Written by Mark Terry

Ric Flair, the greatest professional wrestler of all time, said “If you want to be the best, you have to beat the best.” Without knowing it, Ric Flair expressed exactly what it takes to win at the Patent Trial and Appeal Board (PTAB). 

As a boy, I remember watching Ric Flair froth at the mouth, running around like a mad man and beating his opponents. It was a stunning display of energy, machismo and mayhem, all rolled into one. At some point, he would settle in front of a camera and going on long, screaming diatribes about who was the best, what he was going to do to his opponents and who he was going to demolish next week. It was wildly entertaining, especially for a skinny young lad growing up in the 80s. Ric Flair’s quote about the importance of beating the best applies directly to appealing Examiner decisions to the PTAB. Statistically, a Patent Examiner’s best argument is a 35 U.S.C 103 obviousness argument. By that, I mean it is the argument that is least likely to be reversed by the PTAB. This is best illustrated by the Ex parte Chandrachood (Appeal No. 2012-007987), which was handed down today. The Ex parte Chandrachood decision involved an appeal of a 35 U.S.C 103 obviousness rejection of a method claim involving a photolithography process. At issue was whether it was obvious that two particular gases were combined – an oxygen containing gas and CHF3. The Examiner claimed it was obvious because he found references disclosing the use of an oxygen containing gas and CHF3 to perform the process of the claimed invention. The Applicant argued that it was not obvious because one of the references disclosed that the use of CHF3 would produce a poor quality result. Ultimately, the PTAB decided that:

“It is well settled that it is a matter of obviousness for one of ordinary skill in the art to combine two or more materials when each is taught by the prior art to be useful for the same purpose. In re Kerkhoven, 626 F.2d 846, 850 (CCPA 1980).”

No surprise there. But the most telling part of the decision was when the PTAB stated:

“Appellants base no argument upon objective evidence of nonobviousness, such as unexpected results.”

This is exactly why the appeal was lost, and where Ric Flair comes in. Key to responding to a 35 U.S.C 103 obviousness rejection (which, recall, is the Examiner’s best argument, statistically), is coming up with hard evidence. The Examiner presented a legitimate obviousness rejection and the Applicant responded using only “attorney argument” and did not present any 1.132 affidavits, references to text books, scientific treatises, etc. That was a bad move by the Applicant’s attorney, since he carried the burden of proving the obviousness rejection was not accurate. As a result, the Board in Ex parte Chandrachood found the Applicant did not meet his burden in rebutting the Examiner’s finding of obviousness. Ric Flair would not have made this mistake – he would have pulled out all of the stops, submitted every piece of evidence he could get his hands on, requested an oral hearing with the Board and probably physically coerced the judges to rule in his favor.

Lessons Learned: Once the Examiner makes a finding of obviousness, the burden is moved to the Applicant to properly rebut the Examiner’s finding. And it’s a high burden. You won’t get off with a few paragraphs of attorney argument. In order to be the best, you have to beat the best, so to rebut a finding of obviousness, the patent practitioner should be proactive and get a professor or professional engineer to provide a 1.132 affidavit and/or provide a bibliography of textbooks, scientific journals and academic articles that support his position.

Mark Terry is a Board Certified Specialist in the area of Intellectual Property Law. Along with Derek Fahey, they operate as trademark lawyers and patent attorneys in Naples, Fort Lauderdale, The Palm Beaches, and Miami. Contact Mark Terry if you have any questions regarding enforcement of patents, trademarks and copyrights.