A hallmark of an examiner group with problems is when the examiner and supervisor refuse to back down from an improper anticipation rejection by resorting to tortured interpretations under the Broadest Reasonable Interpretation (BRI) standard (see previous posts here, here, and here, for example, among others discussing BRI). Today we review another case illustrating this problem from art unit 3747.
Champion’s engine patent application 14/265,805 relates to an engine system with an integrated oil cooler having a cover to protect the oil cooler without blocking airflow to the engine. Claim 1 is set forth below:
An engine assembly comprising:
an internal combustion engine;
an oil cooler connected to the engine to receive heated oil and discharge cooled oil; and
an engine cover mounted to the internal combustion engine and having an opening to receive the oil cooler therein.
The claim was rejected as being anticipated by a single reference, Mamada et al. The problem for the examiner and supervisor was that the reference did not have the oil cooler connected to the engine or the engine cover mounted to the engine. Pretty big problems in a 102 rejection. Despite the applicant pointing out these deficiencies, the anticipation rejection was maintained with what amounted to silly reasoning. The PTAB needed to only reach the issue of the engine cover to reverse, but because this case illustrates a common over-reaching approach used by some examiners, some further thoughts are provided.
Specifically, in maintaining the rejection based on Mamada, the examiner and supervisor explained that while the reference did not disclose the engine cover mounted to the engine, the engine in Mamada was mounted to a frame, and the cover was mounted to the frame, and therefore everything was connected sufficiently to say that the cover was mounted to the engine. This is somewhat like claiming that I am coupled to the President when we are both standing on the earth - one of us in Portland and the other in Washington D.C. We are both standing on the same earth, and therefore we are connected through the earth to each other.
The PTAB made short order of this argument by confirming it was unreasonable. The PTAB explained that “the fact that engine 8 and engine cover 13 are mounted to a common element (i.e., frame 5) does not mean that cover 13 is mounted to engine 8, either directly or indirectly.” It is likely important here that the claim required “mounted” rather than merely “connected.” Mounting means more than connecting in the general lexicon, and so it was very easy here so see that the interpretation by the examiner and supervisor was unreasonable.
The PTAB also faulted the rejection because of its unreasonable interpretation of the opening to receive the oil cooler in the engine cover. The cited cover in Mamada had no opening, but the examiner and supervisor argued that because the cover was shaped with a recess, that qualified as an “opening.” In other words, everything enclosed within the cover is received within an opening formed in the cover. This overly-broad interpretation (which essentially resulted in the claimed opening being eliminated from the claim) was rejected by the Board as being inconsistent with the specification and figures.
Since the Federal Circuit has reigned in the practice of overly broad and unreasonable interpretations in cases like in re Smith, the PTAB has been relatively clear in its application of the rule that interpretations must be reasonable and consistent with the evidence in the record.
Here, the PTAB reversed all rejections and it remains to be seen whether prosecution will be re-opened. Since the PTAB failed to make any new grounds of rejection, it seems there is little reason to re-open this case.
So, if an examiner and their supervisor persist in unreasonable interpretations in order to maintain an improper anticipation rejection, consider taking the case to the PTAB.