In Part 1 of this article (available here), we examined the majority opinion in In Re Suong-Hyu Hyon and Masanori Oka, No. 2011-1239 (Fed. Cir. decided May 24, 2012, precedential). In Part 2 of this article, we examine the dissenting opinion.
As mentioned in Part 1, the majority and dissenting opinions clash over whether the Federal Circuit should adopt a “substantial evidence” standard of review for an underlying factual inquiry in an obviousness determination, or whether it should instead fault the BPAI’s “flawed analysis” for not engaging in a more “thorough and searching” factual inquiry. See Slip. Op. (majority) at 6, 10; see also Slip Op. (dissent) at 1, 10. Of course, we again view these concepts through the polarizing filter of KSR.
While Judge Bryson’s majority opinion disposed of this case purely on the low-threshold “substantial evidence” standard of review (without any mention of KSR), Judge Newman’s dissenting opinion was not content to do so. Because Judge Newman faults the BPAI for not engaging in a more “thorough and searching” factual inquiry before making its legal conclusion of obviousness, she “respectfully dissent[s] from the court’s endorsement of the Board’s flawed analysis.” Id. (dissent) at 10.
As the M.P.E.P. instructs, we know that “[i]n determining obviousness, neither the particular motivation to make the claimed invention nor the problem the inventor is solving controls. The proper analysis is whether the claimed invention would have been obvious to one of ordinary skill in the art after consideration of all the facts. See 35 [§] U.S.C. 103(a).” M.P.E.P. § 2141(III) (emphasis added). Moreover, as mentioned in Part 1, “while the ultimate determination of obviousness is a legal conclusion, the underlying Graham inquiries are factual.” M.P.E.P. § 2141(II) (emphasis added).
In dissent, Judge Newman engages in just such an analysis – determining whether obviousness exists only after consideration of all the facts. Judge Newman delves into the factual issues in this case, including the asserted combination of prior art references, and determined that the BPAI had “erred in its analysis, for “the factual inquiry whether to combine references must be thorough and searching.” McGinley v. Franklin Sports, Inc., 262 F.3d 1339, 1351-52 (Fed. Cir. 2001).” Slip Op. (dissent) at 10 (emphasis added). Because the BPAI engaged in a “flawed analysis,” the dissenting opinion does not consider it appropriate to apply the low-threshold substantial evidence standard of review.
The dissenting opinion particularly probes the two prior art references and the Examiner’s proposed combination of these references. The primary reference, Zachariades (U.S. Pat. No. 5,030,402, filed in 1989 and issued in 1991), and the secondary reference, Kitamaru (U.S. Pat. No. 3,886,056, filed in 1972 with foreign priority to 1971, issued in 1975), bridge 18 years of materials science and chemistry research into ultra-high molecular weight polyethylene (UHMWPE). After analyzing these references and their possible combination (read “consideration of all the facts”), Judge Newman concludes that “[t]he selective combination of aspects of Kitamaru and Zachariades is achieved only with hindsight knowledge of Hyon’s achievement, for nothing in either reference or elsewhere in the prior art suggests [the proposed] modification.” Id. at 10.
For example, despite the significant amount of time between the inventions of Kitamaru and Zachariades, “[i]t is noteworthy that Zachariades … did not follow the known Kitamaru [method], but instead…” performed some processing steps on UHMWPE in a different sequence than taught by the older Kitamaru reference. Id. at 6. Moreover,
[i]t is not disputed that that neither Kitamaru nor Zachariades shows or suggests [a particular aspect of Hyon’s invention]. Nonetheless, the Board found that the Hyon method “appears to be nothing more than the predictable use of a prior art element . . . according to its established function.” Board op. at 10. The Board does not explain the source of its prediction, other than the Hyon method itself.
Id. at 6-7. Citing to KSR, Judge Newman notes that “[a]s to which aspects to select and combine, the only guidance comes from Hyon, for the prior art contains no “apparent reason to combine the known elements in the fashion claimed by the patent at issue.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). The Board reasoned backward from the Hyon method.” Id. at 7 (emphasis added).
The dissenting opinion hammers the BPAI for relying on improper hindsight reasoning and for failing to support its allegation of predictability in the asserted combination of Zachariades and Kitamaru. Specifically, “[i]t is impermissible to use the claimed invention as an instruction manual or ‘template’ to piece together the teachings of the prior art so that the claimed invention is obvious.” Id. at 8 (omitting internal quotation and citation to In re Fritch in turn quoting from In re Gorman). That is, “[t]he invention must be viewed not with the blueprint drawn by the inventor, but in the state of the art that existed at the time.” Id. (omitting internal quotation and citation to Interconnect Planning Corp. v. Feil).
In consideration of all the facts, Judge Newman notes that “the technological field is mature,” and “apparently small changes that produce unexpected results or improved properties are of heightened significance. Nothing in the record suggests that a person of ordinary skill would have foreseen that Hyon’s method … would produce the described benefits.” Id. (One may wonder whether Judge Newman’s Ph.D. in chemistry enhances her appreciation of the significance of the technological improvements at issue in this case.)
Query, however, whether Hyon provided an obviousness “roadmap” to the Examiner (and the BPAI) in pointing out the evolution of the inventive method in its specification. For example, Hyon disclosed that “[t]his approach has never been attempted, not only in Japan, but also in other countries. The idea to endow the polyethylene molded article for artificial joints with molecular orientation or crystal orientation is … very creative, and it is sure that this invention, if actually carried out, will be applied to artificial joints all over the world.” Id. at 9 (quoting from Hyon’s specification at col. 2, ll. 26-37). (Perhaps instead Hyon engaged in a bit of puffery?)
Nevertheless, “[i]t is only after Hyon demonstrated how to achieve this improved result that the Board was able to plug the prior art steps into the template of the Hyon method.” Id. In such a situation, Judge Newman notes (quoting from Interconnect) that “[w]hen prior art references require selective combination by the court to render obvious a subsequent invention, there must be some reason for the combination other than the hindsight gleaned from the invention itself.” Id. (emphasis added). We are thus reminded that “[i]t is improper, in determining whether a person of ordinary skill would have been led to this combination of references, simply to ‘[use] that which the inventor taught against its teacher’.” Id. at 10 (omitting internal quotation and citation to In re Lee and W.L. Gore v. Garlock, Inc.).
The dissenting opinion explains that “[n]either [Zachariades nor Kitamaru], nor any other authority, suggests that the Hyon steps would achieve the Hyon improvement.” Id. at 9. “That [Hyon was] ultimately successful is irrelevant to whether one of ordinary skill in the art, at the time the invention was made, would have reasonably expected success. [That is,] “[t]he reasonable expectation of success must be founded in the prior art, not in the applicant’s disclosure.”” Id. at 10 (omitting internal quotation and citation to Life Technologies, Inc v. Clontech Laboratories, Inc. and In re Vaeck).
After Judge Newman’s “thorough and searching” factual inquiry, we are reminded that the U.S. Supreme Court “in KSR cautioned that “[a] factfinder should be aware, of course, of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning.” [KSR citation omitted.] [Thus, the] Board’s analysis is contrary to the Court’s guidance.” Id. at 10.
Here, Judge Newman is not willing to give the USPTO any deference under the substantial evidence standard of review. Instead, the dissenting opinion considers the BPAI’s reasoning so flawed in its hindsight reliance and unsupported allegations of predictability that it strains credulity to find any evidence so substantial as to uphold such reasoning. Even without a full de novo review, the dissenting opinion’s “thorough and searching” factual inquiry cautions us against reasoning backward to stitch together an unsupported (or poorly supported) rationale in an attempt to justify a legal conclusion of obviousness.