the issue of the USPTO’s 2010 guidance on section 103 objections, especially as to the inclusion of both positive and negative examples.
As regards the objective technical problem under European practice, there are five steps in its identification Guidelines G VII 5.2:
— One studies the application (or the patent),
— the closest prior art and
— the difference (also called “the distinguishing feature(s)” of the claimed invention) in terms of features (either structural or functional) between the claimed invention and the closest prior art,
— identifies the technical effect resulting from the distinguishing features, and
— then formulates the technical problem.
The close relationship between technical problem and new function or result will become immediately apparent, see also under US law e.g. the 1950 Supreme Court opinion in Great A&P Supermarket. Indeed the situation used to be that in an application before the USPTO if you could point to a new function or result not obviously predictable from the references when read together, issue of a patent was highly likely, otherwise not. In those days US prosecution was highly predictable and both examiners and prosecution attorneys were singing from the same song sheet. If you could get an issued US patent (which was usually the first to be examined) it set a pattern for prosecution of a patent family throughout the world. Unfortunately the USPTO is no longer the first to examine, and this pattern of helpful and mutually comprehensible analysis is no longer generally followed.
This is a thoughtful and useful paper which I am adding to my permanent collection of writings on the subject.
CuriousOctober 23, 2016 09:11 pm
I’m not agreeing or disagreeing with your proposed methodology. My point is simply this — the effective of any argument is HEAVILY examiner-dependent. There is no “silver bullet” argument to make.
Trust me, I’ve made thousands and thousands and thousands of arguments. I’ve reviewed an untold number of Decisions by the Board. I constantly revise my arguments based upon what has worked and what hasn’t and what I’ve seen work (or not) elsewhere. Despite all of these efforts to fine tune my arguments, if an examiner doesn’t want to allow an application, the best arguments in the world is not going to change his or her opinion.
Appearance of …October 23, 2016 01:58 pm
The Brody article seems to be behind a paywall. Is there a way we can see it without charge?
Tom BrodyOctober 23, 2016 12:01 pm
Comprehensive guidance on “hindsight reconstruction” also known as “impermissible hindsight” is provided by my article in JPTOS. For this article, I was awarded the 2016 Rossman Award, at a ceremony at the USPTO. The article is: Brody, T (2014) Rebutting obviousness rejections based on impermissible hindsight in Journal Patent Trademark Office Society. 96:366-424. I wrote and then submitted a follow-up manuscript to this article, and my second article is now in the editorial stage.