As we have discussed in recent posts, TC3700 has a habit of maintaining improper rejections (and forcing appeals) more so than any other area of the Patent Office. Unfortunately, such stubbornness seems to be supported by (or dictated by) a relatively small group of supervisory examiners. Here we examine a recent decision regarding a saw blade application by Milwaukee Electric Tool Corp. (US 14/295,449).

The invention relates to a unique saw blade design that improves reciprocating saws, particularly at the initiation of the cutting. A problem noted in the application is with regard to plunge cuts. The application describes a blade with various features to address these issues.

Claim 1 on appeal is set forth below:

During prosecution, the Examiner relied primarily on a hacksaw blade as anticipating the claimed reciprocating saw blade. One issue on appeal was the requirement of the attachment portion including a tang and an aperture configured to couple to the reciprocating saw. The Examiner relied on the holes at the ends of the hacksaw blade, shown in FIG. 1 of the prior art (Baker) below:

The rejection had numerous issues. For example, there were issues such as whether a hacksaw blade qualified as a reciprocating saw blade and whether the prior art blade had a tang, among numerous others. But what the PTAB focused on was functional language in claim 1 specifying that the attachment portion including the tang and aperture of the blade were "configured to couple to the reciprocating saw." The PTAB explains that:

Several aspects of the PTAB's decision are noteworthy. First is the notion that the PTAB is willing to overturn an anticipation rejection based on functional language. Clearly Baker does have an aperture and a protrusion (note the definition of tang as "a projecting shank, prong, fang, or tongue ... to connect with a handle"). Second, while one could design a reciprocating saw that connects to the projecting circular end and aperture in Baker, the PTAB recognizes that one skilled in the art would surely call such an excise foolish. The PTAB accepts this fundamental problem and is thus willing to overturn the rejection because using a reasonable interpretation it is clear that the hacksaw blade is not configured to couple to a reciprocating saw. Moreover, the Examiner does not explain how a Baker's hacksaw has a tang configured to attach to a reciprocating saw.

So, if an Examiner improperly ignores functional language, or if the Examiner takes an unreasonable interpretation of the prior art in order to stretch it so as to fall under functional language, do not be afraid to take these issues to the Board. In the right circumstances, the PTAB will give weight to functional limitations, even under a Section 102 analysis.