In a recent ex parte case, the company INRIX appealed the rejection of one of a connected car inventions. The invention relates to techniques for assessing traffic-related data, such as by filtering mobile data source samples that are inappropriate for roads of interest. The system purports to improve navigation through improved use of traffic data.
A key limitation of one of the appealed claims (claim 11) was that the processor used to determine whether a road segment was of interest was the same processor that also provided an indication to exclude those data samples from later use, thereby enabling other data samples to be available to facilitate travel. The Examiner relied on a single reference to anticipate claim 11. The Examiner initially asserted the features were shown by the reference, but when later pressed in the appeal brief, turned to reliance on inherency.
Unfortunately, it is common for examiners to maintain final rejections in which certain features are simply not shown. Further, in my experience, it is also not uncommon for examiners to fall back on inherency when pressed in an appeal brief. Fortunately for applicants, the law of inherency is rather strict, as it should be. The Office must show that the missing elements are necessarily present. Generally the most effective attack on inherency at the PTAB is for the appellant to point out an alternative technical option showing that the missing elements are not the only possible way to interpret the reference - and that is what happened here.
Specifically, the PTAB found that the Examiner had failed to establish inherency since it may be, for example, that another system that is separate from the claimed processor provides the processor with the indication to exclude the multiple data samples associated with the first road segment for later use. This was precisely the argument set forth in the Appellant's Reply brief and illustrates the importance of filing a Reply brief when the examiner switches the underlying reasoning of the rejection.
It is important to note that while the Office bears the burden of proving inherency, it is still important for the appellant to point out alternative options, even if technically unlikely, that destroy inherency. Interestingly, the PTAB does not generally require the appellant to provide evidence of these alternatives; however, it is obviously preferred to have such evidence if possible. Of course, when the issue is first raised in an Answer, there is no opportunity to present such new evidence, which probably explains why the PTAB does not press the issue.