Patent Law

First takeway from Shaw decision

By DC Patent Associate

Preliminarily, the previous post and corresponding research strayed off course.  The purpose of the blog is to make the blogger a better patent practitioner.  The method of becoming a better patent practitioner is to choose and research a topic.  The chosen topic was "what claim interpretations are so broad that they are beyond reasonable".  However, the first post instead dealt with the issue of interpretations of the prior art that were beyond reasonable.  Accordingly, the course must be corrected.  That said, lets stay off course for now because the purpose is more important than the plan.

First lesson relates to the Board surprisingly delving into the details to support the rejection.  The Examiner's rationale was (1) Scholl teaches a diagnostics system that addresses component failures of a vehicle, (2) the vehicle of Scholl includes an information handling system, and (3) therefore, Scholl teaches diagnosing component failures of an information handling system.  In contrast, the Board explained, although not clearly, that (1) Scholl teaches gathering computer-based model parameters, (2) that Scholl teaches producing a fault code in response to a parameter operating outside of its preset range, (3a) deducing that Scholl teaches producing a fault code in response to a computer-based model parameter operating outside of its preset range, or maybe instead (3b) determining that gathering computer-base model parameters would inherently include failures of the of the computer-based model parameters, and (4) concluding, but not expressly, that detecting failures of the computer-based model parameters would equate to detecting a hardware component failure of an information handling system.

In the past, the Office routinely issued rejections stating, for example, that claims 1-10 are anticipated by Smith, without any further explanation.  Although that has changed, maybe the Board's standards for reviewing rejections haven't.  Accordingly, due to my experience of reviewing this decision and my impressions from other Board's decisions, it seems the current Board's function is not to judge between the Examiner's position and the Applicant's position.  If a rejection can arguably be supported by the cited prior art, then the rejection will be upheld even under a very different rationale.

This seems unfair but a remedy is available, 37 CFR 41.52 gives the Applicant a "single request for rehearing within two months of the date of the original decision of the Board," as happened in previous post.  However, "(a)rguments not raised in the briefs before the Board and evidence not previously relied upon in the brief and any reply brief(s) are not permitted in the request for rehearing." 37 CFR 41.52.  Although the Board can create a new rationale to support the Examiner's rejection, the Applicant cannot raise new arguments in response? 

As for what might be the first lesson from all this... appeal when the claims overcome the prior art, not merely when the Examiner's rationale for applying the prior art is deficient.

Yet, that wouldn't have helped the Applicant in this case because the Board's reinterpretation of Shaw was not realistically foreseeable.

Full post as published by Benefit of Hindsight on January 17, 2008 (boomark / email).