Handwaving Does Not Work For Anticipation

The law is quite clear in sections 102 and 103 that anticipation is distinct from obviousness. Yet some examiners tend to blur these issues together and do a lot of hand-waving. One common tactic is to "redefine" the prior art. For example, while the prior art might show component A coupled to component B, the Office will often draw a box around both components and allege that together they constitute either or both of components A and B.

A classic example is illustrated in SN 14/270,699 related to an internal combustion engine design by Champion Engine. The case has many examples of examiner over-reach and unreasonable interpretations, but the first issue discussed by the Board in reversing the Examiner is illustrative.

The invention relates to 

1. A cylinder head for an internal combustion engine, the cylinder head comprising:
a first end comprising a recessed rocker arm cavity, the recessed rocker arm cavity having a lower surface with a pair of push rod tube bores therethrough;
a second end opposite the first end and defining an upper end of a combustion chamber, the second end having a pair of push rod tubes positioned in the push rod tube bores between the recessed rocker arm cavity and the second end of the cylinder head; and
an intake port and an exhaust port each extending through the cylinder head to the combustion chamber.

The examiner relied on anticipation. But of course there were problems that the Examiner simply refused to accept. Instead, the Examiner maintained improper rejections. This forced the applicant to go through the appeal process to have the rejections reversed when the Examiner should have simply withdrawn them. Unfortunately, with some examiners, this situation is all too common.

One glaring problem with the rejection was that the cited reference (Hoffman) only disclosed a rocker box 50 shown in the cylinder head assembly 12 of FIG. 3. Champion pointed out that whether or not Hoffman's rocker box 50 may house rocker components, it was clear that the  rocker box was distinct from the cylinder head 48. However, since the Examiner was bent on rejecting the claims no matter the cited art, the Examiner used a classic hand-waving technique where he simply re-defined the two separate pieces as together being one of the pieces. From the Answer, the Examiner asserts that "... the prior art teaches two pieces that are to be combined together, together they form the cylinder head." While this is convenient for the rejection, it is clearly wrong and the PTAB confirms:

The Examiner's statements are not responsive to the rejection or the argument raised by Appellants. The rejection is based on anticipation.  Accordingly, the alleged obviousness of the integration of components is inapposite. 
Moreover, the Examiner does not explain why one skilled in the art would consider Hoffman's separate cylinder head and rocker box to be a cylinder head in accordance with the ordinary and customary meaning of that claim language. As Appellants correctly note in the Reply Brief, "the cylinder head assembly 12 of Hoffman is not equivalent to the cylinder head as called for in the claims." Reply Br. 4 (original emphasis omitted, new emphasis added). Thus, the Examiner's finding that Hoffman's cylinder assembly 12 corresponds to the claimed cylinder head is not supported by Hoffman which identifies its cylinder head as element 48. 3 See, e.g., Hoffman 3:36-38.

What I especially love about the prosecution of this case is that the applicant must have known that the Examiner and SPE have a history of being unreasonable and so did not waste time or money with an RCE. Further, the applicant even showed that they made a reasonable attempt by offering an AFCP amendment that would have further narrowed the claims. But the Examiner and SPE (expectedly) rebuffed the offered narrowing amendment forcing the applicant to appeal. Now the applicant has broader claims than they would have accepted (and deservedly so given the shenanigans that they had to deal with).

So, do not let unreasonable and stubborn examiners deter you, and do not let them "redefine" black to be white or vice versa.

Facts are stubborn things; and whatever may be our wishes, our inclinations, or the dictates of our passions, they cannot alter the state of facts and evidence. - John Adams