ultimate molecular weight distribution of polyethylene. This property is neither taught nor suggested by the prior art.…
The fallacy of [the PTO’s] reasoning is that no one of the references suggests such a substitution, quite apart from the result which would be obtained thereby. Such piecemeal reconstruction of the prior art patents in the light of appellant's disclosure is contrary to the requirements of 35 U.S.C. § 103.
The ever present question in cases within the ambit of 35 U.S.C. § 103 is whether the subject matter as a whole would have been obvious to one of ordinary skill in the art following the teachings of the prior art at the time the invention was made. It is impermissible within the framework of § 103 to pick and choose from any one reference only so much of it as will support a given position, to the exclusion of other parts necessary to the full appreciation of what such reference fairly suggests to one of ordinary skill in the art. The Anderson patent is the only reference before us which recognizes the desirability of producing polyethylene with a narrow molecular weight distribution range. Were one to follow the teachings of that patent in its entirety, he would be led to believe that control over the molecular weight distribution of polyethylene was gained independently of the catalyst system, a belief untenable in light of appellant's disclosure.
Both the board and the solicitor apparently assert the position that it is incumbent upon appellant to show that his results are outstanding as compared with the results accomplished by Anderson and Muehlbauer. If this is construed as requiring appellant to show unexpected results accruing from his claimed process, we think he has met the requirement. We perceive no teaching in the prior art of record suggesting that an alkoxide or aroxide moiety in a Ziegler– type catalytic system would produce the results obtained by appellant's process. 55
As the passage indicates, in applying the TSM “test,” it is apparent the court is simply asking for a reasonable rationale based on the prior art why it would have been obvious for an inventor to create such an invention. Since § 103 requires the evaluation of obviousness as of the time of the invention and not later, the reason offered must be consistent with the state of the art at the time. Of course, in many instances the best objective indicia of the state of the art at the time is the prior art record. If the court were to deviate from relying on these indicia, hindsight reconstruction and violation of § 103 requirements would very often be the result.
353 F.2d at 240.
356 F.2d 998, (C.C.P.A.1966)
Hindsight Condemned (Again)
Another informative, if unflattering example of the problem of hindsight reconstruction and its relationship to the TSM test is found in In Re Adams. 56