In the legal world, litigants often make pleadings that are logically inconsistent, and the fact that they do so generally cannot be used, by itself, to attack said pleadings.  Consider a criminal defendant charged with murder, they may assert that they did not commit the murder, but even if they did, it was self defense.

When dealing with the USPTO in ex parte proceedings, one question is whether the examiner is free to make inconsistent findings. As explained in MPEP 2141, for example, examiners “must articulate findings of fact that support the rationale” used for a rejection. Since the examiner is a decision-maker and not merely a litigant in the proceedings, there may be legal implications for findings that are logically inconsistent. This situation may also implicate the APA, which requires administrative agencies to avoid arbitrary or capricious decisions.

Nevertheless, examiner often do support their decisions with logically inconsistent factual findings or logically inconsistent legal analysis. And, they often get away with it.

A recent example where the applicant attempted to raise the issue of an examiner’s inconsistent findings is Appeal 2023-003115, Application 16/622,467. Claim 1 on appeal relates to a method of separation of a plasmid.

A method of continuous separation of a plasmid from a process feed comprising separating the plasmid in an apparatus with at least three chromatography columns packed with separation matrix particles, wherein said  separation matrix particles are gel filtration particles, and wherein while one chromatography column is loaded with the process feed, another chromatography column is eluted with an eluent to recover the separated plasmid, and yet another chromatography column is eluted with a further eluent to remove contaminants, and wherein the flow rates of the process feed, the eluent, and the further eluent are each controlled to avoid standstill between the columns.

The examiner rejected the claim as anticipated (relying on inherency), and obvious, in view of the same reference. On appeal, the applicant’s primary attack was that the inherency finding must be wrong because the examiner later found that the alleged inherent feature was obvious.

As an initial matter, there is a question whether such a rejection is, as a matter of logic, inconsistent. An examiner might argue that a feature is both inherent and also obvious without any actual inconsistency.

In the case at hand, the applicant’s approach was not supported by any further analysis specific to the particular inherency and obviousness issues, and so was dismissed by the Board, even assuming that the examiner’s rejection was inconsistent:

 Appellant contends that the Examiner has not established that Lacki’s process inherently avoids standstill. Id. at 5. Appellant quotes passages from the Examiner’s rejection of claim 1 in the Final Office Action and asserts that “[t]hese passages clearly do not include ‘a basis in fact and/or technical reasoning’ that the Examiner ‘must provide’ in order to rely on the ‘theory of inherency’.” Id. at 6. Appellant urges that inherency has not been established because the Examiner also relies on these passages to support the obviousness position.

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This argument is not persuasive because, as the Examiner explains (Ans. 16–17), the Examiner’s inherency and obviousness positions regarding Lacki’s avoidance of standstill between the columns are alternatives to each other. In other words, the Examiner finds Lacki teaches operation of the chromatographic separation method by starting and stopping the process steps and controlling the process feed and eluant flow rates depending on the determined saturation levels of the columns inherently avoids standstill. If, however, avoidance of standstill does not necessarily flow from Lacki’s teaching, the Examiner alternatively finds that it would have been obvious to have controlled the process, particularly the process feed and eluant flow rates, so as to avoid standstill as doing so would increase efficiency and reduce costs. Though these positions may appear to be in conflict with each other, this fact alone does not identify reversible error in the Examiner’s rejection—both positions must be erroneous for there to be reversible error in the rejection.

Missing from the applicant’s approach is the applicant did not point out how the combination could operate (where the flow rates are controlled in dependent on the saturation) in a way where standstill could still occur.  For example, if the applicant could point out how standstill might happen anyway, with as much technical reasoning and citation to the record as the examiner had done, then inherency may not be properly established (because one way to attack inherency is to establish the possibility that the result does not occur under the proposed combination/operation suggested by the examiner).  For example, perhaps there might be delays in the system operation in the prior art, or a situation where one column might have standstill because of saturation in another column (or two columns reaching saturation at the same time). The applicant would have to be careful that their own specification was consistent with any such technical reasoning (and that their invention would not be open to an attack that it also suffers the same deficiency), but then at least there would have been a counter to the examiner’s reasoning. 

By relying too heavily on the logical inconsistency, the applicant may have enabled an easy affirmance by the board.

But also, we see here that the Board is unlikely to find a fatal defect in a rejection based merely on inconsistencies by the examiner, and further actually expects the applicant to point out how either approach used by the examiner is wrong. It turns out it is the applicant that is being required to put forth reasoning that is consistent, even when the examiner may be taking inconsistent positions, even inconsistent factual findings.

So, be careful to recognize these issues an do not take an approach that give an easy affirmance to the Board.