Anticipat Education Part 4: How to find legal arguments relevant for reversing particular Office Action rejections 

Every patent application is different. So is every Office Action. But there are only a limited number of ways to successfully rebut a given rejection in any Office Action.

Think of Anticipat’s ex parte PTAB database as holding the answers to all the successful ways in which Examiners have been overturned on appeal. Anticipat Analytics breaks down the most persuasive arguments that the Board relies on to overturn this particular ground of rejection of interest. For example, as shown in the below image, the red arrow points to the most commonly used arguments that the Board relied on in reversing obviousness rejections in art unit 3689. See below image.

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This provides a practitioner an outline straight from the Board of successful ways to overcome various grounds of rejection. The clear leading argument for this art unit, as shown above, is that the combination of references must teach or disclose the claim elements. This can guide the practitioner in developing a winning argument by focusing on arguing against the references not teaching what the Examiner purports that they teach.

All these tags are specific to the application’s examiner, art unit, or tech center. You can click on the various tags to further research the context of the arguments to draw appropriate parallels.

Anticipat Analytics organizes the tags the Board uses to overcome rejections to help you in your practice. The efficiencies and knowledge gained pay for themselves within minutes of use. Click here to give it a try.

 

Rare request for rehearing granted to reverse obviousness rejection

It may be discouraging to an applicant to appeal all the way to a final decision only to see the rejection(s) be affirmed. The process can take years. Fortunately, there is a procedure that allows for such a decision to be reviewed by the same panel: request for rehearing. This procedure is at times successful, perhaps counter-intuitively.

In ex parte Clendenen (PTAB March 7, 2018), counsel from Faegre Baker Daniels LLP filed a request for rehearing, arguing that the Section 103(a) obviousness rejection was improperly affirmed. Specifically, they argued that the Board misapprehended the disclosure of a reference and that the reference did not teach the claimed features.

In the rehearing decision, the panel, which consisted of the exact same members as the original decision, acknowledged that the reference in fact did not disclose the claimed features. At best, the reference was ambiguous. While the modification was possible and potentially useful, the Board concluded it was unclear on the record that such correlation is required in the reference. Thus, the rehearing was granted.

As we have reported about a Section 101 rehearing getting granted, because of the makeup of the panel being the same as the original decision, intuition would suggest that these requests never get granted. However, they do happen. Plus there are no government fees to file a request for rehearing. So it doesn’t seem like a bad idea to add on a few more months to pursue this procedure, especially after going all the way to the final decision.

 

Upcoming Webinar on strategically using ex parte appeals in your patent prosecution practice

This blog has focused much on the advantages of pursuing an ex parte appeal during patent prosecution. We have pointed out that pursuing an appeal carries a number of unique advantages above alternative procedures in patent prosecution. In a free webinar hosted by Fitch Even on March 21, 2018 (with some CLE provided), panelists will discuss many of these advantages. The webinar’s title is “Avoiding Prosecution Churn: When Ex Parte PTAB Appeals Make Dollars and Sense.” Register by clicking here, as explained in the summary below.

  • FITCH EVEN WEBINAR: MARCH 21, 2018
Avoiding Prosecution Churn: When Ex Parte PTAB Appeals Make Dollars and Sense

Please join Fitch, Even, Tabin & Flannery LLP for a free webinar, “Avoiding Prosecution Churn: When Ex Parte PTAB Appeals Make Dollars and Sense,” on Wednesday, March 21, 2018, at 9:00 am PDT / 10:00 am MDT / 11:00 am CDT / 12 noon EDT.

During the process of acquiring patent rights through the patent application process, applicants sometimes wish to seek review of rejections by an examiner. The formal mechanism for achieving this review is an ex parte appeal to the Patent Trial and Appeals Board (PTAB). Some patent practitioners avoid the ex parte review process, viewing it as lengthy and expensive. But, data and experiences recently compiled by an AIPLA subcommittee suggest that this conventional thinking may be incorrect. It turns out that pursuing an appeal can be a more attractive option than other patent prosecution procedures.

During this webinar, we will explore how the AIPLA findings may provide guidance on

  • When to file ex parte PTAB appeals
  • How often to file these appeals
  • Which issues to choose to appeal

Additional topics will include

  • USPTO incentives
  • Working with the examiner
  • Patent term adjustment
  • Pre-appeal brief reviews
  • Other relevant statistics

Our speakers:
Thomas F. Lebens, a partner at Fitch Even, assists clients in preparing and prosecuting patent and trademark applications, including appeals, post-grant review, and interferences. He also counsels clients in IP and business strategy; licensing issues; infringement and validity analysis and opinions; and copyright matters.

Trent Ostler is in-house counsel for Illumina, Inc., where he helps protect the company’s software and informatics products and inventions through patent, copyright, and open source licensing. Trent is the founder of Anticipat.com, a PTAB appeals database.

CLE credit has been approved for California and Illinois and is pending in Nebraska. Other states may also award CLE credit upon attendee request. There is no fee to attend, but please note registration is required. To reserve your place, please REGISTER HERE.

Anticipat Education Part 3: Find reversal rates for an examiner, art unit, tech center

Today, we showcase part of Anticipat Practitioner Analytics, a tool we believe will help you succeed in your practice.

Before we get too deep, a brief foundation is in order. A “reversal rate” for a particular ground of rejection is how often the Board overturns an Examiner’s rejection on appeal. A reversal rate can be used for a given Examiner, art unit, tech center or global USPTO levels.

Anticipat Practitioner Analytics provides you with these reversal rates for any application number.

Simply input an application number at the top of the page, and the engine takes care of matching up the Examiner, art unit, and tech center for this application. See below image.

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After clicking “GO”, the reversal rates for this application’s Examiner, art unit and tech center are displayed.

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This captures some interesting insights. The first relates to the graphs, where the blue color represents the percentage completely reversed and orange represents the percentage partially reversed. The higher the reversal rate for the Examiner compared to other higher-up levels, the less reasonable this type of rejection for this Examiner in general. This is because the more often an Examiner issues unreasonable rejections, the more likely the Board will overturn on appeal.

Take Examiner Borissov above as it relates to Section 101 patent-ineligible subject matter. Having a wholly reversed rate of 50%, this Examiner has a much higher reversal rate than his art unit, which has a wholly reversed rate of 12%. If the Board is overturning the Examiner on this ground that much higher than his art unit, the Examiners Section 101 rejections may not be as sound.

The second interesting insight relates to the numbers of decisions (including the hyperlinked parentheticals). These numbers provide greater context at each level of hierarchy. Plus, by clicking on these decisions, you can find the very decisions that the Board overturned (either partially or completely) for this particular Examiner, art unit, or tech center.

While only Section 101 – patent-ineligible subject matter is shown, this breakdown is available for every ground of rejection.

If you would like to do a lookup for only Examiner or art unit, the fields allow for more targeted lookups. Plus, if you are curious about a particular window of time, you can use the date range to narrow the results. This can come in handy as in some areas the laws can change rather quickly.

Please reach out to us with any questions or comments. We’re standing by for any questions or comments. If you would like for us to demo the product to a group, we are more than happy to do so.

PatCon8 Conference: State of Patent-Eligibility of Medical Diagnostics Not Good

The eighth annual PatCon hosted by the University of San Diego School of Law included a wide range of speakers and presentations. Perhaps due to the largely academic audience, participants openly disagreed on various points. But one point had almost universal consensus: patenting medical diagnostics in the US is very bleak due to patent-eligibility. And it’s unlikely to change any time soon.

Since the Supreme Court decided Mayo v. Prometheus in 2012, the USPTO has shown a sharp decrease in finding good diagnostics claims to be patent-eligible. One session in particular focused on this: “Patentability of Medical Diagnostics” on March 2, 2018. This panel included Dirk van den Boom, CEO, Juno Diagnostics, former CEO of Sequenom; Brian Sun, Director, Intellectual Property, Prometheus Laboratories;  Matthew Bresnahan, Partner-Elect, Wilson Sonsini; Donna Shaw, UC San Diego;  Prof. Joshua Sarnoff, DePaul University School of Law; Prof. Jeffrey Lefstin, Hastings School of Law. We report on this session.

First off, Matthew Bresnahan shared statistics of decreased allowance rates and decreased filings in the 1630 art units. Matthew stated that the problem with diagnostics claims is not getting allowed claims, but rather getting good claims that do not suffer from divided infringement issues. He pointed out that the lone example claim deemed patent-eligible in the USPTO’s subject matter guidelines has a divided infringement issue. As a solution to fixing the patent-eligibility of diagnostics, Matthew suggested that the USPTO provide a “good” example claim in the guidelines that is deemed patent eligible.

Next, former CEO of Sequenom, Dirk van den Boom, talked about his experiences of having the courts take away all his company’s core IP based on patent-ineligibility. It was not planned, according to him. It was also not pleasant.

At one point audience member Mark Lemley tried to maintain an “All is well at the USPTO” attitude by pointing out that overall filings and grants in tech center 1600 may be up. Even if such data exists, which it wasn’t immediately clear to this correspondent, panelists agreed that certainly the types of claims currently granted are much different/worse than previously or in other tech centers.

Prof. Joshua Sarnoff then talked about a need to study the effects of the US choosing not to prioritize the patenting of diagnostics the same way that other countries do. To Professor Sarnoff, whether the US is correctly pursuing this policy is somewhat beside the point. With the proper data of what the patent-eligibility conundrum of diagnostics is doing to the economy, patent stakeholders can be in a better to know what to do.

While this session raised important problems about diagnostics, the solutions seemed unsatisfying. Outside of providing another patent-eligible example claim in the USPTO guidelines and gathering more data, there was some discussion on amending Section 101. For example, IPO and AIPLA proposals to amend Section 101 were generally deemed unrealistic in today’s congressional climate. Perhaps a more narrowly tailored amendment. But overall, all the solutions discussed seemed overly hopeful to change the status quo.

One solution not discussed relates to waiting for appeals currently percolating up the system. This blog has pointed out that the PTAB is currently doing a great job of reversing Examiners in tech center 1600 on Section 101, compared to other tech centers. This suggests that these Examiner rejections are not supported by precedent, and so the Board overturns. If the Board is showing an increase in not finding support in the case law, Federal Circuit panels will likely also find this with other cases. As some other diagnostics cases come up to the Federal Circuit, perhaps it is possible that a case can be distinguished over Mayo but still falls within the area of patent-eligibility.

Below is a photo of Carter G. Phillips, who did a wonderful job of opening the conference.

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Recent pattern of PTAB cutting corners: Decide Section 101 and avoid deciding other pending grounds

We have previously reported that PTAB judges, like Examiners, are measured by a quota-based production system. For PTAB judges, the quota is based on the number of decisions they author. It is no secret that this production system prompts some Examiners and PTAB judges at times to get creative with practices to most easily meet their quotas. Here, we look at some recent decisions that show a pattern of PTAB judges deciding a Section 101 rejection without looking to the remaining pending grounds on appeal.

First some context. The Board has discretion not to reach all pending rejections on appeal, which makes sense. For example, ex parte appeals decisions often times do not reach prior art rejections after finding that the claims are indefinite because, e.g., the scope of the claims cannot be determined. But for the overwhelming majority of cases, PTAB judges decide all pending rejections on appeal (unless not argued by the appellant). This practice encourages compact prosecution, something that the USPTO very much favors. So this discretion to avoid deciding grounds of rejection is very rarely used.

But this discretion is sometimes used and as shown in two recent Board decisions, it can also be abused. For example, judges have recently affirmed a “Section 101 – patent-ineligibility” rejection and then declined to reach other pending rejections (either prior art rejections or 112 rejections).

The first decision is Ex Parte Snow (PTAB Feb. 8, 2018), deciding Section 101 and asserting that it therefore need not go to the pending Section 103(a) rejection. To support this action, the panel relied on two cases (one Federal Circuit and one precedential PTAB decision). From the decision:

Because claims 1—33, 35, 37, and 39 are directed to patent-ineligible subject matter, we do not reach the prior art rejection of those claims. See In re Comiskey, 554 F.3d 967, 973 (Fed. Cir. 2009) (declining to reach the prior art rejection when claims are barred at the threshold by § 101); Ex parte Gutta, 93 USPQ2d 1025, 1036 (BPAI 2009) (precedential) (same).

It is true that In re Comiskey declined to rule on a Section 103(a) rejection after concluding that the claims were directed to patent-ineligible subject matter under Section 101 (both the original decision in 2007 and the en banc decision). Interestingly, the Federal Circuit in In re Comiskey newly applied the Section 101 rejection without needing to go to the Section 103(a) rejection. The Board had only reached the Section 103(a) rejection, affirming the Examiner. Thus, it does not appear that the Federal Circuit was attempting to establish precedent for the Board to not reach pending prior art rejections when a Section 101 rejection is at issue. Instead, it merely did not need to go to the Section 103(a) because it vacated and remanded for the Board to pick this up.

The other case cited was a precedential case Ex parte Gutta. In Gutta, the Board declined to reach prior art rejections by citing to Comiskey as well as a 1942 case: In re Rice, 132 F.2d 140, 141 (CCPA 1942) (finding it unnecessary to reach rejection based on prior art after concluding claims were directed to nonstatutory subject matter).

Here, Gutta was an expanded panel that included then Chief-judge and vice-Chief judge. Similar to the Federal Circuit panel in In re Comiskey, it’s possible that this PTAB panel was a special case. In other words, maybe they didn’t want to mix another issue (prior art rejection analysis) with what they wanted to establish as precedential.

Said differently, the Gutta decision does not appear to have been trying to establish that if the Board finds that the claims are patent-ineligible subject matter, then there is no need to reach prior art rejections. Indeed, if all panels did that, then we would start getting into more subjective appeal analyses, where the Board favors ruling on Section 101 so that it need not address other issues. And by not addressing prior art rejections, doesn’t it seem like the panel is implicitly communicating that the application is a lost cause–no matter how the claims are amended? Section 101 should not be used as a tool by the Board to pick and choose eventual patent grants.

Indeed, a goal of the USPTO should be compact prosecution. Just because an appellant loses Section 101 on appeal is not the end of the road. It is possible that after the appeal, the applicant amends the claims to clear the Section 101 rejection. Other less likely scenarios are that a request for rehearing is granted or a Federal Circuit appeal vacates the Board’s findings. In all three of these scenarios, it’s possible that the Examiner and the applicant are later at an impasse with regard to the other rejection (e.g., prior art rejection) and an appeal is needed in the future. The judge panel could have resolved it in the first place.

The second decision cites to the same above-two cases: Ex Parte DeYoung et al (PTAB Feb. 7, 2018) (not reaching written description 112 rejection because Section 101 was affirmed, citing In re Comiskey, 554 F.3d 967, 973 (Fed. Cir. 2009); Ex parte Gutta, 93 USPQ2d 1025, 1036 (BPAI 2009) (precedential)). Unlike decisions where the Board understandably could not reach other rejections because the claims were indefinite and the scope could not be understood, here the Board took the opportunity to avoid analyzing whether the claims found written description support in the specification. And it did so because Section 101 was affirmed.

The fact-specific grounds of rejection to be decided on appeal, which were omitted in the above two cases, do require time to analyze and write up. Especially in Ex parte Snow, it would have taken a lot of time for the panel to pore over multiple references in deciding obviousness. And in Ex parte DeYoung, it would have required careful consideration of the specification. But even though this requires a lot of time, it’s what PTAB judges do. That is, these decisions that do not decide all contested issues are extremely rare compared with the overwhelming majority of decisions that decide every issue that is argued.

If you have experience or opinions about this subject, we would love to hear from you. Please provide feedback in the comments section or by email at admin@anticipat.com whether the Board seems to be correctly relying on In re Comiskey and Ex parte Gutta for the proposition that it need not evaluate rejections after finding Section 101 is affirmed. Unsure opinions are great. 

Anticipat Education Part 2: How to use Anticipat Research database

As a patent practitioner, you see different grounds of rejection all the time. Let’s imagine that one Office Action from a particular Examiner has a rejection that you think is bogus. It’s very likely that this Examiner has made similar types of rejections in other cases. Imagine if you could easily see the instances where the authoritative body for this particular Examiner (the PTAB) told the Examiner that this exact ground of rejection was indeed wrong. This information could be very valuable because the Board’s reasoning can be insightful to other cases that have similar rejections.

With Anticipat Research you can look at Examiner’s appeal history in this very way. Our unique methodology that annotates each appeal decision by ground of rejection and outcome allows for easy identification of specific grounds of rejection.

Let’s say you want to see how often your Examiner was reversed on “101 – Patent-ineligible subject matter.” Simply select this ground of rejection filter in the issue section, then input your examiner’s last name. Here, we insert the last name “Hoffman,” select “Reversed” in the outcome section and hit Apply Filters. See below image.

As can be seen, the “Recap” column gives you a high level overview of what the Board decided in each of the displayed decisions.

To broaden the search further from the above example, you may consider selecting  the outcome “Affirmed-in-part” in addition to “Reversed”. By selecting “Reversed” and “Affirmed-in-part”, you will see decisions where the Board reversed all claims and where the Board reversed some claims, but affirmed others.

You can use Anticipat Research for more general information. Say you want to look at all the recent Section 101 – Patent-ineligible subject matter decisions that are reversed. Simply input a date range, select “Section 101 – Patent-ineligible subject matter” and hit Apply Filters. You can then add columns to your results. Say you want to see the art units where these reversed grounds are coming from. Simply select art unit. And the column appears.

With Anticipat Research, you can discover trends and patterns that can concretely help you in your patent prosecution practice.

Feel free to give Research a 14-day free trial.

Let us know if you have any questions or if you would like a demo.

Anticipat Team