Examiners can sometimes make rejections that blend together different rationales. This can be troublesome for multiple reasons. First, it can be confusing to applicants as they are unsure of the actual basis for the rejection, which in turn forces the applicant to make guesses while addressing multiple different legal rationales simultaneously. Second, it leaves the record unclear for the public in understanding how, if at all, the applicant’s arguments may affect ultimate claim scope, such as via prosecution history estoppel.
Here, we see an example for an innovation in footwear from Under Armor where the issue of routine optimization and obvious to try are commingled improperly (note that there are several previous posts available on the blog about these two topics individually). Appeal 2023-001399, Application 15/149,602. Claim 7 on appeal is reproduced below. The invention relates to footwear including an upper with stretch properties. As specified in claim 7, spacing between individual bicomponent strands differs between the toe and heel sections of the upper such that there is a different number of courses that separates each strand. In particular, a course spacing between strands is different in different areas of the sole.
It should be appreciated that a common approach for developing IP protection in the footwear arts is to look for protection opportunities where a feature or function is varied in different regions of the foot, and Under Armor followed that approach here.
The figures reproduced below from Under Armor illustrate an example of the footwear in FIG. 2C with the knit pattern in FIG. 5. As shown in FIG. 5, the bicomponent strand 400 forms alternating courses 505 with the non-bicomponent strand 520. In claim 7, one of Under Armor’s arguments against the rejection focused on the idea that there was no teaching in any of the cited references of individual bicomponent strands that had variable course spacing along the upper.
The Examiner’s rejection of claim 7 as to the course spacing tried to fill the gap in the combination of references by relying on design choice and optimization, as follows:
Clearly this is an approach this examiner has used before, as they appear to have performed a cut-and-paste but forgot to update the font. What the rejection fails to do is separately address the obvious to try rationale and the routine optimization rationale, as these legal doctrines have different elements. Whether or not there may be some overlap, this should not relieve the examiner of the obligation to properly apply them. Fortunately in this case, the PTAB did address each issue separately, noting that in each case the Examiner failed to establish a proper rejection.
With regard to the obvious to try basis, the cited art did disclose using different numbers of courses in different parts of the upper. However, the cited art did not have any teaching about the spacing between different bicomponent strands. To properly rely on the obvious to try rationale, the examiner has the burden to show that there were a fine number of identified predictable solutions so some issue that would include the spacing aspect. However, as can be seen in the examiner’s rationale above, no such showing is made. The PTAB zeroed in on this issue:
However, the Examiner does not provide adequate support for [the Obvious to try] rationale because the Examiner has not shown that there were “a finite number of identified, predictable solutions” including the use of the feature claimed. The Examiner has not provided evidence that the feature in question, i.e., different course spacing, is an identified feature that would have been obvious to try. Rather, the Examiner identifies other features [in the cited art] and asserts that it would also have been obvious to try the claimed feature. Ultimately, we find that the Examiner’s rationale in this regard lacks adequate support.
Turning to routine optimization, again the examiner’s rejection was lacking not least because the examiner did not even identify how the cited art recognized the missing variable to be results-effective. The fact that the cited art didn’t even mention the spacing should have been the end of this inquiry had the examiner properly applied the doctrine. From the PTAB:
The Examiner also appears to rely on an optimization rationale to support the combination proposed. Yet, this rationale requires a recognition that the feature in question is a results-effective variable, i.e., the variance in course spacing must be recognized as a variable that effects certain qualities of the device. However, the Examiner does not point us to evidence showing that course spacing is recognized as such a variable, and thus, the Examiner has also not provided adequate support for this rational.
So, do not let an examiner improperly mix together different rationales into a single rejection and address each one separately to illustrate such errors.