Yet another obviously improper rejection from Art Unit 3747

Mazda and Mitsubishi Electric have apparently been collaborating on control strategies for internal combustion engines, the results of which have produced at least one patent application (13/290,437). The invention relate to a particular way of processing operating parameters to address both steady-state operation as well as transient operation. Those skilled in the art of engine control will recognize this age-old problem that only becomes more difficult as engine technology advances with the increased degrees of freedom due to the electrification of many engine components. 

Unfortunately for Mazda and Mitsubishi, the case was assigned to art unit 3747, which is notorious for its supervisors who are prone to maintaining improper rejections that regularly cross the border of absurdity, and repeatedly re-opening prosecution. Assuming that this perceived animosity is more simply a lack of understanding of patent law, perhaps the repeated reversals by the PTAB will provide some education on the law.

Here, Mazda and Mitsubishi were forced to appeal a rejection that was easily decided based simply on the admissions of the Office. Claim 1 on appeal is reproduced below.


The Office forced the applicants to appeal by rejecting claim 1 on the allegation that the cited art showed similar steps and thus it was obvious for the following reason:


Those who understand patent law will immediately recognize the impropriety of such a rejection. It is based on mere conjecture and envinces disrespect for the detailed and complete analysis required for a proper obviousness analysis. Yet, this reasoning was signed off by both supervisors, as shown above. The applicant even tried a pre-appeal request (which of course was summarily dismissed by the same two supervisors).

The PTAB's decision was predictable here and illustrates even they were frustrated by the poor quality of the rejections:


In order for the USPTO to claim that they are providing high quality examination, it is important to ensure not just that overly broad claims are rejected, but also that allowable claims are not improperly rejected. There are two sides to the coin and pretending to ignore one whole side only results in perpetuation of supervisors who at best fail to understand the law improperly training new examiners to do the very thing seen in this case. One hopes that when the PTAB calls out the rejection as "particularly troubling," some action will be taken to correct not just this case, but the overall trend one can see by examining the art unit's overall data.