This weeks best read on the art of hindsight reconstruction is In re Icon Health & Fitness, (CAFC 8/1/2007). It recalls the fable of how truth became a story, then the story became a metaphor, and eventually, the metaphor replaced the truth. At some point in the obviousness analysis, it should be asked whether the differences between the claimed invention and the several prior art references are such that the invention would have been obvious. The term differences is truly in the statute, and truly in Graham v. Deere. That has evolved into the couldve been combined test, and even that standard gets lowered in Icon. Starting from a point of combining, supplants the true first step of identifying the differences.
Perhaps still smarting from its rigid test being undone by KSR, the panel in Icon focuses on the motivation to combine a catalog ad for a folding treadmill with a feature on a folding bed, as proof of the obviousness of a gas spring assist on a folding treadmill. To turn a hindsight reconstruction into an obviousness conclusion, first overlook the differences, and dont forget to blur the lines between evidence that is relevant, and that which genuinely is proof.
Icon argued that a bed and a treadmill are non-analogous arts, and the CAFC agreed BUT, the problem being addressed was similar. The decision equates coil springs on a folding bed with the gas spring claimed as an element of the folding treadmill.
While one may agree that the similarity of the problem suggests that the art is not non-analogous, the CAFC takes that one step higher, and finds that similarity is itself proof of a motivation to combine. What? The panel in Icon finds that showing that the references addressed a similar problem goes a long way towards demonstrating a reason to combine those references. Perhaps the opposite proposition is logical: non-analogous = non-obvious; but, a similarity of the problem at hand, does not IMHO further support the idea that one skilled in the art would combine features on a bed to innovate a treadmill. That is where TSM had provided some glue between the differences and the claimed invention. Now, if the art show is analogous, then its only a short drive further to obviousness.
The panels synthesis of wider ranging points recalled the deposition testimony of an expert opining about obviousness, who stated that although he could point to nothing that would suggest the art being combined, that when he had all the prior art in his mind, he could close his eyes, and see a bridge forming between their separate teachings. The Judge, hearing his first patent case, got this expression of Doctor, are you self-medicating. Here, a person of ordinary sleeping skill, lying on a folding bed likely would dream of sheep trodding upon a folding treadmill, or himself sleepwalking on a bed, and Eureka its obvious to combine those.