When a patent office examines a patent application to determine whether the invention is obvious in view of the prior art, the examiner necessarily sees the invention but must evaluate the prior art is if the invention is not known. Since humans generally cannot unlearn information in such an analysis, the issue of hindsight creeping into the analysis is inevitable. That is why case law provides several requirements as to how the obviousness analysis should be conducted - to guard against hindsight. We have previously discussed the issue of hindsight in obviousness analyses in several posts (see here).

Sometimes an applicant wants to point out that the patent examiner has fallen victim to hindsight reasoning. While most examiners do not explicitly rely on teachings from the applicant’s specification, some do. And when this happens, the applicant can usually make a strong case by showing how the examiner’s reasoning matches only the applicant’s specification, and not any teaching from the cited art.

However, one must be careful to actually cite evidence of hindsight reasoning. Mere attorney argument, especially before the PTAB, can be insufficient. A recent example is Appeal 2019-002333 (Application 15/120,655). The invention relates to automatic external defibrillators that can be continuously and comfortably worn by a patient for an extended period of time, including the use of separate waterproof housings for separate components. On appeal to the PTAB, one of the applicant’s arguments was that the examiner erred in arguing that certain modifications would be obvious in order to achieve a specific benefit.

Specifically, the examiner argued that providing separate waterproof housings for separate components would enable separating the defibrillator components into two or more housings that are at different locations on the substrate. This in turn, would then provide more balanced weight of the wearable defibrillator and therefore the defibrillator more secure, than if most of the weight were located at one location. The Applicant asserted that such reasoning was hindsight and based on the applicant’s teachings, but did not cite to evidence in the specification. The PTAB therefore reasoned as follows:

And to the extent Appellant indicates that this reasoning may be based on hindsight, Appellant does not adequately explain the statement that the Examiner’s list of benefits “comes from Appellant’s specification.” Thus, without further explanation, Appellant has not identified any error in the Examiner’s reasoning that it would have been obvious to provide separate waterproof housings as a matter of design choice.

So, when you argue hindsight, point to evidence in the specification that matches the examiner’s reasoning. If you cannot provide such evidence, even if you think the examiner is using hindsight, you may want to look for another way to frame the issue.