Applicant caught between inconsistent BPAI Decision and Petition Decision

Takeaway: The Examiner objected to originally filed drawings in the first Office Action on the merits (mailed in 2004), and the Applicant is still fighting the very same objection in 2011 – even after winning at the BPAI on the prior art rejections! What's worse, the Applicant is now caught between inconsistent direction from the PTO: the BPAI Decision said to petition the objections and the Petition Decision said to appeal the objections. The Applicant has now filed a Renewed Petition which explains this inconsistency. If the Applicant loses this time, the only recourse is to file a suit in district court. (Application of Frye, Appl. 10/790,923.)

Details:

Application of Frye
Application 10/790,923
Technology Center 3700

Frye's filed a patent application for a shoe in 2004. The first Office Action on the merits included two § 1.83(a) drawing objections:

The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the midsole(s) must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.The drawings are objected to because the specification states that 824 is a point at 1/2 the length of the shoe, however the point at 824 in figure 14 appears to be clearly in the forefoot portion of the shoe, this is confusing.
(Emphasis added.) 

The originally filed spec referred to a midsole, but did not use a reference number. So the Applicant responded by amending the spec and drawings to add reference number 829. The drawing amendment looked like this:

The Examiner was not satisfied. In the first Final Office Action he maintained the two drawing objections and also indicated that the drawing contained new matter:

These drawings are not entered because they contain new matter, i.e. the thickness, shape, exact location, etc. of the midsole is considered to be new matter.
(Emphasis added.)

The Applicant filed an RCE with claim amendments to address prior art rejections and also argued against the new matter objection. The Applicant addressed the second drawing objection ("824 points to the forefoot") by explaining that line 824 had been "repositioned so that it coincides with the midpoint of the sole." The Applicant traversed the new matter objection by pointing to specific sections of the specification to show support for "midsole."

The Examiner maintained all three objections. Later in prosecution, the Applicant argued that a midsole is known to a POSITA and is thus not new matter:

Moreover, midsoles are well known by those of skill in the art as shown in the various prior art documents submitted by Applicant and cited by the Examiner and as taken by the Examiner as Official Notice, in the Office Action. No unusual features have been attributed to the midsole provided in FIGURE 14 and described in Applicant's specification.
(Emphasis added.)

The Examiner did not respond to this particular argument.

The Applicant filed seven more responses and amendments dealing with prior art rejections before appealing, but no progress was made on the objections. In addition to the prior art rejections, the Appeal Brief addressed the drawing and new matter objections (repeating the arguments already on record).

In the appeal decision (Ex parte Frye), the Board reversed all the prior art rejections. The Board did not reach the drawing and new matter objections. Instead, the Board noted that objections are petitionable matters, and chastised the Applicant for not dealing with this sooner:

In general, since petitions should be made within two months of the mailing date of the action or notice from which relief is requested, 37 C.F.R. § 1.181(f), petitionable matters should be addressed before an appeal reaches the Board. In the present case, it would have been desirable for the Appellant to have resolved the objections to the drawings and refusal to enter proposed drawing amendments by petition prior to the matter reaching the Board.

When the application (with all rejections reversed) was returned to the Examiner, the Examiner issued an Ex parte Quayle Action maintaining the drawing and new matter rejections. The Applicant filed two more responses with the same drawings and the same arguments traversing the objections. Finally, in April 2011, the Applicant filed a Petition on the new matter and drawing objections, and simultaneously filed an RCE (but no claim amendments).

After the petition was filed, but before a petition decision was issued, the Examiner issued another Office Action in response to the RCE. This Office Action maintained the drawing objection but withdrew the new matter objection in favor of an enablement rejection:

The specification and drawings are confusing and inconsistent and therefore do not provide adequate basis to enable one of ordinary skill in the art to make the claimed shoe becuase it is not clear where the location of point 824 is to be located. The specification states "approximately 1/2 the length" however the drawings clearly show such a location to be in the forefoot of the footwear. One of ordinary skill in the art would not be able to determine which location is appropriate for the invention. Also the drawings do not show a midsole and one of ordinary skill in the art would not know what thickness, shape, exact location etc. would be appropriate. Therefore the specification lacks enablement for a midsole or the location of the point which the forward toe section of constant thickness of the insole meets the heel section of the insole with a decreasing thickness.

The Petition, which handled by the Technology Center Director, was dismissed on the grounds that the drawing objection was related to the enablement rejection and thus should be handled by the BPAI:

A review of the record indicates that the drawing objection and claim rejection are directed to the same issues. ...  [T]he correctness of the examiner's drawing objection, resting on the lack of clarity of the claimed the location of point 824 of midsole, is dependent on the correctness' of the examiner's 35 USC 112 first paragraph rejection of claims based on the original specification. It is the policy of the USPTO in appropriate circumstances to decline to rule on a petitionable issue, when, as here, that an issue is also determinative of a  rejection, and as such, is appropriate for consideration on appeal to the BP AI. In this case, the issue in the objection and rejection, as here, additionally and necessarily requires the exercise of technical skill and legal judgment in order to evaluate the facts presented, the issue is properly decided on the merits, and is properly reviewed on appeal, not petition. Under the circumstances, it is believed that the issues presented under the claim rejections and drawing objection in the instant case require the same review by the BPAI. Thus, this issue is appealable and should not be decided by petition.
(Emphasis added.)

On July 5, 2011, the Applicant filed Renewed Petition explaining that the Petition Decision was inconsistent with the BPAI's decision:

The Board invited Applicant to pursue this issue through petition and have this issue addressed before an appeal reaches the Board. The Board is stating that this issue is to be resolved by petition. See Decision on Appeal, page 18, lines 15-21.Thus, Applicant is caught in an endless loop where the issue is passed off from the Board to the Director and now apparently is to be passed backed to the Board which stated that the issue was not within its jurisdiction and thus not appealable. As a result, Applicant respectfully requests the Director to decide this issue pursuant to this Renewed Petition.

 My two cents: Petitions are generally useless to Applicants because a petition doesn't stop the 6-month statutory clock and petition decisions often take months if not years. Not true here, as the decision took only about 6 weeks. This case highlights a second problem with the petition process  – the confusion between issues that are appealable and issues that are petitionable, which can catch the Applicant in "an endless loop" between the two entities.

Technically, there is no endless loop. Technically, the BPAI decision and the Petition decision are not inconsistent, because they were deciding two different issues. The Petition considered an enablement rejection that wasn't present when the Applicant petitioned, because the landscape changed between the time the petition was filed and the time the petition was decided. That is, the Applicant petitioned the new matter and drawing objections (Office Action mailed September 22, 2010), but by the time the petition was decided the new matter objection had disappeared in favor of an enablement rejection (Office Action mailed April 21, 2011).

Still, this mere technicality has huge consequences for the Applicant. If the Director doesn't have mercy on the Applicant in the Renewed Petition, the Applicant is forced into a second appeal, which will take years.

On a comletely different note, the Applicant's behavior here simply baffles me. The Applicant waited seven years to file a petition which should have been filed after the first Final Office Action! Why did the Applicant continue to repeat the same argument over and over and over? Because he thought there was no penalty for doing so? Because he didn't know there was an alternative?

Maybe the Applicant was hoping that the objections would simply go away. I have seen a number of cases go to the Board with objections present, and when the BPAI decided in the Applicant's favor, the Examiner issued a Notice of Allowance. That is, the objection simply disappeared with no comment. But as this case shows, you're in trouble if the Examiner maintains the objection even when the claims are otherwise allowable. So after what happened here in Frye, perhaps Applicants should consider filing petitions more often, at least when it's clear that the Examiner is entrenched in his position.

I also wonder if the Applicant dodged a bullet here by waiting so long to file the petition. Rule 1.181 says that petitions that are not "filed within two months of the mailing date of the action or notice from which relief is requested may be dismissed as untimely." It's not clear to me whether the action from which relief is requested is the very first Office Action in which the objection is raised, or whether it's the latest action maintaining the objection. I'd like it to be the latter, since that's more lenient for Applicants. Yet if the two month time period renews every time you get an Office Action, I don't really see the point of a two month time period, since that would allow me to wait (almost) indefinitely to file a petition.

It would have been nice if the Examiner had issued an enablement rejection from the start rather than new matter. The Board would have decided the issue, and that would be that. On the other hand, the Applicant did amend the spec, so this might be one of rare cases where a new matter objection is appropriate. This case illustrates why you don't want to amend the spec to add literal support for your claims: it's easier to appeal an enablement rejection than to petition a new matter rejection.