Appeal 2007-0561
Application 10/689,465
1 design need or market pressure to solve a problem and there are a
2 finite number of identified, predictable solutions, a person of ordinary
3 skill has good reason to pursue the known options within his or her
4 technical grasp. If this leads to the anticipated success, it is likely the
5 product not of innovation but of ordinary skill and common sense. . . .
6
7 The Court of Appeals, finally, drew the wrong conclusion from
8 the risk of courts and patent examiners falling prey to hindsight bias. .
9 . . A factfinder should be aware, of course, of the distortion caused by
10 hindsight bias and must be cautious of arguments reliant upon ex post
11 reasoning. See Graham, 383 U.S., at 36 (warning against a
12 “temptation to read into the prior art the teachings of the invention in
13 issue” and instructing courts to “guard against slipping into the use of
14 hindsight” (quoting Monroe Auto Equipment Co. v. Heckethorn Mfg.
15 & Supply Co., 332 F.2d 406, 412 (CA6 1964))). Rigid preventive
16 rules that deny factfinders recourse to common sense, however, are
17 neither necessary under our case law nor consistent with it.
18
19 The applicants’ arguments suffer from each one of the above-noted errors
20 discussed by the Supreme Court. Foremost is the complete disregard of basic skill
21 and common sense in piecing together teachings from multiple references. The
22 applicants note the differences between the claimed invention and each prior art
23 reference by itself and assert that that is properly considering the reference as a
24 whole. But that erroneously ignores the usefulness of component parts for
25 application in related structures, which would have been recognized by one with
26 ordinary skill in the art. The applicants argue that because “one of the bases of the
27 Reichman ‘198 patent is the concept of a selectively oriented wire clamping
28 member,” Reichman is not pertinent. That patently ignores the teaching that the
29 ground wire axis in a grounding clamp can be set to whatever orientation, as
30 desired. An applicable prior art reference need not address the same problem as
31 that addressed by the applicant for patent. In re Dillon, 919 F.2d at 693, 16
32 USPQ2d at 1901-02. Also, a prior art reference is from an analogous art and
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