Monday, June 04, 2007

KSR and the BPAI: Analysis of Appeals for May, 2007

Over at the Fire of Genius blog, Joe Miller has been tabulating post-KSR decisions from the CAFC, the district courts and the BPAI (link) . Now that we have passed the one-month anniversary of KSR, how have Appellants fared at the USPTO?

Not so hot. For the month of May, Examiners have enjoyed a 64% affirmance rate on obviousness rejections.

The following list was made after reviewing 45 reported cases from the BPAI through May 29, 2007:

32 Appeals affirmed:


  1. Ex parte Teng, 2007 WL 1378835 (BPAI May 10, 2007) (No. 2007-0954, Tech. Ctr. 2100)
  2. Ex parte Askeland, 2007 WL 1418543 (BPAI May 14, 2007) (No. 2007-0960, Tech. Ctr. 2800)
  3. Ex parte Jha, 2007 WL 1433429 (BPAI May 15, 2007) (No. 2007-0708, Tech. Ctr. 2100)
  4. Ex parte Toyoyama, 2007 WL 1433430 (BPAI May 15, 2007) (No. 2007-0803, Tech. Ctr. 2800)
  5. Ex parte LeRose, 2007 WL 1433432 (BPAI May 15, 2007) (No. 2007-1289, Tech. Ctr. 2100)
  6. Ex parte Almog, 2007 WL 1451798 (BPAI May 15, 2007) (No. 2006-2968, Tech. Ctr. 1700)
  7. Ex parte Valiulis, 2007 WL 1451799 (BPAI May 16, 2007) (No. 2006-3003, Tech. Ctr. 3600)
  8. Ex parte Amigh, 2007 WL 1451803 (BPAI May 16, 2007) (No. 2007-0485, Tech. Ctr. 1700)
  9. Ex parte Mihalos, 2007 WL 1451806 (BPAI May 16, 2007) (No. 2007-1390, Tech. Ctr. 1700)
  10. Ex parte Cohen, 2007 WL 1460347 (BPAI May 17, 2007) (No. 2006-2886, Tech. Ctr. 2800)
  11. Ex parte Inala, 2007 WL 1460346 (BPAI May 17, 2007) (No. 2007-0221, Tech. Ctr. 2100)
  12. Ex parte Elman, 2007 WL 1460351 (BPAI May 18, 2007) (No. 2007-1204, Tech. Ctr. 3700)
  13. Ex parte Roseth, 2007 WL 1460343 (BPAI May 18, 2007) (No. 2006-3311, Tech. Ctr. 3700)
  14. Ex parte Cheung, 2007 WL 1460349 (BPAI May 18, 2007) (No. 2007-0717, Tech. Ctr. 2100)
  15. Ex parte Shin, 2007 WL 146035 (BPAI May 18, 2007) (No. 2007-0002, Tech. Ctr. 1700)
  16. Ex parte Mangold, 2007 WL 1511937 (BPAI May 21, 2007) (No. 2007-0088, Tech. Ctr. 1700)
  17. Ex parte Zimmerman, 2007 WL 1494282 (BPAI May 22, 2007) (No. 2007-1308, Tech. Ctr. 3600)
  18. Ex parte Lacasse, 2007 WL 1522947 (BPAI May 22, 2007) (No. 2006-2816, Tech. Ctr. 1700)
  19. Ex parte Atwood Mobile Prods., 2007 WL 1511938 (BPAI May 23, 2007) (No. 2007-0128, Reexamination No. 90/006, Pat. No. 5,573,648, Tech. Ctr. 1700)
  20. Ex parte Garelli, 2007 WL 1511955 (BPAI May 23, 2007) (No. 2007-1922, Tech. Ctr. 1700)
  21. Ex parte Paulus, 2007 WL 1511948 (BPAI May 23, 2007) (No. 2007-1104, Tech. Ctr. 2800)
  22. Ex parte Higashi, 2007 WL 1511945 (BPAI May 23, 2007) (No. 2007-1004, Tech. Ctr. 1700)
  23. Ex parte Van Den Bergh, 2007 WL 1511943 (BPAI May 23, 2007) (No. 2007-0835, Tech. Ctr. 2800)
  24. Ex parte Lee, 2007 WL 1511941 (BPAI May 23, 2007) (No. 2007-0642, Tech. Ctr. 2600)
  25. Ex parte Goto, 2007 WL 1522956 (BPAI May 24, 2007) (No. 2007-0693, Tech. Ctr. 1700)
  26. Ex parte Pisarsky, 2007 WL 1522961 (BPAI May 24, 2007) (No. 2007-2005, Tech. Ctr. 3700)
  27. Ex parte Capoccia, 2007 WL 1522959 (BPAI May 24, 2007) (No. 2007-1365, Reexamination No. 90/006, Pat. No. 6,289,548, Tech. Ctr. 1700)
  28. Ex parte Brookshire, 2007 WL 1537599 (BPAI May 25, 2007) (No. 2006-2311, Tech. Ctr. 3600)
  29. Ex parte Rafal, 2007 WL 1537602 (BPAI May 25, 2007) (No. 2006-3144, Tech. Ctr. 2100)
  30. Ex parte Clark, 2007 WL 1537609 (BPAI May 25, 2007) (No. 2007-0561, Tech. Ctr. 2800)
  31. Ex parte Swanson, 2007 WL 1537613 (BPAI May 25, 2007) (No. 2007-1765, Tech. Ctr. 1700)
  32. Ex parte Hubacek, 2007 WL 1537606 (BPAI May 25, 2007) (No. 2007-0127, Tech. Ctr. 1700)
9 Appeals Reversed

  1. Ex parte Kalliokulju, 2007 WL 1378833 (BPAI May 10, 2007) (No. 2007-0834, Tech. Ctr. 2100)
  2. Ex parte Erkey, 2007 WL 1406641 (BPAI May 10, 2007) (No. 2007-1375, Tech. Ctr. 1700)
  3. Ex parte Umberger, 2007 WL 1451804 (BPAI May 16, 2007) (No. 2007-0965, Tech. Ctr. 2100)
  4. Ex parte Mayer, 2007 wl 1522953 (BPAI May 16, 2007) (No. 2007-0403, Tech. Ctr. 3700)
  5. Ex parte Napolez, 2007 WL 1460353 (BPAI May 18, 2007) (No. 2007-1916, Tech. Ctr. 3600)
  6. Ex parte Bodin, 2007 WL 1481832 (BPAI May 21, 2007) (No. 2007-0257, Tech. Ctr. 2100)
  7. Ex parte Diehl, 2007 WL 1522949 (BPAI May 24, 2007) (No. 2007-0125, Tech. Ctr. 1700)
  8. Ex parte Katoh, 2007 WL 1540192 (BPAI May 29, 2007) (No. 2007-1460, Tech. Ctr. 3600)
  9. Ex parte Rinkevich, 2007 WL 1552288 (BPAI May 29, 2007) (No. 2007-1317, Tech. Ctr. 2100)
4 Appeals Reversed-in-Part, Affirmed-in-Part

  1. Ex parte Fokken, 2007 WL 1540195 (BPAI May 16, 2007) (No. 2007-1565, Tech. Ctr. 1700)
  2. Ex parte Blanchard, 2007 WL 1460352 (BPAI May 18, 2007) (No. 2007-1364, Tech. Ctr. 3700)
  3. Ex parte Ratcliff, 2007 WL 1494281 (BPAI May 22, 2007) (No. 2007-1302, Tech. Ctr. 2100)
  4. Ex parte Nolte, 2007 WL 1494275 (BPAI May 22, 2007) (No. 2007-0563, Tech. Ctr. 2100)
Thus, Appellants have managed to overturn obviousness rejections in only 36% of the Appeals decided in May. Notably, 2 of the affirmed 103 rejections were from reexamination requests (Ex parte Atwood Mobile Prods., Ex Parte Capoccia) .

As Joe previously noted, the Board has overwhelmingly attached itself to the "precise teachings" and "inferences and creative steps" language used in the KSR decision:

“[A]nalysis [of whether the subject matter of a claim is obvious] need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.”
In cases where the rejections were reversed, combinations were rejected by the Board when they were at odds with "common sense." For example,

From these facts, there is no apparent reason to provide any phase change material (cooling medium), much less a phase change material having a different melting point, between two insulation layers. To do so would run counter to common sense of a person of ordinary skill in the art and the purpose of using the phase change material since the insulation layers would prevent the phase change material from performing its desired cooling function. Thus, contrary to the Examiner’s contentions at page 4 of the Answer, we determine that a person having ordinary skill in the relevant art would not have been led to the claimed subject matter within the meaning of 35 U.S.C. § 103. (Ex Parte Mayer).
Ine one case, the Board found that the Examiner relied on improper hindisght reasoning in formulating the rejection:

"In the instant case, we conclude that a person of ordinary skill in the art having common sense at the time of the invention would not have reasonably looked to Wu to solve a problem already solved by Savill. Therefore, we agree with Appellants that the Examiner has impermissibly used the instant claims as a guide or roadmap in formulating the rejection." Ex parte Rinkevich (emphasis in the original).
In a few cases (Ex Parte Jha, Amigh, Mayer), the Board relied on the CAFC Dystar and Alza decisions for the proposition that the obviousness test was "flexible" and "motivation need not be found in the references sought to be combined, but may be found in any number of sources, including common knowledge, the prior art as a whole, or the nature of the problem itself."

In one interesting case, the Board affirmed the rejection despite a 1.132 declaration that argued unexpected results (Ex Parte Hubacek).
  • To view individual decisions, see the USPTO e-FOIA page (link). Decisions may be searched by inventor name, appeal no., application no., etc. Since the PTO severs these links after a short while, there was little reason to link each of the decisions in this post.

6 Comentários:

Step Back said...

Peter,

I think those who prosecute patents need to develop a "common defense" against the assault on reason and the use of the "common sense" ruse.

What is the definition of "common sense"? Does the USPTO have any? How can it?

See this wiki definition

Anonymous said...

Common sense, of course, is the most perfectly distributed commodity of all. Everybody in the world is fully convinced that he/she already has a perfect sufficiency of it.

Step Back said...

When I ask whether and how the USPTO can know the "common sense" of one of ordinary skill in a given art, I'm not being facetious. One would think that an Examiner has to be in the field, at the factories, in the labs of the companies who practice in the art in order to acquire the "intuitions" necessary for knowing the "common sense" of those skilled in the art. Last I looked, I didn't see any Examiners hanging about in the labs.

Anonymous said...

This thread prompts a comparison with the EPO, and reflections on the effects of introducing to the USPTO something like post-issue inter Partes opposition proceedings. In the EPO, the effect is that ordinary Examiners spend a large part of their time deciding between the party arguing "inventive" and the one arguing "obvious". It informs their bread and butter work as Examiners. In opposition, 33% of claims survive, 33% get revoked and 33% survive amended. On the attorney side, the prosecutors spend much of their time representing opponents, attacking patents and pleading with the same Examiners who, the next day, will decide in humdrum pre-issue examn whether to allow a claim that same attorney wants issued, in one of his bread and butter applications. Thus, both Exrs and attorneys do both sides, day in day out. I haven't seen a downside yet. I think it enhances the quality of debate, about things like obviousness. You want to win today, but you want to win tomorrow too, when you will be before the same Examiner but instead of crying "inventive" you will then be crying "obvious!". I don't see anything like that, in the USPTO, and I wonder whether that explains some of the difficulties.

Step Back said...

It is somewhat naive to assume that American patent attorneys do not spend time on both sides of the "debate". On the other hand, it's not much of a "debate" when one side has the power of judge, jury and executioner (the Examiner) while the other side has the power of a court jester (do a little dance & hope TPTB like it).

KSR v. Telefelx is a sea change because it creates a new class of patent litigation: summary judgment invalidation of patents based on obviousness where the invalidation is granted by a single judge on the basis of appeal to "common sense", "ordinary creativity", "inferences drawn" from a collection of cherry picked references and the allowed introduction of the "obvious to try" argument in front of a judge who has little familiarity with the rigors of patent logic.

Two-Seventy-One Patent Blog said...

Interesting points. Regarding the USPTO, I think the battle has changed on obviousness rejections, where previous attacks on the "prima facie" side will now move towards the "rebuttal" side of arguing against obviousness.

This means that responses will require considerably more detail, and the burden for practitioners will increase. Of course, belligerent examiners will occasionally cause problems, but I think the "bad" rejections can still be exposed.

The "obvious to try" argument has always been an effective weapon when procuring patents, but over the years, it has evolved into a bit of a crutch. Personally, I've treated the KSR decision (practically speaking) as a change in the burden of proof before the USPTO: since examiners will be given more deference, responses should strive to provide "clear and convincing" arguments on nonobviousness, since arguments based on a "preponderance of evidence" still leaves you open to "common sense" counter-arguments from the PTO.

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