Praise by others

[dab2d]

Has anyone ever used this rational to combat obviousness? If so, what type and how much evidence would be suggested in making the argument.

[patentsusa]

No, after KSR, I like to use "teaches away" arguments whenever possible, and "hindsight" arguments second.

[khazzah]

No, after KSR, I like to use "teaches away" arguments whenever possible, and "hindsight" arguments second.

I'd love to hear some comments on "hindsight" arguments.

To me, hindsight is not a type of argument, but is a *conclusion* which you reach by convincingly showing -- through other types of arguments -- that a POSITA would not have combined the elements in the manner claimed, and *therefore* the only way in the claim could be viewed as obvious is "in hindsight", ie, by reading the Applicant's spec and claims.

In contrast, if your argument is "Examiner must have used hindsight because otherwise the claim isn't obvious", well then, that's not very convincing, is it?

So what do others on the board mean by "hindsight argument"?

[JimIvey]

I don't use "hindsight" itself in my arguments, but I certainly challenge a proffered "motivation" to combine whose source is not identified.  I sometimes say that the only motivation to combine the teachings of the references is provided by Applicant's own Specification at page __, lines __-__.  I will also challenge any implicit Official Notice that the proffered motivation to combine was known by ordinary artisans at the time the invention was made, requesting supporting documentation.

In effect, it's a hindsight argument, but I don't mention "hindsight" at all. 

Regards.

[patentsusa]

No, after KSR, I like to use "teaches away" arguments whenever possible, and "hindsight" arguments second.

I'd love to hear some comments on "hindsight" arguments.

If the Supreme Court would have offered me a bright line standard like "teaching, suggestion, or motivation," I would use it.  No motivation to combine was my favorite argument before KSR. 

Now they are saying that teaches away is a good argument and that hindsight is a good argument.

If I have a clear teaching away, I will use that.  If not, my hindsight arguments go something like this:
The main teaching of reference A is "W" and the main teaching of reference B is "X" so if one of ordinary skill in the art were to combine the two, without using improper hindsight, he would get WX, as opposed to taking some minor component out of B and somehow combining it with A.

[khazzah]

If the Supreme Court would have offered me a bright line standard like "teaching, suggestion, or motivation," I would use it.  No motivation to combine was my favorite argument before KSR. 

Motivation To Combine is still a great argument post-KSR -- if we all agree on what is meant by the term No Motivation To Combine.

To me, MTC does *not* mean an *explicit* teaching in the prior art. To me, MTC means a REASON to combine, which may come explicit teachings in the prior art, or from "common sense" or from a generic rationale (e.g, simple substitution, combination of known elements, market pressure) applied to specific facts of the case. (Not an exhaustive list.)

Thus, under my definition, any argument which attacks the REASON to combine is a MTC argument. Teaches Away is a MTC argument because it offers a reason AGAINST combining. Happens to come from the teachings of the cited references.

If not, my hindsight arguments go something like this:
The main teaching of reference A is "W" and the main teaching of reference B is "X" so if one of ordinary skill in the art were to combine the two, without using improper hindsight, he would get WX, as opposed to taking some minor component out of B and somehow combining it with A.

This sounds like 103 argument which I call "Does Not Produce Claimed Combination". I view this more as Does-Not-Teach than MTC. IOW, we don't even have to talk about reasons to combine because the combination doesn't produce what I claimed.

However, the argument you offered above differs slightly from Does-Not-Produce, and I see a weakness. Namely, "a reference is good for all it teaches". IOW, the Examiner has selected feature Z from the ref, and you have to deal with that, regardless of the Examiner ignoring features X and Y from the same ref. 

Now, if you were to explain *why* the presence of features X and Y would lead a POSITA to NOT choose feature Z from the same ref -- then that's a good MTC argument.

If not, my hindsight arguments go something like this ...

This fits the pattern I described earlier, as Hindsight being a *conclusion* rather than an argument. Premise: Combining A and B produces WX rather than claimed WY. Conclusion: Therefore, the Examiner must have used hindsight to arrive at tge claimed combination.

[JimIvey]

I'll second Karen's post.  KSR does not say that any list of parts found in the prior art renders a claimed invention obvious.  There still must be something to show that assembly of the parts into something that would infringe the claim was obvious at the time the invention was made.

That last part is often overlooked.  The combination must have been obvious at the time the invention was made.  While there may not be a requirement to find the motivation in prior art, it must be established that the motivation was known to the ordinary artisan at the time the invention was made.

Regards.

[JustAnotherExaminer]

khazzah hit it on the head.  Usually if you're very adamant about a teaching away argument I'll start presenting multiple obviousness rationales.  You'll get a MTC obviousness rationale and a rebuttal of the teaching away.  Then I'll start adding in some predictable results wharrgarbl.  Some "obvious to try" statements (in quotations, otherwise entirely ineffective) will likely follow.  Much legal copypasta and form paragraphs will also be thrown in your general direction.

Be very afraid of my defense via filibuster!

On a serious note, the above is usually a very effective response by the examiner.  Also of note, a "teaching away" argument by applicant surprisingly frequently supports the predictable result argument for the examiner.

Claim says: xyz in environment C
You argue: Ref B says not to do yz in environment C because it slows down response times. Thus it teaches away from a combination with ref A, which the examiner relies on to teach doing x in environment C.

Boooom. Predictable results headshot.

[JimIvey]

Okay, I'm confused here.  Perhaps JAE is using some shorthand that means more than meets the eye.

I say that a reference teaches away from drilling holes in the hull of a boat because the boat would sink.  Then, the examiner comes back with the argument that drilling holes in a boat hull is obvious because it provides predictable results of sinking the boat. 

That just seems silly to me.  What am I missing?  I assume that sinking of a boat is to be avoided and therefore is not a motivation.

Thanks.

[JustAnotherExaminer]

I don't need motivation if there are predictable results.

Thank you KSR!  Though you might have an argument for inoperable in your example.

So what is your claim in your example?  Wood x with holes of type y are a spacing of type z.

And ref A teaches the wood x at the bottom of the hull of a boat.
And ref B teaches holes of type y at a spacing of type z.

Teaches away? Most definitely.  Predictable?  Yes. 

Though I can imagine other rebuttals would be more persuasive.  Like... The boat is only one embodiment for utilization of the wood.

[ManOfManyBadIdeas]

I don't need motivation if there are predictable results.

I am very confused by this, much like JimIvey. In my opinion, you do not need explicit
motivation if there are predictable beneficial results. That's because
predictable beneficial result is in itself a motivation to combine. And I think you always
need motivation. I would split these type of teachings into opposite groups, for and
against patentability.

For patentability: teaches away from combining references. Most of the time implicitly
by pointing out the drawbacks of such combination. So there are predictable results,
and they discourage a POSITA from combining the references.

Against patentability: teaches in favor of combining references. Most of the time implicitly
by pointing out the benefits of such combination. AKA motivation to combine. Again, there
are predictable results, and they encourage a POSITA to combine.

I am confused how one can lump both positive and negative predictable results together...

I think when one says "predictable results" what is meant is that the patent application
doesn't teach benefits of the combination that exceed what's predictable. So it's sort
of the next layer of argument. If it is established that the prior art does provide at least
some motivation in favor of combining the references, the next question is whether the
application discloses benefits that far exceed the predictable benefits (unexpected
results). I do not understand how showing that prior art teaches drawbacks of the
combination (teach away) supports an argument that prior art teaches benefits
of the combination, and invention benefits do not exceed those (predictable results)...

Thank you KSR!  Though you might have an argument for inoperable in your example.

So what is your claim in your example?  Wood x with holes of type y are a spacing of type z.

And ref A teaches the wood x at the bottom of the hull of a boat.
And ref B teaches holes of type y at a spacing of type z.

Teaches away? Most definitely.  Predictable?  Yes. 

Though I can imagine other rebuttals would be more persuasive.  Like... The boat is only one embodiment for utilization of the wood.

I am not sure that's the claim JimIvey had in mind, but I am even more confused by the need
to include ref A in the rejection. Seems like ref B + obvious to try is a simpler argument. The
patentability would decided by existence of unpredictable results compared to what is disclosed
by ref B when it's applied to wood x, rather than some other materials.

[JimIvey]

I don't need motivation if there are predictable results.

Thank you KSR!  Though you might have an argument for inoperable in your example.

So what is your claim in your example?  Wood x with holes of type y are a spacing of type z.

And ref A teaches the wood x at the bottom of the hull of a boat.
And ref B teaches holes of type y at a spacing of type z.

Teaches away? Most definitely.  Predictable?  Yes. 

Though I can imagine other rebuttals would be more persuasive.  Like... The boat is only one embodiment for utilization of the wood.

Okay, if I claim a method for sinking a boat, yes, predictable results.  But, what if my hull holes don't sink the boat?

I don't think "predictable results" means that the cited combination's results are predictable but rather that the claim in question uses the combined elements for their predictable results -- things like claiming a faster car that uses a more powerful engine or that produces less drag.

Regards.

[Isaac]

I think when one says "predictable results" what is meant is that the patent application
doesn't teach benefits of the combination that exceed what's predictable. So it's sort
of the next layer of argument. If it is established that the prior art does provide at least
some motivation in favor of combining the references, the next question is whether the
application discloses benefits that far exceed the predictable benefits (unexpected
results).

I don't understand why finding the disclosure of unexpected benefits is particularly persuasive of non-obviousness.  If a PHOSITA would be strongly motivated to combine X and Y to obtain result W, why is it relevant that the PHOSITA would not know about favorable result Z?
 
I also wanted to point out that secondary considerations don't have to be documented in the application.  It's perfectly acceptable to demonstrate the unexpected results with declarations and other evidence.

[ManOfManyBadIdeas]

I think when one says "predictable results" what is meant is that the patent application
doesn't teach benefits of the combination that exceed what's predictable. So it's sort
of the next layer of argument. If it is established that the prior art does provide at least
some motivation in favor of combining the references, the next question is whether the
application discloses benefits that far exceed the predictable benefits (unexpected
results).

I don't understand why finding the disclosure of unexpected benefits is particularly persuasive of non-obviousness.  If a PHOSITA would be strongly motivated to combine X and Y to obtain result W, why is it relevant that the PHOSITA would not know about favorable result Z?

As every good question, yours already contains half of the answer This is what I think: having some benefit
to combine X and Y to obtain W is not enough to provide strong motivation to do so, when there are better
alternatives to achieve W. So motivation to combine doesn't immediately follow from the fact that there is
some benefit to the combination.

[ManOfManyBadIdeas]

I think when one says "predictable results" what is meant is that the patent application
doesn't teach benefits of the combination that exceed what's predictable. So it's sort
of the next layer of argument. If it is established that the prior art does provide at least
some motivation in favor of combining the references, the next question is whether the
application discloses benefits that far exceed the predictable benefits (unexpected
results).

Thinking a bit about this, I think the meaning of "predictable results" might be a little bit
different. I think it means that the applicant failed to disclose any additional motivation
to combine beyond what's already taught by the prior art. Not exactly the same, but it doesn't
affect the meaning of the post.