How does the USPTO handle arguments about improper hindsight in obviousness rejections?
Applicants often argue that an examiner’s obviousness rejection is based on improper hindsight reasoning. MPEP 2145 addresses this issue:
Key points about hindsight arguments:
- Some degree of hindsight is inherent in obviousness analyses
- Proper hindsight uses only knowledge available to a person of ordinary skill at the time of invention
- Improper hindsight relies on knowledge gleaned solely from the applicant’s disclosure
- Examiners should explain how their reasoning is based on prior art teachings, not applicant’s disclosure
- Lack of express motivation to combine in prior art doesn’t necessarily mean improper hindsight was used
Examiners should carefully articulate their reasoning to show they are not relying on improper hindsight.
To learn more:
Topics:
MPEP 2100 - Patentability,
MPEP 2145 - Consideration Of Applicant'S Rebuttal Arguments And Evidence,
Patent Law,
Patent Procedure