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Hindsight is not 20/20 January 16, 2013

Posted by Brian Schar in Patent prosecution, USPTO.

The recently-decided PTAB appeal Ex parte Windsheimer is not precedential.  However, at page 3 of the opinion, there is an excellent one-sentence summary of the state of the law as to hindsight and obviousness:

“The fact finder must be aware ‘of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning.’  KSR, 550 U.S. at 421 (citing Graham v. John Deere Co., 383 U.S. 1, 36 (warning against a “temptation to read into the prior art the teachings of the invention in issue”)).”

I am inclined to cut and paste this very sentence into virtually every appeal brief I write, as I couldn’t have said it better myself.



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