Motivation to combine is not present when benefit alleged to be provided by the combination is already present in the art

Wait … what? This argument came up and prevailed – twice – in Tech Center 1700 PTAB decisions in November. First, Ex parte Gama, US Patent Application No 12/042641, Appeal 2019-002094, decided November 5, 2019.  In Gama, the Examiner found claims directed to a fuel filter obvious over two references.  The motivation to combine, the […]

Examiner reversed for relying on “common sense” to supply claim recitation missing from the applied art

Applicants/Appellants in the food arts, rejoice! In Ex parte Elejalde, US Patent Application Serial No. 14/119,935, Appeal 2019-003528 decided November 21, 2019 (Ex parte Elejalde), the claims recite a pan coating process using two drums.  A liquid is taught to be applied in the first drum, and a powder applied in the second such that […]

Non-Analogous Art Argument WINS!!!

Not once, not twice, but FIVE times at PTAB, Tech Center 1700, in November and December. Full disclosure – four of the decisions were issued in related applications. In Ex parte Hansen et al.,  US Patent Application Serial No. 12/345215, Appeal 2019-001796, decided November 14, 2019 Ex parte Hansen and Ex parte Hansen et al., […]

PTAB Tech Center 1700 Observations, December 2019

The was no merriment for Appellant’s in Tech Center 1700 in December.  After an almost 40% reversal rate in November, PTAB’s reversal rate in Tech Center 1700 was down to about 24% in December: The Board heard 96 appeals, and reversed the Examiner 23 times with one reversal with a new ground of rejection: No […]

Supreme Court denies cert in both Vanda and HP v. Berkhimer

Leaving the only possibility for Section 101 reform this year with Congress. Sadly, legislative reform seems unlikely this year – after much action in the summer of 2019, nothing happened.  And now, the likely champions for reform, Senators Coons and Tillis, are both up for reelection.  SCOTUS order list 13JAN2020