Tech center directors currently use their own appeal metrics for assessing examiners, but should use Anticipat data instead

The USPTO has a vested interest in knowing how well its patent examiners examine applications. It tracks production, efficiency and quality. Even though quality examination has always been tricky to measure, one metric comes pretty close: an examiner’s appeal track record. And while tech center directors have had access to this data, until recently this has been difficult to access. Here we explore the known gaps of how this metric is being used at the USPTO.

According to sources at the USPTO, directors–who oversee each technology center–have access to their Examiners’ appeal track records. The more an Examiner gets affirmed by the PTAB on appeal, the more reasonable the Examiner’s rejections, the theory goes. This means that directors can evaluate examiners based on how often an examiner gets affirmed.

The acceptable examiner appeal track record appears to depend on the director. An Examiner’s appeal track record with an affirmance rate significantly below the director’s average will attract attention. The USPTO as a whole has an affirmance rate at the PTAB that hovers around 60%. Different art unit groupings vary significantly from this global affirmance rate. Anything consistently lower than an affirmance rate average can put a question mark on the Examiner’s examination quality.

Even without knowing the specific contours of the acceptable affirmance rate at the USPTO, a look at the numbers can give an Examiner a general idea how well he/she is doing. This can help an Examiner proactively find out about these metrics before getting into trouble to guide his/her appeal forwarding strategy (Full disclosure: As a quality control metric, examiners do not appear to get punished in any way for being reversed).

While the USPTO’s appeal outcomes are available from other patent analytics services, they only use the USPTO’s outcomes that are based on how the overall decision was decided. See below.

appealrate

This decision-based outcome doesn’t communicate the issues that are causing examination problems (which issues are being reversed at the Board). By contrast, Anticipat provides a detailed breakdown of all an Examiner’s decisions. Examiners can thus easily pull up all of their appealed decisions and quickly see on which issues they were affirmed/reversed/affirmed-in-part.

On top of Examiner-specific data, Anticipat can identify rejections reversal rate outcomes across art units. For example, take obviousness rejections. Using Anticipat’s Analytics page for looking up over the past couple years in art unit 2172, in the computer/electrical arts, the pure reversal rate is about 18%. See blue sections of graph. This is lower than the tech center reversal rate of 27% and lower than the global USPTO reversal rate for this time. 2172

On the other hand, art unit 1631 in the biotech arts has a much higher reversal rate with a decision pool of about the same number. Specifically, art unit 1631 has a reversal rate of 43% for the past couple years. This is greater than its tech center reversal rate in 1600 of 26%.

1631

Finally, art unit 3721 in the mechanical art has an obviousness reversal rate much higher than both of the above examples. Specifically, 3721 is wholly reversed during the past couple years at 53%. This is higher than the tech center reversal rate of 44%, which is in turn higher than the global USPTO level. 3721

The granularity of appeal data can show what currently available data for appeals does not show: whether an Examiner is substantively doing a good job of examining applications. There are three reasons this is important for meaningful analysis of the metric.

First, as we’ve previously reported, the USPTO labels a decision as affirmed if only one rejection sticks to all pending claims. So the USPTO/director statistics and other patent analytics websites that provide this statistic of affirmance rate lacks the proper context. And without such context, the appeal outcome is an incomplete and even misleading metric.

Second, not all of the responsibility for low affirmance rates falls on the Examiner. For example, the two other conferees at the appeal conference can push applications to the Board that don’t have good rejections. But the Examiner-specific metric is a good starting point for any deviations to any norms. Anticipat allows for other Examiner lookups (including the SPE) to determine conferee track records.

A third reason for variance in Examiner appeal outcomes stems from the judges’ label of the outcome. While it is somewhat rare for a decision to have a newly designated rejection, it does happen. And as Bill Smith and Allen Sokal have recently pointed out in a Law360 article, decisions that have new designations are inconsistently labeled as affirmed or reversed. Sometimes the panel will reverse the Examiner’s improper rejection, but introduce a new rejection on that same ground with their own analysis. Other times the panel will affirm the Examiner’s improper rejection with its own analysis and be forced to designate the rejection as new. These small differences in patent judges’ preferences can impact an Examiner’s appeal profile.

Anticipat makes up for these shortcomings by providing greater context to outcomes and grounds of rejection. You can look at judge rulings in a particular tech center and identify patterns. For example, you can see whether panels tend to reverse or affirm when introducing new rejections.

Other valuable information, such as art unit and tech center data, can predictively guide an Examiner’s chances of taking an appeal to the Board. If a particular rejection consistently gets reversed on appeal, at the pre-appeal conference or appeal conference this knowledge can guide strategy to forward to Board based on the specific rejection at hand. Especially if the appeal consists of only a single issue.

With this increased granularity in appeal data there are only more questions to be answered. These specific questions currently have less clear answers. For example, to what extent are greatly disparate appeal outcomes the result of differing quality of examination? To what extent are Examiners across different tech centers evaluated based on appeal outcomes? Is there a point that an Examiner is considered to need improvement based on appeals outcomes? Could appeal outcomes–even if they include many reversals–affect the Examiner’s performance review? Likely not. But a better lens could prompt questions about disparate reversal rates across art units.

Obviousness Reversal Rates Across Tech Centers: Unexpected Results

Obviousness is by far the most common rejection that gets appealed to the Board. This particular ground of rejection does not draw attention for being reversed at the low end or on the high end. Over the past year and a half, the 12,000 obviousness decisions were wholly reversed about a third (34%) of the time. And 43% of the appeals are at least partially reversed. One might expect these rates to be uniform across tech centers. They are not.

Here is a detailed breakdown of the appeals across tech centers.

Tech Center 1600 1700 2100 2400 2600 2800 3600 3700 total
Reversed 251 558 375 436 360 291 858 1000 4166
At least partial reversed 71 135 120 161 132 48 210 308 1205
Affirmed 649 1143 901 916 857 414 885 935 6796
Total 985 1876 1423 1536 1374 763 1973 2299 12397
Reversal rate 25% 30% 26% 28% 26% 38% 43% 43% 34%
At least partial reversal rate 33% 37% 35% 39% 36% 44% 54% 57% 43%

For appeals in tech center 1600, pharma/biotech, the reversal rate is the lowest. Only a quarter of such appeals are wholly reversed and only a third are at least partially reversed. The chemical arts of tech center 1700 are only slightly better.

Next, tech centers 2100, 2400, 2600 and 2800 comprise computer and electrical art. These are reversed at a higher rate than the biotech and chemical tech centers, with tech center 2800 being the most overturned of the bunch.

Next, tech center 3600, which is predominately software/business methods, has a much higher reversal rate than average. That is, 43% of these appeals are wholly reversed and 54% are at least partially reversed.

Next, tech center 3700, which is home to mechanical and medical device technology also has a much higher reversal rate than average. That is, 43% of these appeals are wholly reversed and 57% are at least partially reversed.

obviousness

It is interesting that the biotech/pharma and chemical tech centers are lower than the average reversal rates. It is also interesting that the software/business methods and mechanical/medical device tech centers are reversed at a higher rate than average.

Why are some tech center reversal rates higher than others? For obviousness, this is no simple inquiry and instead requires considerable context. It starts with how strong is the Examiner’s rejection. Some fields are more crowded than others, making it easier for an Examiner to find prior art that would show obviousness. The Board panel that decides these appeals are technically trained in the technology center that they decide cases. They evaluate the legal and factual merits of the appeal. And theoretically, the Board will objectively evaluate each appeal equally. So for some tech centers where the reversal rates are low, this may signal that Examiner rejections are stronger than tech centers where the reversal rates are high.

Another reason relates to how “well” do the appeal conference examiners forward to the Board. The examiner conferences serve as a gatekeeper by reopening prosecution or even issuing a Notice of Allowance for bad rejections. But if these examiner conferences forward these bad rejections to the Board more than others, then the reversal rate goes up.

A third reason relates to the judges not being completely neutral in their decision-making. Instead, some judges may lean toward the Examiner while others may lean toward the appellant.  The more the judges lean toward Examiners, the lower the reversal rate; the more the judges lean toward appellants, the higher the reversal rate.

Next, some technology centers may be made of aggressive applicants who may want to stretch the claim coverage into the gray area of what their applications deserve. Many applications that seek to cover pioneering technology will understandably be ambitious in its scope. Other applicants may be more interested in adding another number to their patent arsenals.

These less ambitious applicants may be less interested in broad claims and appeal only at a significant impasse with the Examiner or with a particularly unreasonable rejection. The collective aggressiveness of applicants could affect the reversal rate within a tech center.

Anticipat provides the proper context to make sense of how likely it is for an application to succeed on appeal, say, if faced an obviousness rejection. With Anticpat Research, you can quickly identify those applicants in your art unit or tech center to provide a holistic context to the reversal rate numbers. Also with practitioner analytics, you can now input a customer number to see how often a particular applicant succeeds on appeal. Comparing apples to apples takes away the unexpected and instead gives you power to incorporate the statistics into powerfully guiding your prosecution strategy.

 

 

 

 

 

 

 

Wisdom of the Board: Most Effective Arguments for Obviousness

(Presented during the AIPLA Annual Meeting for the Patent Law Committee/Mentoring Committee session on Friday October 20, 2017 )

The title of my presentation is a play on words with the concept of “wisdom of the crowds,” which had its origins over a century ago. In 1907, at a lifestock annual show in England, a contest to estimate the weight of an ox attracted 800 participants. It was observed that the median guess of these participants, 1207 pounds, was accurate within 1% of the true weight of 1198 pounds. This finding spawned the wisdom of the crowds concept—that a median of a crowd’s individual judgments can be used to reflect a true center of a quantity to be estimated. This concept has infiltrated many disciplines and studies. In short, aggregate data can be a powerful thing.

Can Board decisions help in knowing how to overcome obviousness rejection? I think so. There may not be a one true obviousness response, but looking 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.

Laying the Foundation for an Obviousness Framework

Stepping back a little bit to talk about appeals more generally, it’s an interesting data point. One reason why I like looking at appeals data is you’re only looking at arguments of two sides who have vested interests in the case. And obviousness is the most common ground of rejection that gets appealed (by far).

With anticipat.com, we’ve found that there is quite a lot of disparity in how grounds of rejection are handled by the Board. Section 102 and 112 rejections are consistently reversed at a greater frequency than Section 101 and double patenting, for example.

Obviousness is in the middle of the pack. Since there are so many obviousness appeals, this means that there is a lot to learn from. Going through the decisions gave us order to what is going on with obviousness. There are a lot of possible arguments, but seeing how the judges apply the terms gives us a nice framework.

prima facie

First, you have the prima facie case, which the examiner must establish for a proper obviousness rejection. This prima facie case first requires that claim features be disclosed or suggested in the prior art. CFMT, Inc. v. Yieldup Int’l Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003) (“requires a suggestion of all limitations in a claim”). 

The second requirement is that there must be an articulated reason for obviousness. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.”).

After creating the above diagram, it appeared something like a brain with a left hemisphere and right hemisphere. After some thought, I realized that’s actually a good way of thinking about these two elements. As you may be aware, the left side of the brain is responsible for the logical functions such as science and math and the right side of the brain is responsible for the creativity functions, such as the arts. And that fits with what these elements do. The teaching or suggestion element is more of the logical “is it in the reference or not?” analysis. Whereas the second element (why would it have been obvious?) involves more creativity.

So starting with the left side, we touched on the highest level “are the features disclosed or suggested in the prior art.” But it breaks down into several categories.

left103

On this left side, claim interpretation is a big aspect of whether the prior art discloses or suggests the claim features. This includes whether features are properly given patentable weight, how the claim term is construed, and whether the broadest reasonable interpretation is correctly applied. There is also whether inherency is properly applied if a reference does not explicitly disclose a feature. Then there are arguments about the references themselves, whether they qualify as prior art and whether they are non-analogous art.

On the right side, a reason for obviousness must be clear and articulated—not conclusory. Usually Examiners use the rationales listed in KSR (e.g., obvious to try, etc.), but common sense can also be used. Thus, the Examiners can run afoul by incorrectly applying an established or made-up rationale. But beyond this global argument, it breaks down as well.

right103

If combining references, one skilled in the art must have a reasonable expectation of success in combining the references and must be motivated to combine them. Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1360 (Fed. Cir. 2012). The references cannot teach away, a reference cannot be modified to render it unsatisfactory for its intended purpose, and cannot be modified to change the principal mode of operation. Also, the Examiner cannot rely on improper hindsight bias.

In sum, the left side of the arguments involve more technical thinking while the right side involves some creativity—just like our brains.

Finally, once a prima facie case of obviousness has been made, the applicant can rebut that with objective evidence.

bottom103_1

A lot of components go into objective evidence such as, for example, secondary considerations and unexpected results.

Here is the complete framework of arguments that are used in overturning an obviousness rejection.

complex103

Which arguments are most frequently used by the Board?

Now that we have the framework of arguments that the Board uses to overturn, we drill into the data. I used Anticipat.com Research database for a window of two months’ worth of recent decisions: July 1, 2017 – August 31, 2017. There was a total of 1607 decisions. Of these, 1345 included obviousness rejections (84%). And of these, 446 were wholly reversed on obviousness (33%). I looked at each of these manually to confirm accuracy. Any of the data discussed can be accessed using the research tool.

graph

1. Must disclose or suggest (63.9%)

By far, the most frequent way that the Board overturns the Examiner’s obviousness rejection is on the reference(s) not disclosing or suggesting the claim features. Sometimes this comes out as “the examiner didn’t make his case clearly enough so we can’t uphold”, but other times it is more confrontational by saying “the examiner is incorrect; the claim features are not shown or suggested in the cited references”.

2. Clear and factually-supported articulation of reasons for obviousness (35.9%)

The reason for obviousness (often times based on KSR language) was found to be faulty or not good enough.

3. Examiner Bears Initial Burden (Prima Facie Case) (12.6%)

So far it is to be expected that these arguments are the most frequent because they are required for a prima facie case so it makes sense that board uses these to attack. The next is the argument that the Examiner has not met his/her burden for a prima facie case. This gets used as a conclusion at the end or as a introduction. It never is the only argument used, but is coupled with either element of the prima facia case.

4. Scope and Content of Prior Art – Claim Construction (10.8%)

Often times the Board couples a generic argument (such as listed above in 1-3) with another argument nested inside. That is most true of the fourth most frequent argument to overturn obviousness: claim construction. This is always tied with “disclose or suggest” because the argument is that the prior art is not disclosing the claim language by focusing on what the claim language actually means.

5. Scope and Content of Prior Art – Broadest Reasonable Interpretation (6.7%)

Next is broadest reasonable interpretation. This is also almost always tied with “discloses or suggests” focusing on where the Examiner is interpreting too broadly. Suzanna Sundby gave a fantastic talk on obviousness on broadest reasonable interpretation. This can be a sore point of contention between an applicant and the examiner. The Board will step in and overturn unreasonably broad interpretations.

6. Inherency (5.8%)

Next is inherency. This is a relatively common argument that is tied to left side “discloses or suggests”. The Examiner may assert that the claim feature is inherently in the reference and the judge panel disagrees or holds that the examiner’s showing was insufficient.

7. Hindsight Reasoning (5.2%)

Hindsight is the most frequent argument that is usually tied to the right side, although it is not exclusively used here. In other words, the Examiner may propose a reason for why it would have been obvious and the panel can say that the reason was flawed and also on top of that the Examiner relies on hindsight. Sometimes in the combination discloses analysis the judges can say that the references do not disclose a particular feature and thrown in that the Examiner relies on hindsight.

8. Positively recited structure required for patentable weight (3.4%)

This is another left side argument. Here the Examiner may not be giving patentable weight to claim language and the judge panel overturns because the Examiner improperly did not give the claim patentable weight.

9. Proposed modification cannot render the prior art unsatisfactory for its intended purpose (2.5%)

The first of two classic rebuttal arguments is used by the Board in overturning obviousness rejection, but perhaps at a lower rate than one might expect. This gets coupled with the right side or reason for obviousness.

10. Proposed modification cannot change the principal mode of operation of a reference (1.8%)

The second of the two classic motivation rebuttal arguments. This is also tied to the right side.

11. Non-Analogous Art (1.3%)

This gets used usually with the left hand side of the logical argumentation. But sometimes when the Board overturns by attacking the Examiner’s reason for obviousness, the Examiner will conclude that the one reason why the reason for obviousness is flawed is because the Examiner improperly used a non-analogous reference.

12. Reasonable Expectation of Success (1.1%)

This is a right side argument that is highly tied to the motivation to combine. This argument will be thrown in as a small companion to the bigger motivation to combine argument.

13. Objective Evidence (0.9%)

Yesterday a presenter talked about how objective indicia are gaining in popularity since KSR. But it seems like they are not used very much here likely because objective indicia are more persuasive over time (after grant of patent) as more evidence becomes available with time.

14. What is Prior Art? (0.7%)

Whether a reference is prior art or not is rarely applied by the Board. One possible reason for this is that the appeal conference may kick out improper rejections by having the SPE and another primary analyze the contested prior art reference.

15. Teaching Away (0.2%)

The Board only used “teaching away” in one decision, showing how difficult of an argument it is to make. If the frequency of arguments by the Board is in any way correlated with effective arguments, teaching away is a losing argument.

Tech Centers

Looking across tech centers, it is interesting to see some anomalies. Biotech (tech center 1600) strongly overrepresents “articulated reason for obviousness” and “what is prior art?” and underrepresents “features not disclosed or suggested”. This suggests that it is best to focus on attacking the reason for obviousness instead of attacking the features not being disclosed or suggested.

Chemical (tech center 1700) strongly overrepresents inherency and hindsight. This suggests that Examiners in this space excessively use inherency.

Electrical/Computer (tech centers 2100, 2400, 2600, and 2800) overrepresents “must disclose or suggest,” and “broadest reasonable interpretation”. This shows that Examiners in this space may interpret claim terms too broadly and that it is worth fighting back on it. It also shows that it is effective to point out gaps in the applied art for the claim elements.

Business methods/software (tech center 3600) underrepresents “articulated reason for obviousness”. This may be because Examiners are given more leeway in this art in crafting creative reasons for obviousness since software is easy to plug in different modules or features.

Medical Device/mechanical (tech center 3700) overrepresents “reasonable expectation of success” and “claim construction” and “non-analogous art”. This suggests that it can be helpful to rely on the interpretation of a claim term. It also shows that non-analogous art can be effective in this space.

Conclusion

The Board generally tends to use the left-side arguments in overturning obviousness rejections, but there are exceptions as noted in specific tech centers. Some arguments are much more frequent than others.

Why is this useful? Have you struggled with a particular point of contention with an Examiner (for example thinking that the Examiner’s reason for obviousness is inadequate), wondering how this specific point of contention compares to others. Anticipat Analytics provides you with the organized and personalized information from the Board. 

anticipat

You can see a ranked listing of all the arguments that were found to be successful at the Board. For example, if you believe that your Office Action has an unreasonably broad interpretation, you can see where that argument falls in relation to others. Plus, you can access the Board decisions for your particular Examiner on that issue (if it exists). If it does not exist, you can go up to the art unit level or tech center for greater coverage of arguments. Seeing how often these arguments get used compared to others gives you a better sense of the likelihood of success in appealing or in working with the Examiner.

Consider using the most relevant arguments, but also find the persuasive arguments to support your particular application’s case. You might be surprised at how much the Board borrows arguments from a good appeal or reply brief. The tool allows for you to easily find the language that the Board uses, which can be a model for you to incorporate into your own filings.

PTAB: It Is Not Obvious to Modify a Reference to Perform the Same Functionality

Ten years ago, the Supreme Court decided KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007). As an overseer of Examiners, the PTAB has played a pivotal role in developing the doctrine of obviousness since then. A recent case Ex parte Böger, Appeal No. 2017-001586 (PTAB August 29, 2017) highlights a common way and a less common way that obviousness rejections can be overturned. Both ways involve attacking the articulated reason for obviousness.

An obviousness rejection must include an articulated reason for why the claimed invention would have been obvious. KSR made clear that the reason cannot be conclusory and instead must be articulated with a rational underpinning.

Often times, a successful rebuttal is made by attacking the articulated reason as inadequate. The savvy patent practitioner knows established ways to pick apart an Examiner’s rejection. The MPEP and case law includes these “rebuttal arguments.” See MPEP 2143 and 2145. The decision Boger illustrates two of these rebuttals.

In Boger, the Examiner found that the primary reference does not disclose “heating the complete or entire material of the core layer in a region of the beading fold”. The Examiner asserted that a secondary reference makes up for this by disclosing a complete core-melting technique. The Examiner reasoned that it would have been obvious to modify the heating boundary layers of the primary reference with the heating of the entire thermoplastic core of the secondary reference to “minimize spring-back of the laminate from the tool.” Except that it would not have been, according to the Board.

The Board had two reasons for why this rationale was bad. For one, the Board explained that the primary reference repeatedly states that an inner core should remain unsoftened. So applying the secondary reference’s core-melting technique to the primary reference “would destroy” the primary reference’ objective, “thereby changing its principle of operation.” Here the Board is using the classic one-two punch rebuttal argument from MPEP 2143.01(V) and (VI). These gems make clear that a proposed modification cannot render the prior art unsatisfactory for its intended purposes and cannot change the principle of operation of a reference, respectively. Standard argumentation so far.

The second reason related to the pre-existing functionality of the reference. The articulated reason for modifying, as presented by the Examiner (“to minimize spring-back of the laminate from the tool”), was already achieved by the primary reference, according to the Board. So one having skill in the art would not have sought to modify something so that the something could perform the same functionality.

Thus, if a reference is already performing a function, a proper obviousness reason cannot include modifying the reference to perform that same function. In light of KSR, that point makes common sense.