BPAI Reverses Patent Examiner For Hindsight Reconstruction

Written by Mark Terry

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”.


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