Experience has shown that one of the most difficult issues for patent applicants to overcome during prosecution is a finding the invention is obvious. In 2007, the US Supreme Court freed USPTO Examiners to use many different reasons that one of ordinary skill would combine the teachings of prior art references. Since then, anecdotal evidence from practice suggests that applicants are less successful in overcoming obviousness rejections.

Examiners apply obviousness rejections all the time. How does one make sense of whether an obviousness rejection is reasonable? In the overwhelming majority of cases, one of two scenarios plays out. In the first scenario, the applicant wins after it presents the Examiner with compelling arguments showing that the claims would not have been obvious in light of the applied references. In the second scenario, the Examiner wins by not withdrawing the rejection until amendments are made or forcing the applicant to abandon the application. In a small minority of the time, the case is appealed, which turns out to be one of the most significant measures of the Examiner’s prima facie case for obviousness.

The appeal is a significant measure because both sides are willing to commit significant time and resources into a position. How are patent applicants doing when it comes to reversing obvious rejections on appeal?

The past six months of ex parte appeal decisions from the Patent Trial and Appeal Board (PTAB) show relatively high reversal rates:

In 41.8% of the decisions, the Board reversed the Examiner for at least one appealed claim.

In 32.6% of the decisions, the Board reversed the Examiner for all appealed claims.

The data set included the 3998 total decisions in which 35 USC 103(a) was an issue in an ex parte appeal.  Of the total number of decisions, 1302 were reversed in whole and 369 were partially reversed.  The exact timeframe measured was from 7/25/16 – 1/7/2017. Appeals from reexamination proceedings were not included in the data.

This data indicates that where the issue is obviousness, the practitioner has better than a 1 out of 3 chance that the Board will reverse the Examiner.

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