Colorado Bar Association January 22, 2008 1 Michael R. Fleming – Chief Administrative Patent Judge...

January 22, 2008 1

Colorado Bar Association

Michael R. Fleming – Chief Administrative Patent JudgeBoard of Patent Appeals and Interferences571-272-9797

-State of the Board- -Appeal Tips-

-Best Practices-

January 22, 2008 2


InterferencesTerminated 95 interferences

Average pendency of pending interferences is 11.6 months

Average pendency of terminated interferences is 10.0 months

Percentage of interferences terminated in 2 years or less is 97.9%

Major FY 07 Accomplishments

January 22, 2008 3


Major FY 07 AccomplishmentsEx Parte Appeals

Disposed of 3485 appealsUp from 2874 appeals in FY06

New appeal inventory of 2511 appealsUp from 1357 appeals in FY06

Average pendency of decided appeals is 5.4 months (from Docketing Notice date)

Up from 4.7 months in FY06

Docketed 4639 new appealsUp from 3349 appeals in FY06

January 22, 2008 4


Ex Parte Results by TC for FY 07

Disposition

AFFIRMED 55.3%AFFIRMED-IN-PART 13.5%REVERSED 25.1%PANEL REMANDS 3.4%ADMINISTRATIVE REMANDS 1.4%DISMISSED 1.2%

TOTAL 100.0%

% Decisions Fiscal Year to Date

TECHNOLOGY CENTER

REPORTING PERIOD

PENDING BEGINNING

FISCAL YEAR

APPEALS RECEIVED

FISCAL YEARAFFIRMED AFFIRMED IN PART REVERSED

PANEL REMANDS

ADMINISTRATIVE REMANDS

DISMISSED TOTALPENDING

END FISCAL YEAR

INCREASE/ DECREASE FISCAL YEAR

PERCENT OF CASE

WORKLOAD

1600 10-1-06 to 9-30-07 132 520 216 38 94 14 5 23 390 262 130 10.4

1700 10-1-06 to 9-30-07 260 892 600 77 150 43 12 4 886 266 6 10.6

2100 10-1-06 to 9-30-07 209 973 302 105 191 15 12 5 630 552 343 22.0

2600 10-1-06 to 9-30-07 72 539 151 50 51 8 2 1 263 348 276 13.9

2800 10-1-06 to 9-30-07 121 408 153 35 66 13 6 1 274 255 134 10.2

2900 10-1-06 to 9-30-07 11 14 9 0 1 2 0 0 12 13 2 0.5

3600 10-1-06 to 9-30-07 372 760 260 81 201 15 8 5 570 562 190 22.4

3700 10-1-06 to 9-30-07 180 533 237 83 121 10 5 4 460 253 73 10.1

Board Totals 1357 4639 1928 469 875 120 50 43 3485 2511 1154 100.0

EX PARTE APPEALS FISCAL YEAR 2007 CUMULATIVE DISPOSITIONS

January 22, 2008 5


FY1994-FY2007 BPAI Appeal Receipts

* On June 1, 2002, BPAI adopted new docketing procedures for appeals. See 1260 Off. Gaz. Pat. & Tm. Office 18 (Jul 2, 2002). As a result, administrative remands/orders are no longer reported. For this comparison, the appeal receipts reported in the USPTO Annual Reports for

FY1994-2001 were adjusted to subtract the administrative remands/orders.

Receipts during FY

% Increase-Decrease from prior

FYFY1994 3667 -18.30%FY1995 4318 17.75%FY1996 3607 -16.47%FY1997 3781 4.82%FY1998 2772 -26.69%FY1999 3124 12.70%FY2000 1889 -39.53%FY2001 2755 45.84%FY2002 3125 13.43%FY2003 2721 -12.93%FY2004 2469 -9.26%FY2005 2834 14.78%FY2006 3349 18.17%FY2007 4639 38.52%

BPAI Receipts*FY1994-FY2007 BPAI Appeal Receipts

0

500

1000

1500

2000

2500

3000

3500

4000

4500

5000

No

. of

Do

cket

ed A

pp

eals

January 22, 2008 6


Record Years for BPAI Receipts and Returns

FY1995 FY1996 FY2006 FY2007Receipts 4318 3607 3349 4639

Returns 907 532 1907 1497

Total 5225 4139 5256 6136

Record Years for BPAI Receipts and Returns

0

1000

2000

3000

4000

5000

6000

7000

FY1995 FY1996 FY2006 FY2007

Total

No. o

f Rece

ipts a

nd Re

turns

January 22, 2008 7


FY1994-FY2007 BPAI Pendency

0

5

10

15

20

25

30

35

40

45

Pen

den

cy, m

on

ths

January 22, 2008 8


Ex Parte Workload Increases

Projected Effect of Examining Corps Initiatives on Ex Parte Appeals Workload

0

2000

4000

6000

8000

10000

12000

FY 2008 FY 2009 FY 2010 FY 2011 FY 2012 FY 2013

Fiscal Year

No.

of D

ocke

ted

App

eals

January 22, 2008 9


Appeal Tips – Proposed Ex Parte Appeal Rules

Reduce administrative returns of appeal briefsImprove appeal processImprove briefing

January 22, 2008 10



Reduce Administrative Returns of Appeal Briefs

Examiners will use checklist of appeal brief elements to determine completeness – check for presence of element only, not substance of elementIf element is not present, presumption that it does not exist, i.e., related appealsImprove public awareness of requirements – uniformity of decisions on petitions, decided by Chief Administrative Patent Judge, and publication of decisions

January 22, 2008 11



Improve ProcessFocus on disputeAppellant is to establish that examiner erredAppellant is to identify new arguments in the appeal briefAppellant and examiner both use the same documents – those contained in appendix to appeal briefAid and improve Patent Corps’ Appeal Conference Program

January 22, 2008 12



Improve Briefing – Appeal BriefStatement of factsArgument section – focus on disputePage limitation – minimal impact from present practiceAppendix

Pending claims and statusClaim support - map claims argued separately to specificationEvidence section - except U.S. patents and published applications

January 22, 2008 13



Improve Briefing – Suggested from Public CommentMini-Appeal Brief

Single issueAll claims stand or fall with broadest claimNo evidence presented by appellant except that relied upon by examinerNo Evidence Section of the AppendixNo Table of Contents or Table of AuthoritiesStatement of Facts and Argument not to exceed a given number of pages

January 22, 2008 14


Improve Briefing - Best Practices:Determination of claim scope

Findings of fact

Argument (statement of reasoning for your position(s))

Appeal Tips – In General

January 22, 2008 15


Claim scopeDetermine the “broadest reasonable” claim construction

Address explicit or implicit conflicts with the Examiner in the determination of the meaning of claim terms

Address the specification’s role in determining claim scope


January 22, 2008 16


Claim Scope – Best Practice

Provide the Board a starting point for its claim construction

For each independent or argued claim, provide an indication of where:

- each limitation is described in the specification as filed

- each limitation is shown in drawings (sequence listings)

- the specification and the drawing describe the structure, material or acts corresponding to any means or step plus function limitation

Current and Proposed Rules emphasize this Best Practice


January 22, 2008 17


Findings of Fact

Determine the relevant facts to support your argument

Counterproductive to ignore facts that contradict your argument

Note that applied references contain facts that speak for themselves even if the Examiner does not explicitly cite to the section


January 22, 2008 18


Findings of Fact – Best PracticeA “Statement of Facts” setting out the material facts relevant to the rejections on appealEach fact supported by a specific citation to a referenceProposed Rules emphasize this Best Practice


January 22, 2008 19


Argument – Best PracticeAppellant should explain why the Examiner is believed to have erred. This is required for all responses to Examiner’s actions. See, 37 C.F.R. § 111(b) (The reply by the applicant must “specifically point out the supposed errors in the examiner’s action.”)

Identify where the argument was made in the first instance or state that the argument has not previously been made to the Examiner


January 22, 2008 20


Argument – Best PracticeAppellant should address all Examiner points with which the Appellant disagrees

Any unchallenged Examiner finding or conclusion will be presumed correct for purposes of the appeal

Proposed Rules emphasize these Best Practices


January 22, 2008 21


Establishing Best Practices

Publication of Board Decisions

PrecedentialInformativeRoutineAll Published on Board Website

January 22, 2008 22


Precedential DecisionsBinding on BoardProcedure for becoming precedential set forth in SOP 2


January 22, 2008 23


Recent Precedential Decisions

Ex parte Kubin, 83 USPQ2d 1410 (BPAI 2007) (expanded panel) (obvious to try).Ex parte Smith, 83 USPQ2d 1509 (BPAI 2007) (expanded panel) (predictable use of prior art elements according to their established functions).Ex parte Catan, 83 USPQ2d 1569 (BPAI 2007) (expanded panel) (precise teaching of claimed subject matter not required).

January 22, 2008 24


Informative DecisionsNot Binding on Board or ExaminersIllustrative of Board Norms – Addressing:

Best PracticesReoccurring ProblemsDeveloping Areas of Law

Citable by commercial reporting service or URL from BPAI website


January 22, 2008 25


Determination of Ordinary Skill in the Art

Ex Parte Jud, Appeal No. 2006-1061 (Appl. No. 09/505,713) (30 January 2007) (request for rehearing, expanded panel)

“A question of what the hypothetical person with such skill would have known (and known how to do).”

January 22, 2008 26


Non-Statutory Subject Matter

Ex parte Bilski, Appeal No. 2002-2257, 2006 WL 4088855 (Sep. 26, 2006) (appeal pending at Federal Circuit, Appeal No. 2007-1130, oral argument Oct. 1, 2007).Tests for statutory subject matter:

Transformation of subject matter Abstract idea exclusionUseful, concrete and tangible result

January 22, 2008 27


Non-Functional Descriptive Material

Ex parte Mathias, 84 USPQ2d 1276 (BPAI 2005) (aff’d, 191 Fed. Appx. 959 (Fed. Cir. 2006) (Rule 36)).

“[N]onfunctional descriptive material cannot lend patentability to an invention that otherwise would have been anticipated by the prior art.”

January 22, 2008 28


Reissue Recapture

Ex parte Kraus, Appeal No. 2005-0841 (Appl. No. 08/230,083) (21 September 2006) (Supp. Decision)

Surrendered subject matter is the subject matter of an application claim which was amended or canceled andOn a limitation-by-limitation basis, the territory falling between the scope of the application claim which was amended or canceled and the patent claim which ultimately was issued.

January 22, 2008 29


Recently Posted Informative Decisions

Ex parte McBrearty, No. 2007-1340 (27 July 2007) (application of § 103).Ex parte Bradshaw, No. 2006-2744 (19 July 2007) (reissue recapture rule).Ex parte Tullis, No. 2006-0210 (17 May 2006) (obviousness-type double patenting).Ex parte Srinivasan, No. 2007-0512 (01 May 2007) (written description requirement under § 112, ¶ 1).

January 22, 2008 30



Ex parte Wright, No. 2006-0003 (06 April 2006) (consideration of secondary indicia of non–obviousness).Ex parte Liebermann, No. 2007-0012 (17 May 2007) (reissue recapture rule).Guthrie v. Espiau, No. 105,393 (18 April 2007) (Paper 94) (derivation is a priority issue).Ex parte Wellerdieck, No. 2007-1119 (04 May 2007) (term of patent cannot be expanded by reissue).

January 22, 2008 31



Ex parte May, No. 2006-1776 (30 April 2007) (prior art date of published application is earliest effective U.S. filing date). Ex parte Batteux, No. 2007-0622 (27 March 2007) (inherent feature of reference need not be recognized by one of ordinary skill in the art).Ashurst v. Brugger, No. 105,482 (25 April 2007) (Paper 44) (request denied for additional discovery deemed a “fishing expedition”).

January 22, 2008 32



Perego v. Drehmel, No. 105,467 (9 March 2007) (Paper 63) (substitute exhibit permitted to set forth new facts). Rowells v. Vichinsky, No. 105,518 (6 March 2007) (Paper 19) (corroborated communication of invention required to establish derivation).Karim v. Jobson, No. 105,376 (28 February 2007) (Paper 99) (BPAI has discretion to not decide issues of patentability unnecessary to resolution of interference).

January 22, 2008 33



Ex parte Adams, No. 2007-0441 (14 March 2007) (error made by examiner’s amendment – claim indefinite – not correctable by broadening reissue).Ex parte Gleave, 84 USPQ2d 1681 (BPAI 2006) (claim defining composition in functional terms is defective under written description requirement of

§ 112, ¶ 1) (aff’d, 210 Fed. Appx. 990 (Fed. Cir. 2006) (Rule 36)).

January 22, 2008 34



Ex parte Ashkenazi, 80 USPQ2d 1753 (BPAI 2005) (disclosure requirements the same for § 102(b) and § 102(e) references).Ex parte Shealy, Appeal No. 2006-1601, 2007 WL 1196758 (BPAI Apr. 23, 2007) (non-statutory subject matter).Ex parte Curry, 84 USPQ2d 1272 (BPAI 2005) (non-functional descriptive material) (aff’d, Fed. Cir., Appeal No. 2006-1003, June 12, 2006 (Rule 36)).

January 22, 2008 35



Ex parte Dart , Appeal No. 2007-1325, 2007 WL 2399840 (BPAI Aug. 22, 2007) (person skilled in the art uses known elements for their intended purpose).Ex parte Righi, Appeal No. 2007-0590, Applic. No. 09/872,416 (BPAI July 25, 2007) (combination of known elements combined according to known methods yielding predictable results is likely obvious).

January 22, 2008 36


Routine DecisionsAll Other Board Decisions (Great Majority)

Citable for Whatever Persuasive Value They May HaveShould be Cited Sparingly


Colorado Bar Association January 22, 2008 1 Michael R. Fleming – Chief Administrative Patent Judge...

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