Written by Mark Terry               

In one of the more interesting decisions on this Friday, the Board of Patent Appeals and Interferences (BPAI) affirmed an Examiner’s rejection based on the Appellant forgetting to argue that the Examiner erred. This Quick Post highlights the basics of responding to Examiner rejections. Recall that “the Patent Office has the initial duty of supplying the factual basis for its rejection. It may not . . . resort to speculation, unfounded assumptions or hindsight reconstruction to supply deficiencies in its factual basis.” In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). The allocation of burdens requires that the USPTO produce the factual basis for its rejection of an application under 35 U.S.C. § 102. In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984) (citing In re Warner, 379 F.2d 1011, 1016 (CCPA 1967)). See my post last year regarding the factual determinations in 102 rejections.

The case of Ex parte Gutierrez (Appeal No. 2009-009811) involved a viscous industrial fluid used as lubricating oil. In responding to a 102 rejection, the Appellants referred the Board to their previous arguments wherein Appellants argued that the prior art does not anticipate the claimed lubricating oil, and that the prior art does not describe the composition with sufficient detail to determine if it falls within the scope of Appellants’ claims. Appellants, however, made no statement about the Examiner’s factual determinations in his rejection.

The Board decided:

“Appellants do not argue that the Examiner’s findings of fact … are in error. Nor do Appellants argue that the Examiner’s conclusions about the parameters that would have been considered obvious were made in error… Thus, Appellants do not argue that the Examiner erred in concluding the claimed lubricating oil and related methods would have been obvious. Accordingly, we affirm the Examiner’s decision to reject the claims …“

What does this mean for practitioners? This means that you should explicitly contest any adverse factual findings of an Examiner, or else those findings will be taken as true by the Board. You should explicitly state that the Examiner erred in making one or more factual findings and then provide evidence of why those factual findings are wrong. If you argue that the prior art doesn’t anticipate a claim or that the claim is not obvious but forget to assert the Examiner erred in his factual findings, then the Examiner’s factual findings may be taken as true and you could lose your appeal.

            Mark Terry is a registered patent attorney with over a decade of experience prosecuting patent and trademark applications before the U.S. Patent and Trademark Office. Mark is located in the City of Miami.