The Problem of Hindsight
Ten years after Tucker v. Spalding the court identified hindsight reconstruction as a critical component of the “invention” analysis in Loom v. Higgins.19 Indeed, as the court points out, when the invention consists of a combination of old elements and thus appears “obvious,” as many inventions do, hindsight reconstruction can often be to blame. The court carefully notes that in such a case, objective indicia explaining why it would have been obvious to make this particular combination of elements should be sought. Pointing ahead over eighty years, the court identifies such objective indicia in the form of commercial success and superior results; later these will be similarly identified in Graham.
It is further argued, however, that, supposing the devices to be sufficiently described, they do not show any invention; and that the combination set forth in the fifth claim is a mere aggregation of old devices, already well known; and therefore it is not patentable. This argument would be sound if the combination claimed by Webster was an obvious one for attaining the advantages proposed, – – one which would occur to any mechanic skilled in the art. But it is plain from the evidence, and from the very fact that it was not sooner adopted and used, that it did not, for years, occur in this light to even the most skilful persons. It may have been under their very eyes, they may almost be said to have stumbled over it; but they certainly failed to see it, to estimate its value, and to bring it into notice. Who was the first to see it, to understand its value, to give it shape and form, to bring it into notice and urge its adoption, is a question to which we shall shortly give our attention. At this point we are constrained to say that we cannot yield our assent to the argument, that the combination of the different parts or elements for attaining the object in view was so obvious as to merit no title to invention. Now that it has succeeded, it may seem very plain to any one that he could have done it as well. This is often the case with inventions of the greatest merit. It may be laid down as a general rule, though perhaps not an invariable one, that if a new combination and arrangement of known elements produce a new and beneficial result, never attained before, it is evidence of invention. It was certainly a new and useful result to make a loom produce fifty yards a day when it never before had produced more than forty; and we think that the combination of elements by which this was effected, even if those elements were separately known before, was invention sufficient to form the basis of a patent. 20
It is important to note the profound connections between the “obviousness” of an invention in light of hindsight reconstruction, and the ensuing need for objective indicia. Though they will not always be discussed together, courts will consistently return to the problem of hindsight reconstruction. As the body of experience grows, courts will lean on the TSM test with more regularity and in the process resolve the question of
105 U.S. 580 (1881)
105 U.S. at 591-592.