Imagine an inventor tells you their novel nozzle communicates through a wired connection instead of a wireless one. The knee-jerk reaction in the hallway and at the examiner’s desk might be: “that’s just an obvious design choice — swap wireless for wired and you’re done.” But Appeal 2024-000873 shows why that reaction can be vapid and shallow. The case involves a fire-fighting nozzle communication system with claimed features such as a communicator that transmits through a wired connection, a rotating nozzle-hose coupler that electrically couples the hose to the communicator, and a wired communication bus running in the hose.

The Examiner relied on Cochran (a wireless nozzle system) and two other references to support an obviousness rejection. The Board disagreed: Cochran is wireless and does not teach a wired communicator or the claimed rotating electrical coupling; One secondary reference had a slip-ring tied to rotating X-ray anode assemblies and not to fire-fighting hoses; and the Examiner offered no adequate explanation or evidentiary showing that a person of ordinary skill would be motivated to and have a reasonable expectation of success in making the proposed wired modification in the harsh, wet, hot, debris-filled firefighting environment.

From the Board’s decision:

“As an initial matter, Cochran is the only reference relied upon by the Examiner pertaining to a fire-fighting nozzle communication system environment, and its environment is wireless. As such, Cochran fails to teach or suggest at least that communicator 156 transmits a signal to a remote central controller through a wired connection, or that the nozzle-hose coupler comprises a rotating joint that electrically couples the hose with the communicator, as recited by claim 1, and similarly recited by claim 15. The Examiner determines that it would have been obvious to modify Cochran from a wireless to a wired connection, because “there are numerous advantages of wired connections over wireless connections. Some of them being to eliminate interferences, prevent signal degradation and to increase reliability.” Yet, the record before us shows no evidence of wired hoses, communicators, and nozzle-hose couplers in a harsh fire-fighting environment where the elements have exposure to water, heat, and debris. Also, the Examiner does not explain how a wired connection would be achieved in Cochran’s system, which relies on a connection not only to a control panel on a fire truck, but also a radio communication device worn by a firefighter.”

Why this matters:
• Environment and purpose matter. The Board emphasizes that an art’s environment (firefighting hose vs. X-ray tube) and purpose (robust, wet, hot, debris-ridden use vs. internal X-ray tube current collection) are not incidental. A mechanical or electrical feature that works in one environment may be impractical or require an extensive redesign in another.
• Motivation to combine must be supported. Saying “wired is more reliable” is not enough; the Examiner needs a convincing technical link (and, ideally, evidence) showing why the skilled person would move from Cochran’s wireless system to a wired solution in this field.
• Reasonable expectation of success is factual. The Board flagged the lack of evidence that a slip-ring style coupling would function or survive in a fire-hose application without significant redesign. That gap undercut the Examiner’s assertion of obviousness.

Some take-away practice tips for prosecutors:

1. Don’t accept surface-level analogies. When the examiner cites an element from a different field, force the record to address differences in structure, environment, and purpose — and show why those differences matter to operability and expectation of success.

2. Make the environment part of the record. If your invention is for a harsh environment, put supportive facts on the record: materials limits, exposure concerns (water/heat/debris), testing data, vendor catalogs showing absence/presence of similar solutions, or expert declarations. The Board looked for evidence that wired hoses and rotary electrical couplings actually existed for firefighting use.

3. Attack motivation and expectation together. In some cases, it may not be enough to argue lack of motivation; where motivation exists on paper, counter the expectation of success (design changes required, incompatibilities, safety issues).

4. Use claim drafting to highlight nonobvious realities. If the environment or a specific interconnection (e.g., a wired communication bus in the hose) is central to the invention’s value, draft claims and dependent claims that make those features explicit.

Bottom line
An obviousness analysis is not determined by your initial gut reaction and an examiner cannot simply replace “wireless” with “wired” and tick the box. Look past the gloss of a superficial substitution, consider the real technical and environmental hurdles, and evaluate the issues without the hindsight benefit of knowing the invention. When you dig into the problem the inventor actually solved, hindsight’s “obviousness” can evaporate.