PTAB not persuaded that reference disclosing non-elected species is improper

Takeaway: In appealing an obviousness rejection, the Applicant attacked the availability of a reference on the grounds that this contradicted an Election of Species requirement. More specifically, the Applicant argued that since the Applicant chose not to elect claims to a window refrigerator in combination with freezers and air conditioners, the Examiner was precluded from using a reference to a central air conditioner, which was even further removed than was the non-elected combination. The Board was not persuaded, noting that the only preclusive effect of a Restriction/Election was on divisional applications. (Ex parte Arjomand, PTAB 2014.) 

Details:
Ex parte Arjomand
Appeal 2012-008435; Appl. No. 11/474,530; Tech. Center 3700
Decided:  Nov. 3, 2014

The Application on appeal was titled "Window Refrigerator." According to the Specification, "during the hot summer months, this device can be used as both a refrigerator/freezer (R/F) and an indoor cooling and de-humidifying device; and in winter as an indoor heating-humidifying device."

At the start of prosecution, the Examiner issued an Election of Species Requirement, identifying species A, B, and C corresponding to Figures 1, 4, and 9. The Applicant filed a Response electing Group B (Fig. 4) and asserting that the elected group covered claims 24-37. The Response also stated:

Applicant thanks the examiner for recognizing the patentable distinctness of the subject matter of [elected] claims 24-37 over the subject matter of the other grouped claims. Clearly, claims 24-37 would be patentable over any prior art which is further removed from these claims than is the subject matter of [independent] claims 23 or 38.
(Emphasis added.)

In the first Action on the merits, the Examiner rejected all claims as obvious over Lukas, Metcalfe and Maeda. In the Response to this first Office Action, the Applicant argued, i.a., that this § 103 rejection was "improper for procedural reasons" because it was contradictory to the restriction/election requirement:

The examiner [through the Restriction/Election Requirement], in effect, held that a claim directed to a combination of a freezer and a refrigerator was patentable over a combination of an air conditioner and a cooling area for food (refrigerator), as see Section 802.01 of the MPEP. The examiner should not now be heard to say that the combination of a freezer and a refrigerator is unpatentable over the combination of an air conditioner and a refrigerator.

The Examiner issued a new ground of rejection in the next Office Action and did not comment on the Applicant's "contradictory" argument.

After several more rounds of prosecution , the Applicant appealed. By the time of appeal, the obviousness rejection had evolved to include a different set of references: Wertheimer, Maekawa (from the first Office Action) and Shavit. In the Appeal Brief, the Applicant renewed the "contradictory" argument and used it to challenge whether Shavit was a proper reference under § 103.

     The examiner's reliance upon Shavit and Wertheimer raises an issue that was decided early on in the prolonged prosecution of this application. Prior to a first action on the merits the examiner required an election of species between Fig. 1, Fig. 4, and Fig. 9. Fig. 1 is related to a window air conditioner. Fig. 4 is related to a window refrigerator. Fig. 9 is related to a window refrigerator associated with a freezer and a heat pump (air conditioner).
     Section 802.01 II of the M.P.E.P. states in part: "Related inventions are distinct if the inventions as claimed are not connected in at least one of design, operation, or effect (e.g., can be made by, or used in, a materially different process) and wherein at least one invention is PATENTABLE (novel and nonobvious) OVER THE OTHER (though they may each be unpatentable over the prior art)." (Capitals in original.)
     [During prosecution] the examiner acknowledged the election of claims 24-29 [Fig. 4 (window refrigerator)]. At that time he could have withdrawn the requirement, had he considered that window refrigerators were not patentable over window refrigerators associated with freezers and air conditioners. By maintaining the [restriction/election] requirement the examiner confirmed that window refrigerators are considered to be patentable over window refrigerators associated with freezers and air conditioners. This being the case, it is quite clear that window refrigerators are [also] patentable over central air conditioners. It is appellant's position that the use of a reference drawn to a central air conditioning system is improper and contrary to the examiner's [initial] position that window refrigerators are patentable over window refrigerators associated with freezers and air conditioners.

The claim groups resulting from the Restriction/Election were as follows:

STATUS	FIGURE	FIGURE DESCRIPTION	CLAIM
Unelected	Fig. 1	"thermos attached to the front of a window A/C"	23. A combination of a window .... a device comprising an air conditioner passing through the window having a front side ... with a control panel, and a thermos attached to the front of the air conditioner ...
Elected	Fig. 4	"standalone small size window R/F"	24. A combination of a window ... and a window refrigerator/freezer device, which device has a motor, a compressor, an evaporator, and a condenser coil and at least one of a refrigerator compartment and a freezer compartment..
Unelected	Fig. 9	"full-size window R/F having an auxiliary heat pump on top of it"	38. A combination of a window .... ; a window refrigerator/freezer device having a motor, a compressor, an evaporator, and a condenser coil ..and a heat pump device

The Board was not persuaded that Shavits was an improper reference. The Board explained that there is no connection between restriction/election and availability of a reference:

     Appellant further argues that the Examiner’s reliance on Shavit to remedy this deficiency is improper because, before beginning examination on the merits, the Examiner issued an Election of Species Requirement dividing the Application into three species, and one of the non-elected species relates to air conditioners, as does Shavit. ....
     We do not agree with Appellant’s position on this point. The Election of Species Requirement was issued based on the content of the Application, and any preclusive effect of the Election of Species Requirement with respect to rejections of the elected claims extends only to divisional applications directed to the non-elected species, not to other references. See 35 U.S.C. § 121.

My two cents: I had a hard time following the Applicant's own argument, but I understood the Board's characterization. I thought the Applicant's argument was creative, but also completely off-base.

The Applicant relied on a (mis)reading of the MPEP's definition of the term "distinct" used in the divisional statute. The crux of the Applicant's argument seemed to hinge on this phrase:  "PATENTABLE (novel and nonobvious) OVER THE OTHER."

Applicant's reasoning appeared to be:

• Examiner said window refrigerators are distinct from window refrigerators in association with freezers and air conditioners.
• According to the definition of distinct, window refrigerators are therefore Patentable Over window refrigerators in association with freezers and air conditioners
• Window refrigerators are therefore Non-Obvious over window refrigerators in association with freezers and air conditioners
• A reference disclosing a window refrigerator associated with freezers and air conditioners is therefore improper in an Obviousness rejection of a window refrigerator (one without freezers and air conditioners?)
• A central air conditioners is even further removed from a window refrigerator (one without freezers and air conditioners?) than are freezers and air conditioners
• CONCLUSION: A reference disclosing a central air conditioner associated with freezers and air conditioners is therefore improper in an Obviousness rejection of a window refrigerator (one without freezers and air conditioners?)

What baffles me is that the Applicant argued this as a matter of law, when the argument at best had a sort of intuitive appeal, as a matter of logic. But the logic falls apart pretty fast, because the Applicant ignored the magic word "claims": the comparison in the PATENTABLE OVER clause is to claims. So a claim to a window refrigerator is PATENTABLE OVER a claim to a window refrigerator in association with with freezers and air conditioners.

So, we're talking about claims, not disclosure. Moreover, we're talking about groups of claims in the same application.