Monday, May 16, 2011

BPAI finds adding a fourth parameter doesn't change basic principles of operation of reference

Takeaway: In Ex parte De Jonge, the Applicant attacked an obviousness rejection of a dependent claim by arguing that "adding features beyond the conventional arrangement in Russell [the primary reference] would clearly change the principle of operation of Russell." The Board disagreed: "We do not see, and Applicant does not explain, how modifying Russell from consideration of three vehicle parameters to consideration of four vehicle parameters is a 'change in the basic principles' of operation of Russell’s device."

Ex parte De Jonge
Appeal 2009005757; Appl. 10/820,424; Tech. Center 3600
Decided  April 27, 2010

A representative independent claim on appeal read:
23. A shifter for controlling the transmission of a motor vehicle, comprising:
a controller that actuates said powered pawl based at least in part on at least one vehicle operating parameter in addition to an input from a vehicle ignition, a position of the shift member, and a position of a vehicle brake pedal.

Dependent claim 24 added the limitation "the at least one vehicle parameter other than the enumerated parameters comprises engine rpm."

The Examiner rejected independent claim 23 as being anticipated by Russell. The Examiner also rejected dependent claim 24 as being obvious over Russell in view of Kato, with Kato allegedly disclosing the engine rpm as the claimed other vehicle operating parameter. 

In rejecting independent claim 24, the Examiner relied on Russell's teaching of an indication from the shift lever of a lever position other than park. The Examiner took the position that this lever position other than park taught the additional parameter recited in the claim. The Applicant argued that the "other than park" shift lever position in Russell could not read on both the claimed "position of the shift member" and the claimed "vehicle operating parameter in addition to" the other parameters. The Board agreed and reversed the anticipation rejection.

Dependent claim 24 narrowed the additional vehicle operating parameter to "engine rpm." In the obviousness rejection, the Examiner asserted that Kato disclosed "an engine revolution speed signal used to control shifting of a lever to another gear" and then concluded that:
[I]t would have been obvious to reach the subject matter of claim 24 by modifying the shift lever assembly of Russell to add engine rpm as a parameter for control of movement of the shifting lever, as taught by Kato, in order to prevent careless operation of the shift knob and to eliminate the possibility of jack-rabbit starts or hard braking ([Kato] Col. 3 Lines 36-38).

The Applicant did not dispute the Examiner's factual findings about Kato, but made several arguments about the rationale for combining. One such argument was "the proposed modification changes the principle of operation of the reference." The Applicant argued as follows:
... Fig. 8 of Russell '524 discloses a conventional Brake Transmission Shifter Interlock (BTSI) arrangement that prevents shifting out of park unless the brake is being applied. ...
   Because Russell '524 does not disclose use of any vehicle operator parameters (other than the conventional BTSI inputs), modification of Russell '524 to include such features would require adding entirely new functions to the Russell '524 arrangement.
   Applicant further notes that "if the proposed modification or combination of the prior art would change the principle of operation of the prior art invention being modified, then the teachings of the references are not sufficient to render the claims prim facie obvious." MPEP 2143.01, citing In re Ratti, 270 F.2d 810, 123 USPQ 349 (CCPA 1959). Adding features beyond a conventional BTSI arrangement to Russell '524 would clearly change the principle of operation of Russell '524.

The Board was not persuaded by the Applicant's argument. The Board distinguished Ratti, where "the modification fundamentally changed the technical basis of how a seal performed its sealing function and how a sealed interface was attained." In this case, the Board found that Russell used three parameters, and that the proposed modification was to add a fourth parameter taught by Kato:
In the case before us, Russell’s controller activates the actuator based on the vehicle parameters of ignition, brake, and shift member position (Fact 2). Kato discloses consideration of engine rpm as a vehicle parameter for control of the actuator of a gear shifter (Facts 6-7). We fail to see, and Appellants have failed to explain, how modification of Russell from consideration of three vehicle parameters to consideration of four vehicle parameters is a “change in the basic principles” of operation of Russell’s device. Rather,  this modification to Russell’s device is an improvement specifically taught by Kato that a person of ordinary skill in the art would recognize would improve Russell’s electronically-actuated shifter mechanism in the same way as in Kato. KSR, 550 U.S. at 417.

After affirming the obviousness rejection of dependent claim 24, the Board entered a new ground of rejection of independent claim 23:
Because claims 24 and 25 include all the limitations recited in claim 23, we conclude claim 23 must have been obvious based on our conclusion of obviousness of claims 24 and 25. See Ormco v. Align Tech., 498 F.3d 1307, 1319 (Fed. Cir. 2007) (when a dependent claim is “found to have been obvious, the broader claims . . . must also have been obvious”).

My two cents: I don't know too much about vehicle transmissions, but based on the record presented by the Applicant, I think the Board was right.

The Applicant did not dispute that that the primary reference taught actuating a pawl based on the three claimed inputs – in fact, in discussing independent claim 23, the Applicant admitted that Russell disclosed the three claimed inputs. Nor did the Applicant dispute that the secondary reference taught engine rpm as an additional operating parameter. All the Applicant did in arguing dependent claim 24 was to make the conclusory statement that "adding features beyond a conventional BTSI arrangement to Russell '524 would change the principle of operation of Russell '524." Yet the Applicant did not explain why this was so.

In arguing the independent claim, the Applicant attempt to describe the claimed invention as being "completely different" than Russell:

The shifter of the present invention, as recited in independent claim 23, controls the powered pawl based on vehicle operating parameters in a manner that is completely different than conventional "PARK lock" and "ignition lock" functions. As discussed above, Russell '524 (Fig. 8) does not disclose control of a powered pawl based on a vehicle operating parameter. Rather, Russell '524 discloses a conventional BTSI arrangement that utilizes the position of the shift lever, ignition state, and brake pedal position to lock the shifter in park according to conventional park and ignition lock criteria/inputs.

Yet this great difference seems to boil down to: Russell uses three inputs; the independent claim adds an unspecified parameter; and the dependent claim narrows that to a specific parameter. How is that a change to basic operating principles? If there was a bigger difference, the Applicant didn't explain it to me in the brief.

I see the "change in basic principles of operation" argument used quite a bit, but it doesn't seem to win very often. Usually the Board says what it did here: what we have here is a small change, not a change to basic principles. I do think it's an effective argument when you explain how the change is fundamental. 

Postscript: Following appeal, the Applicant exercised the right to re-open prosecution after a new ground of rejection by the Board. The Board reversed the anticipation rejection of dependent claim 26, so the Applicant rewrote that one as independent. A few other claims were already dependent on claim 26.

In a non-final Office Action, the Examiner rejected now-independent claim 26 and all of its dependents as being obvious over Russell in view of Kato. (Same references as before.) The Examiner explained that:
Applicant's amendment in response the Appeal Board decision rendered on June 15, 2010 is presuming that the Boards silence to the remainder of the claims not listed in the new grounds of rejection is an indication of allowability. However, this is not the case, and as noted in the footnote on page 13 of the decision "no inference should be drawn from the failure to make a new ground of rejection for other claims," according claims 26-29 and 51 -59 stand rejected in view of the new grounds of rejection set forth by the Appeal Board.

So although the Board chose to enter a new ground of rejection only for independent claim 24 (not anticipated but still obvious), the Board essentially gave a roadmap for the Examiner to reject the other claims and he took it.

The Examiner did allow another set of claims which had been allowable before appeal. The Applicant cancelled those claims before appeal and reinstated them on reopening prosecution.

The Applicant apparently wasn't satisfied with getting only this second set of claims, since the application went abandoned.


  1. This was a situation where the Applicant could have used the Examiner's failure to explicitly determine the level of skill to challenge the obviousness rejection because at the very least, it would have provided the argument that one of ordinary skill would not have combined the teachings of the references for whatever reasons the Applicant could set forth.

  2. >[Failure of Examiner to determine level of skill]
    >would have provided the argument that POSITA
    >would not have combined the teachings of the
    >references for whatever reasons the
    >Applicant could set forth.

    I don't see that arguing about the level of skill is necessary, or that it gets you where you need to go.

    If the references themselves support reasons why the POSITA wouldn't have made the combination (here, added an additional parameter to the controller), then you can probably make this point as attorney argument.

    If you need to go deeper than what is in the references themselves in order to provide technical reasons against the combination, then you can introduce evidence in the form of additional references or an expert declaration.

    How does arguing about level of the skill help here?

  3. The determination of skill level is supposed to provide objectivity to the obviousness analysis..a prism or lens through which one views the prior art to reduce the influence of hindsight. Used properly, traversal of the Examiner's skill level determination (or lack therof) can undermine the Examiner's obviounessness reasoning.

  4. >Used properly, traversal of the
    >Examiner's skill level determination
    >(or lack therof) can undermine the
    >Examiner's obviounessness reasoning.

    I guess I see how this applies in theory. Something like:

    Examiner assumes that level of skill is reflected in the references. But the level is really higher/lower. [Provide evidence.] Since the level of skill is higher/lower, what appears obvious to the Examiner really isn't. The Examiner's conclusion of obviousness is necessarily biased by hindsight.

    But even that seems vague and unconvincing to me. I'm just having trouble seeing how this sort of analysis applies in the real world. Maybe you just gotta have good facts.

    Something like