Takeaway: In Ex Parte Sato, the BPAI reversed an obviousness rejection to a claim to a transmission belt. after finding an infinite number of choices existed for the limitation at issue. The claim required fibers oriented along the width of a transmission belt. The Board found the reference did not disclose this orientation, but merely fibers oriented in a direction perpendicular to longitudinal. The Board noted there are an infinite number of directions perpendicular to longitudinal, and the Examiner did not explain why a person of ordinary skill in the art would have selected the width direction from all these possibilities.
Details:
Ex Parte Sato
Appeal 2009005955, Appl. No. 10/523,708, Tech. Center 3600
Decided August 16, 2020
Here is the dependent claim at issue, with the language at issue emphasized.
2. A transmission belt according to claim 1, wherein said chopped aramid fibers and said chopped polyester fibers are oriented in a width direction of said belt body.
Though both the parent claim and this dependent claim were rejected under § 103, the Examiner relied solely on the primary reference, Ito, as teaching the emphasized feature. The Examiner alleged that the claimed width-oriented fibers were disclosed by Ito's teaching of fibers "aligned in a direction orthogonal to a longitudinal line L of the belt." The Examiner explained that width is a direction orthogonal to the longitudinal line.
Ito's belt, with line L, is shown below:
In the Appeal Brief, the Applicant argued:
However, paragraph [0053] of Ito '226 does not state that the fibers should be aligned in the width direction of the belt, but rather that they are aligned "... to be orthogonal to a longitudinally extending line L." "Orthogonal" means perpendicular. Ito '226 is saying that the fibers could be aligned in any direction perpendicular to the line L (depicted in Fig. 1 of the-reference). Thus, the fibers could be aligned, for instance, vertically in the sense of the cross sectional drawing shown in Fig. 1 of the reference. This would not be in the direction of the width of the belt, as called for in claim 2. Indeed, the locus of all lines perpendicular to a line (L) would be a plane perpendicular to line L. There would thus be an infinite number of directions in which the fibers could be oriented, and still be orthogonal to line L.
(Emphasis added.)
The Board agreed with the Appellant:
[T]here are an infinite number of directions that are orthogonal to the longitudinal line, including vertical. The Examiner does not adequately explain why one of ordinary skill would have found it obvious to select the width direction from all the possible orthogonal orientations. We cannot sustain the rejection.My two cents: I think the infinite-number-of-choices is a great rebuttal to an obviousness argument, and I'm glad to see the Board bought it — but was misapplied to these facts. A belt has three axes – longitudinal, transverse and vertical – each of which is perpendicular to the other two. The reference disclosed fibers oriented in perpendicular-to-longitudinal, which covers transverse (i.e., width) or vertical. So I see two choices, not an infinite number. It's true that there are an infinite number of lines in a particular plane. But the claim was for fibers are oriented in a width direction, so essentially claimed one plane (transverse) and wasn't limited to fibers oriented along one particular line.
Agreed. And even if there were an infinite number of angles, width might be the first to be considered as orthogonal to longitudinal, and vertical, the second.
ReplyDeleteScott Daniels
>width might be the first to be considered as
ReplyDelete>orthogonal to longitudinal, and vertical,
>the second.
Do you view this as an issue of claim construction, or of non-obviousness?
The "fact" that there are only two axes perpendicular to the longitudinal axis is not relevant. There are, indeed, an infinite number of line >directions< perpendicular to the longitudinal axis. The claim does not require the fibers to be aligned along an axis.
ReplyDeleteFurthermore, it is only by convention and convenience that we describe our local environment with a set of >3< >perpendicular< >linear< axes (viz., X, Y, and Z). I hope you don't try to describe the moon's orbit with X,Y, and Z! And I can define a set of many axes if I want; 3 is just the minimum needed to describe our physical world. Axes are just a mathematical construct.
Off-hand I'd still give it an obviousness rejection UNLESS the applicant could show evidence that having these widthwise fiber bits gave the belt uniquely different properties from belts in which the fiber bits were aligned perpendicular to the longitudinal direction but out of the plane of the belt.
Failing that evidence, I'd say that having them in the plane of the belt was, at best, a design choice and, at worst, a nearly inherent result of the manufacturing process.
Bruce
>Off-hand I'd still give it an obviousness
ReplyDelete>rejection UNLESS
You and I agree on that. Though I re-read my post, and perhaps I didn't make it crystal clear that I thought the rejection should have been affirmed rather than reversed.
>I'd say that having them in the plane of the
>belt was, at best, a design choice
In some sense, I think both the Board and the Examiner saw it as a design choice. It's just that the Examiner saw it as a "mere design choice" leading to a conclusion of obviousness, where the Board saw it as one of an infinite number of choices, which leads to a conclusion of non-obviousness.
>and, at worst, a nearly inherent result of
>the manufacturing process.
Interesting. Hadn't thought about this aspect. The Examiner could have used this as part of the motivation to combine, then, right?
This seems to me to be a case in which the Board felt that the Examiner's rejection was not thorough enough (as opposed to one in which the reference did not suggest the subject matter of claim 2) based on the following language from this post: "The Board noted ... the Examiner did not explain why a person of ordinary skill in the art would have selected the width direction from all these possibilities." I'm a little bit surprised that the Board didn't just affirm the examiner and come up with its own rationale supporting the obviousness rejection (i.e., its own explanation as to why a person of ordinary skill in the art would have chosen the width direction).
ReplyDelete>I'm a little bit surprised that the Board
ReplyDelete>didn't just affirm the examiner and come up
>with its own rationale
Yes, certainly the Board does its own fact finding in some cases, to go way beyond what the Examiner has put on the record. It's almost never a "new ground of rejection" even though in my view it should be.
But I haven't found a pattern to the Board's behavior. So I see no way of predicting when the Board will reverse because the Examiner has failed, or will affirm because the Board finds the reference does anticipate/ combination does make obvious.
Definitely puts the Applicant at a disadvantage. To keep a clean prosecution history, you want to do little more than rebut the Examiner's case. But then you risk the Board digging deeper into the reference and coming up with something you didn't address.
"Yes, certainly the Board does its own fact finding in some cases, to go way beyond what the Examiner has put on the record. It's almost never a 'new ground of rejection' even though in my view it should be."
ReplyDeleteThe reason for that is the Board's jurisdiction is to review the "decisions" of examiners, not necessarily the rationale. So if the examiner made the "correct" decision, for all the wrong reasons, the Board will affirm. Of course the Fed Circuit's review of the Board is a little more nuanced, so if the examiner's rationale is all wrong, but his/her decision is correct, the Board will put the correct rationale on the record.
"Definitely puts the Applicant at a disadvantage."
Yes and no. You shouldn't have to do the examiner's job. But if you're really representing your client, take an objective view of your claims, an objective view of the prior art applied, and of record but not applied, and ask yourself if your client's competitor could make a good invalidity position out of that art. If the claims you're arguing are patentable are in fact just going to be knocked out in a reexam, or invalidated in an infringement suit, on the same art you faced during prosecution, don't appeal, amend.
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