There are many issues for patent prosecution professionals to keep top of mind in their work… the invention, the potential competitors, the design arounds, the prior art, the business strategy, admissions, claim scope, costs, case law, patent office procedures, restrictions, … the list goes on. While some think patent prosecution is a commodity that can be bid out, like getting quotes to fix a dent on your car, the reality is so much more complex. In patent prosecution, just one little oversight can be the line that divides success from failure. The difference in outcomes due to missing one of these issues will not be just a slight mismatch in the paint color, but a car that cannot move and requires thousands more dollars to get working

A great example is illustrated in a case related to an engine oil pan (Appeal 2020-005079, Application 14/433,388). The applicant was so focused on distinguishing the prior art applied by the examiner that it seems they did not fully consider how their own specification might be used against them.

The application relates to an engine oil pan with certain alignment of a strengthening beam extending in a direction along a longitudinal axis of the vehicle:

1. An oil pan for an internal combustion engine of a vehicle and for storing an engine oil thereof, comprising:
an upper oil pan fixed to an engine body, the upper oil pan being formed of a metallic material;
a lower oil pan formed of a synthetic resin material, the lower oil pan having a major part and a peripheral part surrounding the major part, the peripheral part being sealingly fixed on a lower side of the upper oil pan;
a strength member that is a beam fixed to the upper oil pan,the beam being formed integral with the upper oil pan and extending in a direction along a longitudinal axis of the vehicle; and
a rib extending in the direction along the longitudinal axis of the vehicle, the rib being provided in an interior of the lower oil pan and beneath the beam to have a gap between opposite surfaces of the rib and the beam so that the rib is brought into contact with the beam to close the gap when external force which deforms the major part of the lower oil pan in the direction along the longitudinal axis of the vehicle acts on the major part of the lower oil pan, thereby preventing the major part of the lower oil pan from further deforming in the direction along the longitudinal axis of the vehicle,
wherein the beam is shaped such that its bottom edge protrudes downwardly while the rib is shaped such that its top edge is so downwardly cut away as to accept the protruding shape of the beam,
wherein the beam is a sole structure of the upper oil pan to prevent the further deformation of the major part of the lower oil pan.

The case came before the PTAB with the Applicant arguing about the “longitudinal axis of the vehicle.” The applicant was arguing that a person having ordinary skill in the art would not analogize a longitudinal axis of the vehicle to the ‘front to rear direction’ of the vehicle or to a ‘longitudinal direction’ of the vehicle more generally.”

The reason this was an issue is that the cited art showed an oil pan allegedly having the claimed structural beam, but did not specifically disclose a longitudinal axis of the vehicle. Rather, the prior art has arrows showing “front” and “rear” and referred to a “longitudinal direction” and showed beams not necessarily parallel with the front/rear direction. Whether or not the distinction between the disclosure in the cited art and the claimed longitudinal axis of the vehicle was valid, the real problem here for the applicant was that their own specification was not necessarily consistent with their argument, and the applicant never even addressed the issue in the briefs (nor did the Examiner).

Specifically, the applicant argued that “a person having ordinary skill in the art would understand the ‘longitudinal axis of the vehicle’ to be a single specific axis running the length of the vehicle through the vehicle’s center of gravity.” However, the Specification repeatedly referenced a “front-rear direction of the vehicle” and labeled said direction in the figures as “LO.” In fact, the specification stated that “[m]etallic upper oil pan 13 is formed integral with two beams 25 as strength members extending in the front-rear direction of the vehicle or in the direction ‘LO’, so as to correspond to two deformation-preventing ribs 24 that lower oil pan 14 has.”

This was all the PTAB needed to dismiss the argument entirely and skewer them with their own argument:

Based on Appellant’s own contentions, we know that this front-rear direction of a vehicle is not meant to disclose a longitudinal axis of that vehicle because “a person having ordinary skill in the art would not analogize a longitudinal axis of the vehicle to the ‘front to rear direction’ of the vehicle or to a ‘longitudinal direction’ of the vehicle more generally.” Appeal Br. 7. Accordingly, the application as originally filed fails to provide written description support for a “beam being formed integral with the upper oil pan and extending in a direction along a longitudinal axis of the vehicle.

The Board thus entered a new ground of rejection under Section 112.

In the end, the applicant was able to return to prosecution, amend the claims to remove the problematic language and narrow the claims, and obtain allowance.

Any patent professional working under the intense pressure of today’s budgetary constraints is stretched thin and has a multitude of issues to juggle in prosecution. One issue that can be easily short-changed is ensuring that all of your arguments against the prior art are consistent with your own specification and figures. In one’s zeal to attack the rejection and prior art with whatever arguments are available, one must retain awareness of the potential pitfalls lurking in the specification and figures. While an examiner may not bother to find them, the PTAB often will - especially when they are outcome-determinate to your case.