Obviousness Appeals before the PTAB

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.

35 USC 102 Reversal Rates for PTAB

The doctrine of anticipation under Section 102 is one of the most settled areas of patent law. A reference either discloses the features of a claim or it does not. True, there are nuances to the doctrine, such as inherent disclosure of the applied reference and the broadest reasonable interpretation of claim terms. But for the most part, to support an anticipation rejection, an Examiner must point to where in an applied reference the features of a claim is disclosed and the anticipation rejection should be on solid ground.

Because the doctrine of anticipation is pretty straightforward, one would expect that the frequency that an Examiner is overturned would be relatively low. But the appeals decisions of such rejections tell a surprisingly different story. Looking back at the past six months of ex parte appeal decisions from the Patent Trial and Appeal Board (PTAB) for those decisions involving at least one section of 35 USC 102 reveals that anticipation rejections are among the highest reversed rejections:

In 58% of the decisions, the Board reversed the Examiner for at least one appealed claim.

In 49% of the decisions, the Board reversed the Examiner for all appealed claims.

The data set included the 976 total decisions in which 35 USC 102 (all sections) was an issue in an ex parte appeal. A total of 481 decisions wholly reversed the Examiner on anticipation grounds, and a total of 85 decisions partially reversed the Examiner on anticipation grounds. Appeals from reexamination proceedings were not included in the data.

These data indicate that where the issue is anticipation of the claims, the practitioner has better than 50% odds of having the Board reverse the Examiner.

 

 

Why Analyze ex parte PTAB Appeals Decisions?

Welcome to the Anticipat Blog, where we are serious in analyzing appeals decisions at the Patent Trial and Appeal Board (PTAB). Here are a few reasons why.

We believe that the current patent prosecution process is expensive, inefficient and unpredictable. By sheer luck, an application can sail through to allowance for no other reason than it was assigned to a certain Examiner. For many other applications, several rounds of prosecution can be spent quibbling over egregiously unreasonable rejections before finally receiving an Office Action that should have sent in the first place.

We believe having more data can alleviate the expense, the unpredictability and the inefficiencies of the patent prosecution process. In particular, appeals decisions provide a realistic snapshot of how the Patent Office is ultimately applying patent law. With this data in mind, wasteful rejections can be shortcut rather than unnecessarily amending claims or adding more estoppel to the record.

Admittedly, not all the decisions are binding (only precedential decisions are authoritative while informative decisions provide guidance on the rules and practices of the PTAB). But when these thousands of routine decisions are aggregated, we believe that data set shows the trends and patterns that can be used to calibrate expectations for expense, predictability and efficiency of obtaining a patent.

Despite the promising uses, we think PTAB data (especially appeals decisions data) is currently presented in ways that are either difficult to use or misleading. At Anticipat, we believe in transparently cataloging appeals decisions through granular analysis of each decision. Indeed, predictive power is only possible when the necessary context is gathered by drilling down into the specific issues and outcomes for each appeals decision.

We hope you stay tuned for relevant posts on appeals data, where we will highlight trends and patterns, as well as developments and practice pointers from individual decisions. To subscribe to the daily decisions email, you can signup to the daily recap emails (or to a filtered alerts email) here.