As discussed in previous posts, examiners sometimes set up rejections where a missing element can be classified as being one of a limited number of options. From there, the examiner uses design choice to complete the rejection.
In such a situation, the prior art (or prior art combination) shows all claimed elements except for one last feature. That last missing feature is then characterized as, for example, a binary option – as being either what is claimed, or not what is claimed. In other words, knowledge of the invention is used to divide the world of options into two choices, the claimed option and everything else. However, the rejection is usually not so blatant with its reasoning, and so it is important for patent practitioners to be able to recognize this situation.
This post reviews two recent PTAB examples where this exact situation occurs, one is affirmed and the other reversed. Both relate to a missing element of timing, where an express feature of the claim is that one claimed feature occurs before, or after, another. In each case the prior art does not disclose any timing aspect. Each examiner uses the invention to divide the world of options – either the claimed feature happens before, or after, the other claimed feature. Therefore, there are only a limited number of options (two), and thus it would be design choice, or obvious to try, each of the two options.
While using knowledge of the claimed timing feature to divide the world into that specific dichotomy (and those particular claimed features that are subject to the relative timing requirement) might be colloquially called hindsight, remember that the USPTO has a very narrow definition of hindsight (see previous posts here). The applicant in one case below falls into this trap. There may be attacks on rejections that divide the world of options without supporting evidence, but only when properly presented.
The first case is Appeal 2023-003333, Application 16/671,276. The invention relates to a method of forming a paving system. Claim 1:
1. A method of forming a permeable paving system comprising:
installing a plurality of preformed paving blocks to form a paving surface, wherein each of the preformed paving blocks includes:
an upper surface;
a lower surface generally parallel to and spaced apart from the upper surface; and
a pair of parallel ducts extending horizontally through the block between the upper surface and the lower surface;
after forming the paving surface, inserting a transmission device through at least one of the parallel ducts of each paving block of the plurality of preformed paving blocks;
using a controlling device to control the transmission device such that the temperature of the plurality of preformed paving blocks is automatically maintained at a predetermined range, wherein the controlling device selectively adjusts one of electrical current through the transmission device or circulation of a fluid through the transmission device.
Here, the claimed inserting was required to occur “after” forming the paving surface. The examiner admitted that this timing element was missing from the prior art combination. According to the examiner, a skilled artisan would consider how to insert the tubing as being either one of two options:
1) thread the pavers onto the tubing one at a time, or
2) lay all the pavers down in place and then insert the tubing.
According to the Examiner, it would have been obvious to a person of ordinary skill “to modify the resulting combination to insert a transmission device through at least one of the parallel ducts of each paving block of the plurality of preformed paving blocks after forming the paving surface since one would be choosing from a finite number of predictable solutions.
The Applicant attempted to argue that this was impermissible hindsight, but the PTAB disagreed (internal case citations omitted).
We are not persuaded by Appellant’s arguments that the conclusion of obviousness is based on impermissible hindsight reconstruction. Rather, the Examiner’s modification is a matter of design choice. See Ans. 6 (“choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success can support a conclusion of obviousness.”). It is well established that design choice is applicable when alternative elements or configurations in the prior art perform the same function as the claimed structures with no unexpected results. In this case, the only difference between the combination [of prior art] and the claimed invention is whether the claimed transmission device (tubing) is inserted into each paver block before or after the paving surface is formed. The Examiner is correct that Appellant has not persuasively argued the criticality of inserting the claimed transmission device (tubing) into each paver block after the paving surface is formed, rather than before the paving surface is formed. Thus, selecting to insert the claimed transmission device (tubing) into each paver block after the paving surface is formed, rather than before the paving surface is formed, is simply choosing one of a plurality of a finite number of identified predictable solutions and is not the product of innovation, but rather, is something that occurs in the ordinary course of using [a] known device...
Contrast the above analysis with an invention from Raytheon - Appeal 2023-003210 Application 16/746,246. Claim 1 relates to a method of drilling holes, and explicitly claimed the order relative to the positioning of the holes:
1. A method for drilling a plurality of holes in a hollow component, the method comprising: injecting a fluid into an internal cavity of the hollow component to achieve a pressure of the fluid within the internal cavity that is greater than an ambient pressure; drilling the plurality of holes through the hollow component from an external surface of the hollow component to the internal cavity by applying a laser beam to the hollow component with a laser generator, drilling the plurality of holes through the hollow component including sequentially drilling each hole of the plurality of holes progressively from a first position of the hollow component to a second position of the hollow component, the second position higher than the first position; and directing the fluid from the internal cavity and through the at least one hole so as to exit the hollow component via the at least one hole.
Here, again, the prior art showed the claimed elements but for the timing of the drilling of the holes. The examiner expressly admitted this fact, yet found the feature obvious because there were only two options for the timing of drilling the holes, and thus they could be drilled as claimed “to comply with user requirements.” The appellant responded by explaining the problems addressed by the invention and the technical benefit obtained through the claimed order of drilling. This time, the PTAB agreed:
… Appellant is also correct that “Forsman is silent as to any particular order in which the holes 221[3], 2212 are drilled.” The mere fact that Forsman depicts two holes and that one hole would have been drilled first, does not support what is explicitly claimed, namely, that the higher hole is drilled second. The Examiner states that the holes can be drilled as claimed “to comply with user requirements.” Final Act. 3. This asserted reasoning is essentially meaningless in that it would cover any sequential order. The Examiner points to no basis in the prior art for the specific order from the claims, whereas Appellant discloses that this order is necessary for a specific purpose, namely, to prevent cooling liquid from interfering with the drilling of a lower hole if the upper hole were drilled first.
Reconciling these decisions might seem difficult at first – both relate to an unclaimed timing feature that can allegedly be broken down into only two limited options. Yet one difference is that in the later example, the applicant pointed out the technical benefits of the claimed order that were disclosed in the specification and not recognized by the cited art.
Another more subtle difference is that in the second case, the PTAB alludes to the idea that just because one hole is drilled before the other, that does not necessarily recognize the issue that a particular hole is drilled first because of its positioning (being higher). This illustrates the hindsight used by the examiner – one must first recognize that the timing of drilling should be tied to the relative positioning of the holes with respect to each other (being higher) as opposed to thousands of other aspects that might dictate the order, such as size of the holes, depth of the holes, positions of the holes relative to other structure, and so on. That is why the applicant’s arguments about recognizing the issue related to cooling liquid interference carries substantial weight.
So, be on the lookout for the examiner dividing the world into a limited number of choices using the invention as a guide, and push back with technical problems and solutions to illustrate criticality, especially when supported by the specification.