As we have discussed in the past, there are many interrelated issues bound up on an obviousness determination. During patent prosecution, the examiner bears the initial burden of establishing the case of obviousness and it is the patent prosecutor’s job to knock down that case. Depending on the facts of any given case, the patent prosecutor must determine the best way to attack obviousness and convince the examiner to change their mind (or the PTAB to overrule the examiner). In a recent post, we discussed the balancing act of obviousness as one example approach. Today we discuss obviousness rejections based too heavily on speculation.

There is a fine line between improper speculation and proper technical reasoning (with rational underpinnings). The patent prosecutor needs to be able to understand where that line is drawn, particularly by the PTAB. In a recent case 15/835,285, we see a classic example of improper speculation by the examiner.

The invention relates to swim paddles (I only know what these are from having seen them used by my kids’ swim teams). Specifically, the invention addresses the problem of being able to keep ones hands properly positioned on the paddle while actively swimming. How? with shadows formed on the bottom of the pool showing the user’s handle and an outline formed by the paddle so that the swimmer can see how the hand is positioned. Specifically, the way in which this is achieved is by changing the opacity of the paddle in a particular way. The figure below is from the patent application and illustrates the concept.

Claim 1 on appeal is reproduced below:

1. A swim paddle system comprising:
a paddle that is substantially planar and rigid having a first side for receiving a hand of a swimmer and a second side opposing the first side with a plurality of through holes extending through the paddle from the first side to the second side, the first side having a palm region for receiving a palm of the hand and a peripheral region for receiving a thumb, an index finger, a middle finger, a ring finger, a little finger, and a wrist of the hand, the peripheral region being a region with an edge that defines the outermost extent of the paddle;
wherein at least a portion of the paddle is transparent to allow at least a portion of the hand to cast a shadow as light shines through the paddle; and
wherein at least a portion of the edge of the peripheral region has greater opacity than the at least a portion of the paddle that is transparent, the at least a portion of the edge of
the peripheral region being provided along the edge such that the shadow of the hand is framed by a shadow outline of the paddle as the light shines through the paddle.

The cited art (Rives) showed the swim paddle, but said nothing about different opacities. Rather, the examiner was convinced that the recited greater opacity and the particular location thereof were merely an obvious matter of preference to suit aesthetics. The examiner stated that any shadow of a user’s hand and a portion of a paddle edge that would be cast would be dependent on the particular color or combination of colors or any pattern of such colors or combination of such colors which would intrinsically affect transparency, translucency, and/or opacity for any portion or edge portion of such paddle, as well as the amount of light shining through the paddle. In other words, the Examiner concluded that the contrasting shadow feature of the claimed invention would have been obvious because people would put logos or colors on the paddle, and those things would inherently provide different opacities would would in turn create the claimed shadow.

One can see the attraction of this approach. It is probably obvious to add logos or coloring to paddles, and it is conceivable that at some point, such a logo might outline the user’s hand in a shadow. The problem, though, is that such reasoning is too speculative. There was simply no reason to think that an arbitrarily placed supplier logo, even one touching the edge of the paddle, would cast a shadow outline as in the claim. What was critical for the PTAB in this case was that the claim required the opacity to be such that the shadow of the hand is framed by a shadow outline of the paddle as the light shines through the paddle. This particular arrangement solved the problem facing the inventors and was not even recognized by the cited art.

The PTAB explained as follows (internal citations omitted):

We are not persuaded by the Examiner’s explanation and agree with the Appellant that the rejection is improperly based on a conclusory assertion that “a person would, on the basis of their personal preferences or selections,” arrive at the swim paddle as claimed. As the Appellant points out, “the Examiner provides no articulated rationale for why the particular arrangement of differing opacity and resulting shadows recited in the claims would have been obvious” based on the broad and general teachings in Rives. Although it may have been obvious in view of Rives for a person of ordinary skill to provide a transparent paddle with a team or supplier logos, and that a portion of the logo may wind up being adjacent, or contacting an edge of the paddle based on the Examiner’s asserted preference to suit aesthetics, it does not follow, and is highly speculative to conclude, that the shadow of such a logo would frame the shadow of the hand as required by the claims. As the Specification teaches and the Appellant argues, the claimed invention allows the swimmer to gauge positioning of his/her hand by the cast shadow. It is entirely speculative that such a result would be attained based on the general disclosure of Rives, and the reasoning set forth by the Examiner is insufficient to demonstrate obviousness.

So, do not let an overly-speculative rejection deter you. Make sure to point out when an examiner’s rejection relies too heavily on speculation that is not supported by the cited art.