Patent prosecution practices and rules at the USPTO and before the PTAB tend to be more flexible as applied to the Office as compared to when applied to the Applicant. For example, Applicant deadlines are strictly enforced against applicants, but not against the USPTO (even when they are in the statute, as illustrated by recent PTAB cases mentioned here). As another example, the PTAB often accepts convoluted explanations regarding the broadest reasonable interpretation by an Examiner, but has a habit of dismissing technical arguments by the Applicant as "mere attorney argument."

As a quick aside - such examples illustrate the potential for government overreach if left unchecked. While the APA provides some limits, actually suing the USPTO under the APA is a monumental task and few advocacy groups take on such endeavors in the IP area (as opposed to environmental protection, for example). In this way, the USPTO learns that there is little risk of push-back to over-reach, leading to the significantly increased potential for such over-reach.

Turning back to the particular issue of attorney argument being dismissed, consider the appeal in SN 11/618,424 owned by General Motors. The application relates to providing tour packages to vehicles through a telematics unit. The GM invention is particular relevant to enhancing the use of RVs (recreational vehicles) in touring. A key issue in this case was that the GM application used the vehicle's current location to define the starting point of the tour. As anyone who has ever toured in an RV can appreciate, it can sometimes be very difficult and time consuming to figure out the best way to do a tour from your current location. Sometime you start a tour in a tour book only to find that the roads are blocked due to fires or other problems and you need to take a different tour, but that takes hours to figure out since you do not want to spend all day just getting to the starting spot of another pre-defined tour route. The Examiner's primary reference did not recognize or address the idea that the packaged tour had a starting point that is calculated based on GPS data corresponding to a current location of the vehicle (as it was not directed to a vehicle in the first place). To rectify this deficiency, the Examiner turned to a secondary reference which was a mobile device that gave directions from a current location (again not with respect to a vehicle). Thus, the issue in this case was whether the Examiner properly established the obviousness of combining these ideas and then modifying the combination to reach the claimed elements.

As part of the arguments against the rejection, GM pointed out (through its attorneys) that that there was no reason for one of ordinary skill in the art to apply the methods described by the secondary reference to solve the problem of enhancing RV touring, and that the claimed invention "defines a system that addresses the particular problem of minimizing time delays associated with vehicular travel while enhancing the recreational use capabilities of a motor
vehicle by spontaneously providing occupants of a vehicle with an interactive tour in real time based upon the current location of the vehicle provided by a telematics unit's integrated GPS unit," which "enables vehicle occupants to spontaneously embark on a tour and to have the tour presented to them without leaving the vehicle." Again, the prior art was focused on a mobile device and walking tours, so it would seem like there was some relevance to this argument. However, the PTAB simply dismissed the argument out of hand as merely "unsupported attorney argument" not entitled to carry any evidentiary weight. While the PTAB may have simply believed that it was obvious to apply the prior art approaches to an RV, it seems improper to simply dismiss the argument in this way. GM should not need evidence to explain an advantage and related problem solved by their invention. The USPTO has the burden to establish a prima facia case of obviousness, and shifting the burden to the Applicant to come forward with evidence of this type seems unreasonable.

The moral of the story is to be exceedingly careful on appeal that arguments are always backed-up by at least some evidence. Here, counsel might have cited to the specification, or better yet could have filed a declaration with some evidence supporting this theory during prosecution. Further, one must select the arguments to present in the brief carefully to make sure that there are not easy outs for the PTAB to dismiss arguments and affirm the rejections.

Note: GM was ultimately successful in obtaining allowance of the application by more specifically defining certain features during subsequent prosecution before the Examiner (allowance mailed Aug., 2017).