A recurrent issue that nags every patent professional is the misuse of hindsight by patent examiners during the examination process. A common scenario unfolds when patent examiners, in their pursuit of examining patent applications, rely on improper hindsight to combine references. This often happens when the examiner provides a purported reason for the combination, and the sole evidence supporting that reason is extracted from the inventor's own patent application. This circular reasoning can create a significant hurdle for patent professionals, as it undermines the objectivity of the examination process and unfairly imposes a hindsight bias on the evaluation of inventions.
The heart of the matter lies in the absence of tangible evidence or a clear rationale outside of the inventor's disclosed information. Patent professionals must be vigilant in identifying and challenging such instances, emphasizing the importance of a fair and unbiased evaluation of inventive steps during prosecution. See a previous post on the more typical use(s) of hindsight here.
However, the misuse of hindsight doesn't end there. Hindsight can show up in more nuanced ways, such as where an examiner expands or generalizes the disclosure of a prior art reference beyond what it teaches to a person skilled in the art. This post analyzes a recent PTAB decision where the examiner took precisely this approach - Appeal 2022-004518, Application 16/272,399.
The application relates to the design of a current collector. The examiner combined references by relying on a generalization of the teachings of one of the references (Xifeng). The PTAB found this to be improperly based on hindsight:
… the Examiner relies upon Blais and Xifeng as describing use of finite element analysis to predict various properties of the current collector assembly designs through mathematical model. In particular, the Examiner finds that Xifeng describes using this sort of modeling process “to design features of the [aluminum electrolysis] cell to reach thermal stability (i.e. ‘contained heat distribution [’]).”
We begin by determining that this finding is overly reliant on hindsight. Xifeng shows that a specific finite element analysis program can be used to model behavior of a specific type of aluminum electrolysis cell by making various assumptions about material properties. The
results are said to be close to the observed steady state behavior of the modeled aluminum electrolysis cell. Based on this finding, Xifeng concludes that its thermal balance calculation method is rational. In sum, Xifeng demonstrates that, in this instance, this particular finite element analysis program can be used to model the temper distribution within the molten material in the electrolysis cell. Xifeng, however, does not describe or suggest that its model could be used to predict temporary distribution within the electrodes and cathode block for this or any other design. Such an inference might seem reasonable in view of the ’399 Application’s disclosure, the Examiner has not provided any evidence or reason-based explanation as to why a person having ordinary skill in the art would have believed that Xifeng’s modeling could be expected to be generalizable to other current collector assembly designs.
So, while it is important to recognize and push back against the more typical uses of improper hindsight, be aware that improper hindsight can creep into other parts of the obvious analysis. Take care not to let the Office over-generalize the teachings of a reference just because it makes the rejection sound better.