With the PTAB struggling to keep up with the post grant review workload, the USPTO should be striving to reduce unnecessary appeals of clearly improper rejections. An appeal to the PTAB takes years and uses significant resources of both the USPTO and the applicant. There are significant costs and time spent on both sides which should be reserved for important close cases. What the PTAB should not have to deal with are ex parte appeals based on clearly improper rejections. Yet, from art unit 3747, the PTAB gets more than its fair share of cases it should never have to decide. See just a few previous examples here, here, and here.
Another example is SN 14/044,141 assigned to GM. This application relates to diagnostics for low engine coolant temperature. Claim 1 was directed to an approach using two temperature thresholds depending on the number of cylinders being used in a variable displacement engine (where some cylinders can be deactivated). Claim 1 is reproduced below:
The only rejection on appeal was whether the claim was supported by the specification under Section 112. The problem with the rejection was that it seemed to be based on a purposeful refusal to actually read the specification. The alleged problem was that one paragraph ([0060]) of the application used similar claim terms as claim 1, but was directed to unclaimed features of claim 1. The Examiner refused to recognize that other portions of the specification supported the claims perfectly.
The applicant summed up the error in one paragraph that tells you everything you need to know in that the Examiner (in maintaining the rejection) pointed to a part of the specification that simply was not relevant to the features being claimed. In other words, the Examiner rejected the claims as being unsupported by paragraph [0060], with the problem being that of course paragraph [0060] did not support the claimed element, but rather a different portion of the specification did. Nor did the applicant ever rely on paragraph [0060] for support. The whole "paragraph [0060]" issue was just a red herring:
Looking to the specification confirms exactly what the applicant states. Why then must this go to appeal? Two supervisors signed off on an Answer that nonsensically maintained the rejections for reasons that seem rather disingenuous to say the least.
The Board made short order of the case and reversed the rejection with a simple analysis following exactly what the applicant alleged in the brief. The PTAB notes that "ipsis verbis disclosure is not necessary to satisfy the written description requirement of Section 112." (citations omitted). The PTAB concluded that "the use of terms in claims 1 and 11 in a way that differs from how the same terms are used in the Specification does not, by itself, warrant rejection under Section 112(a)."
So, if you are facing a 112 rejection simply because the claim terms happen to have the same words as other non-claimed parts of the application, this is not necessarily fatal under 112 as long as one skilled in the art would reasonably understand. While such a proposition should not require an appeal, some areas of the USPTO will seize on anything to maintain a rejection.
The question remains, however, as to why an appeal such as this case was necessary. What benefit does all of the wasted effort by not only the applicant, but also the USPTO, give to anyone? Where is the quality review at the USPTO?