Unnecessary Appeal

As noted in previous posts (here, here, here, here, and here), some technology centers have a higher reversal rate than others. We have been reviewing numerous decisions from TC3700 and today look at another example (13/591,764) from art unit 3747 (a Bosch application related to diagnostic systems).

Like many other reviewed decisions, this case raises the question of whether there is any quality review at all of improper rejections at the USPTO. Easy cases where it is all but a foregone conclusion that the rejections will be reversed should not be the norm and are a colossal waste of resources on both sides. The supervisors in this case appear to have no concern about forcing an applicant to go through years of delay and increased costs fighting improper rejections. Nor do they seem to be concerned with wasting USPTO resources or a reversal from the Board.

Looking to the specifics of this case, claim 1 recites:


Claim 1 was rejected under 112 (first and second paragraphs) because the claim term "exhaust gas recirculation apportioning ratio" was allegedly unclear. No matter that the term was explicitly defined in the specification. That did not stop the examiner and supervisors from maintaining the rejection on what turns out to be technically silly reasoning. Specifically, according to the examiners, the claim term was unclear because there were multiple interpretations as follows:


The problem with this line of thinking is that the definition in the specification confirmed the first option was indeed the only option. Specifically, the specification defined the ratio "such that given an AGR apportioning ratio of 0%, only a high-pressure exhaust gas recirculation line is used, and given an AGR apportioning ratio of 100%, only a low-pressure exhaust gas recirculation line is used." Thus, the alleged "Ratio 2" could not be right. As to the third possible ratio ("Ratio 3"), the applicant pointed out that this ratio is always 1, so it obviously is nonsensical.

The result: all rejections under 112 first and second paragraphs were reversed. Of course they were.

But the examiner and supervisors were not done there. The 103 rejection combined three references and required a still further modification. The Office reasoned that once you combined the references, a "more-complicated" method would be needed, and therefore the undisclosed claimed actions that were not shown were "obvious." I guess because when one combines references to make things more complicated, it is obvious to do every more complicated action until one reaches the claims. Remember - two senior supervisory patent examiners sent this to the Board. 

The Board made short order of this rejection, noting that:


These are not complicated legal issues. This is black letter law. Why an appeal is needed escapes all reason.

So, when you face 112 rejections based on alleged multiple possible interpretations, remember that the possibilities must be reasonable possibilities from a technical point of view. If they conflict with an explicit definition in the specification, or lead to non-sensical results, the PTAB is receptive to such arguments.