07.01.18

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PTAB Agrees With Patent Examiners on Rejections of Applications Based on Alice/Section 101, But Watch Out for the Spin

Posted in America, Patents at 12:01 pm by Dr. Roy Schestowitz

An agreement survey

Summary: The Patent Trial and Appeal Board (PTAB) is still encouraging patent examiners to reject patent applications on abstract ideas; the patent microcosm, however, tells a different story

THE APPEAL boards at the EPO are seriously bruised. Battistelli nearly killed them, almost literally. In the US, however, the appeal boards are doing a great job and Iancu, the new Director, fails to find pretext for their elimination (even if he wants to, thanks to Oil States).

“So far this month,” wrote a person who keeps track, “for PTAB opinions addressing 101 questions, the PTAB has reversed 7 of 39 examiner rejections.”

“It’s just about the lowest possible form of ‘case’; it’s not even a case.”We used to write about these earlier this year; those aren’t even inter partes reviews (IPRs) but interventions at earlier stages of USPTO patent examination, way waaaaaay before a court like the Federal Circuit gets a chance to apply Alice as per SCOTUS.

A recent article by Mark St. Amour does not wish to paint a positive picture; being from the patent microcosm, he now picks PTAB-examiner cases and not even court cases; looking to the lowest possible level for favourable outcomes? Here is what he wrote:

Ruling on the appeal, the PTAB sided with the Examiner, stating that “given the appropriate selection of rotation speed and material for the inner surface of the container, tumbling would be inherent.” The PTAB disregarded Applicant’s Reply Brief arguments as not being responsive to arguments made in the Answer.

Applicant sought rehearing on the basis of improperly applied inherency doctrine. The PTAB denied rehearing stating that the obvious rejection did not rely on the inherency doctrine and refused to consider Applicant’s arguments regarding the divider walls.

Applicant then turned to the Federal Circuit to appeal the PTAB determination. The Federal Circuit sided with Applicant, and remanded the case to the PTAB to consider the inherency arguments. To support the decision, the Federal Circuit first pointed out the shifting arguments made by the Examiner. Specially, the Examiner cited different Figures throughout her various arguments, and the PTAB failed to identify which Figure was relied upon for upholding the Examiner’s rejection. Further, the Federal Circuit noted the tension between the Examiner and the PTAB rejecting the claims because they were allegedly inherent in the prior art and the PTAB’s assertion that the rejection did not rely on the inherency doctrine. Finally, the Federal Circuit pointed out the Examiner first made an argument regarding structural identity in her Answer to the Appeal Brief, and that Applicant’s unconsidered arguments regarding the dividers in the Reply were in response to such arguments and should have been considered.

And this is what they celebrate? It’s far from high profile and there’s barely even caselaw or anything to cite here. It’s just about the lowest possible form of ‘case’; it’s not even a case.

So OK… we understand that the patent microcosm is very nervous about PTAB, but it’s no excuse for such slant; going back to the statistics at the top, we still see PTAB affirming Section 101 rejections more than 80% of the time. The following (sole)reply to it says: “At a minimum, I hope this signals a shift toward consistent and predictable decision-making from #PTAB judges on #PatentSubjectMatter The swings from decision-to-decision have made outcomes difficult to predict, and essentially rendered opinions worthless for guiding examination”

“…we still see PTAB affirming Section 101 rejections more than 80% of the time.”What is he talking about? PTAB affirming examiners’ rejections more than 80% of the time is hardly good news for them. The only “consistent and predictable” thing here is that abstract patent get invalidated, sometimes before they even reach the court and before an IPR gets filed.

But OK… we get it. Never let facts get in the way of “good” spin. Meanwhile, the PTAB-bashing from Watchtroll resumes (the usual tradition, albeit it lost a lot of momentum after Oil States). Michelle Armond and Forrest McClellen still try hard to squash PTAB, even if the facts aren’t on their side. The headline sounds like a joke, much like watchtroll itself.

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