October 10, 2022—
[Ed. Note: Beusse Sanks Patent Agent/Attorney Lisa D. Velez explains the importance of responding to arguments that a USPTO Examiner might make but fail to fully support. The lazy patent agent might simply point out that the Examiner did not provide support for their argument. However, the diligent and solution-focused patent agent, like those at Beusse Sanks, will not only point out the missing Examiner argument but will then also explain why the argument was wrong.]
A decision in Ex parte STEPHAN SCHRECKENBER on March 2, 2022 by the Patent Trial and Appeal Board (PTAB) reinforces the crucial practice of responding to every unsubstantiated argument of a rejection. The PTAB decision reversed the Examiner for “implicating means-plus-function interpretation”[1] under §112(f), for lack of written description under §112(a) based on a negative limitation of “without a further support,”[2] and as being indefinite under §112(b).[3] The PTAB decision also reverses the Examiner’s §103 rejections.
Of particular note, footnote number 2 in the PTAB decision references the fact that “Appellant takes issue with the Examiner’s use of Schreckenberg for the first time in the Answer and asserts that this should have been submitted as a new ground of rejection.” However, “the proper course of action to challenge whether the Examiner improperly introduced a new ground of rejection is by petition and not by appeal.”
112(f)
Some of the claims on appeal include the term “fluid-conveying element” interpreted as a “means-plus-function.” The Appellant rebutted the Examiner’s claim interpretation under §112(f) and provided an explanation.[4] The Appellant argued that pursuant to MPEP §2181.I.A, the interpretation under §112(f) “will not apply if persons of ordinary skill in the art reading the specification understand the term to be the name for the structure that performs the function, even when the term covers a broad class of structures or identifies the structures by their function … The term is not required to denote a specific structure or a precise physical structure to avoid the application of 35 U.S.C. 112(0 or pre-AIA 35 U.S.C. 112, paragraph 6.” The Appellant further elaborates that the term “fluid-conveying element” refers to an “impeller or rotor.”
In the Examiner’s Answer, however, the Examiner reiterated in the Examiner’s claim interpretation under §112(f) without addressing the Appellant’s arguments, as pointed out by the PTAB.[5] The PTAB agreed with Appellant’s explanation and did not sustain the Examiner’s interpretation.[6]
112(a)/(b)
The Examiner also rejected the claims §112(a) for lack of written description for a negative limitation “without further support” and cites MPEP 2173.05(i). In the Reply Brief, Appellant Claims were also rejected under §112(b) and of particular note, the Examiner’s Answer reinterpreted “effected exclusively” and stated “[F]or purposes of examination ‘exclusively’ will be assumed the majority.” Additionally, in the Examiner’s Answer under §112(b) the language “without further support” was assumed to be “[F]or purposes of examination a single support.” The PTAB, on the other hand, found that the specification, as also pointed out by the Appellant in the Appeal Brief, instead recited “effected exclusively via the mounting structure,” which the PTAB “explicitly means that no other device or apparatus performs the ‘exclusive’ function.”[7] The rejections under §112(a) and §112(b) were reversed.
103
The Examiner’s rejection under §103 relied on Weigold for at least a “tangential outlet.” The Appellant argued in the Appeal Brief that “Weigold does not anywhere specifically teach or suggest the required tangential outlet via motor housing 30. Nowhere does Weigold use the word ‘tangential’, or any variant thereof, together with ‘outlet’. A POSITA [Ed.: Person of Ordinary Skill In The Art] would also recognize that a pump as described by Weigold could, for example, have a radial outlet.”
With respect to the term “tangential outlet,” the PTAB noted that “the Examiner’s rejection, though not specifically stating so, appears to rely on inherency.” The PTAB found that the Appellant’s assertions related to the tangential outlet of Weigold were “unrebutted” and they were “left with a situation where a preponderance of evidence does not support that Weigold necessarily teach a tangential outlet (as would be needed to support inherence), because it may alternatively include an axial outlet.”[8] For at least these reasons the PTAB reversed the rejections under §103.
Responding to unsubstantiated arguments of the rejections to clarify the record can be time consuming for a practitioner but necessary. This can be beneficial especially when the Examiner fails to rebut the Appellant’s arguments, as the PTAB is left with one side of the argument to consider. While Ex parte STEPHAN SCHRECKENBER provides examples of the Examiner not rebutting an Appellant’s arguments, other decisions show that practitioners sometimes do not rebut an argument for the PTAB to consider in contrast to the Examiner’s arguments. This is a wasted opportunity that could cost the inventor their patent.
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[1] Ex parte STEPHAN SCHRECKENBER, pg. 3, last paragraph.
[2] Ex parte STEPHAN SCHRECKENBER, pg. 4, ln. 14-16.
[3] Ex parte STEPHAN SCHRECKENBER, pg. 4, ln. 26 through pg. 5, ln. 2.
[4] Ex parte STEPHAN SCHRECKENBER, pg. 4, ln. 1-5.
[5] Ex parte STEPHAN SCHRECKENBER, pg. 4, ln. 5-7.
[6] Ex parte STEPHAN SCHRECKENBER, pg. 4, ln. 7-13.
[7] Ex parte STEPHAN SCHRECKENBER, pg. 4, ln. 19-21.
[8] Ex parte STEPHAN SCHRECKENBER, pg. 6, ln.12-15.
