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 one wanted to talk about it – oral hearing was requested a mere 4 times, but only held once – and the Examiner was affirmed in part in this instance.
    • Normal after-final practice was much preferred over either AFCP requests or preappeal requests for review – 40 responses after final were filed, whereas only 8 AFCP and 23 preappeal requests were filed.
    • Reply Briefs were filed in 78 out of 96 appeals, and in 20 of the 23 reversals.  This means, of course, that reply briefs were filed in 58 of the 63 cases where the Examiner was affirmed.
  • The Board entertained 1 request for rehearing of an inter partes review decision in favor of the patent owner, refusing to reconsider whether claims 38 and 39 of US Patent No. 8,945,287 are unpatentable, as claims 27, 28, 30, 32, 33 and 35-37 were found to be.
  • The Board heard 3 requests for rehearing of an appeal, and denied all.
  • Exemplary reasons for reversal include:
    • Examiner did not give appropriate consideration to Appellant’s arguments/evidence
    • Motivation to modify or combine not sufficiently set forth by the Examiner
    • Inherency was relied upon in the rejection, but not established
    • Modification of the cited reference in the manner required would frustrate the purpose of the cited reference

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