The oral argument of the day is from In re Conrad. In this case, the inventor identified a previously unrecognized problem. The Patent Office rejected the inventor’s claim under ยง103 by proffering a hypothetical problem that could have caused a PHOSITA to combine references. Under the KSR v. Teleflex and In re Beattie line of cases, the Federal Circuit affirmed the rejection of the claim.
The inventor/appellant argued that there should be a weighing of the merits of the facts, taking into account the inventor’s recognition of an actual problem versus the PTO’s proffering of a hypothetical problem/solution during examination. I think that raises an interesting issue. If the PTO cannot show by evidence that its problem was previously identified in the art, should its hypothetical problem/solution outweigh the inventor’s actual identified problem/solution? Should there be a presumption in favor of the inventor when the inventor identifies a problem not previously identified in the art? Wouldn’t such a process guard against hindsight examination?
The oral argument is interesting and has a few entertaining one-liners. As the opinion notes, the government at times appeared to agree with the appellant about the appellant’s legal argument. Some questioning by Judge Chen helped to rehabilitate the government’s position at the end of the government’s presentation. Judge Moore even remarked about Judge Chen’s “rehabilitation of the witness.”
You can hear Judge Chen’s questioning here:
You can hear Judge Moore’s comment here:
You can read the court’s opinion here: [Link].
You can listen to the entire oral argument here: