As detailed in many previous posts, some art units (or supervisors in particular art units), such as Art Unit 3747, seem to have more of a propensity to maintain improper rejections than others. Today we review another PTAB reversal in Art Unit 3747 - Sn 14/371,037.
The application relates to a fuel injector design by Bosch. The applicant did everything a “good” applicant should. Bosch tried to use interviews. Bosch tried the AFCP program. Bosch tried the pre-appeal program. But their fate was not unpredictable from their examiner and supervisor statistics.
Claim 1 on appeal is reproduced below.
The case represents a classic example of how the waters can become muddy when an applicant tries to be diligent and explain why a rejection, taken to its logical conclusion, is in error. Specifically, the rejection relied on two documents (AAPA and US 3,187,733 (Heintz)), neither of which showed the claimed connection of the feed bore directly to a portion of the high-pressure accumulator. However, before getting to this issue, Bosch first tried to clearly lay out the issue in a pre-appeal request:
Of course, like each of Bosch’s previous attempts, the arguments were dismissed and Bosch was forced to appeal. In the appeal brief, Bosch attempted to go further and show, in detail, how it was not possible to reach the claimed design by combining the cited art as suggested by the Examiner. But in the Answer, the examiner mostly just attacked the diagrams without really addressing the substance. Unfortunately, this represents a common tactic by examiners - rather than really considering the substance of an applicant’s demonstration of how a combination is actually made (and rather than explaining in detail how the examiner would actually make the combination), the examiner simply attacks a new issue in the proposed example. For example, the examiner might argue that the claims don’t require some detail that comes out of actually making the combination (which is irrelevant of course). Or the examiner comes up with a totally new way or reason to combine the references. Both of these occurred in the case and thus forced the applicant to spend more effort and time pointing out the defects in the examiner’s reasoning in the reply brief.
The point here is not that Bosch should have handled the case differently (as they handled it quite well and obtained a full reversal from the PTAB, followed by a notice of allowance), but to help applicants realize that with some examiners/supervisors, they should be ready for such shenanigans up front. As Bosch correctly explained in this case:
So, while it may be necessary to illustrate how an examiner’s proposed modification is improper or impractical, be ready for the examiner to look for any inane reason to fault your approach in order to distract from the folly in the rejection.