As the New Year is upon us, like many of you we are looking forward to a great year. At this time, we are reflective of 2017. In this year, the website of Anticipat.com saw major improvements. We expanded the library of decisions, we improved decision annotations through a unique rationale tag and legal support framework, we launched Practitioner Analytics, and we even made a couple Youtube videos.
We also launched this blog early this year. It has unexpectedly been quite the ride reporting on and providing analysis of ex parte PTAB appeals decisions. In this, it has been critical to see the forest while seeing the trees. Many readers are finding ex parte appeals data helpful for guiding prosecution strategy. Here are the top ten blog posts of this year by traffic.
- Which law firms are successful in overturning abstract idea rejections on appeal? – For difficult grounds of rejection, the right advocacy can make all the difference. The right counsel can know when to appeal and how to win on appeal. Here, we explore the demographic of firms that represent appellants that overturn one of the most difficult of all rejections: Section 101 abstract idea.
- Section 101 Rejection Overturned. What’s Next: A Notice of Allowance or a Revised Office Action? – It has seemed like the PTAB has been on a recent roll in reversing abstract idea rejections. On this note, two related business method applications came out on October 3, 2017: Ex Parte Webber et al., Appeal No. 2015-003647, and Ex Parte Webber et al., Appeal No. 2015-003796. The Board only sought to decide the rejection at hand and not to evaluate the patent-eligibility of the claims on its own. Now that the decision was rendered, the logical question is what happens next? To understand this, we navigate through a somewhat complex area of rules.
- Business methods patent-eligible? PTAB: Yes – Business method art units have been a scary place for patent applications. In Alice v. CLS Bank, a vocal minority of the Supreme Court would have categorically excluded business method patents from eligibility. So it comes as no surprise that many Examiners have raised the bar of patent-eligibility of business method inventions to unprecedented levels. So much so that applicants now try and avoid any claim language that hints at business methods. But business method patents are not per se doomed, as shown in the recently decided Ex parte Breiter, dated September 29, 2017.
- Too Simplistic: How the USPTO measures outcomes for ex parte PTAB appeals – Currently, the USPTO measures decision outcomes of ex parte appeals in three different ways: affirmed, affirmed-in-part, or reversed. This is highlighted by the USPTO’s recently released statistics on outcomes of ex parte appeals for FY2017. These stats show that the Patent Trial and Appeal Board (PTAB) very frequently upholds Examiners on appeal, with a 55% affirmance rate. These affirmed rates suggest a job “well done” by the USPTO. However, the way the USPTO counts affirmances yields counterintuitive and misleading results, especially with cases involving multiple grounds of rejection. Indeed for accountability purposes, this way of measuring appeals cloaks the USPTO’s Examining Corps failures.
- When a Final Office Action comes in, consider using Anticipat. Here’s why – A first Office Action can involve a lot of guesswork. What does the Examiner mean with a particular rejection analysis? Is the Examiner serious with a particular rejection or just bluffing? Can the Examiner really get away with a particular rejection? An important point about Examiners is that they all examine applications quite differently. For one, they have different personalities and understandings, resulting in a varied interpretation of the patent laws and rules. But not all of these personality quirks or internal memos comport with the patent laws or patent rules, which is where the Board comes in. The Board is the first line of defense in holding Examiners and even their SPEs accountable for the rejections they issue.
- Wisdom of the Board: Most Effective Arguments for Obviousness – Can Board decisions help in knowing how to overcome obviousness rejection? [L]ooking at the frequency of arguments can provide a framework and see the most effectively used. In appeal briefs, the Board entertains a lot of arguments and they coalesce around a finite set of them in overturning an obviousness rejection. Board decisions can definitely help organize these arguments. Plus, knowing the most frequent arguments can help in knowing how to draft appeal briefs. But more generally, it helps to align response arguments for proper prosecution. Because if you are following the way that judges overturn rejections, that information can be useful.
- PTAB Mocks Alice Supreme Court in Reversing 101 Rejection — Claims Include “Talismanic” Inventive Concept when the conventional computer components are arranged to provide specific advantages to the users – In ex parte Lynch, Appeal No. 2016-002985, the Board reversed a Section 101 rejection, holding that the claimed invention provides an improvement in the functioning of the computer. Finally, in an apparent mocking of the Supreme Court, the Board concluded that the claims include the talismanic inventive concept.
- Presentation Recap on Abstract Idea Developments at the PTAB – Trent Ostler did a deep dive on abstract idea developments at the PTAB yesterday at the AIPLA Joint Committee Hot Topics Presentation (Patent Law Committee and ECLC). He used data from Anticipat.com for all his results.
- How to overcome an abstract idea rejection? Emphasize narrowing claim amendments and lack of prior art rejections – Recently decided ex parte Blaho, Appeal No. 2016-007954, (PTAB September 28, 2017) reversed an Examiner’s abstract idea rejection. In doing so, the Board first dismissed the Examiner’s characterization of the claims. Then, the Board found that the long prosecution history with significant amendments to overcome prior art rejections was evidence that the claim elements were not routine or conventional. It is a case worth studying for practice tips.
- Another “good” bioinformatics claim found patent-eligible by the Board — insufficient evidence of routine and conventional claim – In a previous post, we defined what a good bioinformatics claim looks like. Such a claim does not suffer from divided infringement issues and it does not recite steps to be performed by hospitals or doctors (e.g., medical procedures, administration of therapies) for maximum damages. We also reported that the US Patent Office resists granting such claims, alleging a lack of statutory subject matter. Here, we report on the PTAB continuing a trend of reversing such rejections of these types of claims.
To conclude, thank you for joining with us as we stay current on PTAB developments and trends. We are looking forward to many more interesting posts and for continued improvements to the website. Your feedback is critical to us. Happy New Year’s!