We are board-certified intellectual property attorneys, inventors, and engineers that help small-size inventors, entrepreneurs, and businesses register and protect patents, copyrights, and trademarks so you can profit from them faster.
Once again the Board of Patent Appeals and Interferences (BPAI) reversed a rejection by an overzealous patent examiner who failed to adequately connect the proverbial dots between prior patents in an attempt to disqualify a patent application for approval (Ex parte Kobayashi). As a Miami-based Patent Lawyer I constantly keep abreast of new holdings handed down by the BPAI in order to deliver up-to-the-minute defenses for my clients’ patent applications.
The
patent applicant in this month’s Kobayashi decision
invented a system for recording the progress of video game players as they
achieved certain milestones in online (networked) video games. The inventor
describes a system of capturing the players’ demographic information for use in
supplying targeted advertisements to the gamers when they return to playing a
saved online game already in progress from a previous session. For instance, a
gamer might achieve level five of a certain game, and then decide to pause and
save the session information online. The invention would supply targeted
advertisements to the gamer upon his or her return to the game – possibly based
on the player’s physical location, age or sex demographics, etc.
As is often the case, the patent examiner attempted to produce evidence that this
invention had already been disclosed in prior patents. Here, the examiner
pointed to a prior patent that describes saving the progress of a game on a
local hardware storage unit (Yoshida, JP 2000-005439,
Jan 11, 2000). Next the examiner produced a second invention that allows a
user to actively participate in television game shows and rewards the user by
printing out coupons or other “rewards” on a hardware device located in the
viewer’s home – there is certainly nothing “targeted” mentioned in the description
of this invention either (Von Kohorn, US 6,443,840
B2, Sep 3, 2002). In essence, the examiner tried to argue that because one
inventor came up with a method of saving the progress of a video game on his
computer, and another inventor came up with a method of allowing a television
viewer to print out coupons or other untargeted materials at their home, this
obviously equated to the applicant’s invention described above. This is a
classic case of “hindsight reconstruction” in which the examiner attempts to
connect very dissimilar references in order to bolster the conclusion that it
would have been obvious to anyone practicing in the industry that this would be
readily discernable based on the prior patents.
Sometimes
patent examiners make ridiculous stretches of the imagination in an attempt to
discredit a new invention as having already been anticipated. Just because
algae has chlorophyll, and sea kelp has “bulbs” that look like acorns, doesn’t
mean that it’s obvious that a land-based oak tree would have evolved with both
characteristics and produced acorns. Of course in hindsight it might be, but
hindsight is always 20-20, and this is a classic case where hindsight fails to
persuade that something was “obvious”.
We are board-certified intellectual property attorneys, inventors, and engineers that help small-size inventors, entrepreneurs, and businesses register and protect patents, copyrights, and trademarks so you can profit from them faster.