1. Wisdom of the Board
Ex parte PTAB Decisions Show Effective Arguments to Overcome an Obviousness Rejection
Trent Ostler
The content is exclusively the personal opinion of the author. This presentation is for general information purposes and is not intended to be and should not be taken as legal advice.

2. None of the 800 correctly guessed the cow’s weight, but collective guess was almost exact.

3. Board decisions are unique data point because they only deal with arguments (claim amendments off the table)
Stakes are high enough that the weaker positions on both sides are weeded out
Independent judges technically and legally trained in theory shouldn’t be far out of bounds with holdings and rationales
Large sample: Obviousness is the most frequent ground of rejection decided at the board (75% of all decisions have one)
Can Board decisions in the aggregate be used to assess how to effectively overturn obviousness rejections?

4. Measuring Appeals: Outcomes depend on specific grounds of rejection
Data from Anticipat.com

5. What do the decisions say on obviousness?
Not extremely frequent but very winnable ground of rejection on appeal
Obviousness rejections generally gets overturned by the Board in between “high” and “low” reversal rate grounds of rejections
About 34% for pure reversals and 43% affirmed-in-part
Obviousness appeals suited for carving out fallback position
Relatively wide spread between whole reversals and partial reversals
What do the decisions say on obviousness?

6. Based on decades-long obviousness jurisprudence
Not all arguments against obviousness are equally used
PTAB routinely overturns Examiner rejections on obviousness using a finite set of arguments

7. Prima facie case for obviousness
“requires a suggestion of all limitations in a claim,” CFMT, Inc. v. Yieldup Int’l Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003) and
“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.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)

8. Must disclose or suggest
Asserted disclosure missing
Typically, these are factual findings where the panel overrules the Examiner’s analysis of the references teaching what the Examiners assert they teach

9. Clear and factually-supported articulation of reason for obviousness
The point of contention is whether the
Examiner provided sufficient analysis for
why the claims would have been obvious

10. Must disclose or suggest

11. Positively recited structure required for patentable weight
intended use,
printed matter doctrine,
ornamental design features,
product-by-process limitations, and
other non-positively recited claim elements.

12. Scope and Content of Prior Art – Claim Construction
Claim construction-related issues (definitions, plain meaning, not reading limitations from Spec into claims, etc.)

13. Scope and Content of Prior Art – Broadest Reasonable Interpretation
The point of contention is how the broadest reasonable interpretation of the claims extends

14. Inherency
Includes cases discussing how a claim element is inherently taught by a reference or group of references

15. Must Qualify as Prior Art
Includes Rule 131 declarations,
printed publications,
the on-sale bar,
public knowledge/use or otherwise being available to the public,
experimental use,
prior US patents or US applications,
prior invention,
the use not being in the United States,
grace period issues,
derivation,
foreign patents/applications,
abandonment of the invention,
commonly owned inventions,
joint research agreements,
publications of different inventive entities, and
enablement of prior art

16. Non-Analogous Art Whether a prior art reference can be
considered analogous art and/or in combination with another reference

17. Clear and factually-supported articulation of reason for obviousness
The point of contention is whether the Examiner provided sufficient analysis for why the claims would have been obvious

18. Hindsight Reasoning
The Examiner’s use of hindsight reasoning (i.e., using the applicant’s specification as a guide), in showing prior art would have rendered obvious claims back then

19. Reasonable Expectation of Success
Where a question revolved around one skilled in the art having a reasonable expectation of succeeding in combining the prior art references to achieve the claimed invention

20. Motivation to Combine Refs
When references are combined, it must be articulated and factually accurate

21. Teaching Away
Prior art reference(s) teaching away or including disclosure that discourages a skilled artisan from modifying the prior art or combining the references as asserted

22. Proposed modification cannot change the principal mode of operation of a reference
Whether the modification to prior art reference makes it inoperable, where technological incompatibility issues are raised, where actual physical substitution of elements in question, and whether the manner of operating the claimed device differentiates it over the prior art. See MPEP (VI).

23. Proposed modification cannot render the prior art unsatisfactory for its intended purpose
The proposed modification rendering the prior art unsatisfactory for its intended purpose, as discussed in MPEP (V).

24. Objective Evidence
The evidence of unexpected results and all types of secondary considerations of non-obviousness (long felt need, commercial success, copying by others, etc.).

26. July 1, 2017 – August 31, 2017 Data taken from Anticipat.com
Total of 1607 decisions
1345 included obviousness rejections (84%)
446 of these were wholly reversed on obviousness (33%)
I looked at each of these manually to confirm accuracy
Here are the results:

27. Most Frequent Arguments in Reversing Obviousness Rejections
Must disclose or suggest (63.9%)

28. Most Frequent Arguments in Reversing Obviousness Rejections
Clear and factually-supported articulation of reasons for obviousness (35.9%)

29. Most Frequent Arguments in Reversing Obviousness Rejections
3. Examiner Bears Initial Burden (Prima Facie Case) (12.6%)

30. Most Frequent Arguments in Reversing Obviousness Rejections
4. Scope and Content of Prior Art – Claim Construction (10.8%)

31. Most Frequent Arguments in Reversing Obviousness Rejections
Scope and Content of Prior Art – Broadest Reasonable Interpretation (6.7%)
We all know that Examiners can make broad interpretations of claims, but is it reasonable

32. Most Frequent Arguments in Reversing Obviousness Rejections
6. Inherency (5.8%)

33. Most Frequent Arguments in Reversing Obviousness Rejections
7. Hindsight Reasoning (5.2%)

34. Most Frequent Arguments in Reversing Obviousness Rejections
8. Positively recited structure required for patentable weight (3.4%)

35. Most Frequent Arguments in Reversing Obviousness Rejections
9. Proposed modification cannot render the prior art unsatisfactory for its intended purpose (2.5%)

36. Most Frequent Arguments in Reversing Obviousness Rejections
10. Proposed modification cannot change the principal mode of operation of a reference (1.8%)

37. Most Frequent Arguments in Reversing Obviousness Rejections
11. Non-Analogous Art (1.3%)

38. Most Frequent Arguments in Reversing Obviousness Rejections
12. Reasonable Expectation of Success (1.1%)

39. Most Frequent Arguments in Reversing Obviousness Rejections
13. Objective Evidence (0.9%)

40. Most Frequent Arguments in Reversing Obviousness Rejections
14. What is Prior Art? (0.7%)

41. Groupings of arguments in reversing Examiner obviousness rejections: 4 categories
Clear and factually-supported articulation of reasons for obviousness
• Examiner Bears Initial Burden (Prima Facie Case)
• Hindsight reasoning
• Proposed modification cannot render the prior art unsatisfactory for its intended purpose
• Proposed modification cannot change the principal mode of operation of a reference
• Non-Analogous Art
2. What is Prior Art?

42. Groupings of arguments in reversing Examiner obviousness rejections
Reference(s) Must Teach or Suggest
• Scope and Content of Prior Art - Claim Construction
• Scope and Content of Prior Art - Broadest Reasonable Interpretation
• Positively recited structure required for patentable weight
• Examiner Bears Initial Burden (Prima Facie Case)
• Inherency (103)
4. Objective Evidence

43. Anomalies Across Tech Centers
Biotech (tech center 1600) strongly overrepresents “articulated reason for obviousness” and “what is prior art?” and underrepresents “features not disclosed or suggested”
Chemical (tech center 1700) strongly overrepresents inherency, hindsight
Electrical/Computer (tech centers 2100, 2400, 2600, and 2800) overrepresents “must disclose or suggest,” and “broadest reasonable interpretation”
Business methods/software (tech center 3600) underrepresents “articulated reason for obviousness”
Medical Device/mechanical (tech center 3700) overrepresents “reasonable expectation of success” and “claim construction” and “non-analogous art”
Anomalies Across Tech Centers

45. Conclusion
Thank you!