Wednesday, December 4, 2013

Board affirms anticipation of "selectively deformable projection" but not because plastic is inherently deformable

Takeaway: In an application directed to a fuel injector, the Examiner asserted that the reference disclosed a "selectively deformable projection." In illustrating the projection, the reference drawing used the cross-hatching pattern for synthetic resin or plastic, which the Examiner asserted was "known to be selectively deformable." The Applicant argued that because the MPEP did not require particular cross-hatching patterns to be used, the projection in the reference was not necessarily made of plastic. Furthermore, the Examiner had not provided evidence that plastic was selectively deformable. The Board affirmed the rejection, noting that the reference taught a projection that passes through an aperture when the electrical terminals are mated with a power source. The Board reasoned that such a projection was "selectively deformable." (Ex parte Reiter, PTAB 2013.)

Details:

Ex parte Reiter
Appeal 2010008974; Appl. No. 11/662,621; Tech. Center 3700
Decided:  September 11, 2012

The application was directed to a fuel injector. A representative claim on appeal read:
     18. A fuel injector, comprising:
     a valve housing;
     a solenoid coil;
     a selectively deformable projection;
     a restoring spring;
     an armature, wherein the armature is acted upon by the restoring spring, and wherein the armature cooperates with the solenoid coil;
     a valve needle, wherein valve needle and the armature together form an axially displaceable valve part;
     a sealing seat formed by a valve-closure member and a valve-seat body, wherein the valve closure member is provided on the valve needle; and
     a disk made of an elastomeric material affixed between the solenoid coil and the valve housing.
(Emphasis added.)
In a first Office Action, the Examiner rejected originally filed claim 18 as obvious over a combination of two references. The Applicant amended to include a "selectively deformable projection."

The Examiner maintained the rejection in a Final Office Action, relying on reference number 96 in FIG. 2 of the primary reference, Casey.

The Examiner then explained that while the text of Casey referred to 96 as  "mating aperture" rather than as a projection, "the numeral and line call-out are pointing out the projecting part of bobbin 88."

The Applicant argued in an After Final Response that the reference did not disclose that the projecting part of bobbin 88 was "selectively deformable."

The Examiner provided additional information in an Advisory Action, noting the cross-hatching pattern shown in Casey's FIG. 2 and indicating that this pattern is for "a synthetic resin or plastic." The Advisory Action same cross-hatching was used for number 100, described in Casey as an "electrical connector housing" made of "a structural plastic such as glass filled nylon."  The Action thus concluded that "such plastic is known to be selectively deformable."

The Applicant appealed, and maintained that Casey did not teach a "selectively deformable projection." The Applicant characterized Examiner's statement about inherent properties of structural plastic as "speculation and conjecture" since "there is no evidence in the present record that a structural plastic such as glass filled nylon is or may be selectively deformable." Turning to the cross-hatching in Casey's FIG. 2, the Applicant noted that the MPEP did not actually require particular cross-hatching patterns, but only indicated that Applicants should use these patterns, and also indicated that "use and clarity [of patterns] must be decided on a case-by-case basis." Thus, Casey's cross-hatching was not sufficient evidence that the projection was necessarily made of a structural plastic.

The Examiner's Answer elaborated once again on the cross-hatching issue, noting that the illustration of projection 27 in Applicant's FIG. 3 used the very same cross-hatching pattern as used in Casey, which in turn was the pattern for synthetic resin or plastic shown in MPEP 608.02. The Examiner also asserted that "synthetic resin and/or plastic are know for their inherently present deformation properties." Finally, the Answer included a statement that seemed to involve claim construction: "The Examiner would like to point out that any physical object is inherently selectively deformable to a degree."

The Applicant filed a Reply Brief and argued the above statements from the Answer were merely "conclusory allegations of inherency," where the law of inherency required "a basis in technical fact and/or technical reasoning."

The Board affirmed the rejection. The Board first interpreted the term at issue. Using dictionary definitions of the two adjectives, the Board found that “ 'a selectively deformable projection' is a projection that can have its form spoiled due to a highly specific activity or effect." (Emphasis in original.) Applying this interpretation to Casey's teachings, the Board found as follows:
The portion of bobbin 88 which forms aperture 96 juts out from the main body of bobbin 88 as shown in Figure 2, thus constituting a projection as required by claim 18. This projection can have its form spoiled due to a highly specific activity or effect such as when the jutting portion of bobbin 88 passes with electrical terminals 94 through apertures 96 provided in the radial flange 80 or when the terminals 94 are mated with a power source for the solenoid coil 86. See Casey, col. 4. Ll. 51-55. Accordingly, Casey describes “a selectively deformable projection” as broadly claimed.
The Board also commented on the cross-hatching issue as follows:
Appellant contends that the cross hatching symbol used for aperture 96 is not necessarily synthetic resin or plastic because such symbols are not required by MPEP § 608.02. This argument concedes that Casey’s aperture 96 is indicated to be synthetic resin or plastic, and the fact that such marking is not mandated does not demonstrate that this marking is in error. Further, consistent with the indication that it is synthetic rubber or plastic, aperture 96 is formed by pair of bosses 98 that circumscribe and electrically isolate electrical terminals 94. Casey, col. 4, ll. 55-58; fig. 7.
My two cents: The Examiner relied solely on cross-hatching and inherent properties of plastic. The Board, however, relied on teachings in Casey about the projection passing through the aperture. So I say the Board made a new ground of rejection without designating it as such.

Did the Board read too much into Casey? Maybe the protrusion deformed as it passed through the aperture. But maybe the aperture was sized just slightly larger than the protrusion, so that deformation of the protrusion wasn't needed. Absent a teaching that

The original rejection relied on aperture 96 as the "projection." The Examiner later clarified by essentially saying "Casey may say 96 is an aperture, but it clearly points to a projection." And though I didn't mention this in my discussion of the prosecution history, the Applicant and the Examiner actually went back and forth on this point several more times. This is silly because Casey actually names the relied-upon structure "boss 98."
 The electrical terminals 94 are electrically insulated from the stator's radial flange by a pair of bosses 98 circumscribing the electrical terminals. These bosses 98 are formed integral with the spool 92 and extend through the apertures 96 of the radial flange. Alternatively, the solenoid coil 86 may be wound on a separate spool as is commonly done in the art. 
Why didn't the Examiner modify his rejection to rely on this more specific teaching instead of confusingly referring to aperture 96? And when he didn't, why did the Applicant keep harping on an irrelevant point? I think sometimes Applicants just like pointing out Examiner errors, even ones that don't directly advance their case.

One final nitpick. The Board said the Applicant conceded that Casey indicated the aperture/projection was plastic. I disagree: all the Applicant conceded was that Casey used cross-hatching. The Applicant in fact argued (several times) that a POSITA wouldn't necessarily understand cross-hatching to mean plastic.

6 comments:

  1. Interesting article; poor title.

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    1. Definitely a poor title. Now has a better title.

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  2. "One final nitpick. The Board said the Applicant conceded that Casey indicated the aperture/projection was plastic. I disagree: all the Applicant conceded was that Casey used cross-hatching. The Applicant in fact argued (several times) that a POSITA wouldn't necessarily understand cross-hatching to mean plastic."

    The idea that what particular cross hatching for which particular material is required by PTO rules is within the scope and content of the prior art (i.e. within the knowledge of one of ordinary skill in the art) is a legal fiction. A pretty silly legal fiction, but there are others as silly. Probably a few that are even sillier.

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  3. "So I say the Board made a new ground of rejection without designating it as such. "

    I say the thrust of the rejection is still the same. The part designated by the examiner is the part upon which the rejection is based. The examiner's explanation for why he is relying on that piece is not the grounds of rejection. It is an explanation of why the grounds of rejection were adopted by the office.

    "Why didn't the Examiner modify his rejection to rely on this more specific teaching instead of confusingly referring to aperture 96?"

    I don't even have to look at the pros history to know this is because he didn't want to make a nonfinal rejection over something as trivial as a number change when both parties actually already knew what he was talking about. Little did he know, he could still go final and adjust the numbering to make the designation more pleasing to the applicant so long as the grounds are the same. Most examiner have no conception of what a "ground of rejection" is and as such have no conception about what can be modified in a rejection and still go final. Coincidentally, this is similar to our own instant Karen. Or course examiners not knowing this is a source of much confusion and consternation because examiners don't want to modify their OA at all so that they can go final, even when the change is one merely of form in designating parts which were previously designated. Though to be clear, even making such a small change might lead to the applicant arguing they were not fairly put on notice by the first OA. And that is a legit complaint, though I doubt that happened here.

    "And when he didn't, why did the Applicant keep harping on an irrelevant point?"

    Trust me, applicants harping on irrelevant points is par for the course. A lot of times people don't understand why their really convincing argument failed to convince an examiner. Well, I've got news for you, when you spend your whole day wading through knee deep irrelevant sht, it can all start to blend together, mentally that is.

    "I think sometimes Applicants just like pointing out Examiner errors, even ones that don't directly advance their case. "

    Could be, but I doubt it, they're probably probing for any "in" that they can.

    No comment on the overall merits of the case. Sounds like one I'd probably give to the applicant absent further evidence on the record from what I saw though.

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    1. Though to be clear, even making such a small change might lead to the applicant arguing they were not fairly put on notice by the first OA. And that is a legit complaint, though I doubt that happened here.
      I think it is more laziness than fear.

      Well, I've got news for you, when you spend your whole day wading through knee deep irrelevant sht, it can all start to blend together, mentally that is
      Nice to see that you don't care enough to do your job correctly.

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  4. "I think it is more laziness than fear."

    Meh, maybe. But yeah I wouldn't say "fear". But more like "concerned" that their primary will sign off on their going final so they don't have to rewrite a non-final.

    "Nice to see that you don't care enough to do your job correctly."

    More news for you, it has nothing to do with "caring".

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