This post follows up on a recent post (here) questioning who is reviewing the quality reviewers at the USPTO. The USPTO’s quality review program utilizes quality specialists (RQASs). These specialists often sit in on appeal conferences, supposedly to ensure that only strong cases receive an Answer (as opposed to an allowance or re-opening). However, as mentioned in the previous post, it is not difficult to find cases on appeal, approved by RQASs, that have major errors of basic patent law and basic procedure. Just as that post published, another example popped up. Appeal 2021-005203, Application 17/144,636.
This case actually used the fast track appeal process and so moved quickly through the appeal process. The basic error here is something that should never occur. The Answer completely ignores the primary argument for patentability in the appeal brief and fails to acknowledge or address it in any way. And if that was not bad enough, the Office did not ever properly examine the limitation at issue in the first place. Shocking? Yes, but unfortunately it is not unusual. And this applicant, Alexander Luis Hernandez, is a micro-entity - precisely the type of applicant that should not be put through the bureaucratic wringer. But alas…
The invention relates to a mask-hat combination, where the mask is easily stored with a flip of the wrist. The figures below are from the application.
Claim 1 (with emphasis added in bold as to the limitations at issue discussed here):"
1. A mask hat for wearing by a human user having a head with a nose and a mouth and comprised of:
a. a hat member having:
i. an interior surface and
ii. a bottom part where relative to being worn on the human user’s head, there is a fore-left temple hat region, a fore-right temple hat region, an aft-left temple hat region and an aft-right temple hat region
b. a mask member that:
i. relative to being deployed on the human user’s face, the mask member has a right upper mask region, a left upper mask region, a right lower mask region and left lower mask region
ii. is capable of snugly covering the mouth and nose of the human user,
iii. has a filtration cutoff which impedes the passage of a droplet and particle with the allowance for the passage of air there through and is capable of nesting on the interior surface of the hat member in substantial conformity to a portion of the interior surface of the hat member and
c. an attachment means that:
i. is comprised of four or more elastic cords with at least one cord fixedly connected between a right upper mask region and a fore-right temple hat region, at least one cord fixedly connected between a left upper mask region and a fore-left temple hat region, at least one cord fixedly connected between a right lower mask region and an aft-right temple hat region and at least one cord fixedly connected between a left lower mask region and an aft-left temple hat region;
ii. is elastically stretchable and contractable, which fixedly connects the hat member to the mask member such that there is enough stretchability to stretch the mask member away from the hat member and position the mask member over the human user's nose and mouth and enough contractability to contract to a degree where the mask member is held to snugly cover the human user's mouth and nose,
whereby the human user can wear the mask hat under conditions where there is no desire for protection against inhaling/exhaling a droplet and particle with the mask member is capable of being flipped and landing into a stowed position against the interior surface of the hat member and the human user can wear the mask hat under conditions where there is a desire for protection against inhaling/exhaling a droplet and particle with the mask member deployed substantially over the human user's mouth and nose.
The Examiner relied on a combination of references. The applicant argued during examination that the combination did not teach a mask member “capable of nesting on the interior surface of the hat member in substantial conformity to a portion of the interior surface of the hat” as recited in claims 1. In fact, that limitation, according to the applicant, was significant because, in cooperation with other limitations, that aspect facilitates the quick and easy flipping of the mask into a storage position.
Even with the inclusion of a quality assurance specialist at the USPTO on the appeal panel, and even though that limitation was argued during prosecution and placed in the pole position in the arguments section of the appeal brief, the Answer failed acknowledge the argument, or respond to it in any way. The PTAB noted the glaring error:
The Examiner does not address this argument in the Answer …While this language is functional and includes the term “substantially,” it must be afforded appropriate weight and cannot be read from the claim. A functional limitation must be evaluated and considered for what it fairly conveys to a person of ordinary skill in the pertinent art in the context in which it is used.
The Board went on to essentially do the quality assurance specialist’s job for them:
While it is possible that [the primary reference’s mask] is capable of nesting “in substantial conformity to a portion of the interior surface of the hat member,” the Examiner has not explained why this is so, or why the mask placed within the storage bag is “nested.” The same holds true for [the secondary reference]. The Examiner simply relies on Figures 1 and 2 of [the secondary reference] to establish that its mask is capable of nesting within its hat. This is not sufficient evidence …. The Examiner’s rejection provides us with no evaluation or interpretation of the functional nesting limitation of independent claims 1 and 11, or why that limitation is met by [the cited art]. The Answer does not cure this deficiency. Solely for this reason, we do not sustain the pending rejection of independent claims 1 and 11.
One would think that, at a bare minimum, a quality assurance specialist who signs off on an Answer should at least make sure the Answer responds to the primary argument in the Appeal Brief. Failing to do so is a complete breakdown of the administrative review process. Either the RQAS did not even read the appeal brief or Answer (or both), or they were so uninformed on the requirement for the Examiner to address the issues raised by the Applicant that they did read everything and approved it anyway.
What this case seems to imply is that, at a minimum:
1) quality review specialists still need more training on basic patent law and procedures; and
2) the idea that quality review specialists are ensuring quality examination is highly suspect.
As an aside, there was a question from a reader as to how one knows if an RQAS was on the appeal panel. The answer is at the end of the Answer, where the three examiners (the examiner and the two conferees) all provide their signature/approval of the answer. The title is placed below their names. The image below is the example from this case, with the RQAS specialist’s name removed as a courtesy (see the red arrow).
