BPAI Reverses Patent Examiner For Hindsight Reconstruction

MARK TERRY, ESQ.

The Board of Patent Appeals and Interferences reversed an examiner’s rejection in Ex parte Kobayashi after finding that the cited references had not been adequately connected.

The application concerned recording a video-game player’s progress and demographic information so targeted advertisements could be delivered when the player returned to a previously saved online session.

The examiner relied on one reference involving locally saved game progress and another involving interactive television participation and printed coupons. Neither reference disclosed the claimed targeted-advertising arrangement.

The rejection treated the applicant’s invention as obvious only after using the application itself as a roadmap for combining otherwise dissimilar teachings. That is the problem commonly described as hindsight reconstruction.

An obviousness rejection requires more than identifying separate pieces of a claim in different references. The examiner must articulate a supported reason why a person of ordinary skill would have combined those teachings in the claimed manner.

The decision is a useful reminder that applicants should challenge unsupported combinations directly, explain the differences in purpose and operation between references, and identify where the examiner’s reasoning relies on knowledge gained only from the invention.