Monday, September 24, 2012

Applicant wins petition and avoids labeling figure as prior art


Takeaway: During prosecution of an application for a fuel cell system, the Examiner objected to FIG. 1 because it was not designated as prior art, yet "only that which is old is illustrated." The Applicant filed a Petition in response to the objection. The TC Director granted the Petition, apparently based on assertions in the Petition that FIG. 1 included "part of the claimed invention" and "the operation of the controller 28 for controlling the pump 20 and the by-pass valve 26 ... forms part of the invention."

Details:
Application of Kolodziej
Appl. No. 10/948,402
Tech Center 1700
Petition Decision  January 26, 2009
(available through Public PAIR)

The application was directed to a fuel cell system. The (single elected) independent claim included various system components and a controller. Specifically, the claim recited "a controller for controlling the bypass valve and the pump based on the temperature of the cooling fluid, said controller controlling the bypass valve and the pump in combination."

In a first Office Action, the Examiner objected to FIG. 1 (shown below) because it was not designated as Prior Art. The Examiner required this designation because "only that which is old is illustrated."


Rather than amending FIG. 1, the Applicant instead argued that "Figure 1 is not prior art in that the design of the controller 28 controls the pump 20 and the bypass valve 26 makes the controller 28 novel and unobvious." The Applicant elaborated on the inventive concept by explaining that the claim required controlling the pump and valve in combination rather than independently.

The Examiner maintained the drawing objection in a Final Office Action, and gave this additional explanation: "[T]he discussion of the Related Art [in Applicant's specification] fully describes FIGURE 1 (See paragraph [0009])."

The Applicant appealed the prior art rejections and simultaneously filed a Petition under § 1.182 to fight the drawing objection. In the Petition to the TC Director, the Applicant asserted that "figure 1 includes more than what is old, and particularly includes part of the claimed invention." The Applicant acknowledged that FIG. 1 was described in the background, but explained that operation of the controller 28 depicted in FIG. 1 was part of the invention described in the detailed description. The Applicant asserted that "how a controller operates structurally defines that controller." (The Applicant relied on In re Noll (CCPA 1976) for this proposition.)  Thus, the Applicant argued, FIG. 1 is not prior art, since how the controller operates the pump and valve "is part of the invention."

Shortly after the Examiner's Answer, the Director of TC 1700 granted Applicant's Petition and withdrew the requirement to label FIG. 1 as Prior Art. The Petition Decision provided no explanation, and merely referred to Applicant's assertions that FIG. 1 included "part of the claimed invention," and that the invention included the pump 20, the bypass valve 26, and "the operation of the controller 28 for controlling the pump 20 and the by-pass valve 26."

My Two Cents: I too would think twice before labeling something Prior Art, since a litigator would probably try to broaden that admission into something never intended by the drafter/prosecutor. Yet if FIG. 1 is a block diagram of known components, maybe it is Prior Art. What in FIG. 1 itself distinguishes the controller 28 over a prior art controller? Sure, it's programming ... but is that programming really shown in any way in FIG. 1? Maybe a better approach is to have a FIG. 1 that includes a block inside the controller that represents the novelty – maybe call it "control algorithm X" – and then have the flow chart of FIG. 2 reference numeral X.

The Applicant petitioned on final and simultaneously pursued an appeal of prior art rejections. Separate issues meant the Applicant could pursue both in parallel. Petitions are less useful when you really want a petition decision before you respond to other issues in the Office Action.

Finally, I wish petition decisions were searchable, because I think petitions are a good tool to have in the toolbox. But until they are, I'll be limited to posting about petitions that I come across randomly while looking at other things.

10 comments:

  1. "Finally, I wish petition decisions were searchable, because I think petitions are a good tool to have in the toolbox. But until they are, I'll be limited to posting about petitions that I come across randomly while looking at other things."

    Amen

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    1. I agree. I also wish that BPAI decisions were searchable by Examiner Name.

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    2. I can recommend something along those lines: James Long compiles a list of daily decisions which includes Examiner name and other good stuff.

      It's at http://jianqchyun.blogspot.com/

      His site goes back to 2009.

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    3. Yes, I've found that website the most helpful one around in that regard. Thanks to James Long, I was able to find that the Examiner I was going to appeal had been reversed by the BPAI at least 9 times within the previous two years and I was able to compare the rejections I wanted to appeal with the BPAI's reasons for reversal in those other applications. In my pre-appeal conference brief, I listed several of those cases and why the rejections in those cases were similarly deficient to the rejections in the case I was prosecuting. Result: Finality withdrawn and case allowed with a minor Examiner's Amendment.

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  2. " but explained that operation of the controller 28 depicted in FIG. 1 was part of the invention described in the detailed description"

    If that is claimed subject matter then the objection should have been related to failure to show claimed subject matter, and/or failure to provide a cutaway showing whatever novel parts are supposedly in there.

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  3. ""how a controller operates structurally defines that controller." "

    There, that is what the objection should have been for. Pity the examiner didn't know how to properly object to it.

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  4. "Maybe a better approach is to have a FIG. 1 that includes a block inside the controller that represents the novelty – maybe call it "control algorithm X" – and then have the flow chart of FIG. 2 reference numeral X."

    Still objectionable, show us the structure, not some flow chart.

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    1. Structure? We don't need no stinkin' structure!

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  5. this is clearly prior art drawing, from paragraph [0010] of the spec: "A controller 28 controls the position...."

    note "A" controller, ie. as in the prior art, not "the controller of the invention", it is absurd to suggest that what is shown and described is actually the system with the controller of the claimed invention.

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    1. and if thats not enough, heres the killer, paragraph [0015]:

      "Figure 1 is a schematic plan view of a cooling system for a fuel cell stack in a fuel cell system *of the type known in the art*"

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