On Analysis of Hindsight Bias in Inventiveness Determination

Linda Liu & Partners
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[author: Hui Zheng]

Foreword

The Guidelines for Patent Examination provides in Section 6.2 of Chapter 4, Part II: “When evaluating the inventive step of an invention, the examiner is apt to underestimate the inventive step of the invention since he has already known the contents of the invention, and hence a mistake of hindsight bias is likely to be made. Therefore, the examiner shall always bear in mind that, in order to reduce and avoid the influence of subjectivity, the evaluation shall be presumed to be made by a person skilled in the art on the basis of comparison between the invention and the prior art before the filing date thereof.”

Further, it is pointed out in Substance of Adjudications made by Intellectual Property Court of Supreme People’s Court (2019) that: technical teaching obtained by t a person skilled in the art from the prior art in order to solve the technical problem to be actually solved should be, in principle, specific and definite technical means instead of abstract thoughts or a general direction of research. Determining the teachings of the prior art on the merely basis of consistent direction of research and the abstract and common needs in the field risks hindsight bias and underestimation of the inventiveness of the invention.

In practice, the examiners tend to overestimate the level of “a person skilled in the art”. In particular, in examination based on understanding of the invention, the examiner can be easily trapped in hindsight bias and determines, in the three-step method, that the claimed invention is obvious to those skilled in the art. Such an examination result is biased and unjust to the applicant.

Below is an analysis of office opinions based on hindsight bias with reference to a specific case and the strategies for responding to such office opinions.

Case

The claimed invention (hereinafter referred to as the subject invention) relates to a masonry structure. As compared with Reference 1 cited as the most-related prior art, the subject invention has the major distinguishing technical feature that a viscoelastic paste seal is continuously coated on an upper masonry body and a lower masonry body superimposed on each other, thereby realizing the technical effect that when the masonry is bent and deformed due to a bending force in an out-of-plane direction, the seal is elongated or compressed in accordance to the bending deformation to suppress the masonry bodies from cracking.

In a masonry structure according to D2, an elastic vibration isolation member is disposed between adjacent blocks; and the vibration isolation member is placed in a recess arranged in the block. Since the vibration isolation member is not in joint connection with the blocks, it only corrects deformation between the blocks in the plumb-line direction, and has only a limited effect with respect to deformation under a bending force or a shearing force applied in an out-of-plane direction.

In the substantive examination, the examiner made the Decision of Rejection based on the following opinions: the vibration isolation member disclosed by Reference 2 plays the same role with the seal of the present application, i.e., for better following the deformation of the masonry structure; it does not require creative efforts to provide the vibration isolation member to take form of a paste in order to enable continuous coating to provide a seal, because those skilled in the art knows the customary means for preventing fracture by keeping the deformation of building units consistent, and that an elastic member is deformable, and higher deformability can be achieved by a paste.

The Decision of Rejection was revoked in the reexamination. The panel stated the following reasons:

Although the vibration isolation member of Reference 2 is elastic, it is directly attached to the blocks. The vibration isolation member of Reference 2 is merely an elastic cushion for correcting vertical deformation, and cannot deform in accordance with the bending deformation of the masonry structure under a bending force in the out-of-plane direction. Thus, the vibration isolation member of Reference 2 can hardly suppress the blocks from breaking. It can be seen that Reference 2 does not disclose or teach the distinguishing technical feature; nor is it evident that the distinguishing technical feature is the common knowledge in this field.

Analysis

In the above case, the hindsight bias in the substantial examination is corrected in reexamination.

As shown in the Decision of Rejection, the examiner who fails to overcome hindsight bias alleges that the claimed invention is obvious in a far-stretching manner.

More specifically speaking, the examiner seems to have avoided the significant distinguishing technical feature of the present application that the paste seal is viscoelastic and the effect achieved by this distinguishing technical feature. The examiner merely stresses on the common structural feature of Reference 2 and the present application, i.e., the elasticity, to determine that the vibration isolation member functions as the paste seal of the present application, and then far-stretching explained that no inventive effort is required to provide a paste seal according to the general needs in this field. This is a typical opinion affected by hindsight bias, overestimating the function of a common feature to state that the prior art achieves the same effect or provides corresponding technical teaching, overlooking or underrating the role of the distinguishing technical features and justifying the plausibility of acquiring the distinguishing technical features.

In contrast, determination of inventiveness overcoming hindsight bias requires objective determination on whether or not the prior art teaches using a viscoelastic paste seal, that is, focusing on the distinguishing technical features (see the opinion of the panel in the above case).

Suggestions

In responding to office opinions containing hindsight bias, the applicant may follow the following thoughts.

(1) first objectively and directly pointing out the distinguishing technical features of the subject patent as compared with the prior art and the function thereof, specifying the reason why the prior art cannot solve the technical problem of the subject patent;

(2) leading the examiner back to the correct path of determining inventiveness by re-establishing the circumstances where the subject patent is made; that is, helping the examiner to take the position of a person skilled in the art who is making the creation-invention of the subject patent, to fully consider the obviousness of the subject patent in the state of art at the time of filing the application for the subject patent;

(3) arguing that the technical teaching obtained from the prior art should be specific and definite technical means rather than abstract thoughts or a general direction of research; that a technical solution different from the subject patent may be obtained by combining the specific technical means provided by the prior art, and such a technical solution will still have the technical problem the subject patent intends to solve;

(4) illustrating other technical choices a person skilled in the art may make in order to solve the technical problem the subject patent intends to solve, thereby further proving the non-obviousness of the subject patent.

Notably, the above is not the unique form of office opinions containing hindsight bias. Often an examiner determining the technical means for solving the technical problem as the technical problem in the determination of inventiveness by the three-step method also has hindsight bias. In such case, the applicant may help the examiner to recognize the correct technical problem by (2), which is not repeatedly explained herein due to limited space.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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