USPTO increases fees for ex parte appeals less than initially proposed, thanks to AIPLA and IPO

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Yesterday, the United States Patent and Trademark Office (USPTO) issued a final rule on fees, titled “Setting and Adjusting Patent Fees during Fiscal Year 2017”. One of the changes related to the ex parte appeal fees. The USPTO considered comments from stakeholders and then altered the proposed increases to ex parte appeal fees presented in the Notice of Proposed Rule Making (of October 3, 2016). Thanks in part to two important points raised by AIPLA and IPO, the final rule did not raise the Notice of Appeal fee and only increased the appeal forwarding fee by $240 (for large entity).

The first point raised in the comments related to the Notice of Appeal fee. Under this argument, the Notice of Appeal fee should not be increased because many applications never make it to the Board after the appeal conference (after the appeal brief has been filed). The AIPLA comment put the figure at 33% for 2016 of applications with filed appeal briefs that resulted in reopened prosecution or a notice of allowance. Presumably, these applications that get kicked out of the appeal process have faulty rejections. With such a high figure, it makes little sense to punish the applicant for these faulty rejections discovered by the USPTO after filing a Notice of Appeal.

The USPTO heard this point. Thus, instead of increasing the Notice of Appeal fee to $1,000, the fee will stay at $800.

The second point was a more fundamental argument against appeal fees being increased. The commenters argued that the appellants should not have to pay a greater share of the appeal cost. The USPTO had previously showed that only 58% of the appeal costs are covered by the appeal fees. And it had recommended increasing that to a total of 72% of the costs. Not so fast, argued both AIPLA and IPO.

AIPLA and IPO pointed to the low affirmance rate of Examiners on appeal, arguing that appellants should not cover a greater share of the appeal cost when so many of the rejections are improper. In other words, such appeal costs are necessitated by rejections that should never have been introduced, as evidenced by low affirmance rates. Both cited to the official USPTO statistics on affirmance rates around 40%. Further increasing fees will only make the poor examination worse as it deters applicants from pursuing appeals.

As we have pointed out before, when trying to measure poor rejections overturned, affirmance rates are actually an underestimated figure. This is because if only one rejection among others gets affirmed to all claims, that can mask the other rejections that get reversed. Thus, 40% affirmance rate is a very conservative figure. And some grounds of rejection are consistently overturned much higher than others.

The USPTO appeared to be receptive to this argument as well. The USPTO decided to increase the fee for forwarding an Appeal to the Board to $2,240 (+$240) instead of $2,500 as proposed in the NPRM. This translates into a compromise of covering 63% of the total appeal costs–higher than the current 58%, but lower than the originally proposed 72%.

Prosecution strategy has always been tightly linked to official fees. A fee increase for a particular procedure will undoubtedly decrease interest in the procedure, at least to some extent. Here, as the fees for appealing did not significantly rise, appeals remain a viable course of action in certain situations. This is especially true as the fees for RCEs rose proportionately higher and as the backlog for ex parte appeals continues to plummet.

Here are quotes from the comments.

From AIPLA’s comment: it is unfair for the Office to equate the full cost of an appeal to the appellant. Current statistics from the Office indicate that Examiners are affirmed in 57.4% of PTAB decisions. See https://www.uspto.gov/sites/default/files/documents/fy2016_sep_e.pdf. Thus, in a significant number of cases, appellants are subjected to appeal fees that could have been avoided if a correct decision was made at the examination level.

From IPO’s comment: The reversal rate of Ex Parte Appeals by PTAB indicates that a large number of appeals are pursued to correct invalid rejections. Although the FRN states that “the true cost of Ex Parte Appeals is being significantly subsidized,” they might be in effect “subsidizing” improper examination processes to correct improper rejections. Moreover, many appeals never reach the PTAB because the examiner withdraws the final rejection upon receipt of the Appeal Brief to reopen prosecution or issue a Notice of Allowance.

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Rare split panel at PTAB reverses abstract idea rejection

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Rarely do the three-judge panels at the PTAB offer differing opinions in ex parte appeal decisions. It’s not necessarily that these judges all agree with each other all the time. Instead, it’s because the USPTO production quota system does not reward judges for separate concurrences or dissents. So any time that a judge decides to spend in writing a separate opinion is in essence off-the-clock work. But this does not deter some judges from branching out from the panel, as shown in a recent case that reversed an abstract idea rejection: Ex Parte Boucher et al, Appeal No. 2017-003484 (PTAB Oct. 31, 2017).

In Ex Parte Boucher, the majority reversal of the Examiner’s rejection under Section 101, authored by Joseph L. Dixon and joined by Larry J. Hume, was brief. It held that the Examiner had provided insufficient factual findings and analysis on patent eligibility. The Examiner’s asserted abstract idea “manipulating data for the purpose of fault detection” oversimplified the claimed invention, according to the majority.

The majority further agreed with the appellant’s arguments that the claims are directed to new and useful improvements for detecting or diagnosing faults of items or of functions implemented by the items of an aircraft. Thus, the claims were not solely directed to an abstract idea.

Judge Joyce Craig disagreed with the majority on Section 101. The dissent would have characterized the claim as existing information in a database, analogizing the claims to Intellectual Ventures I LLC v. Erie Indemnity Co., 850 F.3d 1315, 1327 (Fed. Cir. 2017). The dissent would have characterized a remaining part of the claims as using a mathematical algorithm to manipulate existing information to generate additional information, citing to Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014). Thus, the dissent would have concluded that the claims are directed to an abstract idea under the Step 1 analysis of Mayo/Alice.

Under step 2, the dissent looked at the claim elements taken individually and saw nothing more than “routine computer functions and amount to no more than the performance of well-understood, routine, and conventional activities in known to the industry.” Thus, the dissent would have agreed with the Examiner and sustained the rejection.

The Federal Circuit and district courts are not the only judicial bodies that are at odds with each other with regard to applying a consistent and cohesive framework for assessing the two-step analysis of patent-eligibility. It can thus be useful to have additional knowledge at to guide your chances for appeal.

With Anticipat Research, you can see which judges are deciding cases in your tech center to give you a better sense of what your chances on appeal are. For example, if you are appealing a Section 101 rejection, will you get a Judge Craig type of panel that tends to agree with the Examiner’s analysis, or will you get a Judge Dixon type of panel that sides with the appellant’s analysis. See below interface.

filters  Try Anticipat Research today to see which judges are on the reversed panel decisions, specific to a tech center of interest. Then you can search for how often these judges appear both in panels and as authoring judges in your tech center.

Recent Rehearing Decision Reverses Panel’s Previous Affirmance on Section 101

Losing a Section 101 appeal at the PTAB can sting. In many cases, continued examination is off the table as further amendments may not help the cause. And appealing up to the courts involves spending a lot of time and money. But there is another option: filing a request for rehearing. A recent decision shows that this procedure is not fruitless for Section 101 rejections, even if it may seem like it is. 

Recently decided Ex parte MacKay, Appeal No. 2015-008232 (September 20, 2017) reversed a Section 101 rejection that it had previously affirmed in its initial decision. In the rehearing decision, the panel was less than wordy when it acknowledged that it realized that the relied-upon identification of an abstract idea (i.e., “rules for playing a game”) may not be affiliated with the limitations recited in the claims on appeal. Instead, the claim recites the creation of a game board surface image. The panel concluded that the record failed to adequately establish that the claims at issue are directed to an abstract idea, and the rejection under 35 U.S.C. § 101 was not sustained. 

On the face, intuition might suggest that requests for rehearing are a futile endeavor. And perhaps the numbers reflect this futility. The percentage of applications that get appealed to the PTAB is quite low, 1-2%. But the percentage of appeals where the applicant files a request for rehearing is that much lower, about 1-2% of the appealed decisions. On the surface it makes sense why this procedure is rarely used. But it should not be taken out of consideration for the following two reasons. 

First, appellants may present a new argument based on a recent relevant decision of either the Board or the Federal Circuit. But unless a case comes out that supports the appellant’s position and is directly on point, the rehearing panel can easily distinguish. Plus, with such a short window between the appeal decision and the rehearing decision, unless the Board failed to consider a key case in its original decision, it would seem less likely that an appellant’s new argument saves the day.
The second reason an appellant should consider rehearing is to show that the Board misapprehended or overlooked points. See 37 C.F.R. § 41.52(a)(1). Because the same panel of judges that rendered the initial decision rules in the request for rehearing, it might seem less likely that the panel admits that it misapprehended points in their earlier decision. But it turns out that it does work, as shown in the above case.

In conclusion, if you’re feeling out of options after an unsuccessful appeal to the PTAB, consider filing a request for rehearing. It’s fast (only a few extra months of wait time for a decision) and as shown above, there’s a chance that it helps reverse the rejection. Plus the cost is miniscule compared to appealing to the Federal Circuit or Eastern District of Virginia (the other options for seeking redress of the unfavorable PTAB decision). 

Will You Get C-Delay Patent Term Adjustment After Your Appeal?

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An advantage of appealing a patent application is to avoid unnecessary and narrower claim amendments and prosecution history estoppel. So rather than seek to appease an Examiner in an effort to overcome a particular rejection (with no guarantee of an allowance), appellants can ask the Board to directly overturn the Examiner. But an appeal comes with a sometimes heavy cost of significant time spent in the appeal process. For this reason, PTA can compensate for this time if the appeal is successful. In some industries, this PTA translates into big money. But when exactly does an appeal result in an applicant getting the patent term adjustment?

While appeal outcomes come in varying degrees of wins and losses for the appellant, C delay is an all-or-nothing reward. In short, C delay is rewarded whenever the Board overturns an unpatentability finding of at least one claim. This is how the USPTO interprets the statutory and rule language of “delay due to the review reversing an adverse determination of patentability”. See 35 U.S.C. § 154(b)(1)(C) and 37 CFR § 1.702. When only one ground of rejection is being decided, this means that either an affirmed-in-part (at least one claim reversed) or a wholly reversed outcome (all claims reversed) will lead to the C delay. When the Board decides multiple grounds of rejection, as long as none of the Examiner’s rejections survives with respect to one claim, an appellant will get PTA C delay.

Another way of looking at it is that an applicant will get C delay as long as the decision is not designated “affirmed.” We previously reported how the USPTO’s designation of “affirmed” is misleading and overly simplistic, which means that the appellant must be aware of simple procedural techniques that could deprive of precious PTA.When considering an appeal with the best chance of securing C delay, you should use Anticipat.com to help you consider three things.

First, assess the rejection depth of the claims. By rejection depth, the number of rejections associated with each claim (the greater the depth, the more rejections for each claim on appeal). The higher the rejection depth, the more likely you’ll get an affirmance and no C delay. This is because if all claims stand rejected under multiple grounds of rejection, there is a high chance that one of the rejections will stick. While it is possible for the Board to overturn each and every ground of rejection, with more rejections applied to the claims, the less likely this happens. This is in part due to the grounds of rejection having remarkably stable reversal rates, whether the appeal includes one or more grounds. In a recent decision, where four grounds of rejection were on appeal, the 101 rejection was affirmed, which masked the Board’s reversal of the 112(b) indefiniteness rejection, the 102 anticipation rejection and the 103 obviousness rejection. This meant that the application is ineligible for C delay for this appeal. All it takes is one rejection to carry the day against C delay.

Second, look at the track record for your application’s specific appeals–whole reversals and partial reversals. Some rejections (such as Section 101 patent-eligibility and obviousness-type double patenting) are all or nothing: all claims get reversed or all claims get affirmed. This is reflected in the percentage of “affirmed-in-part” outcomes for these grounds of rejection. For example some rejections, such as 102 or 112, have a relatively large affirmed-in-part category, creating a wide spread of the likelihood of overturning at least one claim. Other grounds, such as a Section 101 rejection, have a relatively low chance of being overturned even including affirmed-in-part. And this also includes the affirmed-in-part spread. Because it only takes one reversed claim to avoid an affirmed outcome (and hence qualify for C-delay PTA), look to the total combined statistic between pure reversals and affirmed-in-part outcomes. See the below graphs to see the different spreads for overturning at least one claim. The thick orange sections add significantly to the overall reversal rate of the rejection. For Section 102 and 112, the overall reversal rate approaches 60%.

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Third, render moot grounds of rejection you do not plan to contest before appealing or argue all of your grounds of rejection in the appeal brief. For one reason or another, quite a few appellants choose not to argue an appealed ground of rejection. This can be because they plan to make a minor claim amendment (such as to overcome a 112 rejection), they plan to file a Terminal Disclaimer (to overcome a double patenting rejection), or they plan to make an amendment to avoid a nonstatutory subject matter rejection (such as by adding non-transitory). This can be a mistake. In these cases, if these non-substantive outcomes apply to all the claims at issue, the entire case is affirmed and there is no PTA C-delay. For example, in Ex Parte Le Bot et al, the appellant did not argue a Section 112(b) indefiniteness argument even though its arguments succeeded in reversing the 103(a) argument. The result was an affirmance for the appeal and no possible chance for C-delay. A practice tip is that if you have a loose end to wrap up, resist the urge to take care of this loose end before or after the appeal.

It is good practice to be strategic about appeals, especially when patent term is important. Since it is difficult to predict which patents will eventually find this added patent term to be precious, better to be safe than sorry.

Another “good” bioinformatics claim found patent-eligible by the Board — insufficient evidence of routine and conventional claim

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In a previous post, we defined what a good bioinformatics claim looks like. Such a claim does not suffer from divided infringement issues and it does not recite steps to be performed by hospitals or doctors (e.g., medical procedures, administration of therapies) for maximum damages. We also reported that the US Patent Office resists granting such claims, alleging a lack of statutory subject matter. Here, we report on the PTAB continuing a trend of reversing such rejections of these types of claims.

In Ex parte Shioyama, Appeal No. 2016-001637 (PTAB October 20, 2017), claims recited a cell analyzer for determining a malignancy grade of cancer. While the representative claim is an apparatus claim (i.e., cell analyzer), the claim set also included a method claim. See representative claim below.

The Board reversed the abstract idea under step 1. In its reasoning, the Board held that the Examiner failed to provide evidence to support a prima facie case of lack of patentable subject matter. Drawing support from Enfish, the Board looked to the specification to analyze the claimed invention. It agreed with the appellant that “there is something more than a mere abstract idea”.

In its holding, the Board’s overturned the Examiner’s rejection (including that the abstract idea is routine and conventional) for not being supported by sufficient objective evidence. The Board recharacterized the alleged abstract idea. Instead of “determining the malignancy of a sample by analyzing a histogram”, as asserted by the Examiner, the Board found that the claim was directed to the abstract idea of “configuring a conventional processor to obtain a number of strong area cells that are distributed in an area where the fluorescence intensity is stronger than normal cells, and determine a malignancy grade of cancer using the number of strong-area cells and the histogram.” The Board then found that in light of these elements missing from the Examiner’s asserted abstract idea, the abstract idea claim step was not routine and conventional.

The Board made it very clear that the burden to provide evidence that an alleged abstract idea is routine and conventional is squarely on the Examiner’s shoulders.

Another interesting note about this representative claim relates to the word count. The Anticipat team has been informally observing claims where the Board has reversed abstract idea rejections to see if any patterns jump out. But with the various technical fields from which these claims arise, the relatively small sample size of these claims, and diverse claim drafting styles for these claims, the most telling pattern we found for predicting a patent-eligible claim was word count. That is, the longer the claim, the more likely the Board will overturn an Examiner’s Section 101 rejection. Here, however, this claim certainly bucks this theory that a hefty word count is needed for a patent-eligible claim, the representative claim having only 85 words. See below. It turns out brevity and patent-eligibility can go hand in hand.

And while we’re on the topic of predicting patent-eligibility, yes we checked “Ask Alice” for this claim, and it outputs a 55% patent-eligible score.

Representative Claim:

1. A cell analyzer comprising:

a cytometric device which measures cells that are nuclear stained;

a display which displays a histogram of a fluorescence intensity by using a result of the measurement by the cytometric device; and

a computer comprising at least one processor configured to obtain a number of strong area cells that are distributed in an area where the fluorescence intensity is stronger than normal cells, and determine a malignancy grade of cancer using the number of strong-area cells and the histogram.

Wisdom of the Board: Most Effective Arguments for Obviousness

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(Presented during the AIPLA Annual Meeting for the Patent Law Committee/Mentoring Committee session on Friday October 20, 2017 )

The title of my presentation is a play on words with the concept of “wisdom of the crowds,” which had its origins over a century ago. In 1907, at a lifestock annual show in England, a contest to estimate the weight of an ox attracted 800 participants. It was observed that the median guess of these participants, 1207 pounds, was accurate within 1% of the true weight of 1198 pounds. This finding spawned the wisdom of the crowds concept—that a median of a crowd’s individual judgments can be used to reflect a true center of a quantity to be estimated. This concept has infiltrated many disciplines and studies. In short, aggregate data can be a powerful thing.

Can Board decisions help in knowing how to overcome obviousness rejection? I think so. There may not be a one true obviousness response, but looking at the frequency of arguments can provide a framework and see the most effectively used. In appeal briefs, the Board entertains a lot of arguments and they coalesce around a finite set of them in overturning an obviousness rejection. Board decisions can definitely help organize these arguments. Plus, knowing the most frequent arguments can help in knowing how to draft appeal briefs. But more generally, it helps to align response arguments for proper prosecution. Because if you are following the way that judges overturn rejections, that information can be useful.

Laying the Foundation for an Obviousness Framework

Stepping back a little bit to talk about appeals more generally, it’s an interesting data point. One reason why I like looking at appeals data is you’re only looking at arguments of two sides who have vested interests in the case. And obviousness is the most common ground of rejection that gets appealed (by far).

With anticipat.com, we’ve found that there is quite a lot of disparity in how grounds of rejection are handled by the Board. Section 102 and 112 rejections are consistently reversed at a greater frequency than Section 101 and double patenting, for example.

Obviousness is in the middle of the pack. Since there are so many obviousness appeals, this means that there is a lot to learn from. Going through the decisions gave us order to what is going on with obviousness. There are a lot of possible arguments, but seeing how the judges apply the terms gives us a nice framework.

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First, you have the prima facie case, which the examiner must establish for a proper obviousness rejection. This prima facie case first requires that claim features be disclosed or suggested in the prior art. CFMT, Inc. v. Yieldup Int’l Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003) (“requires a suggestion of all limitations in a claim”). 

The second requirement is that there must be an articulated reason for obviousness. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.”).

After creating the above diagram, it appeared something like a brain with a left hemisphere and right hemisphere. After some thought, I realized that’s actually a good way of thinking about these two elements. As you may be aware, the left side of the brain is responsible for the logical functions such as science and math and the right side of the brain is responsible for the creativity functions, such as the arts. And that fits with what these elements do. The teaching or suggestion element is more of the logical “is it in the reference or not?” analysis. Whereas the second element (why would it have been obvious?) involves more creativity.

So starting with the left side, we touched on the highest level “are the features disclosed or suggested in the prior art.” But it breaks down into several categories.

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On this left side, claim interpretation is a big aspect of whether the prior art discloses or suggests the claim features. This includes whether features are properly given patentable weight, how the claim term is construed, and whether the broadest reasonable interpretation is correctly applied. There is also whether inherency is properly applied if a reference does not explicitly disclose a feature. Then there are arguments about the references themselves, whether they qualify as prior art and whether they are non-analogous art.

On the right side, a reason for obviousness must be clear and articulated—not conclusory. Usually Examiners use the rationales listed in KSR (e.g., obvious to try, etc.), but common sense can also be used. Thus, the Examiners can run afoul by incorrectly applying an established or made-up rationale. But beyond this global argument, it breaks down as well.

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If combining references, one skilled in the art must have a reasonable expectation of success in combining the references and must be motivated to combine them. Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1360 (Fed. Cir. 2012). The references cannot teach away, a reference cannot be modified to render it unsatisfactory for its intended purpose, and cannot be modified to change the principal mode of operation. Also, the Examiner cannot rely on improper hindsight bias.

In sum, the left side of the arguments involve more technical thinking while the right side involves some creativity—just like our brains.

Finally, once a prima facie case of obviousness has been made, the applicant can rebut that with objective evidence.

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A lot of components go into objective evidence such as, for example, secondary considerations and unexpected results.

Here is the complete framework of arguments that are used in overturning an obviousness rejection.

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Which arguments are most frequently used by the Board?

Now that we have the framework of arguments that the Board uses to overturn, we drill into the data. I used Anticipat.com Research database for a window of two months’ worth of recent decisions: July 1, 2017 – August 31, 2017. There was a total of 1607 decisions. Of these, 1345 included obviousness rejections (84%). And of these, 446 were wholly reversed on obviousness (33%). I looked at each of these manually to confirm accuracy. Any of the data discussed can be accessed using the research tool.

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1. Must disclose or suggest (63.9%)

By far, the most frequent way that the Board overturns the Examiner’s obviousness rejection is on the reference(s) not disclosing or suggesting the claim features. Sometimes this comes out as “the examiner didn’t make his case clearly enough so we can’t uphold”, but other times it is more confrontational by saying “the examiner is incorrect; the claim features are not shown or suggested in the cited references”.

2. Clear and factually-supported articulation of reasons for obviousness (35.9%)

The reason for obviousness (often times based on KSR language) was found to be faulty or not good enough.

3. Examiner Bears Initial Burden (Prima Facie Case) (12.6%)

So far it is to be expected that these arguments are the most frequent because they are required for a prima facie case so it makes sense that board uses these to attack. The next is the argument that the Examiner has not met his/her burden for a prima facie case. This gets used as a conclusion at the end or as a introduction. It never is the only argument used, but is coupled with either element of the prima facia case.

4. Scope and Content of Prior Art – Claim Construction (10.8%)

Often times the Board couples a generic argument (such as listed above in 1-3) with another argument nested inside. That is most true of the fourth most frequent argument to overturn obviousness: claim construction. This is always tied with “disclose or suggest” because the argument is that the prior art is not disclosing the claim language by focusing on what the claim language actually means.

5. Scope and Content of Prior Art – Broadest Reasonable Interpretation (6.7%)

Next is broadest reasonable interpretation. This is also almost always tied with “discloses or suggests” focusing on where the Examiner is interpreting too broadly. Suzanna Sundby gave a fantastic talk on obviousness on broadest reasonable interpretation. This can be a sore point of contention between an applicant and the examiner. The Board will step in and overturn unreasonably broad interpretations.

6. Inherency (5.8%)

Next is inherency. This is a relatively common argument that is tied to left side “discloses or suggests”. The Examiner may assert that the claim feature is inherently in the reference and the judge panel disagrees or holds that the examiner’s showing was insufficient.

7. Hindsight Reasoning (5.2%)

Hindsight is the most frequent argument that is usually tied to the right side, although it is not exclusively used here. In other words, the Examiner may propose a reason for why it would have been obvious and the panel can say that the reason was flawed and also on top of that the Examiner relies on hindsight. Sometimes in the combination discloses analysis the judges can say that the references do not disclose a particular feature and thrown in that the Examiner relies on hindsight.

8. Positively recited structure required for patentable weight (3.4%)

This is another left side argument. Here the Examiner may not be giving patentable weight to claim language and the judge panel overturns because the Examiner improperly did not give the claim patentable weight.

9. Proposed modification cannot render the prior art unsatisfactory for its intended purpose (2.5%)

The first of two classic rebuttal arguments is used by the Board in overturning obviousness rejection, but perhaps at a lower rate than one might expect. This gets coupled with the right side or reason for obviousness.

10. Proposed modification cannot change the principal mode of operation of a reference (1.8%)

The second of the two classic motivation rebuttal arguments. This is also tied to the right side.

11. Non-Analogous Art (1.3%)

This gets used usually with the left hand side of the logical argumentation. But sometimes when the Board overturns by attacking the Examiner’s reason for obviousness, the Examiner will conclude that the one reason why the reason for obviousness is flawed is because the Examiner improperly used a non-analogous reference.

12. Reasonable Expectation of Success (1.1%)

This is a right side argument that is highly tied to the motivation to combine. This argument will be thrown in as a small companion to the bigger motivation to combine argument.

13. Objective Evidence (0.9%)

Yesterday a presenter talked about how objective indicia are gaining in popularity since KSR. But it seems like they are not used very much here likely because objective indicia are more persuasive over time (after grant of patent) as more evidence becomes available with time.

14. What is Prior Art? (0.7%)

Whether a reference is prior art or not is rarely applied by the Board. One possible reason for this is that the appeal conference may kick out improper rejections by having the SPE and another primary analyze the contested prior art reference.

15. Teaching Away (0.2%)

The Board only used “teaching away” in one decision, showing how difficult of an argument it is to make. If the frequency of arguments by the Board is in any way correlated with effective arguments, teaching away is a losing argument.

Tech Centers

Looking across tech centers, it is interesting to see some anomalies. Biotech (tech center 1600) strongly overrepresents “articulated reason for obviousness” and “what is prior art?” and underrepresents “features not disclosed or suggested”. This suggests that it is best to focus on attacking the reason for obviousness instead of attacking the features not being disclosed or suggested.

Chemical (tech center 1700) strongly overrepresents inherency and hindsight. This suggests that Examiners in this space excessively use inherency.

Electrical/Computer (tech centers 2100, 2400, 2600, and 2800) overrepresents “must disclose or suggest,” and “broadest reasonable interpretation”. This shows that Examiners in this space may interpret claim terms too broadly and that it is worth fighting back on it. It also shows that it is effective to point out gaps in the applied art for the claim elements.

Business methods/software (tech center 3600) underrepresents “articulated reason for obviousness”. This may be because Examiners are given more leeway in this art in crafting creative reasons for obviousness since software is easy to plug in different modules or features.

Medical Device/mechanical (tech center 3700) overrepresents “reasonable expectation of success” and “claim construction” and “non-analogous art”. This suggests that it can be helpful to rely on the interpretation of a claim term. It also shows that non-analogous art can be effective in this space.

Conclusion

The Board generally tends to use the left-side arguments in overturning obviousness rejections, but there are exceptions as noted in specific tech centers. Some arguments are much more frequent than others.

Why is this useful? Have you struggled with a particular point of contention with an Examiner (for example thinking that the Examiner’s reason for obviousness is inadequate), wondering how this specific point of contention compares to others. Anticipat Analytics provides you with the organized and personalized information from the Board. 

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You can see a ranked listing of all the arguments that were found to be successful at the Board. For example, if you believe that your Office Action has an unreasonably broad interpretation, you can see where that argument falls in relation to others. Plus, you can access the Board decisions for your particular Examiner on that issue (if it exists). If it does not exist, you can go up to the art unit level or tech center for greater coverage of arguments. Seeing how often these arguments get used compared to others gives you a better sense of the likelihood of success in appealing or in working with the Examiner.

Consider using the most relevant arguments, but also find the persuasive arguments to support your particular application’s case. You might be surprised at how much the Board borrows arguments from a good appeal or reply brief. The tool allows for you to easily find the language that the Board uses, which can be a model for you to incorporate into your own filings.

When a Final Office Action comes in, consider using Anticipat. Here’s why

A first Office Action can involve a lot of guesswork. What does the Examiner mean with a particular rejection analysis? Is the Examiner serious with a particular rejection or just bluffing? Can the Examiner really get away with a particular rejection? To understand the issues and hopefully resolve them, an interview and a response with clarifying amendments and strong arguments can be critical to getting the application allowed.

But when a Final Office Action comes in, at least two pieces of the guesswork are gone: the Examiner still does not believe your application is patentable and you are likely facing an RCE. You have a lot of options: you can appease the Examiner with further claim amendments, narrowing the claims with no guarantee of an allowance. You can appeal the case to independent panels (including judges at the PTAB or Board) to evaluate the propriety of the rejections. Or you can use Anticipat.com and learn from others’ appeal information about this Examiner or art unit to learn from outcomes in similarly fought battles. This latter option can be used to guide your specific prosecution strategy, putting you on top for your client.

An important point about Examiners is that they all examine applications quite differently. For one, they have different personalities and understandings, resulting in a varied interpretation of the patent laws and rules. And these kind of personality differences tend to repeat from application to application. For example, an Examiner who is pre-occupied with unreasonably broad interpretations for one application will be preoccupied with them for another application.

Another difference in examination lies in examiners’ specific training and work group guidance, much of which stems from specific technology nuances. For every formal Guideline published by the USPTO, many other internal guidances get circulated to tech centers and art units that admonish examiners within these smaller groups how they should examine applications.

But not all of these personality quirks or internal memos comport with the patent laws or patent rules, which is where the Board comes in. The Board is the first line of defense in holding Examiners and even their SPEs accountable for the rejections they issue. When an applicant appeals a case, the Board is the first to overturn the Examiner or supervisor.  Either way, having objective evidence of this track record and lessons from these prior decisions can inform or validate a particular strategy. Even if a practitioner already knows about a particular examiner’s or art unit’s quirks, such Board data for this examiner/art unit can be used to see others’ successes in dealing with issues.

With Anticipat Research, you can quickly look up all decisions that were decided with a particular Examiner, her art unit, or tech center on any ground of rejection. So the savvy practitioner will likely want to see the decisions that were overturned on an issue this practitioner is dealing with. This research tool cuts down the time compared to public ways of finding out this information. See https://e-foia.uspto.gov/Foia/PTABReadingRoom.jsp. It also makes the searching an overall better experience. This tool pays for itself within minutes of use each month.

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Anticipat Practitioner Analytics goes a step further in making Board information actionable in one’s own prosecution practice. Simply input an application number (or Examiner name or art unit) and you can see what the Examiner’s reversal rate for a particular ground of rejection is. You can also see the exact numbers of decisions reversed and click on the specific decisions to see if the issues are as similar as they say they are.

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Anticipat Analytics also breaks down the most persuasive arguments that the Board relied on in reversing this particular ground of rejection of interest. If appropriate, you can click on a legal authority icon that provides you with the legal authority that the Board relied on for this particular argument. What these provide for a practitioner is an outline straight from the Board of successful ways to overcome various grounds of rejection. The efficiencies and knowledge gained pay for themselves within minutes of use. To see more, watch this YouTube video.

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Give Anticipat a try right now for a free trial.

Section 101 Rejection Overturned. What’s Next: A Notice of Allowance or a Revised Office Action?

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It has seemed like the PTAB has been on a recent roll in reversing abstract idea rejections. In the past four weeks, 13 decisions have reversed abstract idea rejections. But in that same time period, there have been over 60 abstract idea appeals that have been affirmed. See Anticipat Research Database. So the recent trend has actually been consistent with historical reversal rates of about 20%, which is far below other grounds of rejection reversal rates.

On this note, two related business method applications came out on October 3, 2017: Ex Parte Webber et al., Appeal No. 2015-003647, and Ex Parte Webber et al., Appeal No. 2015-003796. In the decisions, the Board reversed the Examiner’s abstract idea rejections under 35 U.S.C. 101 for the same reasons. The Examiner had failed to set forth any analysis that the claim is directed to an abstract idea, and that the claims do not provide “significantly more” than any abstract idea. The Examiner in the Examiner’s Answer provided an incomplete analysis and only applied the machine-or-transformation test. And as the Bilski Supreme Court made clear, the machine-or-transformation is a useful tool, but not the sole test.

The Board only sought to decide the rejection at hand and not to evaluate the patent-eligibility of the claims on its own. Now that the decision was rendered, the logical question is what happens next? To understand this, we navigate through a somewhat complex area of rules.

The first scenario is for a “reversed” decision. When a decision is wholly reversed (each and every ground of rejection is reversed), the general outcome is a Notice of Allowance. There is an exception to this. The director can authorize reopening prosecution under 37 CFR 1.198 for the purpose of entering a new rejection. See MPEP 1002.02(c) and MPEP 1214.04. Thus, in Ex Parte Chapman, Appeal No. 2014-007861 (PTAB Nov. 21, 2016), all grounds of rejection (Sections 101 and 103 rejections) were reversed by the Board, but rather than issuing a Notice of Allowance, a subsequent Office Action issued with both rejections reappearing as new.

The second scenario is for an “affirmed” decision. If a Section 101 rejection is reversed, but other grounds of rejection were affirmed for all claims, this designates the decision as affirmed and the applicant must file an RCE to reopen prosecution. In response, the Examiner can issue an Office Action without a Section 101 rejection (especially when the Board reversed a well-articulated Section 101 rejection). See Ex Parte FISK, Appeal No. 2015-005360 (PTAB Sept. 21, 2016).

The Examiner can also issue an Office Action with a Section 101 rejection even though the Board reversed the previous 101 rejection (especially when the original 101 rejection was underdeveloped). in this manner, the Examiner can correct a deficiency in the analysis, as is often the case. See Ex Parte Dogin et al, Appeal No. 2015-005000 (PTAB Feb. 27, 2017) and Ex Parte Kelly et al, Appeal No. 2015-001219 (PTAB Dec. 19, 2016).

Returning back to these two decisions, it seems likely that the Examiner will likely issue another Office Action with an improved Section 101 rejection. In both of these decisions, while the Section 101 and Section 103 rejections were reversed, a Section 112 Written Description rejection was sustained. Thus, the applicant may choose to file amendments with the RCE, after which the Examiner may get a second opportunity to reject the claims as abstract using the proper analysis of Alice/Mayo. And with one of the applications having the title “SYSTEM AND METHOD FOR DONATING TO CHARITABLE ORGANIZATIONS”, it seems like it could be an uphill battle for the applicant.

PTAB: It Is Not Obvious to Modify a Reference to Perform the Same Functionality

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Ten years ago, the Supreme Court decided KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007). As an overseer of Examiners, the PTAB has played a pivotal role in developing the doctrine of obviousness since then. A recent case Ex parte Böger, Appeal No. 2017-001586 (PTAB August 29, 2017) highlights a common way and a less common way that obviousness rejections can be overturned. Both ways involve attacking the articulated reason for obviousness.

An obviousness rejection must include an articulated reason for why the claimed invention would have been obvious. KSR made clear that the reason cannot be conclusory and instead must be articulated with a rational underpinning.

Often times, a successful rebuttal is made by attacking the articulated reason as inadequate. The savvy patent practitioner knows established ways to pick apart an Examiner’s rejection. The MPEP and case law includes these “rebuttal arguments.” See MPEP 2143 and 2145. The decision Boger illustrates two of these rebuttals.

In Boger, the Examiner found that the primary reference does not disclose “heating the complete or entire material of the core layer in a region of the beading fold”. The Examiner asserted that a secondary reference makes up for this by disclosing a complete core-melting technique. The Examiner reasoned that it would have been obvious to modify the heating boundary layers of the primary reference with the heating of the entire thermoplastic core of the secondary reference to “minimize spring-back of the laminate from the tool.” Except that it would not have been, according to the Board.

The Board had two reasons for why this rationale was bad. For one, the Board explained that the primary reference repeatedly states that an inner core should remain unsoftened. So applying the secondary reference’s core-melting technique to the primary reference “would destroy” the primary reference’ objective, “thereby changing its principle of operation.” Here the Board is using the classic one-two punch rebuttal argument from MPEP 2143.01(V) and (VI). These gems make clear that a proposed modification cannot render the prior art unsatisfactory for its intended purposes and cannot change the principle of operation of a reference, respectively. Standard argumentation so far.

The second reason related to the pre-existing functionality of the reference. The articulated reason for modifying, as presented by the Examiner (“to minimize spring-back of the laminate from the tool”), was already achieved by the primary reference, according to the Board. So one having skill in the art would not have sought to modify something so that the something could perform the same functionality.

Thus, if a reference is already performing a function, a proper obviousness reason cannot include modifying the reference to perform that same function. In light of KSR, that point makes common sense.