How the biggest patent firms (Finnegan, Fish, Knobbe) do on appeal



We recently reported that the top patent firms (by registered practitioner as featured on a Patentlyo post) pursue ex parte appeals very differently. This, despite apparent equal knowledge of the benefits of pursuing an appeal to further prosecution. While this finding is interesting, pursuing an appeal and winning on appeal are two different things. Here we report on the differences in appeal outcomes along the three firms Finnegan, Fish & Richardson, and Knobbe Martens.

As brief background, we have found that average reversal rates among the various grounds of rejection to be quite stable. In a recent post, we reported that across the entire USPTO, Section 101 has about a 20% reversal rate on appeal, Sections 102 and 112 hover at about 50%, and Section 103 is around 33%. To look at these firms’ outcomes, we used Anticipat’s Research database and Practitioner Analytics between July 25, 2016 through March 12, 2018.

The firm-specific appeals outcome data

The above three firms exceed the USPTO reversal rates in almost all aspects. Finnegan first.

Ground of rejection Affirmed Affirmed in part Reversed Reverse Rate
Section 101 12 2 14%
Section 102 4 12 75%
Section 103 28 3 28 47%
Section 112 1 0 9 90%
OTDP 5 1 17%

For the 59 rejections of Section 103 obviousness, 28 were wholly reversed. This is a complete reversal rate of 47%, much higher than the average rate. 

Of 18 decisions deciding Section 102 anticipation, 12 were wholly reversed. This is a reversal rate of 75%, again much higher than the average rate.

The Section 112 rejections were decisively overturned. Of 10 rejections, 9 were overturned. This translates into an 90% reversal rate–very high.

The one ground of rejection that underperformed the rest of the pack was Section 101. Of the 15 decisions deciding Section 101 rejections, Finnegan had two reversed. This is a reversal rate of 13%, slightly lower than the average.


These data show that for the most part, Finnegan knows how to pick good candidates for appeal and/or how to advocate for a favorable outcome.

Next Fish. Of the firms analyzed today, Fish has the greatest tolerance for pursuing appeals. Because of this, the reversal rates for some rejections are lower. But this also means an overall greater number of reversals than the other firms.

Ground of rejection Affirmed Affirmed in part Reversed Reverse Rate
Section 101 13 2 13%
Section 102 6  2 16 66%
Section 103 56 14 50 43%
Section 112 10 8 44%
OTDP 13 1 7%

These data for Fish show slightly lower reversal rates than Finnegan. Section 101 has two reversals. Given that there were 15 total decisions with Section 101 rejections, this is a 13% reversal rate, which falls slightly below the average reversal rate for this rejection.

Next, the reversal rate for Section 102 of 66% is much higher than average.



The reversal rate for Section 103 is also higher than average at 46% wholly reversed.


Section 112 falls right under average with a 44% reverse rate.

Fish’s appeal strategy more closely resembles the Michael Jordan quote: “You miss 100% of the shots you do not take.” Similar to basketball shots, the more a correspondent appeals, the lower the success rate may be. As we have previously reported, Fish has a much greater number of total appeals, implying it pursues appeals more frequently than the others. This may mean that the firm pursues appeals that it is not as confident that it will win on. But like basketball shooters, because of the volume of appeals, it means that more applications will be reversed and thus take advantage of the benefits of pursuing an appeal.

Fish should be recognized for taking more cases to appeal and still succeeding at or close to average reversal rates. If Fish wanted to identify areas for improvement, perhaps Section 101 and Section 112 would be on the list. While certainly not bad to overturn the Examiner’s 112 rejection 50% of the time, that is about the percentage of all appellants. Same is true for Section 101, notwithstanding the challenges of appealing abstract idea rejections.

The third firm is Knobbe. Knobbe files the fewest number of appeals among the three firms. The data show very high reverse rates, but because of pursuing fewer appeals compared to the other firms discussed here, the result is fewer total reversals.

Ground of rejection Affirmed Affirmed in part Reversed Reverse Rate
Section 101 3 2 40%
Section 102 2 5 71%
Section 103 17 6 29 56%
Section 112 2 0 5 71%
OTDP 5 1 17%

For Section 101 rejections, Knobbe has two reversals out of 5, meaning a relatively high reversal rate of 40%. It achieves the same number of reversals with much fewer appeals than Fish and Finnegan.

For Section 102, 71% of rejections are wholly overturned. This is higher than the average even though not as high as Finnegan and Fish.

For Section 103, 56% of rejections are wholly overturned. This is much higher than the other two firms. Factoring in the six affirmed-in-part rejections on Section 103, the number of decisions where at least one claim was reversed is at 67%.

For Section 112, 71% of rejections are overturned. This is much higher than average.

The data on Knobbe seem to show something of their appeal strategy. That is, Knobbe tends to appeal cases that they are more sure that they will win on. And it shows in the high reversal rates.

One note about all firms is the reversal rates for obviousness-type double patenting. All these rates are low, but many of the rejections were not argued on appeal. Thus, these summary affirmances imply that the applicant may opt to file a Terminal Disclaimer to overcome the rejection.

What it all means

These and other law firm-specific outcome data are important in two ways. First, having detailed outcomes for specific grounds of rejection can point out areas for improvement. If a firm is below the average reversal rate for a grounds of rejection (especially below the average for a particular examiner or art unit), there might be some learning opportunities to increase the reversal rate. For example, an area for improvement for Finnegan could be Section 101. That being said, achieving two reversals in 15 attempts is not bad.

Anticipat Practitioner Analytics provided an easy search interface that can retrieve all reversed applications for a particular ground of rejection, for an Examiner, his art unit, or technology center. Further, it allows for any customer numbers to be queried if you want to competitively analyze certain filers.


The law firm or customer number analytics has its limitations. For example, just because a law firm has a low reversal rate for Section 101 does not mean that they are of worse quality counsel than others. They may, for example, be taking on more difficult cases. But having the internal context of these cases can powerfully guide prosecution strategy.

The second way these data are important in helping to show the optimal level an applicant should appeal. Remember that how often to pursue an appeal affects the reversal rates. A firm such as Knobbe that is more selective in its pursuit of an appeal than a firm like Fish–all advocacy being equal–will have a higher reversal rate, but fewer reversed decisions.

For example, let’s say there are 100 candidate applications that could go up to appeal. For simplicity sake, assume each has a single pending ground of rejection. A Knobbe type of firm only pursues an appeal for its three most egregious cases and pursues claim amendments responses for the rest. In this situation, there’s a high chance these three cases get overturned (because they are the most improper of the bunch). Let’s say that two get wholly reversed, resulting in a 66% reversal rate.

But let’s say a Fish type of firm with the same candidate applications is less choosy and decides to appeal the 10 most egregious rejections. Some of these rejections will not be overturned because they are less clearly improper rejections. So this firm could have a lower reversal rate of 50%. But because the firm decided to appeal more applications, even with a lower reversal rate, that firm is still getting three more notices of allowance with all the benefits of an appeal.

In conclusion, feel free to lookup and monitor appeal decisions using customer numbers on Practitioner Analytics. Armed with the right material, you can see where you or others are strong and see where you have opportunities. This can also be used for showcasing expertise and advocacy in certain areas, e.g., for marketing.


PTAB finds encryption software claims not directed to abstract idea–Practice tips



How does the Board incorporate very timely case law in their decisions? How can you use this to your advantage? We consider these questions as we discuss a recent Board decision that reversed an abstract idea rejection while incorporating a very recent Federal Circuit into its analysis.

In a recent decision, Ex parte Jang (March 1, 2018) (available at, the Board reversed an Examiner’s Section 101 rejection. In so doing, the Board panel found that the claimed software invention was not directed to an abstract idea under step 1 of the Alice/Mayo framework. Interestingly, the Board analogized to a Federal Circuit decision that had been decided not six weeks prior.

This recent Federal Circuit decision that the Board cited, Finjan, Inc. v. Blue Coat Sys., Inc., 879 F.3d 1299, 1303 (Fed. Cir. 2018), was not merely a cursory citation or a footnote. Rather, the Board specifically analogized to the patent in Finjan in holding that the claims at issue were similarly not directed to an abstract idea. How did the Board incorporate this legal authority into its own decision so quickly?

One thing that can be ruled out is any help from the appellant. Often times, the Board does indeed borrow persuasive arguments from the applicant (including persuasive legal authority). At times, you can see arguments literally lifted from appellants’ appeal briefs or reply briefs, as discussed in this blog post. Not so here. The reply brief was filed in September of 2016, long before Finjan was decided. Plus, the appellant choose not to pursue an oral hearing, which would have given the appellant a chance to address more recent case law. See 37 CFR 41.47 (“Upon a showing of good cause, appellant and/or the primary examiner may rely on a new argument based upon a recent relevant decision of either the Board or a Federal Court.”).

Instead it appears that PTAB judges keep very current on Federal Circuit case law and use it in their own decision drafting. This is somewhat different from examiners, who, in the face of a recent Federal Circuit decision, may have problems addressing the applicability of recent Federal Circuit decision. The Examiners may instead prefer the USPTO to interpret any new Federal Circuit decisions in an official USPTO guideline.


Now that we know that the Board analogizes to recent legal authority, how is this useful? How can you use the fact that the Board regularly cites to recent and relevant case law in reversing Examiner rejections? It turns out that this is most useful in fast-evolving areas of law, such as Section 101. For example, you can cite to the same legal authority that the Board uses to overturn your own Examiner rejections.

As we pointed out in a recent blog post, you can input any application number into the Anticipat Practitioner Analytics input field, and it will show the relevant legal authority for this application. Let’s say that you have an application in the software arts that is meeting stiff Section 101 headwinds. Perhaps, your application is even in the technical space of encryption. Let’s even say art unit 3621 (the same art unit that Ex parte Jang was decided).

After inputting art unit 3621 into the Analytics input field, you will see that the art unit field has legal authority for step 1 of the Alice/Mayo framework. There are three decisions where the Board relied on step 1 of the abstract idea test to reverse the rejection.


Within step 1, you see legal authority that the Board uses to support its reversal by the icon to the immediate right of the tag. This icon, which is clickable, provides all the decisions (and legal authority) for this art unit. It shows this popup for this art unit:


In addition to Finjan, this Board decision used two other Federal Circuit cases in reversing the rejection: Enfish and Thales Visionix.

Chances are that if you have an application in this art unit and are facing a similar stubborn rejection, accessing legal authority that the Board found worthy of overturning an examiner can help guide strategy for what is persuasive. At best, the relevant legal authority is also found to be analogous and persuasive in your case. At worst, you are not completely off-base in citing to such a decision since independent judges in this art unit analogized to such legal authority.

The next column, tech center, has even more decisions and legal authority. Finally, the right-most column displays all the tags for this specific tag. This will provide all the legal authority Board decisions.

This practice tip is well-suited for responding to Office Actions as responses under 1.111 because you can quickly use recent legal authority. In theory, this same legal research could guide an applicant preparing for an appeal. This is especially relevant since if judges are using specific legal authority to overturn specific rejections, chances are they will be receptive to such legal authority in your brief. However, due to the substantial delay in reaching a final decision, and due to the volatility of Section 101, some of the cases may be outdated by the time the panel decides your case.

See what Practitioner Analytics can do for your practice. Feel free to give Analytics a 14-day free trial.

Let us know if you have any questions or if you would like a demo.

Anticipat Team

Anticipat Education Part 5: How to find legal authority relevant for overturning specific rejections


Having the most relevant and current legal authority to advance a particular argument is a time-consuming task. But it is also a very important part of persuasive advocacy in patent prosecution. With Anticipat, we channel PTAB decisions to do much of this work. Anticipat Analytics shows you relevant legal authority (e.g., case law, Guidelines, and MPEP support) that the Board relies on in overturning specific rejections.

The legal authority that the Board relies on to overturn a particular rejection in a given tech center can relevant for responding to a pending Office Action. If it worked on appeal in a related case, that authority might be good to look at in your case. And it isn’t only relevant for a case that you are appealing–it can be persuasive when working with your Examiner.

To understand how to use legal authority on Anticipat Analytics, a little bit of background first. Legal authority goes hand in hand with the corresponding argument. We previously explained how Anticipat Analytics breaks down the most common arguments used by the Board in overturning a particular rejection. The legal authority goes a step further by showing the legal authority relied on in making this particular reversal.

Let’s take as an example an application that has an abstract idea rejection under Section 101 – Patent-ineligible subject matter. Looking up this application in the input field, the abstract idea tags listed are “Step 1”, followed by “Step 2,” then followed by “prima facie case.”

The most common tag for abstract idea is “Abstract Idea – Step 1.” This means that when the Board is reversing abstract idea rejections, most often it does so in step 1 of the Mayo/Alice framework. Within step 1, which legal authority does the Board cite to support its reversal? This is where the legal icon to the immediate right of the tag comes into play.

The Examiner column shown above has the most relevant tags and authority to an application (e.g., they represent Board decisions that have overturned this specific Examiner). But they also have the smallest sample size. The next column, art unit, has more decisions. It provides all the decisions (and legal authority) for this art unit.

The next column, tech center, has even more decisions and legal authority.

Finally, the right-most column displays all the tags for this specific tag. This will provide all the legal authority Board decisions.

This legal authority icon immediately to the right of the abstract idea text is clickable, which reveals the full list of legal authority for step 1 in this tech center. When the legal authority icon is clicked, here is an image of the popup that shows.

Having the relevant legal authority for specific arguments used by judges can help guide strategy in what is persuasive.

Please reach out to us with any questions or comments. We’re standing by for any questions or comments.

Anticipat Team

Anticipat Education Part 4: How to find legal arguments relevant for reversing particular Office Action rejections 


Every patent application is different. So is every Office Action. But there are only a limited number of ways to successfully rebut a given rejection in any Office Action.

Think of Anticipat’s ex parte PTAB database as holding the answers to all the successful ways in which Examiners have been overturned on appeal. Anticipat Analytics breaks down the most persuasive arguments that the Board relies on to overturn this particular ground of rejection of interest. For example, as shown in the below image, the red arrow points to the most commonly used arguments that the Board relied on in reversing obviousness rejections in art unit 3689. See below image.


This provides a practitioner an outline straight from the Board of successful ways to overcome various grounds of rejection. The clear leading argument for this art unit, as shown above, is that the combination of references must teach or disclose the claim elements. This can guide the practitioner in developing a winning argument by focusing on arguing against the references not teaching what the Examiner purports that they teach.

All these tags are specific to the application’s examiner, art unit, or tech center. You can click on the various tags to further research the context of the arguments to draw appropriate parallels.

Anticipat Analytics organizes the tags the Board uses to overcome rejections to help you in your practice. The efficiencies and knowledge gained pay for themselves within minutes of use. Click here to give it a try.


Rare request for rehearing granted to reverse obviousness rejection


It may be discouraging to an applicant to appeal all the way to a final decision only to see the rejection(s) be affirmed. The process can take years. Fortunately, there is a procedure that allows for such a decision to be reviewed by the same panel: request for rehearing. This procedure is at times successful, perhaps counter-intuitively.

In ex parte Clendenen (PTAB March 7, 2018), counsel from Faegre Baker Daniels LLP filed a request for rehearing, arguing that the Section 103(a) obviousness rejection was improperly affirmed. Specifically, they argued that the Board misapprehended the disclosure of a reference and that the reference did not teach the claimed features.

In the rehearing decision, the panel, which consisted of the exact same members as the original decision, acknowledged that the reference in fact did not disclose the claimed features. At best, the reference was ambiguous. While the modification was possible and potentially useful, the Board concluded it was unclear on the record that such correlation is required in the reference. Thus, the rehearing was granted.

As we have reported about a Section 101 rehearing getting granted, because of the makeup of the panel being the same as the original decision, intuition would suggest that these requests never get granted. However, they do happen. Plus there are no government fees to file a request for rehearing. So it doesn’t seem like a bad idea to add on a few more months to pursue this procedure, especially after going all the way to the final decision.


Upcoming Webinar on strategically using ex parte appeals in your patent prosecution practice


This blog has focused much on the advantages of pursuing an ex parte appeal during patent prosecution. We have pointed out that pursuing an appeal carries a number of unique advantages above alternative procedures in patent prosecution. In a free webinar hosted by Fitch Even on March 21, 2018 (with some CLE provided), panelists will discuss many of these advantages. The webinar’s title is “Avoiding Prosecution Churn: When Ex Parte PTAB Appeals Make Dollars and Sense.” Register by clicking here, as explained in the summary below.

Avoiding Prosecution Churn: When Ex Parte PTAB Appeals Make Dollars and Sense

Please join Fitch, Even, Tabin & Flannery LLP for a free webinar, “Avoiding Prosecution Churn: When Ex Parte PTAB Appeals Make Dollars and Sense,” on Wednesday, March 21, 2018, at 9:00 am PDT / 10:00 am MDT / 11:00 am CDT / 12 noon EDT.

During the process of acquiring patent rights through the patent application process, applicants sometimes wish to seek review of rejections by an examiner. The formal mechanism for achieving this review is an ex parte appeal to the Patent Trial and Appeals Board (PTAB). Some patent practitioners avoid the ex parte review process, viewing it as lengthy and expensive. But, data and experiences recently compiled by an AIPLA subcommittee suggest that this conventional thinking may be incorrect. It turns out that pursuing an appeal can be a more attractive option than other patent prosecution procedures.

During this webinar, we will explore how the AIPLA findings may provide guidance on

  • When to file ex parte PTAB appeals
  • How often to file these appeals
  • Which issues to choose to appeal

Additional topics will include

  • USPTO incentives
  • Working with the examiner
  • Patent term adjustment
  • Pre-appeal brief reviews
  • Other relevant statistics

Our speakers:
Thomas F. Lebens, a partner at Fitch Even, assists clients in preparing and prosecuting patent and trademark applications, including appeals, post-grant review, and interferences. He also counsels clients in IP and business strategy; licensing issues; infringement and validity analysis and opinions; and copyright matters.

Trent Ostler is in-house counsel for Illumina, Inc., where he helps protect the company’s software and informatics products and inventions through patent, copyright, and open source licensing. Trent is the founder of, a PTAB appeals database.

CLE credit has been approved for California and Illinois and is pending in Nebraska. Other states may also award CLE credit upon attendee request. There is no fee to attend, but please note registration is required. To reserve your place, please REGISTER HERE.

Anticipat Education Part 3: Find reversal rates for an examiner, art unit, tech center


Today, we showcase part of Anticipat Practitioner Analytics, a tool we believe will help you succeed in your practice.

Before we get too deep, a brief foundation is in order. A “reversal rate” for a particular ground of rejection is how often the Board overturns an Examiner’s rejection on appeal. A reversal rate can be used for a given Examiner, art unit, tech center or global USPTO levels.

Anticipat Practitioner Analytics provides you with these reversal rates for any application number.

Simply input an application number at the top of the page, and the engine takes care of matching up the Examiner, art unit, and tech center for this application. See below image.


After clicking “GO”, the reversal rates for this application’s Examiner, art unit and tech center are displayed.


This captures some interesting insights. The first relates to the graphs, where the blue color represents the percentage completely reversed and orange represents the percentage partially reversed. The higher the reversal rate for the Examiner compared to other higher-up levels, the less reasonable this type of rejection for this Examiner in general. This is because the more often an Examiner issues unreasonable rejections, the more likely the Board will overturn on appeal.

Take Examiner Borissov above as it relates to Section 101 patent-ineligible subject matter. Having a wholly reversed rate of 50%, this Examiner has a much higher reversal rate than his art unit, which has a wholly reversed rate of 12%. If the Board is overturning the Examiner on this ground that much higher than his art unit, the Examiners Section 101 rejections may not be as sound.

The second interesting insight relates to the numbers of decisions (including the hyperlinked parentheticals). These numbers provide greater context at each level of hierarchy. Plus, by clicking on these decisions, you can find the very decisions that the Board overturned (either partially or completely) for this particular Examiner, art unit, or tech center.

While only Section 101 – patent-ineligible subject matter is shown, this breakdown is available for every ground of rejection.

If you would like to do a lookup for only Examiner or art unit, the fields allow for more targeted lookups. Plus, if you are curious about a particular window of time, you can use the date range to narrow the results. This can come in handy as in some areas the laws can change rather quickly.

Please reach out to us with any questions or comments. We’re standing by for any questions or comments. If you would like for us to demo the product to a group, we are more than happy to do so.

PatCon8 Conference: State of Patent-Eligibility of Medical Diagnostics Not Good



The eighth annual PatCon hosted by the University of San Diego School of Law included a wide range of speakers and presentations. Perhaps due to the largely academic audience, participants openly disagreed on various points. But one point had almost universal consensus: patenting medical diagnostics in the US is very bleak due to patent-eligibility. And it’s unlikely to change any time soon.

Since the Supreme Court decided Mayo v. Prometheus in 2012, the USPTO has shown a sharp decrease in finding good diagnostics claims to be patent-eligible. One session in particular focused on this: “Patentability of Medical Diagnostics” on March 2, 2018. This panel included Dirk van den Boom, CEO, Juno Diagnostics, former CEO of Sequenom; Brian Sun, Director, Intellectual Property, Prometheus Laboratories;  Matthew Bresnahan, Partner-Elect, Wilson Sonsini; Donna Shaw, UC San Diego;  Prof. Joshua Sarnoff, DePaul University School of Law; Prof. Jeffrey Lefstin, Hastings School of Law. We report on this session.

First off, Matthew Bresnahan shared statistics of decreased allowance rates and decreased filings in the 1630 art units. Matthew stated that the problem with diagnostics claims is not getting allowed claims, but rather getting good claims that do not suffer from divided infringement issues. He pointed out that the lone example claim deemed patent-eligible in the USPTO’s subject matter guidelines has a divided infringement issue. As a solution to fixing the patent-eligibility of diagnostics, Matthew suggested that the USPTO provide a “good” example claim in the guidelines that is deemed patent eligible.

Next, former CEO of Sequenom, Dirk van den Boom, talked about his experiences of having the courts take away all his company’s core IP based on patent-ineligibility. It was not planned, according to him. It was also not pleasant.

At one point audience member Mark Lemley tried to maintain an “All is well at the USPTO” attitude by pointing out that overall filings and grants in tech center 1600 may be up. Even if such data exists, which it wasn’t immediately clear to this correspondent, panelists agreed that certainly the types of claims currently granted are much different/worse than previously or in other tech centers.

Prof. Joshua Sarnoff then talked about a need to study the effects of the US choosing not to prioritize the patenting of diagnostics the same way that other countries do. To Professor Sarnoff, whether the US is correctly pursuing this policy is somewhat beside the point. With the proper data of what the patent-eligibility conundrum of diagnostics is doing to the economy, patent stakeholders can be in a better to know what to do.

While this session raised important problems about diagnostics, the solutions seemed unsatisfying. Outside of providing another patent-eligible example claim in the USPTO guidelines and gathering more data, there was some discussion on amending Section 101. For example, IPO and AIPLA proposals to amend Section 101 were generally deemed unrealistic in today’s congressional climate. Perhaps a more narrowly tailored amendment. But overall, all the solutions discussed seemed overly hopeful to change the status quo.

One solution not discussed relates to waiting for appeals currently percolating up the system. This blog has pointed out that the PTAB is currently doing a great job of reversing Examiners in tech center 1600 on Section 101, compared to other tech centers. This suggests that these Examiner rejections are not supported by precedent, and so the Board overturns. If the Board is showing an increase in not finding support in the case law, Federal Circuit panels will likely also find this with other cases. As some other diagnostics cases come up to the Federal Circuit, perhaps it is possible that a case can be distinguished over Mayo but still falls within the area of patent-eligibility.

Below is a photo of Carter G. Phillips, who did a wonderful job of opening the conference.


Recent pattern of PTAB cutting corners: Decide Section 101 and avoid deciding other pending grounds



We have previously reported that PTAB judges, like Examiners, are measured by a quota-based production system. For PTAB judges, the quota is based on the number of decisions they author. It is no secret that this production system prompts some Examiners and PTAB judges at times to get creative with practices to most easily meet their quotas. Here, we look at some recent decisions that show a pattern of PTAB judges deciding a Section 101 rejection without looking to the remaining pending grounds on appeal.

First some context. The Board has discretion not to reach all pending rejections on appeal, which makes sense. For example, ex parte appeals decisions often times do not reach prior art rejections after finding that the claims are indefinite because, e.g., the scope of the claims cannot be determined. But for the overwhelming majority of cases, PTAB judges decide all pending rejections on appeal (unless not argued by the appellant). This practice encourages compact prosecution, something that the USPTO very much favors. So this discretion to avoid deciding grounds of rejection is very rarely used.

But this discretion is sometimes used and as shown in two recent Board decisions, it can also be abused. For example, judges have recently affirmed a “Section 101 – patent-ineligibility” rejection and then declined to reach other pending rejections (either prior art rejections or 112 rejections).

The first decision is Ex Parte Snow (PTAB Feb. 8, 2018), deciding Section 101 and asserting that it therefore need not go to the pending Section 103(a) rejection. To support this action, the panel relied on two cases (one Federal Circuit and one precedential PTAB decision). From the decision:

Because claims 1—33, 35, 37, and 39 are directed to patent-ineligible subject matter, we do not reach the prior art rejection of those claims. See In re Comiskey, 554 F.3d 967, 973 (Fed. Cir. 2009) (declining to reach the prior art rejection when claims are barred at the threshold by § 101); Ex parte Gutta, 93 USPQ2d 1025, 1036 (BPAI 2009) (precedential) (same).

It is true that In re Comiskey declined to rule on a Section 103(a) rejection after concluding that the claims were directed to patent-ineligible subject matter under Section 101 (both the original decision in 2007 and the en banc decision). Interestingly, the Federal Circuit in In re Comiskey newly applied the Section 101 rejection without needing to go to the Section 103(a) rejection. The Board had only reached the Section 103(a) rejection, affirming the Examiner. Thus, it does not appear that the Federal Circuit was attempting to establish precedent for the Board to not reach pending prior art rejections when a Section 101 rejection is at issue. Instead, it merely did not need to go to the Section 103(a) because it vacated and remanded for the Board to pick this up.

The other case cited was a precedential case Ex parte Gutta. In Gutta, the Board declined to reach prior art rejections by citing to Comiskey as well as a 1942 case: In re Rice, 132 F.2d 140, 141 (CCPA 1942) (finding it unnecessary to reach rejection based on prior art after concluding claims were directed to nonstatutory subject matter).

Here, Gutta was an expanded panel that included then Chief-judge and vice-Chief judge. Similar to the Federal Circuit panel in In re Comiskey, it’s possible that this PTAB panel was a special case. In other words, maybe they didn’t want to mix another issue (prior art rejection analysis) with what they wanted to establish as precedential.

Said differently, the Gutta decision does not appear to have been trying to establish that if the Board finds that the claims are patent-ineligible subject matter, then there is no need to reach prior art rejections. Indeed, if all panels did that, then we would start getting into more subjective appeal analyses, where the Board favors ruling on Section 101 so that it need not address other issues. And by not addressing prior art rejections, doesn’t it seem like the panel is implicitly communicating that the application is a lost cause–no matter how the claims are amended? Section 101 should not be used as a tool by the Board to pick and choose eventual patent grants.

Indeed, a goal of the USPTO should be compact prosecution. Just because an appellant loses Section 101 on appeal is not the end of the road. It is possible that after the appeal, the applicant amends the claims to clear the Section 101 rejection. Other less likely scenarios are that a request for rehearing is granted or a Federal Circuit appeal vacates the Board’s findings. In all three of these scenarios, it’s possible that the Examiner and the applicant are later at an impasse with regard to the other rejection (e.g., prior art rejection) and an appeal is needed in the future. The judge panel could have resolved it in the first place.

The second decision cites to the same above-two cases: Ex Parte DeYoung et al (PTAB Feb. 7, 2018) (not reaching written description 112 rejection because Section 101 was affirmed, citing In re Comiskey, 554 F.3d 967, 973 (Fed. Cir. 2009); Ex parte Gutta, 93 USPQ2d 1025, 1036 (BPAI 2009) (precedential)). Unlike decisions where the Board understandably could not reach other rejections because the claims were indefinite and the scope could not be understood, here the Board took the opportunity to avoid analyzing whether the claims found written description support in the specification. And it did so because Section 101 was affirmed.

The fact-specific grounds of rejection to be decided on appeal, which were omitted in the above two cases, do require time to analyze and write up. Especially in Ex parte Snow, it would have taken a lot of time for the panel to pore over multiple references in deciding obviousness. And in Ex parte DeYoung, it would have required careful consideration of the specification. But even though this requires a lot of time, it’s what PTAB judges do. That is, these decisions that do not decide all contested issues are extremely rare compared with the overwhelming majority of decisions that decide every issue that is argued.

If you have experience or opinions about this subject, we would love to hear from you. Please provide feedback in the comments section or by email at whether the Board seems to be correctly relying on In re Comiskey and Ex parte Gutta for the proposition that it need not evaluate rejections after finding Section 101 is affirmed. Unsure opinions are great.