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.

Applicant petitions when Examiner says claims do not read on elected figure

Takeaway: In response to a Restriction requiring restriction between species/figures, the Applicant elected the species of Fig. 4 and asserted that all claims (1-11) read on the elected species. The Examiner issued another Action indicating that the phrase "linear series of at least three [brushes]" did not read on elected Fig. 4. The Applicant petitioned the Examiner's decision, explaining why claim 1 did read on Fig. 4. The Technology Center Director found that the Examiner's interpretation of "linear" in claim 1 was not unreasonable, and that the Restriction Requirement was therefore proper. (Appl. 11/507,367.)

Details:

Application of Alfano
Appl. No. 11/507,367
Tech Center 3700
Petition Decision January 26, 2009 (available through Public PAIR)

 The Applicant filed an application directed to a therapeutic body brush, with one independent claim and ten dependents. (View published application here.)

As a first action, the Examiner issued a species restriction, naming Figs. 3, 4, and 5 as distinct species. The Restriction required the Applicant to elect one of these species and to identify "the claims encompassing the elected species."

The figures (shown below) were described in the Application as follows:

FIG. 3 is a perspective view of the preferred long handle version of the body brush.
FIG. 4 is a perspective view of the preferred short handle version of the body brush.
FIG. 5 is a side view of the flexible handle portion and telescoping handle portion body brush ...

In a Response to Restriction, the Applicant elected Fig. 4 and specified that all the claims (1-11) read on the species of Fig. 4.

The Examiner then issued a Miscellaneous Action indicating that the Response was non-responsive.

Applicant's response is non-responsive since Applicant has elected the species of Fig. 4 and claim 1 fails to read on the elected species of Fig. 4. Specifically, claim 1, lines 4-5 recite "a linear series of at least three brush head mounting structures" (emphasis added) which is not readable on elected Fig. 4. Moreover, the specification never describes such an arrangement for elected Fig. 4.

The Action indicated that the Applicant had one month to file a responsive reply, with extensions of time available for a fee.

The Applicant filed a "Miscellaneous Paper" arguing that the Response to Resriction was fully responsive. The Applicant explained how the embodiment of Fig. 4 fell within the scope of claim 1. First, the Applicant asserted that the claim term "linear series" included both rectilinear series and and curvilinear series. The Applicant then asserted since "[t]he series of mounting structures in FIG 4 is curvilinear," elected claim 1 read on the species of FIG. 4. This paper was filed at the three-month mark, but without an extension of time fees.

The PTO next sent a Notice of Fees due, essentially treating Applicant's last filed paper as responding to the outstanding Miscellaneous Paper, but being two months late.

The Applicant then filed a Petition Under § 1.181 requesting Supervisory Review by the Technology Center Director. The Petition requested, as relief, withdrawal of the Examiner's holding of non-responsiveness. The Petition also requested that the associated extension fees be waived.

In the Petition, the Applicant made several substantive arguments. First, the Response to Restriction was fully responsive. Second, the Examiner's position (as clarified in an Examiner Interview) made it "logically impossible" to select Fig. 4 and corresponding claims reading on that Figure. Third, the Examiner's standard for "fully responsive" was improper.

The Applicant's argument that the Response to Restriction was fully responsive hinged on the meanings of "linear," "curvilinear," and "rectilinear." The Applicant contended that "rectilinear" and "curvilinear" are both subsets of "linear." As evidence, the Applicant presented definitions of all three words that referred to "line." Under this interpretation, claims 1-11 did read on Fig. 4, and the Response to Restriction was thus fully responsive.

The Applicant then explained why the Examiner's position was a "logical impossibility." During an Examiner Interview, the Supervisory Examiner indicated that none of claims 1-11 read on Fig. 4. However, claims 1-11 were the only claims in the application – thus the "logical impossibility" of electing Fig. 4, even though the Restriction Requirement identified Fig. 4 as one of three species.

As a final point, the Applicant argued that the Examiner had applied an improper standard for responsiveness.

The examiner and his supervisor have taken the position that identifying claims believed to read on an elected species is responsive only if those claims happen to match the ones the examiner believes read on that species. In other words, an answer is not an answer at all unless he happens to agree with it.

According to the Applicant, "a response is responsive if every demand for a reply receives an answer."

The Technology Center Director dismissed the petition. The Petition Decision first disposed of the issue of extension-of-time fees, noting that the Examiner's refusal to consider the late reply was proper. Turning to the propriety of the Restriction Requirement itself, the Decision noted that claim 1 "does raise a question as to what 'linear' means with respect to the elected Fig. 4." The Decision found that the Examiner's interpretation of "linear" in claim 1 was not unreasonable.

The term "linear" is typically applied to mean "straight" in everyday language. It is clear that is how the examiner understood the term "linear." In this regard, the Examiner also questioned whether there was any support in the specification in regard to the elected species of Fig. 4 ... Under the circumstances, the examiner's Office action of Dec. 7, 2007 is deemed proper since the understanding of "linear" came to light.

The Decision indicated that the basis of the Petition was essentially that the Examiner's position was unreasonable. As such, the appropriate procedure was a Request for Reconsideration.

This argument is proper in a request for reconsideration before the examiner. If the examiner had erred upon reviewing applicant's arguments, it would be appropriate for the examiner to draft a corrected election requirement or, alternatively, in agreeing with applicant's argument, move forward, in the examination of what has been elected.

The Decision then explained that the Applicant's "Miscellaneous Paper" was essentially a Request for Reconsideration, but one filed after the one-month reply period.

The miscellaneous letter of Mar. 10, 2008, is essentially a request for reconsideration in that it presents arguments to support the applicant's position in the election and is in direct response to the Office action of Dec. 7, 2007. Therefore, the requirement for an extension of time is correct before the examiner can consider the paper. It is not properly filed until the fee has been paid - including additional fees to cover for the continuing running the period for response.

Thus, the Examiner's holding of non-responsiveness was proper, and the requirement for extension of time fees was correct.

The Application went abandoned after the Petition Decision.

My two cents: See, I told you: it's always about claim construction. While the issue decided in this Petition Decision was non-responsiveness of an Applicant's Reply, the underlying issue was claim construction.

The TC Director decided that the Examiner's interpretation was not unreasonable. However, I didn't see any analysis of Broadest Reasonable Interpretation, only a brief mention of "everyday language." And I note that it's very unusual for the TC Director to rule on claim construction. This is a strange intersection of restriction practice (decided via petition) and claim construction (decided via appeal).

If the Applicant really wanted to fight for examination of claims 1-11, I suppose the next step would be to file a Request for Reconsideration of the Petition Decision, this time with the Petitions Office. That's how you "appeal" a petition decision and take it up to the next level.

The attorneys at the Petitions Office may not be familiar with the law of Broadest Reasonable Interpretation. On the other hand, the are attorneys, so should be equipped to handle BRI, especially if the Applicant does a good job of briefing the issue. The PTAB is better equipped to deal with BRI, since they deal with it every day. But procedurally, I can't see a way to get this before the PTAB. The Rules are clear that the PTAB only reviews rejections, and there aren't actually any rejections here.