Monday, September 6, 2010

BPAI reverses when Examiner asserts "anything can be considered substantially rigid" (Ex parte McQueer)

Takeaway: In Ex parte McQueer, the BPAI smacked down an Examiner's unreasonably broad interpretation of “substantially rigid.” The Examiner took the untenable position that “substantially rigid” read on “elastic.” The Examiner's justification was that the claim limitation was so broad that “[a]nything can be considered substantially rigid.”

Ex parte McQueer
Appeal 2009013145, App. No. 10/987,889, Tech. Center 3700
Decided: June 22, 2010

Claim 11 was directed to a protective athletic garment that includes “a substantially rigid shoulder portion adapted to protect a shoulder area of a user from impact.”

The Examiner issued an anticipation rejection using a reference which disclosed a breast plate. The Examiner read the “shoulder portion” of the claim on a pair of shoulder straps for attaching the breast plate to a user’s body.

The Applicant argued that the reference explicitly taught shoulder straps made of “elastic nylon material,” which is not “substantially rigid.” In the Answer, the Examiner replied that the term “substantially rigid” is so broad that “[a]nything can be considered substantially rigid.”

The Examiner provided this further explanation:
All fabric materials are rigid to a degree, including elastic/nylon material. Elastic/nylon material would have a substantially greater rigidity in comparison to other materials. Furthermore, the degree of rigidity of an elastic nylon material would also be affected by the temperature of the material, very cold temperatures would create a substantially more rigid material then when the same material is at room temperature.

The Board was not persuaded by the Examiner's reasoning:
Thus, the Examiner contends that because there theoretically exists some material that is less rigid than an elastic nylon material, then the elastic nylon material may be considered substantially rigid. That position is unreasonable. By that standard, all materials are at once substantially rigid and yet also substantially non-rigid.

The Board cited to dictionary definitions of rigid and flexible, and finally concluded that “[i]t is unreasonable to view the requirement that a material be substantially devoid of flexibility as also encompassing a material that is flexible, such as Jankowski’s elastic nylon material.” Such an interpretation “effectively reads the term 'substantially rigid' out of the claims.”

The Board also noted that the Examiner's statement about rigidity at cold temperatures was a mere assertion. Furthermore, the Examiner did not “adequately explain, why, even if the assertion is true, a material that increases its rigidity only for a limited time under an extreme circumstance, i.e., very cold temperatures, meets the general and unrestricted claim requirement of a shoulder portion that is “substantially rigid.”

My two cents:  Obviously the Board reached the right result here. Next time you challenge an Examiner's unreasonably broad interpretation of "substantially," consider including the Board's reasoning in your arguments.


  1. This examiner should be fired. Primaries that think such interpretations are "reasonable" have no business examining applications. Fire this examiner.

    The SPE's who sat in on the appeal conference are even more guilty. They are supposed to keep nonsense examination like this in check. Instead, they are green lighting this garbage to add to the BPAI backlog, which is enormous and growing. They should be fired as well. Actually, firing's not good enough for them. They should be drawn and quartered as well.

    This decision should be precedential. Hundreds of copies of this decision should be printed out and nailed to the foreheads of the "quality assurance" personnel over there.

    But I'll bet that everybody at the PTO involved in this cluster foxtrot of an appeal got an "outstanding" rating.

  2. Thanks you very much for discussing this important decision so clearly!

  3. Yes, this case does show that the pre-appeal process inside the PTO is a huge failure.

    I too would like to see Ex parte McQueer marked precedential. Ex parte Givens too. But if Examiners aren't even aware of BPAI decisions -- much less told they need to apply them -- then changing the status isn't really going to help.

    So what I like even better is the suggestion, from another comment thread, of sending APJs (or their clerks) out to the TCs to talk about these sorts of opinions.

  4. "So what I like even better is the suggestion, from another comment thread, of sending APJs (or their clerks) out to the TCs to talk about these sorts of opinions."

    That of course needs to be done. But it won't change the mindset over there unless it's backed up with some serious punishment for sending garbage like this up to the Board.

    These useless SPE's and QAS's need to be told in no uncertain terms that the decision in every single appeal they green light is going to be reviewed. And when words like "unreasonable" and "without merit" are used in the decision to describe their position, they are going to be horse whipped.

    Public flogging would do a lot of good over there.

  5. >won't change the mindset over there unless
    >it's backed up with some serious punishment
    >for sending garbage like this up to the Board.

    Seems like I've heard that there are no negative consequences at all for the Examiners, in terms of performance reviews, for reversal on appeal.

    If that's true, then it seems like the path of least resistance is for the Examiners to send even pitifully weak cases up to the Board. Especially if the word coming down from above is "reject, reject, reject" and "can't allow".

    I don't think sure knocking the Examiner's performance merely for losing an appeal is fair. After all, the real reason for having the BPAI is to decide those cases where reasonable minds can differ.

    But yeah, when the Board says "unreasonable" and "without merit", then this should trigger some sort of negative consequences for the folks that sent the case up for appeal. That includes the Examiner and the whoever else signed off at the appeal brief conference.

    However, I don't see that we need to do anything about the flip side: Applicants that send ridiculously weak cases up to appeal. That's between the practitioner and his client.

  6. In my experience, many examiners take unreasonable positions because they would rather the board allow cases. I think this happens because they do get negative consequences for allowing cases that the "review panel" (if that still exists) deems not to be patentable. But, there are no negative consequences when the BPAI allows it. I have personally heard examiners tell me that no amendment would make the case allowable by the examiner and the only way it would be allowed is to appeal it.

  7. >{Examiners] do get negative consequences for
    >allowing cases that the "review panel" (if
    >that still exists) deems not to be patentable

    Yep, I've heard that too.

    So unless and until we have some sort of counterbalance, where appeal reversals that rise to the level of RIDICULOUS result in some sort of penalty -- then I don't see this changing. Right now the incentives are all going the wrong way.