Addressing the Examiner’s Rejection on Appeal

It seems obvious - when an applicant appeals an examiner’s rejection to the PTAB, the applicant must address the rejection and explain why it is in error. The problem is that many appeals are lost because the applicant is stuck on certain points as to why the rejection is wrong and does not properly frame the issues and address the examiner’s reasoning. In other words, many appeals before the PTAB are affirmed because the applicant’s brief does not properly address the examiner’s specific reasoning for modifying and combining references.

An example of this situation is in S/N 13/446,102 to Mattel, presumably for a Hot Wheels track set invention. The invention relates to a particular booster structure for engaging with the toy vehicles as illustrated in the figure below from the application.


Here, the examiner used a combination of references in which one of the structures (in Ribas) was for a stop, not a booster. The applicant was so stuck on this point (which indeed is a valid issue!) that they did not present arguments specifically attacking the examiner’s logic. The examiner knows that the prior art stop is not a booster (and that its goal is the opposite), and so the examiner generalized the prior art feature and then used it in the combination. As explained in the PTAB’s decision (internal citations deleted for ease in reading):

… Appellants do not address the rejection as articulated. Although Appellants are correct that, in Ribas, turnstile 6 "does not propel a vehicle" but rather prevents movement of self-powered vehicles , the Examiner does not propose modifying booster 16 in Chang with the functionality of turnstile 6 in Ribas. As noted by the Examiner, Ribas is relied on, for example, "to teach that providing multiple arms in a toy track mechanism to provide incremented actuation of features is known." Based on these teachings of Ribas, we understand the Examiner to propose, for example, (1) modifying booster 16 of Chang to include a "plurality" of the identified "booster arms"- paddle 70 in Chang, and (2) modifying the body of Chang for partial (i.e., incremental) rotations rather than the disclosed 360° rotations. Appellants also argue that "[i]f anything, the stop mechanism teaches a feature that is distinct, if not opposite, from a booster member" and that "it is clear that Chang and Ribas are directed towards two different, if not opposite, concepts."

We are not apprised of error based on this argument because Appellants have not shown that the differences between the references undermine the findings or reasoning relied on to support the conclusion of obviousness, when considering the modified device as proposed by the Examiner.

Second, Appellants argue that "the cited references cannot be properly combined under 35 U.S.C. § 103(a) because modifying Chang in view of Ribas would destroy the intended purpose or chang[ e] the principle operation of Chang." Appellants argue that "removing the paddle 70 [of Chang] that engages and accelerates toy vehicles through the booster and replacing it with the turnstile 5 [of Ribas] that prevents or retards vehicle movement would clearly render Chang inoperable for its intended purpose of boosting vehicles." Appellants also argue that because the turnstile 5 of Ribas is only actuated when a toy vehicle drives by the pawl 7 on track 1 (disposed adjacent to the turnstile 5), if the turnstile 5 of Ribas was substituted for the paddle 70 of Chang, the alleged booster arms (i.e. the stop arms 20 of the Ribas turnstile 5) would not be actuatable by a car entering the booster, as is intended by Chang and required by independent claims 1, 10, and 15. According to Appellants, "another car would be required to engage the pawl 7 of the turnstile 5 in order to unlock it and allow a toy vehicle to rotate the turnstile 5, further rendering Chang inoperable for its intended purpose of accelerating a vehicle that enters the booster."

With these arguments, Appellants do not address the rejection as articulated. The Examiner does not propose removing paddle 70 in Chang and replacing that structure with turnstile 6 of Ribas, and, as discussed above, also does not propose modifying booster 16 in Chang with the functionality of turnstile 6 in Ribas. Instead, we understand the Examiner to propose the modifications discussed above. Moreover, the Examiner does not rely on pawl 7 from Ribas to actuate the "booster mechanism" in the context of the modified device. Addressing the relevant language in claim 1, the Examiner cited Figures 3A through 3C as well as paragraph 33 of Chang, which discloses that "a trigger can activate the booster member when a toy vehicle travels by the trigger" and that, in the example in Figures 3A-3C, "the trigger includes a mechanical leaf switch that can detect when a toy vehicle rolls over a pressure plate 80." Final Act. 2.

Sometimes real difficulties with a combination of prior art proposed in a rejection look so clear, and the combination looks so problematic, that the applicant cannot see past these issues to the underlying points articulated by the examiner. This causes the appeal arguments to be off track from the PTAB’s perspective and can snatch defeat from the jaws of victory.

The PTAB judges are sticklers for tracking the examiner’s actual proposal, which is often more subtle that originally appears from the generally terse explanation in the rejection and a review of the references. In a similar vein, the PTAB often ignores what might otherwise seem like good arguments because those arguments “attack the references individually” (see previous post here).

When the applicant has legitimate issues with a proposed combination, (as the case here), those arguments might be better received if they are woven into an attack on the examiner’s actual reasoning, rather than presented directly in their own right. The PTAB consistently tries to follow the examiner’s logic and so arguments are often better presented when they also are presented in a way that follows the examiner’s logic and illustrate why that logic must fail. Granted - sometimes this is difficult. In such difficult cases, it might be better to consider further amendments rather than an appeal.