As discussed in previous posts (here, here, here, here, here, here), there are some pockets in the USPTO where some fundamental problems persist, forcing applicants into unnecessary appeals. Today we review two new decision from August in Art Unit 3747, one from Honda and one from GM. In each case, the applicant pointed out clear problems with the prior art rejections, and even tried using the pre-appeal process, but to no avail. The supervisors and examiners in both cases required an appeal to the Board, which resulted in reversals.
The GM case (13/798,351) relates to engine cylinder deactivation control and a particular way to manage a pattern of active cylinders. The rejection of claim 1 relied on anticipation by a first reference, as evidenced by a secondary reference. Two references for an anticipation rejection? Yes. Here, the examiner was asserting that the first reference actually had all the claimed elements; but, since there was a dispute over whether that first reference actually disclosed some elements, the examiner relied on a second reference as evidence for how the first reference should be understood. While technically this approach is possible, it is a red flag that something fishy is going on. The Board never discusses this issue, as they determined that the reliance on the primary reference was insufficient in any case. While the details can be found in PAIR, a sad note is that the applicant filed a pre-appeal request with the exact argument upon which the Board reversed the rejection. The pre-appeal decision (shown below) raises the question of whether this particular art unit really provides a proper consideration of such requests:
The Honda case (13/941.883) has a similar story. The application is directed to a way to determine the amount of scavenged gas in the engine. Here, the examiner relied on a single reference under either 102 or 103 - again, another red flag that something fishy is going on. The issue in this case related to whether disclosure of sensor was sufficient to disclose particular means-plus-function limitations requiring performing a specific calculation using a minimum exhaust pressure. Of course, the applicant's specification was all too clear that the limitation at issue could not be met merely with a sensor, but that did not stop the examiner and supervisor from continually rejecting the application. Again, the applicant here used a pre-appeal request with the primary argument being exactly the one the Board agreed with when reversing the rejection.
No one can expect every USPTO rejection to be perfect. And, it is good to see improper rejections reversed. There are many cases with close issues that are not so clear - that is the type of case that makes good use of the PTAB resources. But when a particular art unit stands out as being at the very end of the bell curve (see bigpatentdata.com here, and sort by highest reversals to see 3747 showing up at #5 out of 546), and a deep dive into particular cases shows a wanton disregard for the basics of patent law, one has to wonder what constitutes the source of the issues. Is it arrogance? Lack of understanding? An inability to see an opposing point of view? A training gap? Personal animosity? Unfortunately there are no clear answers.
So, while pre-appeal requests can be a helpful tool, consideration of examiner/supervisor statistics, such as bigpatentdata.com, for example, can help you avoid wasting effort on them when an appeal straight-away is likely the better choice (e.g., where such requests have a high chance of being rejected as a matter of course despite their strength).