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March 28, 2024


I don't think this criticism is well-taken. First, a few minor things: (1) the italicized language was relevant because one of Cardiovalve's 2 main arguments was that the Board made up its own obvious-to-try rationale in the FWD; (2) the opinion addressed the main argument Cardiovalve raised about the Board's interpretation of obvious-to-try. The appellee did not spend as much space trying to justify the alternative ground for affirmance.

More broadly, the panel held that the "known options" need not have been "expressed in a prior art document" but instead could arise from the knowledge and skill of the POSA. This is surely consistent with 103. Nothing about 103 demands that every aspect of a claimed invention, or "known options" for combination, be expressed in a prior art document. And KSR clearly does not demand anything like that--especially here, where we're talking about the 2-3 possible locations of where to fix flaps on a medical device.

Maybe I'm wrong, but this post (and frankly some Federal Circuit precedent, see Virtek last week) seems to express a hostility to judicial thinking about inventiveness that imo tends to bias the obviousness analysis in favor of inventions that consist of small, predictable changes called for by the prior art, that have a clear logic (even to non-POSAs), and no record evidence of unpredictability or unexpected results--yet lack explicit prior art documentary explanation for why or how a simple change could be made.

I see no reason to cabin the obviousness analysis in this way, or law that demands we do so. In fact, it only exacerbates the preexisting bias toward nonobviousness that arises from the fact that decisionmakers rarely have familiarity with the field and usually fail to replicate the POSA's skill and insight.

Kyle: the problem with this analytical approach is that unless there is some evidence that the skilled worker would have taken these steps (which of course are evident in hindsight) how can obviousness be objectively assessed? The reason prior art is useful in avoiding hindsight is it provides a basis for making the determination. I am happy to rely on other objective evidence that the alternatives arise from the knowledge and skill of the POSA but how do you show that? Perhaps by expert testimony but that is a slippery slope.

I'm not sure what you detect is hostility but an absence of the appropriate humility by Federal Circuit judges expressed by Learned Hand in the last century:

The test laid down [in 35 U.S.C. § 103] is indeed misty enough. It directs us to surmise what was the range of ingenuity of a person "having ordinary skill" in an "art" with which we are totally unfamiliar; and we do not see how such a standard can be applied at all except by recourse to the earlier work in the art, and to the general history of the means available at the time. To judge on our own that this or that new assemblage of old factors was, or was not, "obvious" is to substitute our ignorance for the acquaintance with the subject of those who were familiar with it. Reiner v. I. Leon Co., 285 F.2d 501 (2d Cir. 1960)

Courts, made up of laymen as they must be, are likely either to underrate, or to overrate, the difficulties in making new and profitable discoveries in fields with which they cannot be familiar; and so far as it is available, they had best appraise the originality involved by the circumstance which preceded, attended and succeeded the appearance of the invention. Safety Car Heat & Light Co. v. General Electric Co., 155 F.2d 937 (2d Cir. 1946).

Thanks for the comment

Thank you for your response Dr. Noonan. I'll try to stay brief:
1) It seems inconsistent with 103 to say a court cannot find that a POSA would be able to make a modification, and that they would likely see the logic of doing so, based upon the POSA's skill.
2) The patentee has ample opportunity to make a case against obviousness--no one knew the problem; the combination was un-intuitive or hard to pull off; you wouldn't have expected success; unexpected results; and so on. This should be sufficient to frame whether the modification was obvious or not, without raising the bar for the defendant's prima facie showing. What we have here and in Virtek is a minor, predictable modification of dead-on prior art, where the patentee did not appear to make these arguments very well or at all.
3) Your point and Judge Hand's words about judicial humility are well-taken. But that cuts both ways. It strikes me that this more likely leads judges to overrate the complexity of the field because it's difficult for them to don the POSA's knowledge of the field.

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