John Russell – Breaking Down Improper Logic In Office Actions

Schweiger & Partners


founded his firm's strategic Asian branch office in Singapore, which has become a major hub for IP matters in Asia. Martin Schweiger has his own blog, IP Lawyer Tools, that produces materials in helping to guide bright young people through the mine fields that the intellectual property (IP) profession has. It shows you specific solutions that can save you time and increase your productivity.
Patent prosecution has certain patterns that can be hard to recognize without many years of experience. Recognizing these patterns can help turn an inexplicable rejection into something that an applicant can effectively break down and attack.
Singapore Intellectual Property
To print this article, all you need is to be registered or login on

guest post by John Russell

Patent prosecution has certain patterns that can be hard to recognize without many years of experience. Recognizing these patterns can help turn an inexplicable rejection into something that an applicant can effectively break down and attack. Hopefully, this post helps you recognize a common pattern where an examiner makes rejections that at first appear to be based on a simple misunderstanding, but where in reality there is no examiner misunderstanding at all.

The specific issue of the day is the confusing tendency of USPTO examiners to re-interpret disclosure and morph it into something entirely different. Applicants often believe such rejection are just based on a mistake or misunderstanding, and all that is needed is to help the examiner better understand. In reality, however, the examiner knows exactly what they are doing and in reality the examiner's misinterpretations are carefully calculated.

The situation can feel surreal, where an examiner seems to be saying that "stop means go." The reference clearly shows something, yet the examiner is asserting it shows perhaps even the opposite of that something. The applicant may be thinking – even a kindergartner knows, for example, that disclosure of "stop" is not disclosure of "go." However, an applicant should not be so easily led down this path. A more nuanced approach and response is for the Applicant to think carefully and take into account the Broadest Reasonable Interpretation rules to break down the examiner's improper logic.

One example is Appeal 2020-004945, Application 15/555,323 to Briggs and Straton. Here, the invention relates to an engine comprising:

at least one piston;
a rotatable crankshaft coupled to the at least one piston;
a starter motor configured to selectively initiate rotation of the crankshaft;
a lithium-ion battery in electrical communication with the starter motor, the lithium-ion battery having at least one cell;
a charging system powered by motion of at least one component of the engine;
wherein the charging system provides energy to the lithium-ion battery to charge the lithium-ion battery;
wherein the engine has a starting condition, a running condition, and a stopping condition;
wherein the charging system continuously applies a voltage potential to the at least one cell while the engine is in a running condition.

Most engineers (and likely many non-engineers) know that an engine generates mechanical power from a fuel. In contrast, they also likely know that a generator converts mechanical power to electrical energy. These two things are not exactly opposites, but nevertheless they are distinct elements in reality.

While it is true that some generators have an internal combustion engine as a source of mechanical power, that does not make a generator an engine and it does not make the terms "generator" and "engine" interchangeable with one another. But this is exactly how examiners try to use BRI to support improper rejections. The (erroneous) logic goes like this:

  • the claim requires "B"
  • "A" is a system that can include a "B"
  • the claim uses "comprising" and is open ended (and thus doesn't exclude "A")
  • prior art discloses "A"
  • "B" is thus interpreted to be broad enough to read on "A"
  • therefore "B" is rejected based on "A"

Looking to the facts of this case, the examiner relied on prior art for a generator that included an engine, a battery, and a charging system as separate components to reject claim 1 above (for an engine). According to the examiner, the "generator" was actually the "engine" because the generator includes the engine. The examiner had to take this interpretation in order to actually reach the claimed elements.

The Board confirmed that this logic was improper (internal citations omitted):

The Examiner's determination that "an engine" as recited in the preamble of independent claims 1 and 11 may be interpreted to be a "portable generator" is unduly broad because it is inconsistent with the plain meaning of an "engine," and with the disclosures in Appellant's Specification. The Specification consistently and repeatedly describes an "engine" as a component of outdoor power equipment, such as a generator. For example, the Specification explains that "[o]utdoor power equipment may, for example, use an internal combustion engine to drive an implement, such as a rotary blade of a lawn mower, a pump of a pressure washer, the auger of a snowthrower, the alternator of a generator, and/or a drivetrain of the outdoor power equipment."

The Specification thus describes an "engine" as a component of a portable generator, rather than describing an "engine" as one and the same as a portable generator. Consistent with this description in the Specification,"engine" is defined as "a machine for converting any of various forms of energy into mechanical force and motion," while "generator" is defined as "a machine by which mechanical energy is changed into electrical energy."

The Examiner's interpretation of an "engine" as being the same as a "generator" is thus inconsistent with the plain meaning of these terms and with disclosures in Appellant's Specification, and the Examiner's interpretation of "engine" is, therefore, unduly broad.

So, when you get a rejection that makes you scratch your head as to what the examiner is thinking, consider confirming the examiner's interpretation via an interview and then making sure you have a clear understanding of how the BRI rules support or undercut the examiner's interpretation.

The above article has been first published here:

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

See More Popular Content From

Mondaq uses cookies on this website. By using our website you agree to our use of cookies as set out in our Privacy Policy.

Learn More