A recent appeal (SN/ 14/774,933) illustrates several important lessons for patent prosecution, and is quite an interesting read as will be explained below. The case is one where the PTAB shows true understanding of the invention even though the briefs by both the Examiner and Applicant may have left something to be desired. Most of the relevant documents can be found here.

The invention relates to aircraft miniaturization, and more particularly to gas turbine engine miniaturization.

An aircraft comprising:

a fuselage including at least two scoop inlets for delivering inlet air to an included gas turbine engine; said gas turbine engine including a nose cone including a nose cone upstream end, and an inlet housing including at least two separate flow paths at a housing upstream end which is downstream of said nose cone upstream end, said inlet housing including a mixing portion downstream of the housing upstream end which mixes airflow from the separate flow paths; and a rotor and a turbine driving a shaft to drive the rotor, with said shaft including a bearing mounted at a location downstream of said nose cone upstream end; wherein the airflow in the mixing portion generally surrounds 360 degrees of a rotational axis of the gas turbine engine; and wherein said gas turbine engine is a miniature gas turbine engine.

The cited art allegedly showed most of the structure but was sized for a full size airplane. In particular, some of the components in the cited art were controlled by pilots of the aircraft. The applicant’s main argument on appeal seems to be that if one tried to miniaturize the engine in the cited art, the result would be to eliminate some of the structure the examiner relies on to show claimed elements.

However, before discussing more of the case in detail, it is helpful to review a few things all patent attorneys think they already know.

First is the issue of scaling. Most patent attorneys will tell you that merely scaling a product or component is not patentable. They say this because the MPEP tells us something that seems very absolute: MPEP 2144.04

IV. CHANGES IN SIZE, SHAPE, OR SEQUENCE OF ADDING INGREDIENTS

A.Changes in Size/Proportion

In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955) (Claims directed to a lumber package “of appreciable size and weight requiring handling by a lift truck” where held unpatentable over prior art lumber packages which could be lifted by hand because limitations relating to the size of the package were not sufficient to patentably distinguish over the prior art.); In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976) (“mere scaling up of a prior art process capable of being scaled up, if such were the case, would not establish patentability in a claim to an old process so scaled.” 531 F.2d at 1053, 189 USPQ at 148.).

In Gardnerv.TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device.

So how can an applicant possibly think they have a chance on appeal when the main issue is merely one of scaling? The answer is that the issue is often more complex than mere scaling, and further the way in which the MPEP “summarizes” cases is not necessarily accurate in a legal sense. In other words, one lesson to be learned from 14/774,933 is that the MPEP does not always set forth the actual holding of case, nor does it always correctly interpret the case law. While it is important to know what the MPEP says, and while an applicant generally has little chance of convincing an examiner that one cannot take the MPEP at its word, at the PTAB (or beyond), things are different.

Here, the actual facts of In Gardnerv.TEC Syst., Inc. are very relevant in terms of the burden. As the PTAB correctly points out (internal citations omitted):

The Examiner’s conclusion that it would have been obvious to miniaturize Marchant’s engine is based solely on the general legal principle espoused in the Gardner case, namely, that recitation of a relative dimension does not patentably distinguish over the prior art where the claimed dimension would not perform differently than the prior art device.The Gardner case involved an appeal to the Federal Circuit of a patent lawsuit tried before the Eastern District of Wisconsin. During trial, the District Court received detailed evidence consisting of prior art, expert testimony, and test results. In Gardner, the patent challenger (TEC) was assigned the burden of proving that the claimed relative dimensions did not result in a performance difference vis-à-vis the prior art. On review of the District Court’s findings, the Federal Circuit summarized the crux of the case in the following terms.

“If we are to agree with the trial court, we must have from it a finding supported by the record that TEC proved by clear and convincing evidence that a Gardner air bar coming within the claims of the ’447 patent is not in any significant respect different from similar devices available in the prior art because structural differences over the prior art do not necessarily result in differences in performance over the prior art.”

The PTAB goes on to explain that the Federal Circuit determined that the trial court would not have been clearly erroneous in concluding that the dimensional limitations did not specify a device which performed and operated any differently from the prior art. From this, the PTAB returns to the facts of the case on appeal:

Although the Examiner cites to a correct statement of law regarding relative dimensions, we are cognizant that we are sitting as the Board reviewing a decision by an Examiner. In the context of our proceedings, the Examiner bears the initial burden of putting forth a prima facie case of obviousness.

The Patent Office has the initial duty of supplying the factual basis for its rejection. It may not, because it may doubt that the invention is patentable, resort to speculation, unfounded assumptions or hindsight reconstruction to supply deficiencies in its factual basis . . . we may not resolve doubts in favor of the Patent Office determination when there are deficiencies in the record as to the necessary factual bases supporting its legal conclusion of obviousness.

So, the point here is that even when it seems like a simple case of mere scaling of the invention, a proper analysis of evidence and burdens is still required, and further such an analysis can be determinative.

Turning back to the gas turbine engine invention, the PTAB’s decision delves into the facts, even referencing Arnold Schwarzenegger at one point! As explained in the decision, the basis of the examiner’s finding is lacking evidentiary support. While the examiner was, in his own words, “unable to determine from Appellant's arguments a compelling reason as to why the nozzle structure could not be miniaturized with the rest of the engine”, the PTAB correctly points out that this is the wrong inquiry:

An Examiner’s inability to determine a compelling reasoning “why not” does not rise to the level of evidentiary support for a finding of fact. Given the facts and circumstances of this particular case, the foregoing statement from page 7 of the Answer is insufficient to support the Examiner’s findings of fact. … Unlike the Gardner case relied on by the Examiner, there is no evidence in the record before us by which we can reliably determine that a reduction in both physical size of the engine and a 99 percent reduction in rated thrust would not result in a performance difference with respect to the engine or the aircraft.

Administrative Patent Judge Capp should be commended for the thorough analysis and explanation, and for putting the invention in context with respect to the state of the art. The decision breathes life into the case and is a joy to read. Regardless of the outcome here, we commend PTAB members that go the extra mile to truly understand the invention and cited art as was done here.

So, remember that sometimes it can be important to put the invention in context as it can help distinctions make a difference. And, do not give up merely because the invention, at first glance, looks to be a mere scaling.