Standard for Reviewing BPAI Obviousness Decisions

In re Chapman (Fed. Cir. 2010)

The BPAI rejected Chapman's claimed antibody fragment-polymer invention as obvious and Chapman (UCB Pharma) appealed. The 103/102(e) rejection was based on the teaching of a Genentech patent that had been filed two years before Chapman's application.

The appellate decision provides a concise overview of the standard of review of BPAI decisions on obviousness.  However, it leaves opon questions regarding the "legal-conclusion" of obviousness.

The Patent and Trademark Office ("PTO") is governed by the Administrative Procedure Act ("APA"), and PTO decisions are reviewed under the APA standard. Dickinson v. Zurko, 527 U.S. 150, 152 (1999). Thus, we review Board's legal conclusions without deference, and review its findings of fact to determine if they are supported by substantial evidence. . . .

The judicial review provision of the APA includes a harmless error rule. We have noted that "the harmless error rule applies to appeals from the Board just as it does in cases originating from district courts." . . . [T]he burden of showing that the error is harmful normally falls upon the party attacking the agency's determination. . . .

The government argues that these errors are harmless, but we conclude that these errors are harmful because they increase the likelihood that Chapman was erroneously denied a patent on grounds of obviousness. If the Board based its decision on a misunderstanding of [the prior art], its conclusions regarding obviousness are called into question. . . . Because we cannot say with confidence that the Board would have reached the same conclusion in the absence of these errors, we are persuaded they are indeed harmful.

The interpretation of the harmless error rule did not receive significant attention pre-KSR because the rule-oriented approach of the TSM test left meant that most BPAI errors were harmful. The post-KSR law of obviousness is based more on a contextual whole-picture analysis. As such, the line between harmless error and harmful error is blurred. This case resolves some issues by indicating that a BPAI error is harmful if (1) the error "increase[d] the likelihood" that the BPAI erred in its obviousness conclusion and (2) the court cannot confidently announce that the BPAI would have reached the same conclusion absent the error.

Obviousness as a Matter of Law: Although the ultimate conclusion of obviousness is a matter of law, the appellate panel did not take-on the role of analyzing the law. Rather, after identifying the correct factual interpretation of the prior art, the Federal Circuit remanded to the BPAI with instructions to "only revisit its conclusion of obviousness."

28 thoughts on “Standard for Reviewing BPAI Obviousness Decisions

  1. 27

    Another Puzzle:
    Replace the question marks with the missing characters.

    – – – M – – – – P

    L – – — – ?

    7 – – – – 10

    – – – 6 – – – – ?

    * * * * *

    Dear Paul Cole,

    Re:
    “When you draw the arrowhead out on a sheet of paper it takes about 45 seconds to see how the three elements should be moved. I claim no special talent in puzzles of this type. So I would say it is obvious.”
    Posted by: Paul Cole | Feb 25, 2010 at 10:09 AM

    link to patentlyo.com

    I’ve been meaning to comment to you about your 45 second-solution to the arrowhead puzzle.

    O
    – — O
    O — — O
    – — O — – – O
    O — – — O
    – — O
    O

    Reverse the direction of this arrowhead (triangle) by moving only three Os.
    Is now you to go blinking and will want to go green in five minutes and minutes
    With all due respect, in contrast to your notion, I think there are three possibilities:
    (i) Whether or not you remember, you may have seen the puzzle before;
    (ii) you do have a “special talent in puzzles of this type”;
    (iii) you Just got lucky.

    I say this because I’m confident most readers who tackled the puzzle spent considerably more time than 45 seconds to solve it.

    The reason I wanted to follow up on this is to let those readers know that this is, in fact, a difficult puzzle(many people never get it), and the fact that it took them notably longer to solve is no reflection on their intelligence.

    There are numerous factors involved in solving these puzzles.

  2. 26

    The only thing to draw from this is that there are situations where the FC will remand vs. finding obviousness on its own. Is there any doubt about what the board is going to do on remand?

  3. 25

    after KSR it’s still comforting to have the Federal Circuit confirm that it’s still true

    [eye roll] Maybe it’s time to take a break from some of the more “reactive” patent blogs, EG.

  4. 23

    “That was always true.”

    MM,

    May be so. But after KSR it’s still comforting to have the Federal Circuit confirm that it’s still true.

  5. 22

    …and the Office would have gotten away with it too, if it weren’t for those meddlesome kids and their dog.

  6. 21

    What is important in the Federal Circuit’s opinion is that mischaracterizations of references relied upon by the patent examiner (or the BPAI) for obviousness rulings are not to be simply glossed over as “harmless error.”

    That was always true. I don’t see anything new in this case. Obviously, if the Federal Circuit finds in a different case that the Board would have reached the same conclusion in the absence of the error, then the Federal Circuit will find that the error was harmless.

    [shrugs]

  7. 20

    What is important in the Federal Circuit’s opinion is that mischaracterizations of references relied upon by the patent examiner (or the BPAI) for obviousness rulings are not to be simply glossed over as “harmless error.” Put differently, the Chapman decision gives patent applicant’s a viable legal basis to hold a patent examiner’s (as well as the BPAI’s) “feet to the fire” to challenge an obviousness (or anticipation) rejection based on one or more mischaracterizations of a reference.

  8. 19

    Paul If you did not know that the arrowhead could be reversed by moving only three elements, would it have been obvious that this could be done?

    Yes, as proved by you, Paul. You did not know it could be done. And yet you did it.

    Of course, you haven’t really proved that you aren’t a genius puzzle solver. You just declared that you weren’t. Is that enough for the Founding Fathers? We need to ask an expert, but unfortunately he was arrested earlier this week.

  9. 18

    I did not have to flip the puzzle over to learn which elements needed to move.

    What I did was to draw the original arrowhead out. I then realised that moving two of the elements would create a new four element row. Then all I had to do was to move the single element to its ne location.

    Almost no analytical thought. The reason was that I knew the objective and how it could be achieved.

    Now comes the question. If you did not know that the arrowhead could be reversed by moving only three elements, would it have been obvious that this could be done? Was it obvipus to think of reversing the arrowhead in that way?

  10. 16

    Is there any prior art or other authority, such as a book about solving puzzles, for your head-flipping notion?

    Right, I’m going to pretend to examine your pile of crxp.

    Do you honestly believe flipping an object or array of objects over in your head when contemplating ways of manipulating them is something new that you just came up with? There’s actually a word for that sort of process: it’s called “abstraction” and humans have been engaging in abstract thinking to solve problems for a long time.

    I’ll give you this though: your method is “non-obvious” to the extent that an ordinary person would simply try the finite solutions and reach the answer more quickly than yours. Maybe you could make your method even more “non-obvious” by requiring the infringer to do a backflip under the light of a full moon as an intermediate step.

  11. 15

    Dear Malcolm,

    Re:
    “It’s routine to flip puzzles like these over in your head…”

    Oh?; Is there any prior art or other authority, such as a book about solving puzzles, for your head-flipping notion?

  12. 14

    “Probably. It’s routine to flip puzzles like these over in your head when solving them. Your “method of aiding” is obvious, given knowledge of the utility of transparent sheets.”

    Cheap armchair conjecture. Add a little baboon odor and some oook oook and you have … a sideshow, with Mooney as the pinheaded freak.

  13. 13

    “I’ve had Examiners admit factual errors before. It’s not that big of a deal.”

    So you admit you’ve made factual errors, but you don’t think it’s a big deal?

    Why am I not surprised?

  14. 12

    With the invention described below suffer under KSR?

    Probably. It’s routine to flip puzzles like these over in your head when solving them. Your “method of aiding” is obvious, given knowledge of the utility of transparent sheets.

  15. 11

    here we have a situation where the gov’t admitted factual error.

    I’ve had Examiners admit factual errors before. It’s not that big of a deal.

  16. 10

    So, here we have a situation where the gov’t admitted factual error.

    This is an admission that the gov’t (BPAI) failed to meet the substantial evidence standard in its factual determination of the scope and content of the prior art.

    Does anybody know at what point Chapman initially raised the issue? Did he raise it in response to an OA by the examiner? Did he make a formal request for the examiner to provide substantial evidence?

  17. 9

    Dear aformrexaminer,

    Would you accept this as a prize for solving the puzzle first?
    I hereby assign to you any and all potential intellectual-property rights to the invention described in the abstract below — signed by: /Just an ordinary inventor™/

    Original- – – – – – – – – -Copy
     – – – – – – – – – – – – – – – – – – –  – – Move the orig  to the 3rd column of the orig.
    – — O – – – – – – – – – – – – – – O
    O — — O- – – – – – – – – O – – – O
    – — O — – –  – – – - – – – O – – – – – Move the orig  to the 1st column of the orig.
    O — — O- – – – – – – – – O – – – O
    – — O – – – – – – – – – – – – – – O
     – – – – – – – – – – – – – – – – – – –  – – Move the orig  to the 3rd column of the orig.

    When seen, the solution is obvious, as noted by Prof. Crouch.
    With the invention described below suffer under KSR?

    Abstract

    A system and or method of solving puzzles comprising two-dimensional puzzles depicted on a flat surface comprising paper, plastic, film etc. comprising:

    making a copy of the puzzle, flipping the copy 180° left to right and overlaying it on the original puzzle so as to see through the copy to the original or vice versa and thereby being aided in finding a solution to the puzzle.

    Note:
    This puzzle-problem solving innovation will be useful for various puzzle-problems, not just the type in the example.

  18. 8

    When you draw the arrowhead out on a sheet of paper it takes about 45 seconds to see how the three elements should be moved. I claim no special talent in puzzles of this type. So I would say it is obvious.

  19. 6

    Dear aformrexaminer,

    Re:
    1
    – — O
    O — — O
    2 – – — O —
    O — — O
    – — O
    3

    Almost, but your shape is not the same shape as the “arrowhead” in the puzzle.

    O
    – — O
    O — — O
    – — O — – – O
    O — – — O
    – — O
    O

    When you see the answer, it will slap your head and say, why didn’t I see that, which is not to say that there is or isn’t a solution.

  20. 5

    The formatting got messed up. Let me try again:

    ————1
    —— O
    —O — — O
    2 – — O —
    —O — — O
    —- — O
    ————3

  21. 1

    O
    – — O
    O — — O
    – — O — – – O
    O — – — O
    – — O
    O

    Reverse the direction of this arrowhead (triangle) by moving only three Os.

    There is a prize to the first person to solve this puzzle, or the first to determine if it is unsolvable.

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