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Motivation for the Federal Circuit Test - page 7 / 35





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“invention” by identifying a reasonable, articulated rationale of why it was or was not

obvious to combine various prior art elements. Only two years later, the court in Atlantic Works v. Brady

,21 would drive home the

importance of both hindsight reconstruction and objective indicia to counter it with what would later be coined the Winslow Tableau. This is the image of an inventor creating an invention while having the analogous prior art before him. 22

What, then, did he invent? Did he make a selection and combination of these elements that would not have occurred to any ordinary skilled engineer called upon, with all this previous knowledge and experience before him, to devise the construction of a strong dredge– boat for use at the mouth of the Mississippi? We think not. We think that there is no reasonable ground for any such pretension. 23

Judge Giles Rich writing for the court in Winslow is most often credited with this particular framework for evaluating “obviousness,” though the framework clearly existed much earlier.

Implicit in the popular image of the Winslow Tableau is a concern for hindsight and as a consequence a strong statement for objectivity in the “invention” analysis. Hindsight is to be prevented by placing oneself back in time at the time of “invention.” Objectivity is accomplished by looking at “all this previous knowledge and experience.” If rigorously applied,24 it is fully consistent with Graham and § 103, since it is, in

21 22 107 U.S. 192 (1883). Application of Winslow, 365 F.2d 1017, 1020 (1966), “Appellant presents the usual argument that hindsight reconstruction has been employed by the examiner and the board. We disagree with that position. We think the proper way to apply the § 103 obviousness test to a case like this is to first picture the inventor as working in his shop with the prior art references – which he is presumed to know – hanging on the walls around him. One then notes that what applicant Winslow built here he admits is basically a Gerbe bag holder having air– blast bag opening to which he has added two bag retaining pins. If there were any bag holding problem in the Gerbe machine when plastic bags were used, their flaps being gripped only by spring pressure between the top and bottom plates, Winslow would have said to himself, "Now what can I do to hold them more securely?" Looking around the walls, he would see Hellman's envelopes with holes in their flaps hung on a rod. He would then say to himself, "Ha! I can punch holes in my bags and put a little rod (pin) through the holes. That will hold them! After filling the bags, I'll pull them off the pins as does Hellman. Scoring the flap should make tearing easier."

23 24 107 U.S. at 202. With an important modification found in “In re Antle, 444 F.2d 1168, (CCPA 1971), where it was pointed out that the prior art on the wall consists only of those patents one of ordinary skill in the art would have selected without the advantage of hindsight or knowledge of the invention.” Union Carbide Corp. v. American Can Co., 724 F.2d 1567, 1576 (Fed.Cir.1984). Giles Rich would later regret the “overly picturesque” language, in his own words, of Winslow. Kimberly– Clark Corp. v. Johnson & Johnson, 745 F.2d 1437, 1452 (Fed.Cir.1984). He felt the language improperly focused attention away from the language of § 103 and Graham. Rich most likely realized the Winslow imagery caused courts to engage in hindsight reconstruction despite the fact he originally introduced it as a way to prevent hindsight. If the court did not carefully place itself mentally back in time before the invention was known, it is easy to see how a court could would misconstrue Winslow and engage in hindsight reconstruction. See generally Kimberly– Clark Corp. v. Johnson & Johnson, 745 F.2d 1437, (Fed.Cir.1984).


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