Written by Mark Terry 

Yesterday’s Board of Patent Appeals and Interferences (BPAI) decision in Ex Parte Peng highlighted the most effective way of reversing a Patent Examiner’s 103 obviousness type rejection – contesting the presence of one of the claim elements in the cited prior art. I, a Patent Lawyer practicing in the City of Miami, am always interested in reading about how other attorneys have gotten rejections reversed at the BPAI.

The Ex Parte Peng case involved a method claim performed by a GPS receiver. The claim element at issue involved the storage of certain data in sample RAM, followed by a reallocation of purpose of certain memory spaces. The Examiner issued an obviousness type rejection under 35 U.S.C. 103(a), asserting that the claim element at issue as found in the cited prior art. The Appellant appealed and argued that the claim element was in fact NOT disclosed by the cited prior art.

In a short, one and a half page analysis section, the Board agreed with the Appellant and reversed the rejection. Namely, the Board stated:

“We agree with Appellants that the results of the accumulators are stored in the RAM latch, and not the sample RAM, … we do not find any teaching or suggestion in the cited reference of a re-allocation for purposes … there is no indication that some of these time slots … have been re-allocated in a second mode … To somehow conclude that the cited re-allocation of the time slots could be accomplished in the RAM latch disclosed in Baranyai would require us to stretch the reference beyond reasonable limits.”

It seems like a simple argument – “the prior art does not disclose the claim element” – and it lacks the complexity and depth of standard non-obviousness arguments such as “no articulated reasoning” and “no motivation to combine.” But it so happens that this simple argument is the single most successful way to reverse a 35 U.S.C. 103(a) rejection (in electrical cases) on appeal before the BPAI. According to data provided by Michael Messinger, Esq. at the 2010 Board of Patent Appeals conference, 57% of the obviousness reversals in electrical cases were reversed using this argument. The next most successful argument was the “rationale/underpinning”, which accounted for 37% of the obviousness reversals in electrical cases.

The lesson here is that if you want to increase your chances of reversing a 35 U.S.C. 103(a) rejection (in electrical cases) on appeal before the BPAI, you would be wise to use “the prior art does not disclose the claim element” argument. This argument is favored by the BPAI, according to the statistics.