uspto.gov
Skip over navigation

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

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.

Substantive Practice Tips -Published Board Decisions

  • Routine Decisions
  • All Other Board Decisions (Great Majority)
  • Citable for Whatever Persuasive Value They May Have
  • Should be Cited Sparingly

Electronic Hearing Room

Dulany Street Entrance

Dulany Street Entrance

Inside Atrium, Madison East on Left

Inside Atrium, Madison East on Left

Security Screening Madison East

Security Screening Madison East

obtain security badge proceed through metal detector to first elevators

Elevator Lobby, 9thFloor

Elevator Lobby, 9thFloor

Attorney Waiting Area

Attorney Waiting Area

Electronic Hearing Room

Electronic Hearing Room

Electronic Hearing Room

Electronic Hearing Room

Electronic Hearing Room

Electronic Hearing Room

Electronic Hearing Room

Electronic Hearing Room

Electronic Hearing Room

Electronic Hearing Room

Electronic Hearing Room

Electronic Hearing Room

Thank You

United States Patent and Trademark Office
This page is owned by Office of Patent Legal Administration.
Last Modified: 10/2/2009 10:11:12 AM