Examiner reversed, reminded that claims “must be read in accordance with the precepts of English grammar”

With a Federal Circuit citation, no less. In Ex parte Moffat, USSN 15/227,827, the claims on appeal were directed to toner compositions with white colorants.  Independent claim 1 recited, in pertinent part:  An emulsion aggregation toner having toner particles comprising … one single white colorant consisting of titanium dioxide… While claim 21, dependent from claim […]

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 […]

PTAB Tech Center 1700 Observations, November 2019

Examiner’s in Tech Center 1700 had a reversal rate of about 40% in November, giving patent prosecutors and applicants alike something to be grateful for: The Board heard 86 appeals, and reversed the Examiner 34 times: Oral hearing was held 11 times.  In 8 instances, the Examiner was affirmed and in 3, the Examiner was […]

PTAB reverses Examiner on “overlapping ranges” rejection

Ex parte Sobota, decided November 27, 2019.  Ex parte Sobota PTAB Decision  Claim 11 of US Patent Application No. 14/907,957, the subject of this appeal, recites: 11.  A process for preparing trichlorosilane (TCS), comprising reacting metallurgical silicon (mg-Si) having a titanium content of 0.08 wt% to 0.12 wt.%, and a phosphorus content ≥ 30 ppmw […]

PTAB Holds All Claims Unpatentable under §101 in PGR Proceeding

U.S. Patent US9691090 is directed to methods of operationalizing privacy compliance.  On October 10, 2019, PTAB held all claims of the ‘090 patent unpatentable under 35 USC §101 as directed to abstract ideas as a result of a PGR challenge.  Avepoint v. Onetrust  While it may not come as a surprise to many that claims […]

Tech Center 1700 PTAB Observations, October 2019

As due diligence for an appeal in a difficult case I have been prosecuting for a client, I looked through the decisions issued by PTAB out of Tech Center 1700 in October of 2019.  Here are some things I found interesting: The Board heard 80 appeals, and reversed the Examiner 24 times. In the reversals: […]

USPTO Launches a Bulk Data Search Tool

Finally, PTAB decisions are searchable in a meaningful way. Previously, a searcher had to know the docket number or Petitioners name to find a decision. The new tool allows searching for text and/or a variety of fields including decision or issue type, and further allows limiting search results to a tech center.   https://developer.uspto.gov/ptab-web/#/search/decisions