While weakened by KSR via the elimination of the TSM (teaching, suggestion or motivation) test as the sole test for judging whether art can be combined for the purposes of an obviousness rejection, impermissible hindsight is not completely dead. Rather, impermissible hindsight is still an appropriate argument to make against obviousness rejections in some cases. For instance, it is improper for an Examiner to use knowledge only gleaned from Applicant’s application as a motivation for a combination of cited art under 35 U.S.C. § 103. Where such an improper motivation is provided in an Office Action, it may be useful to include arguments similar to the following when addressing the rejection.
Applicant respectfully submits that the combination of [CITED ART] is improper because the Office Action relies on information gleaned solely from Applicant’s specification. MPEP § 2142 states that “impermissible hindsight must be avoided and the legal conclusion must be reached on the basis of the facts gleaned from the prior art†(emphasis added). “‘Any judgement on obviousness is in a sense necessarily a reconstruction based on hindsight reasoning, but so long as it takes into account only knowledge which was within the level of ordinary skill in the art at the time the claimed invention was made and does not include knowledge gleaned only from applicant’s disclosure, such a reconstruction is proper’†(MPEP § 2145(X)(A), quoting In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971), (emphasis added).
In the present case, the Office Action relied on [REASONING] to allegedly support the combination of [CITED ART]. However, [REASONING] is absent from the cited art and is only present in Applicant’s specification on [CITATION]. In the cited section of the specification, it is discussed that [LANGUAGE SUPPORTING REASONING]. Due to the lack of [REASONING] in the cited art and the fact that [REASONING] is only present on the record in Applicant’s specification, it logically follows that [REASONING] has been improperly gleaned from Applicant’s own specification and that the combination of [CITED ART] is an exercise of impermissible hindsight. Accordingly, it is respectfully submitted that the combination is improper and respectfully requested that the rejection be withdrawn.
It is important to note that the reasoning for a combination of art in an obviousness rejection no longer needs to come directly from the art itself. As the Supreme Court noted in KSR, “[r]igid preventative rules that deny factfinders recourse to common sense, however, are neither necessary under our case law nor consistent with it†(KSR Intl. Co. v. Teleflex, Inc., 550 U.S. 398, 421 (2007)). The fact that a motivation is not present in the cited art alone does not necessarily mean that the Examiner has improperly gleaned the motivation from Applicant’s own specification. Motivations for combinations may be gleaned implicitly from the cited art or from “common senseâ€.