IS YOUR APPLICATION READY FOR APPEAL TO THE BOARD UNDER KSR?

To date, most of the focus on this blog has been on Bilski and 101. I thought it would be helpful to provide some insight into some other areas of interest at the BPAI. To get moving in that direction, I am happy to provide the first ever "guest post" on BPAI Watchdog. As the title shows, the focus of this post is obviousness (a.k.a. as 103).

The following post is by Jason D. Eisenberg. Jason is an associate at Sterne, Kessler, Goldstein & Fox, P.L.L.C.. This post contains content from a longer article on this subject, published March 11, 2009 by Law360. You can read that full article here.

The Supreme Court’s KSR v. Teleflex, 550 U.S. 398 (2007) decision dramatically impacted examination of patent applications by the U.S. Patent and Trademark Office. In our article, we outline the best way to structure an appeal to the Board of Patent Appeals and Interferences. In response to the KSR decision, patent examiners are increasingly denying patents asserting the protection sought is “obvious.” The increase in the number of rejections has led applicants to increasingly appeal the patent examiner's decisions to the Board.

As an example, the PTO reported the Board received about 6,385 ex parte appeals in the fiscal year 2008, almost double the 3,349 filed in fiscal year 2006, and concluding two consecutive years of 35% increases in appeals. The PTO reported that almost 950 ex parte appeals were filed per month at the Board since September 1, 2008. With this increasing workload, success at the Board requires careful groundwork in prosecuting the application and thoughtfully building the record for the appeal brief.

Over 200 post-KSR Board decisions that reversed the patent examiner were reviewed. Of these, emphasis was placed on the nearly 100 decisions in which the Board reversed the patent examiners’ finding of obviousness in the internet, software, circuits, and mechanical technologies (i.e., Technology Centers 2100, 2500, 2600, 2800, 3600, and 3700).

It was observed that a small group of 7-10 administrative patent judges appeared on many of the Board decisions reversing obvious rejections in the predictable arts.

In this post-KSR world, applicants have obtained reversals of the patent examiners rejections in only 25% of appeals in the predictable arts. The Board has provided glimpses into what the appellant needs to present to successfully challenge the patent examiner.

Successful appellants have proven factual errors including claim and reference interpretation errors. Similarly, successful appellants have proven legal errors including (a) non-analogous art cited by the patent examiner, (b) impermissible hindsight by the patent examiner, (c) inoperable combination of references, and (d) references cited by the patent examiner that taught way from the patent application. Finally, successful appellants included (a) thoughtful definitions of a person having ordinary skill in the art (PHOSITA) and (b) records having evidence of secondary indicia of non-obviousness. However, even if successful in overcoming the patent examiner’s rejection, appellants must consider the chance the Board will assert sua sponte rejections for claims that (i) do not recite patentable subject matter, (ii) are indefinite Hybrid claims reciting two statutory classes, (ii) lack enablement, and (iii) lack written description even for patentable claim features added in amendments during prosecution.

An applicant should appeal when properly interpreted claim language recites features that distinguish over properly applied references. In the heat of prosecution, Applicants sometimes lose sight that the pending claims need to clearly recite what is argued. If the pending claims can be amended to better support the arguments, a request for continued examination should be filed with claim amendments instead of an appeal. However, if the applicant believes that the invention has been optimally claimed and that the claims are distinguishable over the applied references, continuing prosecution is usually an inefficient use of resources. Rather, appealing the application is necessary.

Take Aways

Appeal to the Board is worthwhile since after successful appeal to the Board 80% of applications issue as patents.

• Factual errors include claim and reference misinterpretations by the patent examiner.
• Legal errors include (a) non-analogous art cited by the patent examiner, (b) impermissible hindsight by the patent examiner, (c) inoperable combination of references, and (d) references cited by the patent examiner that taught way from the patent application.
• Success on appeals can increase when appellants include (a) definitions of a person having ordinary skill in the art (PHOSITA) and (b) records having evidence of secondary indicia of non-obviousness.
• Appellants must balance success on appeal with the risk of narrow claim interpretations and sue sponte rejections for claiming non-patentable subject matter or amended claims that, although allowable over art, fail written description requirements.
• In the end, Appealing final rejections from "hard-line" patent examiners may be an applicant’s only chance for reversing improper obviousness rejections to obtain an allowance for their application.

The views expressed here are those of the author, and should not be attributed to Sterne, Kessler, Goldstein & Fox P.L.L.C., or to any of its present or former clients.