Hindsight is what Examiners are not supposed to use in combining and modifying references in order to reject an application. But hindsight is human nature. And the whole procedure of patent examination is built around a system where the examiner knows the invention ahead of time (in order to guide the search). Although hindsight can be inferred by a lack of proper motivation for making a combination, for example, most of the time there is little explicit evidence in the record of hindsight reasoning.
At times, though, the Office lets down its guard and makes clear that hindsight is improperly being used. One specific example is where the applicant discloses what they think is potentially relevant prior art (as they must do as part of the duty of disclosure), which happens to be from a field far from the application. If an examiner attempts to use this recognition explicitly as a basis for the rejection, then that crosses over the line as to impermissible hindsight. In such a case, the applicant can rely on the MPEP and case law, which sets forth a nice tutorial to help get the examination back on the right track.
Here is a specific example, with some of the details changed to make it a little more generc:
Examiner: The primary reference shows most of the claim elements but is missing the features that specifically tie the approach to the field of the applicant. Specifically, the primary reference is not specific to the particular application in the inventor’s industry as recited by the independent claims. Nevertheless, such an application would be obvious because applicant has admitted such an approach was the most relevant art and would be considered by those skilled in the art of the application because the reference is listed on an IDS and/or discussed in the background.
Applicant’s response: As an initial matter, it is improper to use Applicant’s teaching in the specification, or their recognition of potentially relevant prior art as disclosed in an IDS (which is Applicant’s duty to disclose) as a basis for considering art outside Applicant’s field. Whether or not such references are identified by Applicant as potentially relevant, that determination is made with the benefit of hindsight and knowledge of the invention. It is wholly inappropriate to use hindsight gleaned from Applicant’s disclosure, even if that is merely the identification of approaches from outside the technical field of the invention. The Federal Circuit has discussed the “poster child” for hindsight reasoning in Otsuka Pharmaceutical Co., Ltd. v. Sandoz, Inc., 678 F.3d 1280 (Fed. Cir. 2012), where the court made clear that the “inventor’s own path itself never leads to a conclusion of obviousness; that is hindsight. What matters is the path that the person of ordinary skill in the art would have followed, as evidenced by the pertinent prior art.”
Thus, Applicant respectively disagrees with the basis of the rejection noted above as the Office has not properly established its approach with evidence of record, nor has the Office established that the claimed approach would be rendered obvious by the cited reference in the applicant’s claimed field.
So, do not let the Office use the applicant’s teachings against the applicant.