PTAB decisions involving computer vs. user distinctions

I reviewed quite a few 2015 ex parte appeal decisions in which the distinction made by the Applicant related to actions performed by a computer rather than a user. I'll discuss a few of these in today's post, with more to follow in a future post.

In Ex parte Furlong (Appl. No. 10/769,117, PTAB 2015), the Board found that "automatically" in a computer claim covered user input that led eventually to computer action. The Furlong application was directed to software for generating expense reports. The user tracked daily activities and tasks using the software, and the software associated these daily activities and tasks with expenses, then generated an expense report. One of the limitations at issue on appeal read: "in response to the identification of the activity item being expensable, automatically associating, by the processor, at least one expense item with the activity item." The Applicant argued that in the reference, the user does the association, not the computer:

Vance's new trip is not (and will not be) associated with a car rental until Vance's user associates the new trip with the car rental. Since Vance's act of associating is not automatic, Vance's act of associating fails to teach the claimed act of automatically associating at least one expense item with the activity item. 

The Board found that "automatically associating" was broader than the Applicant's reading:

No implementation for such automation is recited or narrowed, and no degree of automation is recited either. Thus, even were Vance to do no more than automatically record an association after a user matched an expense item with an activity item, this creation of an association by the computer following the user’s input would be within the scope of the claim.

Similarly, in Ex parte Ren (Appl. No. 12/582,142, PTAB 2015) the Board found that a particular claim limitation covered computer input originating from a user. The application was directed to a vehicle navigation system. One of the claims on appeal ("a method of displaying a navigation map") involved rendering a nonphotorealistic image based on three-dimensional data associated with buildings surrounding the vehicle. The limitation argued on appeal was "modifying a viewing angle of the nonphotorealistic image based on feedback from the user." The Applicant argued that in the reference, the viewing angle was modified based on feedback from the system/vehicle, rather than user feedback as claimed. The Board was not persuaded, and adopted the Examiner's finding that "because a user operates the system/vehicle, Herbst’s feedback is based on the user."

In Ex parte Blythe (Appl. No. 11/965,946, PTAB 2015), the Board found that the claim language did not exclude human action. The claims were directed to detecting unauthorized changes to ATMs by comparing the ATM's electromagnetic "fingerprint" to a stored reference fingerprint. The Applicant appealed a § 103 rejection and argued the limitation "receiving, with the detection device, an electromagnetic profile emitted from the financial terminal, said received electromagnetic profile including radio wave activity if present." The Examiner relied on Yuzik ("Surveillance of Suspects of ATM Fraud") for this, pointing to an "RF listening device" in the surveillance system that "listened for suspicious RF signals transmitted from the vicinity of the ATM to a nearby receiver operated by a suspect." The Applicant argued that a combination using Yuzik's RF listening device required a person to actually hear radio activity, which was "a different approach from that provided by the subject invention." In the appeal Decision, the Board noted that "nothing in the claim excludes a person from actually hearing radio activity for detecting as well."

Similarly, in Ex parte Schimpf (Appl. No. 12/647,965, PTAB 2015), the Board found that the claims did not exclude manual entry of database fields. The application was directed to a system that dynamically constructed a new database query, allowing the user to directly specify which field contents in the current record were important. The Applicant argued the reference required a user to "manually enter desired values into fields when generating a search query." In contrast, the Applicant argued that the claims required the search query to be populated from database record field values. The Board disagreed and said the Applicant's manual field entry vs. computer populated distinction wasn't present in the claim:

Those claims recite a database record contains field values (“fields in said currently active database record contain values retrieved from said database”) and a search query uses field values (“a search query requesting all records having values in said at least one user selected field”), but the claims do not recite, and therefore do not require, using database record field values as search query field values. Moreover, the claims do not restrict the source of search query field values or the manner by which search query field values are obtained.

Ex parte Granda (Appl. No. 12/651439, PTAB 2015) is an instance where the Board found that the claims did not require a particular method step to be performed by a computer. The application was directed to a resolving cell phone connectivity problems "while avoiding audible ringing and or inadvertent user pick-up during error diagnosis and correction." The claimed method on appeal involved: receiving an error message at an autonomous probe in response to a data call placed by the probe; mapping the error message to an array of corrective actions. The method also included "executing at least one corrective action from the array of corrective actions." In arguing this limitations on appeal of an obviousness rejection, the Applicant asserted that the feature relied on by the Examiner was carried out by a user:

Shabalin merely discloses directing users to articles containing instructions that a user may follow in order to resolve an application error and fails to describe executing at least one correction action as recited by Appellants’ claim 1.

In construing the claim, the Board found that the Applicant had read too narrowly:

[C]laim 1 does not require that the executing at least one corrective action be performed by any particular unit, but merely recites executing at least one corrective action from the array of corrective actions (see claim 1). Thus, We find that Appellants’ contention that Shabalin"s executing is carried out by the user, (i.e., suggesting that it must be performed by the autonomous probe) is not commensurate with the scope of the claims.

Finally, Ex parte Rys (Appl. No. 12/111,877, PTAB 2015) is an example where the Board found that the claim language allowed for intermediate steps performed by a user. The application described techniques for renaming multiple files. The limitation at issue on appeal in the "computer-implemented method" read: "on detecting that the name is changed, automatically placing a next file in the specified collection in the rename state; [and] displaying a computer-generated name for the next file, the computer generated name based on the changed name of the single file." The Examiner mapped this claim limitation to the "Rename and Copy function with a serialization option" described in Kaplan. Kaplan's software presented the user with a series of dialog boxes, where the user provides and initial destination filename. The filename was then automatically incremented as additional files are copied, but for each filename the user was required to take action to either accept or change the filename. One of the distinctions made on appeal by the Applicant was this user interaction with Kaplan's dialog box. The Board was not persuaded.

With regard to those additional features which Appellant argues are explicitly required, we note Appellant’s claim utilizes the transitional word “comprising.” We therefore find that the possible inclusion of certain windows or dialog boxes within the process described by Kaplan does not preclude the Examiner’s reliance on Kaplan’s description of an automated serialized renaming process.
(Emphasis added.)

Read these blogs for Alice § 101 rejections

I work primarily in the computer and electronics arts, so I deal a lot with § 101 rejections in the wake of Alice v. CLS Bank. I haven't found any magic bullets for overcoming these rejections, but I have found some bloggers that feature posts on this topic.

Here are a few of my favorites:

•     The Software Intellectual Property Report ("Reporting from the nexus of software and intellectual property law" from Bejin Bieneman PLC)
•     BilskiBlog ("Analysis and Commentary on patent eligibility and patent strategy", from Fenwick and West)
•     USPTO Talk ("Observations about US patent examination and prosecution from a patent practitioner")
•     Software Patents Blog ("Software Patent Law Blog", from Schwegman, Lundberg & Woessner)

PTAB agrees with Applicant that claimed feature "would make no sense in the context" of the reference

Takeaway: The application on appeal used biometrics from multiple users to measure software application ease-of-use. The Examiner asserted that "averaging quantitative metrics across the plurality of users" was taught by the primary reference, and the Applicant argued this feature was not disclosed. The Applicant also argued that averaging would run counter to the main purpose of the primary reference. The Board reversed. "Appellants contend the claimed averaging across a plurality of users would make no sense in the context of Franz where cursor tracking responsive to keycap forces is customized for each user's preference. Id. ( see, e.g., Franz col. 2, 11. 22-26). We agree." (Ex parte Verma, PTAB 2015.)

Details:
Ex parte Verma
Appeal 2012-007587; Appl. No. 12/057,950; Tech. Center 2400
Decided:  February 3, 2015

The application on appeal used biometrics from multiple users to measure ease of use for a particular software application. "By correlating the application that a user is currently engaged in with the biometric measurements obtained from the devices, software ease of use can be done while [filtering out interactions with other concurrent applications]." "The information obtained from different users needs to be compiled into a single quantitative measure for ease of use index for the software, which can then be used as a user-independent index for its ease-of-use."

The claims on appeal recited:

     1. A computer implemented method for quantitative determination of software ease of use, comprising the steps of:
     using sensors to collect biometric data from each of a plurality of users engaged in using a software application operating on a computer  or computer network;
     monitoring and recording changes in the biometric data which occur while the software application is being used by each of the plurality  of users;
     combining recorded changes in the biometric data for each user into quantitative metrics;
     averaging quantitative metrics across the plurality of users;
     compiling the averaged quantitative metrics into a single quantitative measure for an ease of use index for the software application; and
     providing an output as a user-independent index for ease­ of-use of the software application.
(Emphasis added.)

The Examiner rejected as obvious over Franz in view of Kotzin. Franz was directed to keyboard cursor control, where cursor responsiveness could be adjusted for each user. Kotzin was directed to selecting from among multiple biometric sensors.

The Examiner read the claimed biometric sensors on Franz's keycap force sensors. The Examiner read the generating and averaging metrics steps on Franz's teaching that "several different parameters maybe stored, one for each of a plurality of users where the corresponding settings would be invoked depending upon who logged into the system." For the remaining single quantitative measure and user-independent index limitations, the Examiner relied on Kotzin's abstract, which stated: "Biometric samples are collected from multiple users [to enable a feature] when the sample matches a known sample corresponding to the user from a list of [sensors] prioritized according to accuracy and ease of use."

The Applicant appealed and made a variety of arguments in the Appeal Brief. One such argument related to the "averaging across users" limitation. The Applicant first argued that the reference simply did not disclose what the Examiner asserted, and then backed this up with a one sentence explanation of why the Examiner's interpretation didn't make sense:

The stored parameter settings are not combined, as specifically required by the claim. [Combining or averaging] would eliminate the personalization of the game controller response settings (the focus of Franz et al.). 

Later on in the response, the Applicant restated this argument about Franz, and then explained why averaging across users didn't make sense in Kotzin either.

Neither Franz et al. nor Kotzin average measures from different users. In Franz et al., this would make no sense whatsoever, because the purpose is to identify specific individuals and correlate their desired performance criteria (one wants to have the cursor tracking device perform in the desired manner, not in a manner averaged among several users). In Kotzin, this would also not make any sense. In Kotzin, the effort is to identify specific users so that only specific users can have access to a feature or service provided via a wireless communication device.

The Applicant also included arguments that neither reference taught the limitation "monitoring ... while the software application is being used," and that Kotzin was non-analogous art.

The Examiner's Answer included some rebuttal of each Appeal Brief argument. The Examiner explained why Kotzin was analogous by first addressing claim construction for "biometric data." The Examiner discussed the "monitoring" limitation by referring to Franz's keyboard microcontroller software. For the "averaging across users" limitation, the Examiner newly relied on a mention of averages in Franz. ("At initialization time, and periodically thereafter, the keyboard needs to read the individual sensor values and individually average them.")

The Applicant filed a Reply Brief. It mostly focused on the Examiner's claim construction position for "biometric data."

The Board reversed the § 103 rejection on the grounds that Franz did not teach, or even suggest, averaging the metrics across a plurality of users:

Appellants contend the claimed averaging across a plurality of users would make no sense in the context of Franz where cursor tracking responsive to keycap forces is customized for each user's preference. Id. ( see, e.g., Franz col. 2, 11. 22-26). We agree. Appellants further contend, in Franz, "one wants to have the cursor tracking device perform in the desired manner [(for each user)], not in a manner averaged among several users." Id. We agree.

Commenting on Franz's brief mention of "average," the Board found that the calibration procedure described in this passage was not performed across users.

My two cents: For the vast majority of Applicants, a "does not teach" argument amounts to quoting the reference, quoting the claim language, and then asserting that A is not B. And sometimes, this alone can be persuasive. But often a more persuasive argument can be made with judicious (and careful) use of paraphrasing, summarizing, and/or providing context. I  find the argument made by the Applicant in Verma to be more persuasive because it did just this.

The typical do-nothing-but-quote argument looks like:

Franz teaches "several different parameters maybe stored, one for each of a plurality of users where the corresponding settings would be invoked depending upon who logged into the system." However, this is not the same as "averaging quantitative metrics across the plurality of users" as recited in the claim.

For this argument to be persuasive, the Examiner must map the words, phrases, and concepts expressed in the reference to the words, phrase, and concepts in the claim. But claims are almost always hard to parse, and references too can be obtuse.

Paraphrase makes it easier to see the contrast between the reference teachings and the claims:

Franz stores parameters for each user, and then invokes corresponding per-user settings. In contrast, the clam recites averaging across multiple users. 

Here the Applicant went one step further and tied it all together, by providing a bit of context for the comparison:

[Combining or averaging] would eliminate the personalization of the game controller response settings (the focus of Franz et al.). ... In Franz et al., averaging measures from different users would make no sense whatsoever, because the purpose is to identify specific individuals and correlate their desired performance criteria (one wants to have the cursor tracking device perform in the desired manner, not in a manner averaged among several users).

I find this version of the argument even more persuasive. Notably, this explanation of context was preceded by an argument that stuck closely to the claim language. I think that's important. Because the "purpose" of the reference doesn't trump a reference that really does disclose the claim element. Instead, the purpose must be used to provide further explanation of how or why the relied-upon teachings do not disclose to the claim element.

I expect a lot of practitioners to disagree with me. And I can't stress enough that paraphrasing and summarizing must be done thoughtfully and carefully. Still, when done well, this form of argument can be very persuasive. 

I'll also point out that I am not advocating for arguing outside the claims, i.e., importing limitations into the claims. Here, the plain and ordinary meaning of the claim, read as a whole, actually does boil down to "averaging across multiple users." That's much different than arguing that "user" has a narrower meaning by importing statements in the Applicant's spec.

PTAB reverses obviousness of treating muscle-based disorders with a compound targeted at sensory neurons

Takeaway: The Examiner issued an obviousness rejection of claims to a method of using modified botox to treat urogenital-neurological disorders. One reference taught the modified toxin recited in the claims as a treatment for chronic pain. The other reference taught unmodified botox as a treatment for urogenital-neurological disorders, and also mentioned that pain was a symptom of these disorders. The Examiner used a substitution rationale and asserted that a POSITA would expect the modified (claimed) toxin to be "effective at treating chronic pain in urogenital-neurological disorders." The Board reversed, finding that the POSITA would have no reason to expect that "the opioid targeting moiety designed for nociceptive [sensory neuron] pain" would have any efficacy in treating the "muscle based urogenital­ neurological disorders" recited in the claims. (Ex parte Brin, PTAB 2015.)


Details:

Ex parte Brin
Appeal 201300250; Appl. No. 12/255,369; Tech. Center 1600
Decided:  Dec. 2, 2015

The application on appeal was directed to using a modified botulism toxin (botox) to treat sensory nerve bladder disorders, such as incontinence and chronic urinary tract infection.

A representative claim on appeal read:

     A method of treating urogenital-neurological disorder in a human, the method comprising the step of administering to the human in need thereof a therapeutically effective amount of a composition including a modified Clostridial toxin comprising
     an opioid peptide binding domain,
     a Clostridial toxin translocation domain and
     a Clostridial toxin enzymatic domain,
     wherein the urogenital-neurological disorder is selected from the group consisting of urinary incontinence, overactive bladder, detrusor dysfunction, lower urinary tract dysfunction, urinary retention and urinary hesitancy,
      wherein administration of the composition reduces a symptom of the urogenital­ neurological disorder, thereby treating the human.

The Examiner rejected the claims as obvious over Schmidt in view of Foster. Schmidt was used to show a method of treating urogenital-neurological disorders with (unmodified) botulinum toxin. Foster was used to show the modified toxin (having specific domains) recited in the claim.

The Examiner used a substitution rationale, asserting that Foster's modified toxin would provide several benefits mentioned in Foster (e.g., good efficacy, low dosage). "It would have been expected, absent evidence to the contrary, that the modified toxin would be effective at treating chronic pain in urogenital-neurological  disorders." The Examiner noted that Schmidt described patients with a urogenital-neurological disorder as experiencing pain, and that Foster's modified toxins were used to treat chronic pain.

The Applicant appealed the obviousness rejection and argued the prima facie case was insufficient. The Applicant focused on the different "mechanisms of action" in Schmidt and Foster. Schmidt's toxin affected a motor neuron, while Foster's modified toxin affected a sensory neuron. Thus, Schmidt treated a urogenital-neurological disorder by paralyzing a muscle, while Foster controlled pain by targeting sensory nerves (no effect on muscle).

[W]here there are two references being combined, each of which show the treatment of different diseases or conditions by a different mechanism of action, there is no reasonable expectation of success. Even an "obvious to try" approach would be insufficient to make out the prima facie case of obviousness. (See, e.g., In re May, 574 F.2d 1082, 1094, (CCPA 1978) and In re Schechter, 205 F.2d 185, 191, (CCPA 1953).)

Finally, the Applicant used these differences to rebut the Examiner's substitution rationale:

The Examiner is arguing that the respective methods of treating chronic pain by blocking the neuron are similar to blocking a receptor that activates a muscle by means of a neuron that provides a neurotransmitter such as acetylcholine. But the Examiner has provided no reference to show that these methods are similar. And, in fact, since the mechanisms of action are different, they are not similar.

In the Answer, the Examiner noted that the claims did not recite "different mechanisms of action." The claims did recite "reducing a symptom of a urogenital-neurological disorder." The Applicant's spec listed pain as a symptom of such disorders, and both Schmidt and Foster taught their toxin was useful to treat pain.

The Examiner was not persuaded by the Applicant's attack on the substitution rationale, since "the features upon which applicant relies (i.e., "mechanisms of action) are not recited in the rejected claim(s)." The Examiner maintained there was a reasonable expectation for the modified toxin to effectively treat chronic pain "absent convincing evidence to the contrary."

The Applicant did not file a Reply Brief.

The Board reversed the obviousness rejection as not being supported by the references. While the Examiner focused on pain treatment as a reason to combine the references, and asserted a reasonable expectation of success, the Board disagreed.

     Pain is not one of the recited conditions in claim 1. Foster's modified clostridium toxin would have been expected to treat pain, not the conditions recited in claim 1. We therefore agree with Appellants that there would have been no reason, based on Foster, to expect that a modified clostridium toxin with an opioid targeting moiety would have any efficacy on muscle based urogenital­ neurological disorders "selected from the group consisting of urinary incontinence, overactive bladder, detrusor dysfunction, lower urinary tract dysfunction, urinary retention and urinary hesitancy" (Claim  1). Schmidt also provides no reason to modify the clostridial toxin with an opioid targeting moiety because Schmidt is focused on treatment of voiding dysfunction, not pain. Neither Foster nor Schmidt provide any suggestion that an opioid targeting moiety designed for nociceptive pain would have any efficacy treating the conditions recited  in claim 1.

My two cents: The Applicant was wise not to frame this as a non-analogous art argument. The references were probably similar enough to be analogous, yet the Applicant successfully argued that the differences undermined the rationale to combine.

The Applicant leveraged a basic distinction between the two references – targeting muscles vs. targeting sensory nerves – into two slightly different arguments. One, the Examiner's substitution rationale was flawed because the treatment mechanisms were different, not similar.  Two, a POSITA reading the references would not expect the modified botox to effectively treat the claimed disorders.

The Applicant was wise to address substitution, because the Examiner brought it up. And I'm not surprised to see a no-expectation-of-success argument, since biotech cases seem to lend themselves to this. Not so in electronics, computers, and mechanical cases, since components (functional and structural) are generally expected to work in combination.

However, even when working in these technologies, you sometimes do find basic differences between the references, analogous to sensory vs motor neuron. If so, you might use these differences to craft a slightly different argument, basically explaining how/why wouldn't make sense for a POSITA to combine because of these differences.

Another way of thinking about this case is that the connection between the two references was too attenuated. One described treating chronic pain with the modified toxin, the other with treating nerve-based urological disorders with the unmodified toxin. The connection between the two was pain, in that the primary reference mentioned pain as a symptom of the treated nerve-based urological disorders. The Examiner reasoned that the claims recited "administration of the composition reduces a symptom of the urogenital­ neurological disorder", and pain was a symptom, so they were combinable. But the way I see it, the Examiner used pain as an intermediary to jump from the primary reference to the secondary. I'm not sure this was part of the Board's reasoning.

Here's something that I really don't understand about this case. The original claims recited "treating urogenital-neurological disorder." The Applicant narrowed during prosecution to include a specific set of disorders: "urinary incontinence," "overactive bladder," and four others. The Applicant didn't  mention this limitation in the response or the Appeal Brief. The Examiner failed to address it in both the Final Office Action and the Answer. And the Board mentioned this set of disorders in its obviousness analysis, but did not make a finding that the reference did (or did not) disclose the feature.

Applicant fights hard to get Examiner to provide translation of foreign reference

Takeaway: The Examiner rejected using a Japanese language reference. The rejection specifically referred to a drawing in the reference, but the Examiner did not provide a translation of the text that appeared in the drawing. The Applicant raised this issue several times in prosecution. The Applicant also filed a Petition under § 1.181, requesting the TC Director to compel the Examiner to act. After the fourth request, the Examiner finally provided a translation of the text in the relied-upon drawing. The Applicant later appealed. (Appl. No. 11/474,530 to Arjomand, "Window Refrigerator," available on Public Pair.)

Details:
Appl. No. 11/474,530 to Arjomand "Window Refrigerator"
(file wrapper available on Public Pair)

The application was directed to a "refrigerator for home use having its front indoors and its condenser coil outdoors to save electricity whenever the outdoors is colder than indoors."

In the first Office Action (mail date July 16, 2009), the Examiner rejected the claims as anticipated by patent publication JP 063000416A. A machine translation of the reference specification was included with the Office Action. A few weeks after the Office Action was mailed, the Applicant filed a paper requesting the Examiner to provide a translation of the entire reference. (This scenario is covered by MPEP 710.06 "Situations When Reply Period is Reset or Restarted.") The request explained:

The Examiner provided a machine translation accompanied by a single Figure which does not appear to be the one relied on by the Examiner. Applicant could only find the published abstract online. Applicant requests that all figures be supplied and that new a response period be set.

Five weeks after the Office Action mail date, the Examiner had not complied with the Applicant's request, so the Applicant filed a Petition under 1.181. The Petition asserted that it was PTO policy to supply "clear" translations of foreign language references (citing Ex parte Rudd, Appeal 2007-3775). The Applicant requested the Technology Center director to compel the Examiner to take the following actions:

• supply the drawings from the cited reference
• if the drawings include text in Japanese, supply an English translation of such material
• set a new 3-month response period, as of mailing date of the drawings

Five days after the Petition was filed, the Examiner sent a copy of the entire reference – including figures – in Japanese. The Examiner also reset the period for Response, to start from August 31 rather than July 25.  The Applicant then filed a paper specifically requesting the Examiner to provide an English translation of foreign-language subject matter found in FIG. 5 (the sole figure relied upon by the Examiner). The Applicant also requested a new 3-month response period.

On Sept. 25, the Examiner sent a "Miscellaneous Action" with this explanation:

   The rejection based on the JP patent is solely for teaching "ref/freezer (fig. 5) that has a separate freezer compt (8) and a fridge comp (9) where a damper (18) is disposed adjacent the fridge compartment (fig. 5) and dependent on a reference frame of view, the damper is disposed ... (fig. 5.)"
    Therefore no additional English translation of fig. 5 is deemed necessary in view of the computer translation sent earlier. The response period for the outstanding Office Action mailed 8/25/2009 remains UNCHANGED.

The Applicant filed a Response to Office Action a few weeks short of the six month date of the new reply period. The Applicant amended claims but also brought up the issue of the missing translation for the drawings. According to the Applicant, the Examiner's refusal to provide a full translation left the Applicant unable to determine whether the Examiner was impermissibly picking and choosing from the teachings of the reference. (In re Wesslau, 353 F.2d 238, 241 (C.C.P.A. 1965)). This refusal denied the Applicant the "possibility of presenting an educated response to the Office Action." The Applicant also noted the pending Petition to the TC Director.

The Examiner issued an Office Action, which was Final because of the claim amendments. The Office Action used the same Japanese reference in the rejection, and said nothing about Applicant's renewed request for a translation.

The Applicant filed a After Final Response within the two month date, and once again brought up the Examiner's failure to provide a full translation. This time the Applicant made arguments about the level of skill in the art. The Applicant took the position that the poor translation of the Japanese language reference made it impossible to determine the level of skill in the art. As a result, the third Graham factor had not been resolved and the rejection was deficient.

The Examiner issued an Advisory Action and indicated that he would request a full translation. He nonetheless maintained that it was proper to rely on a translated abstract of a foreign reference. The Examiner also asserted that a POSITA would know that the abstract is accurate. Furthermore, since the abstract was sufficient, the level of skill has been established.

Three weeks after the Advisory Action, the Examiner sent the translated figures. The Applicant filed an RCE with all new claims and thanked the Examiner for supplying the translation. The Applicant appealed after the next Office Action, which used a new primary reference (also Japanese). The original reference remained.

My two cents: I think reasonable minds can differ about whether fighting about a missing translation is a good idea. I do think it's important to try to make some forward progress on the merits of the case, rather than getting stuck solely on the translation issue.

I like the idea of filing a petition while at the same time continuing raise it with the Examiner. Here, looks like the Applicant worn the Examiner down before the petition was decided.

I'm generally in favor of appealing early. But failure to provide a translation is a petitionable, not appealable, matter. So appealing early would be a bad idea if you wanted to limit your arguments to failure to provide a full translation. In other words, I think you need to address the Examiner's assertions about the reference, even if you don't have all the information you need to make a great argument.

You could say, as the Applicant did, that the insufficient translation means the Examiner failed to make a Prima Facie case. And, sure, Prima Facie case is certainly something you can raise on appeal. Still, the interaction of these issues – Examiner requirements during prosecution, level of skill, foreign language reference – is complex. So I wouldn't bet my appeal on the Board holding that incomplete English translation means no level of skill means no Prima Facie case.

Finally, the Applicant could have bypassed the Examiner and gotten its own translation. Could be that costs actual money. But maybe not a lot. After all, it was only the Japanese text on the figures themselves that the Applicant was fighting about at the end. The Examiner had already provided the English language text of the entire specification. (After a specific request by the Applicant, that is.) 

PTAB agrees with Applicant that "beyond predefined speed" means above, not below

Takeaway: The Applicant appealed claims to a braking system. The limitation at issue read
"detection of ... rotational engine speed falling below a predetermined minimum." The Examiner relied on this statement in a Japanese reference: "judge whether rotation is beyond a predefined limit." The Applicant argued that the ordinary meaning of "beyond" was more than the limit, where the claim specified "below" the limit. Neither side cited a definition or any other evidence of meaning to a POSITA. The Board summarily agreed with the Applicant, citing to a dictionary definition, and reversed the rejection. (Ex parte Sabelstrom, PTAB 2015.)

Details:
Ex parte Sabelstrom
Appeal 2012012232; Appl. No. 11/721,180; Tech. Center 3600
Decided:  July 30, 2015

The Examiner introduced Hoshido (a Japanese reference) in a Final Office Action, after the Applicant amended in the first response. The rejection read:

As per claim 1, Hoshido discloses Auxiliary Brake Control Device of Vehicle comprising:
     means for disengaging the auxiliary brakes when the incident is detected;
     ... wherein the incident comprises at least one of: ...
     the rotational speed of the engine falling below a predetermined minimum value (engine rotation is beyond predetermined rotation (for example 900 RPM), Paragraph 21).

The Final Office Action included a copy of Hoshido (in Japanese), along with the corresponding English language abstract.

In the Appeal Brief, the Applicant argued that the Examiner had misinterpreted Hoshido. The Applicant included (in the Evidence Appendix) a machine translation from the JPO, and explained as follows

     It appears that [the relied-upon statement in Hoshido] has been construed to correspond to a step of determining that the rotational speed of the engine has fallen below a predetermined value. This is not correct. ...      In paragraph 21 a set of rules, steps 2-5, are defined, which set of rules are used for determining that braking is unnecessary, that is it is determined whether the driving condition is such that no brakes should be applied. ...
     In the third condition (4) it is determined whether the engine speed is beyond certain threshold value or not. A normal meaning of beyond is "more than; in excess or over and above"...  If the engine is running at low speed, there will be a reason to assume that braking is unnecessary, while if the engine is running a high speed, braking may be assumed to be desired. Thus, "beyond" should be understood to mean that braking is caused to occur when engine speed is above a predetermined value, not below the value.

The Applicant offered this additional context for the teachings of Hoshido:

It should also be noted that the exemplified condition is 900 RPM, a typical mid-range speed for diesel truck engine. Idling speed would be around 700 RPM and risk for stall is typically 100 rpm below this. It is thus clear that the condition tests whether the engine speed is above a certain threshold value or not.  

The Examiner's Answer repeated the same position. The only relevant additional information was this comment on the Applicant's statement about mid-range, idle, and stall speeds: "This explanation is so broad, different type of engine has different range of engine speeds according to manufacture specification."

The Reply Brief included a summary of differences between the claimed invention and the teachings of Hoshido. The Applicant did not further discuss the meaning of "beyond predetermined rotation."

My two cents: One of the few instances in prosecution where the issue really was the teachings of the reference, rather than the  meaning of the claims. The Applicant was smart to focus on meaning, though the position would be strengthened by offering evidence rather than a naked assertion.

Notably, it was the Applicant and not the Examiner that provided an English translation of the Japanese language reference. MPEP 706.2(II) that if the Examiner relies on the document itself rather than just the abstract, a translation should be provided.

The Applicant included the translation in the Evidence section of the Appeal Brief. Technically, the Applicant should have submitted this earlier and had the Examiner enter it as evidence. I'm glad to see the Board didn't ding the Applicant on this technicality, especially since the Examiner didn't follow the rules in the first place.