Today we have more food and beverage IP! The application (13/957,838) relates to Conair’s concept for an electric grill with a wireless thermometer having an integrated recharging port. The invention combines several cool features - a wireless thermometer for making sure your ribs are cooked just right, and a built-in recharging port so you always have the thermometer at hand and fully charged. The figures below from Conair’s application show an example embodiment, with 40 being the wireless temperature sensing probe and the lower housing 12 having the recharging dock. Further, the system can provide automatic control, where the system automatically adjusts the heating surfaces individually based on feedback from the wireless temperature sensing probe.

Claim 1 is representative of the subject matter on appeal:

A temperature sensing system for a double contact cooking appliance, said temperature sensing system comprising:
an upper housing having a first heating surface configured to contact a first side of a food item;
a lower housing pivotally connected to said upper housing and having a second heating surface configured to contact a second, opposed side of said food item;
a control unit having a receiver, said control unit and said receiver being housed within said cooking appliance; and
a wireless temperature sensing probe having a housing containing a wireless transmitter module and a rechargeable battery for powering said wireless temperature sensing probe, and a shaft extending from said housing and terminating in a pointed distal tip containing a temperature sensor, said wireless temperature sensing probe being configured to wirelessly communicate with said control unit;
wherein said lower housing includes a recharging dock configured to receive said wireless temperature sensing probe for recharging of said rechargeable battery; and
wherein said control unit is configured to control operation of at least said first and said second heating surfaces individually in dependence upon said at least one input parameter and an internal temperature of said food item detected by said wireless temperature sensing probe.

The examiner assigned to this case was unable to find much relevant art, but nevertheless seemed to believe that there was nothing inventive. Specifically, the examiner relied on a combination of four references. The primary reference showed a basic grill, but admittedly did not disclose the control system, rechargable battery, the claimed shaft of the temperature probe, the pointed end of the probe, or the recharging dock in the lower housing. Even after combining three more references, the examiner still did not have all of the elements of claim 1, and so filled in the gaps with “obvious to try” rationale. In fact, the examiner used exactly the approach we outlined in a previous post (HERE) as to a limited number of options. Conair tried 4 RCEs but likely they could have tried a hundred and it would not have made a difference, and so they eventually appealed.

The examiner’s rejection was based on the argument that the missing limitation of the recharging dock being in the lower housing was obvious to try, since there were only two options: the lower housing or the upper housing. As we discussed previously (see link above), this is a classic hindsight reconstruction to create only two options (the claimed option and not the claimed option). It is hindsight reconstruction since the claimed feature (and not the teachings of the prior art) is used to define the world into the limited number of options (here, just two).

The PTAB summarized the issue as follows:

The Examiner further concludes that it would have been obvious to try incorporating the recharge dock into McHutchison’s lower housing because there are only two places to place the dock (i.e., upper or lower housing) (Final Act. 3).

Conair argued that this was improper because there are not merely two places to put the recharging dock. Rather, there are only two options after recognizing the dock should be part of one of the grill housings (upper/lower). In other words, the Examiner’s rejection was based on impermissible hindsight because there is no suggestion in the prior art to place a docking station to recharge batteries on a housing of double contact grill. Conair pointed out that the dock could be on the handle, as just one example.

It is important to understand that the examiner’s hindsight reconstruction approach can be used to reject any missing claim element with hardly any effort. For example, if the missing limitation was that the probe was colored red, the rejection would go something like this:

The prior art fails to show a red probe. However, there are only two options - either the probe is red, or not red. As such, it would be obvious for a person skilled in the art to make the probe red as all that is needed is a selection from a limited number of options.

This easy formula for rejecting claims, even when elements are missing from the prior art, takes no thinking and does not even waste time with extra searching. And while it is a good way to meet quota for an examiner, if the applicant challenges the rejection on appeal it is unlikely to stand up. Here, the PTAB agreed with Conair that the rejection was clearly improper:

The Examiner provides no evidence to substantiate the determination that a person of ordinary skill in the art would have placed a recharging dock station in a lower casing of a double contact grill and protected the dock station from high temperatures. In light of these findings, we find that the Examiner improperly relies on impermissible hindsight in determining it would have been obvious to place a docking station in the lower housing…

So, be wary of an examiner’s rejection of missing claim limitations where impermissible hindsight best explains how the available options were narrowed down to a simple choice between the claimed feature and everything else. Point out that there is at least one other option available!