When taking a case to the PTAB, such as in ex parte prosecution, applicants can become overly immersed in the particular issues disputed with the examiner. While those key issues may indeed be the primary purpose of the appeal, applicants should never lose sight of the importance of what appears to be mundane parts of the appeal brief. One such part is the so-called “Summary of Claimed Subject Matter.” As set forth in MPEP 1205 and 37 CFR 41.37, the appeal brief must include certain sections, and they must be in a certain order:
… the brief shall contain the following items under appropriate headings and in the order indicated in paragraphs (c)(1)(i) through (v) of this section…
Paragraph (c)(1)(iii) specifically refers to the Summary of Claimed Subject Matter (reproduced in part):
Summary of claimed subject matter. A concise explanation of the subject matter defined in each of the rejected independent claims, which shall refer to the specification in the Record by page and line number or by paragraph number, and to the drawing, if any, by reference characters…
The remainder of the paragraph refers to the specific instance of means plus function limitations, which are not discussed further in this post.
While this summary seems to be a mere formality, it can often have significant substantive impacts that can blindside the applicant on appeal. As an example, an applicant might be so focused on arguing that a certain feature is missing from the cited art that they do not realize their own specification includes some broadening language for that element. While the examiner may miss this point, the PTAB will not, particularly when pointed to it by the summary mapping.
A recent PTAB decision illustrates that PTAB judges really do care about the summary mapping and rely on it to understand the issues before them. SN 15/716,881 relates to an appeal for a device used with a single wire pair that carries Direct Current (DC) power and digital data concurrently, where the device includes a splitter with three ports such that (1) a digital data signal is passed only between the first and second ports, and (2) a DC power signal is passed only between the first and third ports. Claim 1 is below:
1. A device for use with a single wire pair, the wire pair concurrently carrying Direct Current (DC) power and bidirectional digital data signals that is carried over a frequency band above and distinct from the DC power using Frequency Division Multiplexing (FDM), the device comprising:
a connector for connecting to the wire pair;
a splitter having first, second and third ports, wherein the digital data signal is passed only between the first and second ports, and the DC power signal is passed only between the first and third ports, and wherein the first port is connected to the connector;
a software and a processor for executing the software;
a transceiver coupled between the processor and the second port for transmitting digital data to, and receiving digital data from, the wire pair via the connector;
a sensor for sensing a first phenomenon, the sensor having an output coupled for transmitting to the processor a value responsive to the first phenomenon; and
a single enclosure mountable for housing the connector, the splitter, the processor, and the transceiver, wherein the transceiver and the processor are coupled to the third port for being powered from the DC power via the connector, and wherein the device is operative to transmit the value to the wire pair via the connector.
In addition to arguing Section 101, the applicant was arguing that certain ports were missing from the cited art. However, the claim and specification had an inconsistency. According to the claim, a digital data signal is passed only between the first and second ports, and a DC power signal is passed only between the first and third ports. The Summary mapped these ports to the wrong numbers in the figure. Fortunately for the applicant, the PTAB realized the error and nevertheless found that the claim was clear (and the cited features were missing from the cited art). From the decision:
Despite this inconsistency, the claim is nonetheless clear that the second and third ports are dedicated to DC power and digital data signals, respectively, such that each port passes only its respective dedicated signal (i.e., data or power) to and from the first port. This independent and distinct
transmission of data and power signals from different ports reasonably comports with the functionality shown in Figure 7 and its associated description, notwithstanding Appellant inartfully transposing the recited second and third ports with their associated reference numerals 762a and 763a in Figure 7 (see Appeal Br. 3)—an error that we deem harmless on this record.
So, be careful in your appeal brief summary - mapping is key. Inartful mapping can ruin your appeal at the PTAB before it gets started.