Making Effective Use of the Appeals Process & Practice Tips

The Patent Office Comes to California

Making Effective Use of the Appeals Process & Practice Tips

Michael R. Fleming
Chief Administrative Patent Judge
Board of Patent Appeals and Interferences
571-272-9797
michael.fleming@uspto.gov

Accomplishments and Future Workload
Making Effective Use of the Ex Parte Appeal Process
Substantive Practice Tips
Electronic Hearing Room

Major FY 07 Accomplishments

Interferences

Terminated 45 interferences
Average pendency of pending interferences is 8.8months
Average pendency of terminated interferences is 9.5 months
Percentage of interferences terminated in 2 years or less is 100%

Ex Parte Appeals

Disposed of 1379 appeals
New appeal inventory of 1834 appeals
Average pendency of decided appeals is 5.6 months (from Docketing Notice date)

Ex Parte Results by TC for FY 07

EX PARTE APPEALS FISCAL YEAR 2007 DISPOSITIONS

AFFD	AIP	REV	PANEL RMD	ADMIN RMD	DISM
48.8	14.4	30.3	3.9	0.9	1.7

Ex Parte Workload Increases

Graph of overall effect of Examining Corps and Examiner's Answers

Workload Increases and APJ Hiring Requirements

Ex Parte Hiring Requirements

Fiscal Year	2007	2008	2009	2010	2011	2012	2013
Appeals	4,041	4,970	5,895	6,913	8,009	9,150	10,351
APJ Hires	18	13	10	13	15	15	15
Cumlative Hires	18	31	41	54	69	84	99

Effective Use of the Ex Parte Appeal Process

Purpose of the appeal process is to:

Focus on where the appellant believes the examiner erred as opposed to de novo review
Articulate the issues
Identify the relevant facts

Appeal process has two presentations:

Presentation of appellant's arguments before the examiner and patent corps reviewers
Presentation of examiner's rejections and appellant's arguments before the Board

Milestones in the Appeal Process:

Notice of Appeal
Appeal Brief
Examiner's Answer
Reply Brief
Docketing Notice
Oral Hearing

Notice of Appeal

Objectively evaluate the strength of your arguments
Consider requesting a pre-appeal brief conference
Consider further prosecution options

Resolve outstanding prosecution procedural matters

Information Disclosure Statements
Petitionable issues

Appeal Brief

Arguments should be a clear and complete statement of appellant's position at the time of filing the brief
When making a new argument, clearly identify it as such
A good argument includes citation to the record for relevant facts and prior statement of arguments
Remember only arguments made in the brief will be considered by the Board
Appeals are won or lost on:

Claim interpretation
Findings of fact
Application of the correct law

Properly map claims in the Summary of the Claimed Subject Matter section
Appropriately address the Evidence and Related Proceedings appendices

Examiner's Answer

Opportunity for examiner and patent corps reviewers to consider:

appellant's prior arguments
appellant's new arguments

Reply Brief

No new arguments allowed except in response to new arguments raised in examiner's answer
Not intended to be a reiteration of the appeal brief

Docketing Notice

Two specialized units review appeal documents to resolve defects before docketing at the Board

Patent Corps Appeal Center
Board Reviewing Team

Oral Hearing

Oral Hearings Open to the Public
Transcriptions of Oral Hearings
Entered into Official Record
Cost Borne by PTO

Substantive Practice Tips - KSR

KSR refocused the Board on consideration of the obviousness factors set forth in Graham:

The scope and content of the prior art are to be determined;
Differences between the prior art and the claims at issue are to be ascertained; and
The level of ordinary skill in the pertinent art resolved.

KSR Int'l v. Teleflex Inc., 82 USPQ2d 1385, 1391(2007)

In resolving obviousness issues, a finding that there is no teaching-suggestion-motivation does not establish patentability if other indicia of obviousness are present. KSR, 82 USPQ2d at 1396-97.
"The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results. Three cases decided after Grahamillustrate the application of this doctrine."KSR, 82 USPQ2d at 1395.
"In United States v. Adams, ...[t]he Court recognized that when a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result."KSR, 82 USPQ2d at 1395.
"In Anderson's-Black Rock, Inc. v. Pavement Salvage Co.,...[t]he two [pre-existing elements] in combination did no more than they would in separate, sequential operation."KSR, 82 USPQ2d at 1395.
"[I]n Sakraida v. AG Pro, Inc.,...the Court derived from the precedents the conclusion that when a patent simply arranges old elements with each performing the same function it had been known to perform and yields no more than one would expect from such an arrangement, the combination is obvious."KSR, 82 USPQ2d at 1395-96 (internal quotation omitted).
"As is clear from cases such as Adams, a patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art. Although common sense directs one to look with care at a patent application that claims as innovationthe combination of two known devices according to their established functions, it can be important to identify 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."KSR, 82 USPQ2d at 1396.
"Helpful insights, however, need not become rigid and mandatory formulas; and when it is so applied, the TSM test is incompatible with our precedents. The obviousness analysis cannot be confined by a formalistic conception of the words teaching, suggestion, and motivation, or by overemphasis on the importance of published articles and the explicit content ofissued patents. The diversity of inventive pursuits and of modern technology counsels against limiting the analysis in thisway. In many fields it may be that there is little discussion of obvious techniques or combinations, and it often may be the case that market demand, rather than scientific literature, willdrive design trends."KSR, 82 USPQ2d at 1396.

Substantive Practice Tips -Published Board Decisions

Publication of Board Decisions

Precedential
Informative
Routine
All Published on Board Website

Precedential Decisions

Binding on Board
Procedure for becoming precedential set forth in SOP 2

Precedential Decision

Non-Statutory Subject Matter
Ex parte Lundgren,76 USPQ2d 1385, 1388 (Bd. Pat. App. Int. 2005).

"[T]here is currently no judicially recognized separate 'technological arts'test to determine patent eligible subject matter under §101."

Substantive Practice Tips -Published Board Decisions

Informative Decisions

Not Binding on Board or Examiners
Illustrative of Board Norms -Addressing:

Best Practices
Reoccurring Problems
Developing Areas of Law

Citable by commercial reporting service or URL from BPAI website

Informative Decision

Determination of Ordinary Skill in the Art
Ex Parte Jud, Appeal No. 2006-1061 (Appl. No. 09/505,713) 2006 WL 4080053, at *2 (Jan. 30, 2007) (request for rehearing, expanded panel).

"A question of what the hypothetical person with such skill would have known (and known how to do)."

Non-Statutory Subject Matter
Ex parte Bilski, Appeal No. 2002-2257 (Appl. No 08/833,892) 2006 WL 4080055 (Sep. 26, 2006) (appeal pending at Federal Circuit, Appeal No. 07-1130).
Tests for statutory subject matter

Transformation of subject matter
Abstract idea exclusion
Useful, concrete and tangible result

Non-Functional Descriptive Material
Ex parte Mathias, Appeal No. 2005-1851 (Appl. No. 09/612,788) 2005 WL 5121483, at *3 (aff'd, Appeal No. 06-1103, 2006 WL 2433879 (Fed. Cir. Aug. 17, 2006) (Rule 36)).

"[N]onfunctional descriptive material cannot lend patentability to an invention that would have otherwise been anticipated by the prior art."

Reissue Recapture
Ex parte Kraus, Appeal No. 2005-0841 (Appl. No. 08/230,083) 2006 WL 3939191 (Sep. 21, 2006) (Supp. Decision).
Surrendered subject matter is subject matter of an application claim that was amended or canceled and
On a limitation-by-limitation basis, the territory falling between the scope of application claim that was amended or canceled and patent claim that was ultimately issued.