Written by Mark Terry   

In one of its first decisions of today, the Board of Patent Appeals and Interferences (BPAI) reversed a Patent Examiner’s 35 U.S.C. §103(a) rejection of a key Verizon invention. As a Miami Patent Attorney, this case was interesting because it illustrates how a 35 U.S.C. §103(a) obviousness rejection can be reversed on appeal to the BPAI.

At issue was a Verizon claim that disclosed software for an LDAP server that receives a request in first protocol format and then converts retrieved information from a second protocol format to the first protocol format. The Examiner rejected the Verizon claim under 35 U.S.C. §103(a) based on the Ma patent. See the BPAI decision here .

The Appellant argued that in Ma the request to and the response from the directory server have the same protocol format, as opposed to having first and second protocol formats as claimed. Appellant further argued that while another patent was cited for the proposition that “converting from one type of protocol format to another protocol format was known in the art at the time the invention was made,” Ma does not disclose the need or desirability for any type of translation. Appellant asserted that Ma does not teach or suggest that messages formatted in accordance with a first protocol are converted, translated, or otherwise reformed into messages formatted in accordance with a second protocol.

Appellant pointed out that as described by the Ma patent, the mediation server may be conversant in multiple protocol formats and therefore is not described to have any need to convert there between with respect to a particular request. Appellant thus argued that the requisite motivation to combine Ma and the other patent was lacking. The BPAI agreed with Appellant’s arguments and reversed the Examiner’s 35 U.S.C. §103(a) obviousness rejection.

For patent practitioners, the lesson learned in this BPAI decision is the criteria a Patent Examiner must meet when asserting a 35 U.S.C. §103(a) obviousness rejection. First, it is not enough that a cited reference disclose the ability to perform a task. The task itself must be explicitly or implicitly disclosed in the reference – in this case, the task not disclosed was translating from one format to another. Second, when two references are combined, there should be some motivation to combine the two references. The lack of such a motivation opens the rejection to attack on Appeal.