IP Blog
Ex Parte PTAB Appeals
Federal Circuit Vacates PTAB Opinion in Google Application
Google recently convinced a Federal Circuit panel to vacate a decision by the Patent Trial and Appeal Board that had found Google’s application obvious. The court decided that the Boardfailed to support the decision with sufficient reasoning. The claims in Google’s application pertained to delivering search results customized to an expected age of the searcher. The system calculates a “content...
A Printed Publication in Patent Prosecution May Not be Printed Publication in an IPR Proceeding
In a recently designated precedential decision (Ex parte Grillo-Lopez), the Patent Trial and Appeal Board (PTAB) explained the differences regarding what a printed publication is during inter partes review (IPR) and what a printed publication is during examination. This decision centered on an FDA transcript that was the subject of an earlier IPR proceeding in which the PTAB held that...
Language From CIP Survives “New Matter” Challenge
Finding that the Patent Trial and Appeal Board failed to consider the entire record, the Court of Appeals of the Federal Circuit vacated and remanded for further analysis the Board’s decision affirming a rejection of claims for lack of sufficient written description support under 35 U.S.C. § 112. In re: David Tropp, 2017-2503, (Fed. Cir, Dec. 12, 2018.) The PTAB...
Requiring Condition Can Overcome Art Resulting In Condition
A claim that required a specific condition overcame prior art that merely disclosed an embodiment resulting in satisfaction of the condition. In re Facebook, Inc., No. 2017-2524 (Fed. Cir. Aug. 14, 2018) (nonprecedential) (C.J. Prost, JJ. Moore, Stoll). Facebook filed Patent Application No. 13/715,636, Pub. No. 2014/0168272, which is directed to rendering an array of contiguous images, subject to ta...
Reversal of Parts Not Obvious in the Absence of Supporting Evidence
The ex parte Appellant successfully argued that the Examiner had not established a prima facie case of obviousness by failing to adequately explain why one skilled in the art would have made the proposed modification in Ex parte Tisol (Appeal No. 2017-007929, decided April 25, 2018). The claim at issue is reproduced below with emphasis added: A system for manufacturing...
Unpredictability, not Inherency, Important for Obviousness
In Honeywell International Inc. v. Mexichem Amanco Holding S.A. De C.V., No. 2016-1996, 2017 U.S. App. LEXIS 13909 (Fed. Cir. Aug. 1, 2017), the Federal Circuit vacated and remanded a PTAB decision, holding that an obviousness rejection based on inherent properties should be reconsidered where the patent owner presents evidence of unpredictability in the art and unexpected results. Honeywell International,...
Mass Spectrometry Method Not Patent Eligible in Ex Parte Appeal
The PTAB held that the claims in Ex parte Quimby, Appeal No. 2016-004681 (June 2, 2017) were directed toward unpatentable subject matter. Of particular interest given the claim language, the Appellant was unsuccessful with arguments that 1) the claims do not disproportionately tie up the use of any underlying idea, 2) the claim provides an improvement in the technological field...
Patent-Eligibility Lessons from the PTAB (No. 1)
How is the USPTO’s Patent Trial and Appeal Board (PTAB) addressing patent-eligibility rejections under 35 U.S.C. § 101 in ex parte appeals? What arguments work, and what arguments fail, when you are trying to persuade the PTAB judges that rejected claims pass the Mayo/Alice test? How should you draft your claims to best condition them for an appeal to the...
PTAB Finds Reasoning for 103 Rejection Insufficient in Ex Parte Appeal
Citing KSR Inti Co. v. Teleflex Inc, the PTAB in Ex Parte Mattisson (Appeal No. 2016-004484, April 14, 2017) agreed with the ex parte Appellants and reversed the Examiner’s rejection based on insufficient rationale to support an obviousness rejection. Specifically, the PTAB held that the Examiner’s reasoning that “a person of ordinary skill would not be discouraged“ from the combination...
“Substantially” is a Definite Term in Recent PTAB Decisions
Many practitioners view words of approximation, such as “substantially,” as useful tools to broaden claim language. MPEP §2173.05(b) states that words of approximation are acceptable if one of ordinary skill in the art would understand what is claimed, in light of the specification. In fact, MPEP §2173.05(b)III discusses the acceptable use of various words of approximation, including “substantially.” Yet, it...