You should include the PTAB’s most cited case law for ex parte appeal reversals in your appeal briefs
“These case law quotations are the bread and butter of winning appeals if argued correctly.”
The first two articles of this series focused on convincing your clients to file more appeals and techniques that you can use to get better results on appeal. This article discusses the case law you should use in your appeal briefs. As discussed in my previous article, if you can use case law that the Patent Trial and Appeal Board (PTAB) commonly uses in writing reversal decisions, you make it easier for the PTAB to write a decision in your client’s favor and can increase your chances of winning on appeal.
In my experience, the most common successful arguments for reversing a prior art rejection are:
- (1) the prior art does not teach what examiner says it teaches;
- (2) the articulated reasoning set forth by the examiner to combine references in an obviousness rejection is conclusory and/or lacks a rational underpinning;
- (3) the claim interpretation set forth by the examiner is unreasonable; and
- (4) the articulated reasoning set forth by the examiner to combine references in an obviousness rejection is speculative and/or lacks a factual basis.
Argue the Examiner Has Not Met the Requisite Burden
The applicant for a patent does not have the burden of proving patentability. The examiner has the burden of proving patentability. Do not fall into the trap of arguing patentability if the examiner has not set forth a prima facie case of unpatentability.
MPEP 2106(II) states that “[t]he examiner bears the initial burden … of presenting a prima facie case of unpatentability.” (citing In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). In addition to In Re Oetiker, you can cite other helpful case laws to frame your arguments so that the examiner is held accountable for meeting the required burden. In addition to In re Oetiker, there are other helpful case law that you can cite to frame your arguments in a manner that holds the examiner accountable for meeting the requisite burden. . . . .”). ACCOBrands Corp. v. Fellowes, Inc., 813 F.3d 1361, 1365 (Fed. Cir. 2016).
If you can prove that the examiner did not meet the preponderance standard for proving unpatentability then the PTAB is likely to rule in your favor. In re Caveney 761 F.2d at 674 (Fed. Cir. Cir. If the examiner’s position is not supported by evidence, the PTAB will be forced to consider whether the examiner has sufficiently proven unpatentability. Tying your arguments to this standard will make the PTAB deeply consider whether the evidence supports the examiner’s position and can cast doubt as to whether the examiner has sufficiently proven unpatentability.
Argue That the Examiner’s Reasoning is Not Supported by a Rational Underpinning
Most prior art rejections that make it to the PTAB are obviousness rejections, and I am sure that all patent practitioners are familiar with the quote from KSR International Co. v. Teleflex Inc., 550 U.S. 398, 417-18 (2007) that “rejections on obviousness grounds cannot be sustained with mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” However, I’ve read several Appeal Briefs written by other attorneys over the years that dance around this issue, but do not explicitly make this argument. A search of LexisNexis Patent Advisor’s Appeal Briefs shows that only 5,037 (25.7%) of the 19,574 appeal briefs filed since 2021 include the words “obvious”, “obviousness”, and do not contain “anticipate”, “anticipation”, or “anticipation”. I wanted to exclude that obviousness might only be an issue for dependent claim, and therefore not have been argued. Of the 72 Appeal Briefs that I have filed related to obviousness since 2016, 51 (70.8%) have mentioned “rational underpinning.”
If you want to help your clients win appeals on obviousness rejections, you should frequently argue against the examiner’s reasoning in this manner. It is unlikely that the examiner’s reasoning will be used in litigation to narrow a patent’s scope. Therefore, there is no downside to attacking the examiner’s logic unless it is strong. You can also use your Reply Brief to defend the rationale you criticized in your Appeal Brief. In your Reply Brief, you should address the reasoning that the examiner has provided in the Examiner’s Answer. Due to the nature of ex parte appeals, the Applicant gets the last word the vast majority of the time, which is helpful for winning any argument.
Another similar Federal Circuit case quotation that can be helpful in this regard is that the USPTO “must examine the relevant data and articulate a satisfactory explanation for its action including a ‘rational connection between the facts found and the choice made.”‘ Motor Vehicle Mfrs. Ass’n v. State Farm Mut. Auto. Ins. Co., 463 U.S. 29 (1983) (internal quotation omitted); also, Synopsys, Inc. Cir. Cir. 2016) (stating an administrative agency must “articulate logical and rational reasoning for
decision” (internal quotes and citation omitted). The examiner’s reasoning must be logical and rational in relation to the evidence, and it should be argued aggressively when there are holes in it.[its]Challenge the Examiner’s Assertions as Being Speculative
If an examiner’s rejection is speculative and lacks a factual basis, it does not establish unpatentability by a preponderance of the evidence. The PTAB commonly cites the following decades old quotation from In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) in reversing obviousness rejections:
“The Patent Office has the initial duty of supplying the factual basis for its rejection. It may not, because it may doubt that the invention is patentable, resort to speculation, unfounded assumptions or hindsight reconstruction to supply deficiencies in its factual basis.” (emphasis in original).
This quotation should be in the MPEP. It was cited by 10.3% (397/3863) PTAB reversals that included the word “obviousness” or “obviousness”, but did not include “anticipate”, or “anticipation”. This is a very high percentage, as most caselaw not in MPEP is cited by less than 1% of PTAB reversals. Searching LexisNexis Patent Advisor for Appeal Briefs shows that only 1,309 (6.7%) of the 19,574 appeal briefs filed since 2021 include the word “obviousness”, “obviousness”, and do not contain “anticipate”, or “anticipation”. Use this quotation more frequently to increase your client’s chances of winning more appeals. In 52 of the 72 appeal briefs I have filed since 2016 that deal with obviousness, this quotation has been mentioned in 52 (72.2%). I have also written more extensively about my love for this case quotation on my blog, which mentions that 82.9% of PTAB ex parte appeals decisions citing this quote are wins for the applicant.
This case comes in handy when the examiner is reading more into the prior art than it actually discloses or shows. In a recent appeal brief, I used this case when the examiner claimed that it was “inconceivable” that prior art could have a specific benefit. I responded with this In re Warner quote and provided a definition of speculative as “theoretical rather than demonstrable.”
The advantage asserted by the examiner was theoretical, and thus the examiner was speculating. You should ask yourself if the examiner is reading too much into the prior art. If so, you can argue that the rejection lacks factual support and is speculative. In re Jones, 958 F.2d 347, 349-51 (Fed. Cir. Cir. Cir. Cir. You will help your clients if you focus on the evidentiary deficiencies of the Examiner’s assertions.
Challenge the Examiner’s Claim Construction as Being Beyond the Broadest Reasonable Interpretation
All practitioners have had the experience of the examiner who takes the broadest reasonable interpretation rubric beyond the extremes. The examiner, for example, refers to walls as doors because they are both buildings and structures. Nothing in the specification states that a building wall cannot be used as a door. You may know that it is unreasonable, but don’t want the claim terms to be defined. In my opinion, the best case to use as a reference for arguments about the reasonableness or otherwise of a claim is In re Suitco Surface, Inc.,603 F.3d. 1255,1260 (Fed. Cir. 2010), which states “
he broadest-construction rubric coupled with the term ‘comprising’ does not give the PTO an unfettered license to interpret claims to embrace anything remotely related to the claimed invention.”[T]I use this quote and argue that it is completely unclear how the examiner could be interpreting a door as being a window, as there is no definition known to applicant or anything in the specification that indicates that a window can be reasonably considered to be a door. I invite the examiner then to provide a description or definition. I will often provide an exemplary description, but will do so in such a way as to not limit the claim’s scope. You can say something also the lines of “for example, one definition of door is ‘a usually swinging or sliding barrier by which an entry is closed and opened,’ and a wall cannot be closed or opened.” Or you can provide multiple definitions and say that wall is not a door under any of these definitions.
I have read decisions where an applicant will lose an appeal because they are trying to implicitly argue claim constructions without saying anything about claim construction. Don’t let your client lose an appeal because the claim construction was unreasonable to the point of novelty. You have to do the leg work. You must do the legwork.
A couple of other useful quotes about claim construction include PPC Broadband, Inc. v. Corning Optical Commc’ns RF, LLC, (815 F.3d 754, 755 (Fed. Cir. 2016) (“Above all, the broadest reasonable interpretation must be reasonable in light of the claims and specification.”);[t]Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. Cir. . . Does not include giving claims an incorrect interpretation .”); or In re Smith Int’l, Inc., (871 F.3d. 1375, 1382-1383 (Fed. Cir. 2017) (“The correct question to ask when interpreting a claim term in the broadest reasonable way in light of a specification is not if the specification prohibits or allows broader interpretations of the claim terms adopted by the examiner. It is not just an interpretation that does not contradict the specification. It is an understanding that is in accordance with how the inventor described his invention, i.e. an interpretation that is “consistent with specification .'”). Other Arguments That Work and Arguments To Avoid
The case law quotes above are the key to winning appeals, if they are argued correctly. I have seen other arguments that are successful in appeals, such as improper hindsight of an obviousness combination and that the examiner did not establish inherency because the prior art had not been proven to “necessarily disclose” a claimed feature. These arguments can be intertwined with the arguments that I mentioned above, but they have sufficient merit to be considered individually.
Arguments that are less effective are that the prior art teaches away from a claimed feature, that the prior art is non-analogous to the claimed invention, or that there is no reasonable expectation of success of obtaining the claimed invention. These arguments can be used in certain situations, but are generally losing arguments. Consider omitting these arguments in favor of stronger arguments, or including them at the end of your arguments. Thus, consider omitting these arguments in favor of stronger arguments, or include them at the end of your arguments.
Hopefully, these article have caused you to rethink whether you should be recommending appeal as an option to your clients when you are faced with an unreasonable patent examiner and have supplied you with further ammo to help your clients win appeals.
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Author: tashatuvango
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