Improper hindsight bias is a problem that is ever present in patent law. Trying to determine whether an invention would have been obvious is an inherently backward-looking analysis. As a result, reasonable minds can disagree, so knowing the law and how to frame obviousness allows you to be a better advocate for your client.
As wordsmiths trying convince others of our clients’ viewpoints, it is important to understand the subtleties of which case law to cite when arguing ex parte appeals at the PTAB. A case law citation can include language that is helpful for your position, but this positive language can be blinding to the negative aspects of the language.
I spent years appealing with the language in In re McLaughlin – often winning – but I was not doing myself any favors. While a strong legal position can be overwhelming without the optimal case law, we often work at the margins, and this is when we need to do our best work. Anything cited or presented in an even slightly hyperbolic way with respect to your arguments can detract from the strengths of your position.
To best insure that reasonable minds at the PTAB will reverse the Examiner’s rejection, a patent attorney having more than ordinary skill in the art should know what “improper hindsight bias” case law is most effective.
For the present analysis, I took a look at two case law quotes I have frequently used over the years to argue against obviousness rejections that I thought were based on improper hindsight bias.
The first case – which I will refer to as the “knowledge gleaned hindsight bias” case, is In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971), which stated:
“‘Any judgement on obviousness is in a sense necessarily a reconstruction based on hindsight reasoning, but so long as it takes into account only knowledge which was within the level of ordinary skill in the art at the time the claimed invention was made and does not include knowledge gleaned only from applicant’s disclosure, such a reconstruction is proper.’”
This case has language that supports an improper hindsight bias argument – “does not include knowledge gleaned only from applicant’s disclosure.” But is this language actually helpful? It is less helpful that you think compared to other case law that expresses the same point, as it depends on how you emphasize it in your mind. Read it in two different ways, emphasizing the italics:
- does not include knowledge gleaned only from applicant’s disclosure, such a reconstruction is proper; or
- does not include knowledge gleaned only from applicant’s disclosure, such a reconstruction is proper.
It is cited both ways. In re McLaughlin says you can glean knowledge from any other source than applicant’s disclosure, even if it is multiple prior art disclosures, but the knowledge cannot be solely from applicant’s disclosure. This is not the most straightforward way to
(sidenote: I think “glean knowledge” be a nice rap term – “You can have sexy degrees from college, but that’s not the only way to glean knowledge.”)
The second case – which I will refer to as the “template for reconstruction” case – is Sensonics, Inc. v. Aerosonic Corp., 81 F.3d 1566, 1570 (Fed. Cir. 1996), which stated:
“To draw on hindsight knowledge of the patented invention, when the prior art does not contain or suggest that knowledge, is to use the invention as a template for its own reconstruction—an illogical and inappropriate process by which to determine patentability.”
This case is stronger. Which is obvious if you spent your days analyzing language side-by-side…but plenty of experienced patent attorneys likely cite In re McLaughlin. I no longer do, and you shouldn’t either.
Here is what the patent analytics say:
I first searched all ex parte appeal decisions for “In re McLaughlin” and “knowledge gleaned”. As shown below, the data says that the mentionIn re McLaughlin in a PTAB decision is unlikely to be accompanied by a win for the Applicant.
In 15 plus years of data from PatentAdvisor, ex parte appeal Board decisions that mentioned this argument results in wins (Allowance, OA or FOA) 190, and losses (RCE or Abandonment) 904 times. That amounts to a PTAB win only 17.4% of the time. The allowance rate for these cases is a very low 27.1%.
I then searched all ex parte appeal decisions for “Sensonics” and “template for its own reconstruction”. As shown below, the data says that the mentionSensonics in a PTAB decision is substantially more likely than In re McLaughlin to be accompanied by a win for the Applicant, although it has a much smaller size (51 vs. 1,140 decisions)
In 15 plus years of data from PatentAdvisor, ex parte appeal Board decisions that mentioned this argument results in wins (Allowance, OA or FOA) 44, and losses (RCE or Abandonment) only 7 times. That amounts to a PTAB win only 86.3% of the time. The allowance rate for these cases is a solid 78.4%.
What case are you going to cite to fight improper hindsight bias in the future? I hope you won’t be improperly arguing improper hindsight bias.