One thing that most patent professionals learn to understand is the siren attraction of hindsight, as Judge Markey called it (see previous post here). The attraction of hindsight is particularly difficult in the context of so-called “simple” inventions. Michael Kondoudis wrote a great post back in 2013 entitled “The Nonobviousness of ‘Simple’ Inventions,” which is a great resource. Often hindsight and simplicity are tied together in patent law.

At play are the effects of labels, preconceived notions, and the normativity of certain words. Simple seems “bad” in terms of patentability and inventiveness, but elegance seems “good.” Elegant solutions inherently seem like they should cut against hindsight. Examiners often assert that certain features are simple and thus obvious, using hindsight to guide their thinking.

Considering the interplay of hindsight and simplicity, below are some examples that try to re-direct the conversation around an invention where this interplay might be creating a block in the examiner’s mind.

• Turn “simple” into “deceptively simple.” Things that seem simple in hindsight might be better described as deceptively simple. An inventor’s solution might be analogized to a mechanical ring puzzle that seems literally impossible to solve until you find the “simple” solution (or until someone shows you the solution). In some cases, the background to an invention and the unsolved problem, properly posed, can help an examiner see the competing interests that might help explain how the solution was hiding in plain sight.

• Cast the mind back - “It is difficult but necessary that the decision maker forget what he or she has been taught . . . about the claimed invention and cast the mind back to the time the invention was made (often as here many years), to occupy the mind of one skilled in the art. ...” W.L. Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, (Fed. Cir. 1983). Along with the above, walking back in time to help illustrate what others were doing before the invention can help an examiner see the invention in a new light.

• Explaining the elegance of an invention as the way in which it keeps the solution simple can turn the apparent disadvantage of simplicity into a powerful tool for non-obviousnes.

Remember, as explained by Mr. Kondoudis, the complexity of an invention should be separate from its patentability. While the MPEP and some court decisions blur this distinction, it can often fall to the patent prosecutor to resurrect this separation in a way that suppresses hindsight and redirects attention to the deceptively simple and elegant solution provided by the inventor.