BPAI/PTAB Obviousness Decision Trends

The vast majority of BPAI/PTAB decisions focus on the question of obviousness. Basically, the Board is reviewing whether or not an examiner's obviousness rejection is proper. I created the chart above by using a simple text search for obviousness related terms within each BPAI/PTAB merits decision during the past six years and found that roughly 80-85% of Board decisions discuss obviousness to some degree. I previously tested this methodology against an actual reading of cases and found that my automated methodology correlates quite well. The results for the percentage of obviousness decisions are in blue. A subset of those cases are found in red and represent the percentage of Board merits decisions that cite to the Supreme Court's decision in KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398 (2007). That decision was important because it changed the law of obviousness as applied by the USPTO.

Apparent from the chart is the fact that the BPAI/PTAB is citing KSR much less frequently in 2012 than it did in 2008-2009. My hypothesis is that a smaller percentage of applicants are fighting about the law of obviousness and more are now focused on application of that law. Mixed into this is the reality that the Board is also writing shorter opinions — leaving less room for pesky citations.

13 thoughts on “BPAI/PTAB Obviousness Decision Trends

  1. 12

    A few years back when I was working in-house, I did a similar (though non-automated)analysis of Board decisions which cited KSR and yet nevertheless found non-obviousness. Not many, but those which did were instructional.

  2. 11

    Would you want to be the judge who has to review 10 of these obviousness cases a day? You would have to get up to PHOSITA speed for all kinds of arcane technologies, then drop each one and move on to the next. One thing that might help these poor judges is to make everyone who handles a patent application have to make a statement on its obviousness:

    I am acting as (inventor, agent, examiner, SPE, company reviewer, colleague, friend, other )

    In my opinion the invention, in general, is (obvious 1-10 or not obvious 1-10)

    The number of people in the world who are familiar enough with this technology to have made the improvement is roughly (ones, tens, hundreds, thousands, tens of thousands, etc.).

    If obvious means literally “lying in the road”, how many years has this improvement been lying there (ones, tens, hundreds, thousands, tens of thousands, etc.).

    Somebody else write a few more questions …

  3. 10

    Way too long, yes. I’ve got one that is taking so long that by the time I can announce the decision it will feel like saying, “I just got legal permission to release a hot new Beatles single as a 45 RPM record.” Over the course of 2 appeals people have gotten old. Two major people, including our chairman whose research we are improving,have died.

  4. 9

    What do you mean by “My hypothesis is that a smaller percentage of applicants are fighting about the law of obviousness and more are now focused on application of that law”?

  5. 7

    no, that is way, way, way too long — many applicants are waiting (years) for a positive decision before investing (and creating jobs) and many potential competitors are waiting (years) for a negative decision before investing (and creating jobs).

  6. 6

    I’ve had at least three appeals in the last 3-4 years that took 30+ months from the appeal docketing notice (i.e. the docketing of the appeal to the Board and the assignment of the appeal number) to final decision.

    That’s way too long.

  7. 5


    Not sure that I would jump to that conclusion as the data is not indicated to be of the “single source rejection/issue” nature.

  8. 3

    Dennis, the interesting obverse demonstration from your data would seem to be that less than 15% of Board decisions [and thus presumably examiner rejections] are soley on 102, 112, 101, or anything else other than 103?
    [Especially interesting since 101 and 112 are such currently hot topics legally.]

  9. 2

    Interesting issue. Just as a point of reference, PTAB cases being decided now (Mid December 2012) are stemming from final rejections that were mailed in 2010. The final-rejection to appeal-decision is averaging about 30 months. For these same cases, the time from final-appellate-brief (normally a reply brief) to appeal-decision is averaging about 20 months.

  10. 1

    If the date graphed is that of the decision, it is also likely that many of the briefs for the 2007 and 2008 decisions, if not 2009 decisions, were prepared before the KSR opinion was delivered. As such, I’d imagine a number of the cases were briefed arguing, at least in part, a bright line TSM rule that was undercut by KSR.

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