The basic principles of the burdens in patent prosecution are that the USPTO must establish a prima facia case of unpatentability. One would think then that a rejection relying on mere assertions (e.g., with respect to obviousness) would fail on their face. MPEP explains how the examiner (and the PTAB) regularly rely on “legal precedent” to supplement incomplete rejections in a way that (at least according to the USPTO) satisfies its burden.
MPEP 2144 explains that:
In keeping with the flexible approach to obviousness under KSR, as well as the requirement for explanation, Office personnel may invoke legal precedent as a source of supporting rationale when warranted and appropriately supported. See MPEP § 2144.04. So, for example, automating a manual activity, making portable, making separable, reversing or duplicating parts, or purifying an old product may form the basis of a rejection. However, such rationales should not be treated as per se rules, but rather must be explained and shown to apply to the facts at hand. A similar caveat applies to any obviousness analysis. Simply stating the principle (e.g., “art recognized equivalent,” “structural similarity”) without providing an explanation of its applicability to the facts of the case at hand is generally not sufficient to establish a prima facie case of obviousness.
While seemingly placing limits on an examiner’s ability to make rejections unsupported by actual evidence, the MPEP does the opposite and expressly condones the use of “legal precedent” to fill in evidentiary gaps, so longs as some sort of rationale/explanation is provided. But of course, the required rationale/explanation also does not seem to need any evidentiary support. Rather than reigning in examiners, this section opens a barn door too big and tempting for many examiners to ignore.
One form of “legal precedent” relates to particular dimensions, referred to as “Changes in Size/Proportion.” The MPEP explains as follows:
In Gardner v.TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device.
Quite a lot can fall under the general heading of “changes in size/proportion” and so this issue comes up frequently in prosecution. A recent PTAB example illustrates the typical situation. The case is Appeal 2022-004469, Application 15/982,911. The invention relates to baby swaddling. For those who have had a little one that, say, fought sleep like they were being dragged into the depths, you likely tried swaddling. And if it worked, it was no less impressive than a miracle. One of the figures from the application is reproduced below, as well as a portion of claim 1 on appeal (note the specific dimensions claimed, such as the sleeve length between 3 and 4 inches).
The examiner’s rejection confirmed that even after combining various references, the claimed dimensions were missing. As such, the examiner relied on MPEP 2144(I):
The examiner thus did what the MPEP authorized, except here the Applicant took the extra step that often makes a difference - filing declaration evidence. The applicant filed two declarations from the inventor as one skilled in the art to provide evidence of the particular advantages and synergy from certain claim elements, including the dimensions.
The PTAB first framed the issue in a particular way beneficial to the applicant. Whether this was due to the fact that the applicant had evidence where the examiner had only legal precedent is hard to know. It is not uncommon for the PTAB to push the burden on the applicant in scenarios like this, thus taking the examiner’s position as sufficient. Here, however, the PTAB flipped the scrip:
In fact there was evidence in the record (the declaration) that the PTAB could have found supported that the sleeve length claimed would result in substantially different performance (thus ending the inquiry). The PTAB also confirmed that there was no recognition of the sleeve length as a variable to be optimized, closing off the routine optimization route as well.
In any event, the case illustrates that when an examiner is relying on assertions as to the fact that certain dimensions in the prior art would function the same as that in the claim, declaration evidence can be a strong tool in setting up a successful appeal.