Improper hindsight is not allowed. We all know this. But remember only improper hindsight is forbidden, meaning that it is A-OK for examiners to use some hindsight in patent examination. In this regard, examiners use hindsight all the time in examining patent applications. Examiners search the prior art knowing the invention and the claim elements. Examiners form rejections to reach the claim elements, working backward from the claim to the prior art. Of course Examiners use the claims to piece the prior art together, and then review the prior art to find some reasoning or motivation for the combination.

It is recognizing the line between improper hindsight, and for lack of a better term “proper hindsight”, that can be tricky for patent applicants and their representatives. Today we review three scenarios:

1. Arguing improper hindsight where the examiner gives some reasoning not based on the applicant’s specification

2. Arguing improper hindsight where the examiner gives no or improper reasoning or motivation

3. Arguing improper hindsight where the examiner uses express reasoning that is only present in the applicant’s specification

Starting with the first scenario, we review SN 15/583,852 to the University of Michigan. The invention relates to ultrasound.

1. An ultrasound therapy system, comprising:
an array housing including a plurality of openings;
a plurality of transducer module housings adapted to be inserted into the plurality of openings of the array housing, each of the plurality of transducer module housings comprising:
a transducer element; an acoustic lens; and
a matching layer disposed between the transducer element and the acoustic lens; wherein the plurality of openings of the array housing are arranged so as to align the transducer elements to share a common focal point, wherein the transducer elements are configured to apply therapeutic ultrasound energy to tissue positioned at the common focal point.

The examiner applied a combination of two references and argued that there was motivation to combine them.  Specifically, the primary reference showed the claim 1 elements except for teaching that the transducer modules are transducer module housings that each further comprises an acoustic lens and a matching layer disposed between the transducer element and the acoustic lens. A secondary reference was cited for these features. The examiner reasoned it would be obvious to apply the secondary reference’s teaching to the primary reference because the primary reference was concerned with focusing the ultrasound to a focal point, and the ordinarily skilled artisan would have predictably recognized that the acoustic lens could be used to provide additional focusing to each of the plurality of transducer modules.  The examiner further explained that such a modification would have merely involved applying a known technique (i.e., a transducer module housing comprising a transducer element; an acoustic lens; and a matching layer disposed between the transducer element and the acoustic lens) to a known device (method, or product) ready for improvement (i.e., applying these techniques to each of the plurality of transducer modules)) to yield predictable results.  The cited motivation to do so was to improve the ability to provide localized treatment, to acoustically couple each of the transducer elements to its corresponding acoustic lens, and to structurally support the matching layer and the lens (in combination with the transducer element) of each transducer module.

The University of Michigan argued that this was based on improper hindsight. The problem for my alma mater was that the reasoning cited by the Examiner was not expressly found in Michigan’s application, but rather comes from the cited art. Whether or not the examiner worked backward to piece the prior art together, and then came up with a motivation that made sense from those references, is beside the point (at least when arguing improper hindsight at the PTAB). Because the examiner did not expressly rely on the applicant’s teaching, and because the examiner had some reasoning based on the cited art, improper hindsight is not present:

We also disagree with Appellant’s final argument that the Examiner’s reasoning relies on hindsight. Appellant does not identify any knowledge relied upon by the Examiner that was gleaned only from Appellant’s disclosure and that was not otherwise within the level of ordinary skill in the art at the time of the invention as noted by the Examiner with respect to the teachings of Dan and Lee. See In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971) (“Any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning, but so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made and does not include knowledge gleaned only from applicant's disclosure, such a reconstruction is proper.”).

Thus, when there is some reasoning provided that comes from the prior art, it is very difficult to successfully argue hindsight. As the PTAB likes to point out: a hindsight argument is of no moment where the Examiner provides a sufficient, non-hindsight reason to combine the references. See In re Cree, Inc., 818 F.3d 694, 702 (Fed. Cir. 2016).

But what about where the examiner fails to give any reasoning whatsoever for a combination, or gives reasoning that does not actually achieve what the examiner purports the combination intends – it is possible to infer improper hindsight (second scenario)?  Application 16/102,491 provides an example. Here, Johnson Controls’ invention relates to a cooling system with thermal energy storage. The examiner cited motivation that related to removal of unwanted water, but provided a combination in which there was no water accumulation that would occur and thus no need for removal.  In other words, the examiner argued that the combination was motivated by a problem that simply did not exist once the combination was made.  Here, because there was no other way to explain the examiner’s combination, the only inference left is improper hindsight:

Without a persuasive articulated reason based on some rational underpinning for modifying the reference as proposed, the Examiner’s rejection appears to be the result of hindsight analysis.

In other words, to win this improper hindsight argument, the applicant has to essentially establish that there is simply no other motivation alleged, other than the improper one, to support the combination.

Turning to the third scenario, here the examiner provides express motivation that is only found in the applicant’s specification. How could an examiner be so brazen to make a rejection like this? Such an unforced error occurs more often than one may think.  For example, an examiner might think that it is reasonable to point out that it would be obvious that the combination achieves a benefit, where the benefit is an advantage pointed out the by the Applicant in the specification.  However, such an approach is exactly the type of reasoning that provides the applicant with express evidence of improper hindsight reasoning.

To illustrate, consider Apple’s application 15/961,016, which relates to electronic equipment, and, more particularly, to electronic equipment with input devices such as keyboards. Claim 1 is listed below

 1. Electrical equipment, comprising:

an array of keys each of which includes a key press sensor and a key member; and

a layer of material having a first surface facing the key members and having an opposing second surface facing the key press sensors; and

light sources that provide backlight illumination for the keys, wherein each key member includes a coating layer with a symbol-shaped opening and each key member is surrounded by a metal trim that forms an exterior surface of the key member.

One of the examiner’s rejections relied on a combination of references where the sole motivation to combine came from the Applicant’s specification.  Specifically, no reference was cited to show or suggest an external metal trim on an illuminated key. The examiner argued it was obvious in order to protect the body of the key member.  The examiner cited to Apple’s specification to support an expectation of success in making the combination.  From there, the PTAB confirmed that the examiner relied on impermissible hindsight.

So, make sure you can spot the different types of hindsight, and separate out improper hindsight situations to avoid making hindsight arguments that are easily dismissed by the Office.