BPAI Review of Obviousness Rejections

Ex parte Quist (BPAI 2010) (precedential opinion)

In only its second precedential opinion of 2010, the Board of Patent Appeals and Interferences (BPAI) has further developed its procedures for its review of obviousness rejections and consideration of evidence of nonobviousness.

On Board review, if the appellant raises the issue as to whether the examiner’s conclusion of obviousness was in error, based in part on the proffered evidence of secondary considerations, the panel must consider if the examiner erred in determining patentability, based upon the totality of the record. In such instances, the Board panel must consider anew all the relevant evidence of obviousness, both for and against, in view of the argument on the issue. One such instance requiring a reweighing is seen in the present appeal – if the Appellants argue that the Examiner erred in determining that the weight of the evidence supports a conclusion of obviousness, the Board must review that conclusion of obviousness anew to see if the preponderance of relevant evidence properly before the Office supports that conclusion.

This decision should be seen as a continuation of the Ex parte Frye (BPAI 2010) holding that the Board must review "the particular finding(s) contested by an appellant anew in light of all the evidence and argument on that issue.”

Despite taking a fresh look at the evidence and conclusions, the BPAI held that the examiner had been correct in determining that the claimed "process for the manufacturing of decorative boards with an abrasion resistant surface and edges" was indeed obvious.

Over 85% of BPAI appeals focus on obviousness. The BPAI has a current backlog of over 16,000 cases. At its current rate of disposal, this figure represents a 29-month backlog.

 

12 thoughts on “BPAI Review of Obviousness Rejections

  1. 12

    We file appeals only when we believe the claims are patentable over the art of record. This typically happens after filing of an RCE which includes a second response. We have found the BPAI to be much more effective than examiners at examining applications. We would generally not have to file an RCE at all if the examiner was forced to enter the second response into the record and was not permitted to issue a final after just a first response. Also, see my posting in the RCE blog. The regs should be changed to permit issuance of a final only after a second response has been filed and entered into the record, and the examiner should be required to conduct at least a telephone interview with the applicant (or rep) prior to issuance of a final.

  2. 11

    >Oh, give it a rest. PSA has nothing to do with how quickly the EPO disposes of cases. PSA is just a framework for making [b]subjective[/b] arguments about obviousness. Getting rid of 103 and replacing it with PSA, in the US, would change nothing.

    Try arguing against a 103 from the USPTO by pointing out that your claim solves a problem that the primary reference doesn’t solve and see how far it gets you.

    (Hint: the next office action will involve the words considered, not, and persuasive in rapid succession.)

  3. 10

    7: PSA is a specific form of TSM. I conclude from your remarks (PSA is subjective but TSM is objective) that you simply do not understand PSA.

    For this reason, I submit, it is more you than me, who should “give it a rest”.

  4. 8

    “The EPO should give thanks, once again, to those who invented its Problem and Solution Approach to obviousness, which has eliminated obviousness as a source of delay at the EPO.”

    Oh, give it a rest. PSA has nothing to do with how quickly the EPO disposes of cases. PSA is just a framework for making [b]subjective[/b] arguments about obviousness. Getting rid of 103 and replacing it with PSA, in the US, would change nothing.

    The EPO runs better because examiners tend to not re-search as they do in the US, because the time for prosecution is limited by the dreaded Summons to Oral Proceedings, and because examiners there are more professional.

    PSA has nothing to do with it. PSA is not an objective test. It is subjective, because how do we know what one of skill in the art would or would not do or not do? It’s for the examiner to decide. That’s subjective. TSM was objective, because it relied upon what was in the actual prior art documents.

  5. 6

    5
    I agree with pingerdoodle, THAT WAS A “CHEAP TRICK”.
    And it was illegal 4 surrreeere.Because the star gazer new there was a something… thereby showing star gazer was aware of the something.

  6. 5

    “Size of the board needs to be doubled immediately As it is, appeal is often not an option due to the backlog where commercialization is awaiting a decision and/or where the product life is short.”

    In those situations you could try rising to the challenge and becoming a persuasive advocate for your client. I know, I know, that’s probably too hard for you :(

  7. 4

    “Accordingly, the Board could not have overlooked or
    misapprehended an argument which was not before it.”

    LOLOLOLOLOL

    I bet pingerdoodle filed this. This looks like something pingerdoodle would file. I should look up the case history and see if it fits his penchant for nonsense. He was arguing this exact point over at Hawk with me under his alter ego “pong”.

    “Appellants argue that these statements hold the “Appellants to an improper
    standard which is neither supported by the courts, nor by the PTO’s own
    instruction manual to the examining core [sic] (MPEP). While Appellants do not
    clearly specify the “improper standard” applied by the panel, their argument
    appears to be that the panel improperly weighed the rebuttal arguments/evidence
    for its ability to “knock down” the prima facie case, instead of considering the
    record as a whole.”

    Pingerdoodle… so funny.

    Oh well, at the very least I know who “pong” is over at Hawk.

    So funny. The tard needed to hear it from the board. Maybe he’ll request even further consideration lololololol. I wonder if they granted this request and made it precedential just so that I’d get to know his supar secret id. It is a small world after all.

  8. 3

    Size of the board needs to be doubled immediately As it is, appeal is often not an option due to the backlog where commercialization is awaiting a decision and/or where the product life is short.

    Also, as more applicants choose to appeal final rejections instead of rce them the examiners’ backlog will decrease.

  9. 2

    Dennis writes:

    Over 85% of BPAI appeals focus on obviousness. The BPAI has a current backlog of over 16,000 cases. At its current rate of disposal, this figure represents a 29-month backlog.

    Which prompts me to wonder:

    How much longer must an Applicant for a US patent wait, before the USPTO, groaning under its obviousness workload, slips out from under the heavy weight by reverting to its “Allow, allow, allow” default mindset.

    The EPO should give thanks, once again, to those who invented its Problem and Solution Approach to obviousness, which has eliminated obviousness as a source of delay at the EPO.

  10. 1

    Interesting that this precedential opinion is from a Request for Rehearing.

    Also interesting is that this rehearing was decided over 2 years after the original board opinion; that’s crazy! I assume this is an exception, due to an accidental abandonment.

    Of note Dennis – my own numbers show less than 5% of all Requests for Rehearing in the past 2 years are granted (i.e., in over 95% of Decisions on a Request for Rehearing, the original affirmance stands). We humans really do detest nothing more than admitting we are wrong, no?

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