The PTAB’s Most Cited Case Law for Ex Parte Appeal Reversals Should Be in Your Appeal Briefs

The first two articles of this series focused on convincing your clients to file more appeals and techniques that you can use to get better results on appeal. This last article discusses case law that you should be arguing in Appeal Briefs. As discussed in my previous article, if you can use case law that the Patent Trial and Appeal Board (PTAB) commonly uses in writing reversal decisions, you make it easier for the PTAB to write a decision in your client’s favor and can increase your chances of winning on appeal.

In my experience, the most common successful arguments for reversing a prior art rejection are:

• (1) the prior art does not teach what examiner says it teaches;
• (2) the articulated reasoning set forth by the examiner to combine references in an obviousness rejection is conclusory and/or lacks a rational underpinning;
• (3) the claim interpretation set forth by the examiner is unreasonable; and
• (4) the articulated reasoning set forth by the examiner to combine references in an obviousness rejection is speculative and/or lacks a factual basis.

Argue the Examiner Has Not Met the Requisite Burden

The applicant for a patent does not have the burden of proving patentability. That burden lies with the examiner. Do not fall into the trap of arguing patentability if the examiner has not set forth a prima facie case of unpatentability.

MPEP 2106(II) states that “[t]he examiner bears the initial burden … of presenting a prima facie case of unpatentability.” (citing In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). This burden is not on the applicant.

In addition to In re Oetiker, there is other helpful case law that you can cite to frame your arguments in a manner that holds the examiner accountable for meeting the requisite burden. The U.S. Court of Appeals for the Federal Circuit has also stated that “the concept of prima facie obviousness establishes the framework for the obviousness determination and the burdens the parties face during patent examination. . . . Under this framework, the patent examiner must first set forth a prima facie case, supported by evidence, showing why the claims at issue would have been obvious in light of the prior art.”). ACCOBrands Corp. v. Fellowes, Inc., 813 F.3d 1361, 1365 (Fed. Cir. 2016).

If the examiner has not met the preponderance of evidence standard in proving unpatentability, then the PTAB will decide in your favor. See In re Caveney, 761 F.2d 671, 674 (Fed. Cir. 1985) (“preponderance of the evidence is the standard that must be met by the PTO in making rejections”). This means that a 50-50 tie goes to the applicant, and you should challenge the sufficiency of the evidence presented by the examiner with this in mind. Tying your arguments to this standard will make the PTAB deeply consider whether the evidence supports the examiner’s position and can cast doubt as to whether the examiner has sufficiently proven unpatentability.

Argue That the Examiner’s Reasoning is Not Supported by a Rational Underpinning

Most prior art rejections that make it to the PTAB are obviousness rejections, and I am sure that all patent practitioners are familiar with the quote from KSR International Co. v. Teleflex Inc., 550 U.S. 398, 417-18 (2007) that “rejections on obviousness grounds cannot be sustained with mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” However, I’ve read several Appeal Briefs written by other attorneys over the years that dance around this issue, but do not explicitly make this argument. And a search of Appeal Briefs on LexisNexis Patent Advisor shows that of the 19,574 Appeal Briefs filed since the beginning of 2021 that include the word “obvious” or “obviousness” and do not include “anticipate” or “anticipation” (I wanted to exclude the possibility that obviousness was only an issue for dependent claims, and thus might not have been argued) only 5,037 (25.7%) mentioned “rational underpinning.” To me, this is shockingly low. Of the 72 Appeal Briefs that I have filed related to obviousness since 2016, 51 (70.8%) have mentioned “rational underpinning.”

If you want to help your clients win appeals on obviousness rejections, you should frequently argue against the examiner’s reasoning in this manner. Attacking the examiner’s reasoning is unlikely to be usable in litigation to narrow the resulting patent’s scope, so there is no real downside to arguing unless the examiner has presented strong reasoning. If you attack the rational underpinning in your Appeal Brief, it also provides you with the opportunity to argue it in your Reply Brief. If the examiner expands upon the reasoning in the Examiner’s Answer, you should attack the reasoning again in your Reply Brief. Due to the nature of ex parte appeals, the Applicant gets the last word the vast majority of the time, which is helpful for winning any argument.

Another similar Federal Circuit case quotation that can be helpful in this regard is that the USPTO “must examine the relevant data and articulate a satisfactory explanation for its action including a ‘rational connection between the facts found and the choice made.”’ Motor Vehicle Mfrs. Ass’n v. State Farm Mut. Auto. Ins. Co., 463 U.S. 29, 43 (1983) (internal citation omitted); see also, Synopsys, Inc. v. Mentor Graphics Corp., 814 F.3d 1309, 1322 (Fed. Cir. 2016) (stating that an administrative agency “must articulate logical and rational reasons for [its] decisions” (internal quotation marks and citation omitted)). The examiner’s reasoning must be logical and rational in relation to the evidence, and it should be argued aggressively when there are holes in it.

Challenge the Examiner’s Assertions as Being Speculative

If an examiner’s rejection is speculative and lacks a factual basis, it does not establish unpatentability by a preponderance of the evidence. The PTAB commonly cites the following decades old quotation from In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) in reversing obviousness rejections:

“The Patent Office has the initial duty of supplying the factual basis for its rejection. It may not, because it may doubt that the invention is patentable, resort to speculation, unfounded assumptions or hindsight reconstruction to supply deficiencies in its factual basis.” (emphasis in original).

This quotation should be in the MPEP. It was cited in 10.3% (397/3863) of PTAB reversals since 2021 that include the word “obvious” or “obviousness” and do not include “anticipate” or “anticipation.”  That is an extremely high percentage of decisions for a quotation that is not in the MPEP (it should be in the MPEP), as most case law not in the MPEP is cited in less than 1% of PTAB reversals.

It is used less than that rate in Appeal Briefs. A search of Appeal Briefs on LexisNexis Patent Advisor shows that of the 19,574 Appeal Briefs filed since the beginning of 2021 that include the word “obvious” or “obviousness” and do not include “anticipate” or “anticipation” only 1,309 (6.7%) mentioned this quotation. Help increase the chances that your clients will win more appeals by using this quotation more often. Of the 72 Appeal Briefs that I have filed related to obviousness since 2016, 52 (72.2%) have mentioned this quotation. I have also written more extensively about my love for this case quotation on my blog, which mentions that 82.9% of PTAB ex parte appeals decisions citing this quote are wins for the applicant.

This case comes in handy when the examiner is reading more into the prior art than it actually discloses or shows. For example, I recently used it in an appeal brief when the examiner argued that it was “in the realm of possibilities” that the prior art would have a specific advantage. I responded with this In re Warner quote and provided a definition of speculative as “theoretical rather than demonstrable.”

The advantage asserted by the examiner was theoretical, and thus the examiner was speculating. You should consider whether the examiner is reading more into the prior art than is reasonable, and if so, argue that the rejection is speculative and lacks a factual basis.

There are a couple of other cases that I less commonly cite that complement In re Warner in pointing out the evidentiary burden of the examiner. In re Jones, 958 F.2d 347, 349-51 (Fed. Cir. 1992) (“Conspicuously missing from this record is any evidence, other than the PTO’s speculation (if it be called evidence)….”) and In re Kaplan, 789 F.2d 1574, 1580 (Fed. Cir. 1986) (“[T]here must be some clear evidence to establish why the variation would have been obvious which can properly qualify as ‘prior art.’”). You will help your clients if you focus on the evidentiary deficiencies of the Examiner’s assertions.

Challenge the Examiner’s Claim Construction as Being Beyond the Broadest Reasonable Interpretation

All practitioners have had the experience of the examiner who takes the broadest reasonable interpretation rubric beyond the extremes. For example, the examiner refers to a wall as being a door because they are both structures and are parts of buildings and nothing in the specification says that a wall cannot be a door. You might know that this is completely unreasonable, but you do not want to call it unreasonable, and you don’t want to be tied to definitions for your claim terms. In my experience, the best case law quotation to support arguments about the reasonableness of a claim construction is from In re Suitco Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir. 2010), which states “[t]he broadest-construction rubric coupled with the term ‘comprising’ does not give the PTO an unfettered license to interpret claims to embrace anything remotely related to the claimed invention.”

I use this quote and argue that it is completely unclear how the examiner could be interpreting a door as being a window, as there is no definition known to applicant or anything in the specification that indicates that a window can be reasonably considered to be a door. I then invite the examiner to provide a definition or explanation. I will sometimes provide an exemplary definition but will try to do so in a way that will not limit the claim scope going forward. You can say something also the lines of “for example, one definition of door is  ‘a usually swinging or sliding barrier by which an entry is closed and opened,’ and a wall cannot be closed or opened.”  Or you can provide multiple definitions and say that wall is not a door under any of these definitions.

I have read decisions where an applicant will lose an appeal because they are trying to implicitly argue claim constructions without saying anything about claim construction. Do not let your client lose on appeal for this reason when the claim construction is unreasonable at the point of novelty. The PTAB frequently reverses unreasonable claim constructions, but they will not make the arguments on your client’s behalf. You have to do the leg work.

A few other helpful quotes about claim construction are PPC Broadband, Inc. v. Corning Optical Commc’ns RF, LLC, 815 F.3d 747, 755 (Fed. Cir. 2016) (“Above all, the broadest reasonable interpretation must be reasonable in light of the claims and specification.”);

Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015) (“The protocol of giving claims their broadest reasonable interpretation . . . does not include giving claims a legally incorrect interpretation.”); and In re Smith Int’l, Inc., 871 F.3d 1375, 1382–83 (Fed. Cir. 2017) (“The correct inquiry in giving a claim term its broadest reasonable interpretation in light of the specification is not whether the specification proscribes or precludes some broad reading of the claim term adopted by the examiner. And it is not simply an interpretation that is not inconsistent with the specification. It is an interpretation that corresponds with what and how the inventor describes his invention in the specification, i.e., an interpretation that is ‘consistent with the specification.’”). You should use them in instances where an unreasonable claim construction is standing between you and a patent for your client.

Other Arguments that Work, and Arguments You Should Avoid

The above case law quotations are the bread and butter of winning appeals if argued correctly. Other arguments that I see commonly win appeals are improper hindsight bias of an obviousness combination, and that the examiner has not established inherency of a claimed feature because the examiner has not proven that the prior art “necessarily” discloses such a feature. These arguments can be intertwined with the arguments that I mentioned above, but they have sufficient merit to be considered individually.

Arguments that are less effective are that the prior art teaches away from a claimed feature, that the prior art is non-analogous to the claimed invention, or that there is no reasonable expectation of success of obtaining the claimed invention. All three of these arguments have their place depending on the specifics of a rejection, but they are overall losing arguments. I ran an analytical analysis on these three arguments a few years back and, based on these arguments being mentioned in PTAB decisions, “teach away” or “teaches away” only had an applicant win rate of 18%, “analogous art” or “nonanalogous art” only had a win rate of 26.2%, and “reasonable expectation of success” only had a win rate of 27.4%. Thus, consider omitting these arguments in favor of stronger arguments, or include them at the end of your arguments.

Hopefully, these article have caused you to rethink whether you should be recommending appeal as an option to your clients when you are faced with an unreasonable patent examiner and have supplied you with further ammo to help your clients win appeals.

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Author: tashatuvango
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