Improper Hindsight

Improper hindsight is the common phenomenon of viewing an invention as being obvious in light of current knowledge, when in fact the invention was not at all obvious at the time. A simple example is the listing of television programs by four or five digit codes, and then using those codes as a simple means of setting the channel, start and stop times of a video recording device. The idea is so simple that it seems everyone would have thought about it. But the point is that either nobody did think up the invention, or they did and then subsequently abandoned, suppressed or concealed the idea.

Improper hindsight is clearly a powerful force, and once an examiner sets his mind in that direction, it is often exceedingly difficult to turn him around. To some extent the patent attorney can minimize improper hindsight by drafting the Specification properly. As discussed more fully above, the background section should be drafted to recite numerous problems and solutions found in the prior art, concluding with the observation that no one has yet been able to solve the problem properly. If the solution seems obvious, then the background section needs to be redrafted, perhaps to attack a "straw man" problem to which the solution is non-obvious.

In the event that the examiner does fall prey to improper hindsight, that fact should be diplomatically pointed out in the response. One of the most useful case citations in that regard is In re Dembiczak et al . In the Dembiczak opinion the Federal Circuit recognized that "...the best defense against the subtle but powerful attraction of a hindsight-based obviousness analysis is rigorous application of the requirement for a showing of the teaching or motivation to combine prior art references" . This is because "combining prior art references without evidence of such a suggestion, teaching, or motivation simply takes the inventor's disclosure as a blueprint for piecing together the prior art to defeat patentability [which is] the essence of hindsight".

More often than not the examiner simply can't meet the Dembiczak standard. He just cannot find any teaching, suggestion, or motivation to combine the references in the manner claimed. Of course, that doesn't mean the examiners give up. It does, however, mean that the patent attorney has a strong hand in arguing against obviousness, and should be quick to file an appeal if the examiner refuses to withdraw the obviousness rejections.