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:
- Oral hearing was held 4 times
- Pre-Appeal review was requested 10 times
- Reply Briefs were filed 20 times
- The Board entertained 3 requests for inter-partes review, instituted and terminated 2 in light of settlement agreements (2 patents held by Specialized Desanders, Inc.) and denied institution of 1.
- In one case, an anticipation rejection was the only rejection at issue. In every other, at least obviousness was at issue, and in four instances, 112 and/or 102 rejections were also pending.
- The Board heard 2 requests for rehearing of an appeal, and denied both.
- Indeed, since 2016, PTAB has entertained only 14 requests for rehearing of an appeal out Tech Center 1700, and granted only one, in part. Before you get too excited, the issue in USSN 14/511952 involved the misstatement of a ground of rejection that the Examiner had indicated had been overcome and withdrawn. The Board affirmed the withdrawn rejection in their original decision and in the rehearing decision merely removed the erroneous affirmation from their decision.
- The most cited reasons for reversal were:
- The Examiner provided mere conclusory statements insufficient to sustain the rejection – or the analogous “insufficient factual or evidentiary basis has been provided to sustain the rejection.” Rejection lacks “rationale underpinning”
- 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.
- The Examiner’s proposed combination is contrary to the intended purpose(s) of the reference(s)
- Examiner did not consider Appellant’s evidence
- Routine optimization of a result effective variable is insufficient to support a conclusion of obviousness
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