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 reversed.
    • AFCP requests were only filed in 6 of the appealed cases.
    • Pre-Appeal review was requested 21 times – in 9 instances, though denied, the Examiner was ultimately reversed.
    • Reply Briefs were filed in 66 out of 86 appeals, the Examiner was affirmed in 36, and reversed in 30.
  • The Board entertained 1 request for rehearing of a denial to institute a post grant review, and decided an inter partes review in favor of the challenger, invalidating all claims of U.S. Patent No. 6,455,451, owned by Ardent, Inc.
  • The Board heard 3 requests for rehearing of an appeal, and denied all.
  • Exemplary reasons for reversal include:
    • Rejection lacks “rationale underpinning” – inquiry is not whether one of ordinary skill could modify the prior art to arrive at the invention, but whether they would have been motivated to do so.  See, e.g., 13/968,541
    • The Examiner’s claim construction or interpretation of a reference was incorrect, or the Examiner had not provided sufficient basis to refuse Appellant’s construction or interpretation.  See, e.g., 14/463,770
    • Common sense is not appropriately used as a basis for an obviousness rejection – see, e.g., 14/229,935
    • Examiner’ statement of motivation for modification provides an advantage already provided by the prior art, so one of ordinary skill would have no reason to make the modification.  See, e.g., 12/042,641 and 12/345,215

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