Quick Post: Board Reverses Examiner’s Rejection in Two Sentences

Written by Mark Terry 

In a quick decision today at the Board of Patent Appeals and Interferences (BPAI), the Board reversed an Examiner’s 103 obviousness rejection in two sentences (Analysis section only). Quick work for a usually wordy Board.

The case of Ex parte Erhan (Appeal No. 2011-008127) involved a method of making fatty acid ester derivatives. The claims involved processes of production of a ketal product in combination with the hydroxyl ester product. The Examiner rejected the claims based on 35 U.S.C. 103(a) for obviousness but wrote a sparse explanation of where the claim elements were found in the prior art. The Board began by reciting the relevant principles of law:

When determining whether a claim is obvious, an Examiner must make “a searching comparison of the claimed invention – including all its limitations – with the teachings of the prior art.” In re Ochiai, 71 F.3d 1565, 1572 (Fed. Cir. 1995).

The Board finished with its Analysis section, which is reproduced below verbatim:

After reviewing the facts and arguments, we conclude that the evidence and rational set out in the rejection are insufficient to establish a prima facie case of obviousness for the method of claim 22. In particular, although the rejection identified prior art teachings concerning the production of a hydroxyl ester product, the rejection did not identify prior art teachings concerning the production of a ketal product in combination with the hydroxyl ester product, and did not resolve that difference between the prior art methods and the claimed method.

And in two sentences the Board reversed the Examiner’s rejection.

            What does this mean for patent practitioners? This means that much like a 35 U.S.C. 102(b) rejection, a 103 rejection must provide the equivalent of an element-by-element analysis of the elements of the claims being rejected. That is, every element of every claim must be found in the prior art cited. If you suspect that the Examiner missed, or gave little attention to, a claim element, then the Examiner is violating In re Ochiai, which may be grounds for a reversal, as in the case of Ex parte Erhan. This is in line with a previous posting I wrote about how the single most effective way to reverse a 103 obviousness-type rejection is to argue that the prior art does not disclose a claim element.             Mark Terry is a Board Certified Intellectual Property attorney in Miami, FL who specializes in helping companies and individuals protect their ideas and creations using patents, trademarks and copyrights.


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