Often reasonable minds can differ, and they often do, when it comes to patent professionals and patent examiners. One way for the patent professional to be effective in advancing patent applications through the Office is to understand the examiner’s point of view. While there are times where the examiner can be persuaded to change their mind, other times the patent professional must find ways to address the issues that the examiner has found blocking patentability, even if the patent professional disagrees with them.
There are also times where the examiner takes a position that, while creative, has no basis in the law, and further where the examiner’s position cannot be addressed no matter the level of understanding and empathy offered.
Today we review a case where the USPTO examiner tried to support a 112 written description rejection for lack of support not by showing that claimed elements were not disclosed in the specification, but rather by attacking a label applied to the supporting description. Namely, the applicant labeled the figure and related description as illustrating a schematic view of the system. From this, the examiner asserted that, even though certain features were shown (and described in the text), they could not support the claims because they show “ a schematic view of the system and therefore cannot be construed to depict an actual physical arrangement.” This rejection went to the PTAB on appeal after two supervisory examiners sided with the examiner at the appeal conference.
The case (Appeal 2022-00471; Application 15/958,718) relates to an auxiliary oil system to supplement a main oil supply system on a gas turbine engine with a gear drive for a fan. The claim at issue is reproduced below, with the last element relevant to the present discussion
1. A gas turbine engine comprising:
a fan drive turbine, a fan rotor, and a gear reduction driven by said fan drive turbine and, in tum, to drive said fan rotor, a main oil supply system for supplying oil to components within said gear reduction, and an auxiliary oil supply system;
and said auxiliary oil supply system including a rotation sensor for sensing rotation of a component that will rotate with said fan rotor, a control, an auxiliary oil pump with an electric motor drive, and a main supply sensor for sensing operation of said main oil supply system, said control being programmed to actuate said electric motor for said auxiliary oil pump such that it supplies oil to the gear reduction when the rotation sensor senses the component is rotating, and a determination is made that inadequate oil is being supplied from said main oil supply system based upon information from said main supply sensor;
wherein said gear reduction is surrounded by an oil gutter to scavenge oil and direct it to an auxiliary oil tank;
wherein said auxiliary oil tank has an overflow conduit that allows excess oil to fall to the bottom of said bearing compartment; and
wherein said auxiliary oil tank is positioned at a vertically higher location relative to the auxiliary oil pump.
The examiner rejected the claim as lacking written description support due to the last element specifying the auxiliary tank was positioned vertically higher than the auxiliary pump. Surprisingly, the Examiner acknowledges that the relevant structure was shown in Figure 2 (and it was also described in the specification with specific language specifying that the tank was at “a vertically higher location”). Nevertheless, the Examiner (and two supervisory patent examiners) maintained the rejection, leaving the applicant to appeal for recourse. As can be seen from the excerpt below, the PTAB was not able to follow the examiners’ rejection (internal citations omitted):
Here, we find that the limitation at issue is adequately supported by the Figures and description in the Specification such that the disclosure conveys with reasonable clarity that Appellant was in possession of the invention as claimed at the time of filing. First, we acknowledge that Figure 2 is described as providing “a schematic of an oil supply system.” However, the Specification indicates that the relative vertical positions depicted in this figure are accurate … Given that the Specification shows that the compartment 112 is depicted in its actual vertical orientation, we see no reasonable way to interpret this description other than that pump 124 must be vertically lower than tank 116 in order to draw oil from the tank under the circumstances described, i.e. when the tank is full or under negative gravity conditions. In contrast, the Examiner appears to interpret Figure 2 based solely on the description that it is schematic and not on the specific description described in the rest of the Specification.
So, merely because something is labeled “schematic” does not undue what it discloses.