Takeaway: In Ex parte Janson, the BPAI reversed an obviousness rejection which involved combining a continuously variable vehicle transmission with a discrete gearing transmission. "The Examiner failed to articulate how a person having ordinary skill in the transmission art would combine the teachings of two completely different transmissions, namely, Thomas’ automatic transmission (gears) and Kukucka’s CVT (belts) ... The Examiner’s rationale for combining these two patents is based upon an insufficient rational underpinning or factual basis to support the combination."
Details:
Ex parte Janson
Appeal 2010009939; Appl. No. 11/973,594; Patent 7,086,987 B2; Technology Center 3600
Decided November 5, 2010
The claims on appeal for this reissue application related to a vehicle transmission. A representative claim read:
14. A powertrain for an automotive vehicle, comprising:
...
a transmission including a first input driveably connected to the power source, a first output, and epicyclic gearing located in a torque path between the first input and the first output ... and the transmission produces the low range gear only in response to manual selection of low range gear operation of the transmission; and
a transfer case including a second input driveably connected to the first output ... the transfer case providing no low-range torque ratio.
(Emphasis added.)
The Examiner originally rejected the claim as anticipated by Thomas. The Applicant persuaded the Examiner that the manually selected low range gear in Thomas applied to the transfer case rather than to the transmission.
The Examiner then switched to an obviousness rejection, adding Kukucka as a secondary reference which allegedly taught a manually selected low range gear for a transmission. The Examiner concluded:
It would have been obvious to a person of ordinary skill in the art at the time the invention was made to provide Thomas with a manual selection of a low range ratio in view of Kukucka et al to eliminate requirement / need to use a transfer case gear set to provide low range due to the use of low range selection via transfer cases requiring vehicle to be resting or at a very slow speed (see Kukucka paragraph [0018] last four lines).
The Applicant appealed. In the Appeal Brief, the Applicant argued that the references did not disclose the above-emphasized limitation related to manual selection of a low range gear.
Thomas refers to a PRNDL gear selector used to select operating ranges of the transmission ... The park range is the only gear range that Thomas discloses as being selected manually. ...
Presumably because Thomas does not disclose explicitly that the low gears are manually selected, Kukucka is cited for disclosing a continuously variable transmission that produces multiple forward ratios and a low range ratio greater than the torque ratio of the forward gears.
Kukucka's transmission 16 is a belt-drive, continuously variable transmission having no epicyclic gearing or any other gearing producing multiple forward gears, a reverse gear and a low range gear, as claim 14 recites.
(Emphasis added.)
In the Answer, the Examiner first noted that the Applicant had attacked the references individually. The Examiner then further clarified which limitations were taught by which reference:
Thomas does disclose ... producing the low range gear only in response to manual selection of low range gear operation (column 5, lines 44-46 in Thomas discloses that first and second gears (of the transmission) can be used as low gears when the transfer case modes are manually selected).
There is no confusion on the examiner's part as to the difference between selecting low gear range in a transmission and selecting low gear range in a transfer case, that is why Kukucka was used as a secondary reference in view of Thomas to show that it is well known in the art to use a manually selected low range ratio in which the range would then be produced by the transmission.
The Board was persuaded by the Applicant's arguments, and noted that the Examiner had not rebutted the deficiencies pointed out by the Applicant. The Board also found fault with the Examiner's rationale for combining:
[W]e further conclude that the Examiner failed to articulate how a person having ordinary skill in the transmission art would combine the teachings of two completely different transmissions, namely, Thomas’ automatic transmission (gears) and Kukucka’s CVT (belts), in order to reach the claimed invention of a transmission having epicyclic gearing where the transmission automatically produces gear shifts among the forward gears and produces the low range gear only in response to the manual selection of low range gear operation of the transmission. The Examiner points to no interrelated teaching of these two patents, the effects of demands known to the design community or present in the marketplace, or the background knowledge possessed by a person having ordinary skill in the art as support for the rationale to make the proposed modification. In our view, the Examiner’s rationale for combining these two patents is based upon an insufficient rational underpinning or factual basis to support the combination, but instead is based upon doubts that the claimed invention is unpatentable [sic].
(Emphasis added.)
The Board therefore reversed the obviousness rejection.
My two cents: This case shows there is hope for beating an obviousness rejection when there are vast differences between the combined references. Here, the Applicant didn't specifically make a rationale-for-combining argument which pointed out these differences. The Applicant mentioned that the secondary reference was a continuously variable transmission with no gears whatsoever, without specifically contrasting this with the discrete gear transmission in the primary reference. But the Board did figure out these were "two completely different transmission."
To me, there is no rationale for combining here because a POSITA wouldn't look to combine a discrete gearing transmission with a continuous transmission in the first place. And if he did, it would take more routine skill in the art to combine them. Either way, that points to non-obviousness.
While I agree with the outcome, I was puzzled by the Board's criticism of the Examiner's rationale. It's true that the Examiner did not refer to marketplace demands (stronger, faster, cheaper?) or background knowledge of a POSITA. Instead, the Examiner did what is most common for obviousness: point to a teaching in the references themselves.
Then again, the Examiner's motivation from the secondary reference was weak: "to eliminate requirement / need to use a transfer case gear set to provide low range due to the use of low range selection via transfer cases requiring vehicle to be resting or at a very slow speed." Doesn't that amount to nothing more than: it would be obvious to provide a low range gear because low range gears are useful?
"In the Answer, the Examiner first noted that the Applicant had attacked the references individually."
ReplyDeleteBecause this is standard operating procedure for Examiners and the BPAI, more often than not, backs them up on it because Applicants don't explicitly point out that the Examiner is ignoring what each reference teaches as a whole, and therefore what the combined references teach as a whole.
Examiners have gotten used to construing art into broad categories that this Examiner probably thought that as long as each reference discloses a transmission, they are analogous art and the BPAI would accept whatever reasoning was provided.
"In the Answer, the Examiner first noted that the Applicant had attacked the references individually."
ReplyDeleteThe first two Graham findings of fact: 1) determine the scope and content of the prior art; 2) ascertain the differences between the prior art and the claims at issue.
If the Examiner argues Ref. A teaches X, but you think A does not teach X, then arguing that is OK because that argument goes directly to the first two Graham findings of fact.
Whenever I get the boilerplate of "attacked the references individually," I remind the Examiners about Graham ... you know, the case that the Supreme Court in KSR cited with approval.
Also, I don't know the name of the case that the Examiner's cite (and it isn't worth looking up), but I doubt they've ever read it -- I have. The facts that led to the snippet of case law that is cited are rarely encountered. Just another example of an Examiner citing case law that the Examiner does not understand.
The case is In re Keller. And you're right, no examiner has ever bothered to read it, or would understand it if they did read it.
ReplyDeleteThis is classic garbage 103 from the examiner's in TC 3600 (who are only outdone in garbage 103's by the truly awful TC 3700 examiners). Having to wait 2+ years for the Board to reverse this sh!t is scandalous.
>If Examiner argues A teaches X, but you
ReplyDelete>think A does not teach X, then arguing that
>is OK because that argument goes directly to
>the first two Graham findings of fact.
Agreed.
Just be sure that the Examiner really is arguing that A teaches X, and not that the combination teaches X. I have seen cases that lose at the BPAI because the Applicant missed the Examiner's real argument about the combination. [Sometimes because the Examiner didn't clearly explain the rejection.]
>Having to wait 2+ years for the Board to
ReplyDelete>reverse this sh!t is scandalous.
Agreed. Unfortunately, I see no other option for Applicants to fight crappy rejections.
"I see no other option for Applicants to fight crappy rejections."
ReplyDeleteIn the past, applicants would try the RCE route to get something, anything, out of the examiner. Paying RCE extortion is now less of an option given the reduced counts examiners get for them, and the long delay caused by recategorizing RCE's as continuation applications instead of amendments.
So far in FY 2011, the BPAI has had about 8100 appeals docketed and only disposed of about 3900 (they've disposed of only about 46% of the number of appeals docketed). The backlog has gone from about 19,000 cases to 22,500. The PTO needs to double the production of the BPAI just to keep the backlog from growing. If the patent reform bill passes and the post grant opposition system is implemented, the BPAI will be statutorily required to dispose of those oppositions in one year.
Keep appealing until the system just completely breaks down. Then the PTO will have to address the problem.
"Keep appealing until the system just completely breaks down. Then the PTO will have to address the problem."
ReplyDeleteHa. I would laugh if it wasn't so sad.
The failure of the PTO to give applicants meaningful review of the sh!tty work product of the examining corps is a scandal. From the utterly useless petition process, the years long waits for decisions in appeals, and the decision to treat RCE's as continuations instead of amendments, applicants are left with little, or no, choice.
ReplyDeleteDon't file RCE's. Appeal everything. Petition everything. And then call constantly asking for the status of your petition. Don't give them a minute of rest.
"Doesn't that amount to nothing more than: it would be obvious to provide a low range gear because low range gears are useful?"
ReplyDeleteClassic use of "Circular Reasoning"...