Playing Your Strongest Patent Prosecution Hand – A Look at Patent Board Ferret

Patent prosecution (or the process of obtaining a patent) can be a time consuming and potentially expensive endeavor. This process is comparable to a game of poker that begins when the Examiner issues her first Office Action.  The Office Action may include multiple rejections that provide grounds that the applicant is prevented from obtaining a patent.  One way to win this particular game of poker is to understand the strength of the Examiner’s rejections (i.e., seeing the Examiner’s hand). The website http://www.patentboardferret.com is a tool that provides Patent Board decisions so that a particular rejection can be better evaluated.

At the highest level, an Examiner is given authority to issue a rejection based on provisions of the U.S. Patent Code.  For example, one provision of the code allows for a rejection if a patent claim is indefinite – See 35 U.S.C. §112(f). But many of these provisions are very short, such as §112(f), which is only one paragraph long.  Thus, because the statutory language itself is open to many interpretations (i.e., the Examiner can assert that the claim language is indefinite and the applicant can argue the opposite in light of the statute), additional guidance has been provided over the years in the Patent Rules to clarify these provisions.  For example, a section of the Rules may give clear examples of the type of claim language that is indefinite.  Thus, in support of his rejection, the Examiner may rely on these Rules.  However, the Rules also include clarification of improper rejections that the applicant can cite to in support of an unreasonable rejection (and thus in favor of patentability).  In addition to the Rules, case law further clarifies whether rejections are proper or improper.  An applicant can appeal to the Patent Trial and Appeal Board (PTAB), then to the Federal Circuit, and then even to the Supreme Court.  The resulting decisions of all these appeals (i.e., case law) can then be referred to in support of a position either for, or against patentability.  Thus, when an Office Action issues, the Examiner’s hand (i.e., her rejections) can be evaluated based on the Rules, and cases that have been decided.  If the Examiner’s rejections are unreasonable, the applicant should be able to overcome them through argument, or appeal.  But before you even know whether that option will be successful, enhanced knowledge of how likely this approach will be can be helpful. Having enhanced knowledge on Patent Board case law can be crucial in saving an organization time and money, and can even be the difference in determining whether a patent is issued. By analyzing Patent Board decisions the strength of a rejection can be assessed.

Admittedly, only a fraction of the Board’s decisions (i.e., precedential and informative decisions) have the authority to convey how the PTO applies, or should apply, the Patent law and of course certain types of higher-level decisions (i.e., Federal Circuit and Supreme Court) are more important than Board decisions in patent prosecution decision-making.  That being said, these authoritative decisions represent only a small sample of how Patent law is/should be applied, and thus shed only limited light on how a specific issue will be decided at the PTO. Thus, the many thousands of Final (or Routine) decisions, while not binding authority or policy of the PTO, can be extremely useful in determining how the Board collectively decides issues.

Certain rejections are relatively well settled, and thus reasonably black-and-white. A prior art rejection under Section 102 is traditionally going to be upheld, for instance if the prior art reference discloses a claim.  However, other types of rejections such as Section 112 are more subjective, as the standard “ordinary personal skilled in the art” is used to determine compliance with the provisions of Section 112.  Thus, knowing whether an Examiner is following precedent, or applying statues correctly can save a lot of time, money, and claim scope. The website http://www.patentboardferret.com provides valuable information about Patent Trial and Appeal Board (PTAB) / Board of Patent Appeals and Interferences (BPAI) decision data to provide additional context, and perspective in dealing with rejections at the USPTO. The BPAI was renamed to the PTAB after the passage of the America Invents Act.

As a theoretical example, let’s take the case where an application has been rejected multiple times, and it appears that the examiner is not budging. Perhaps it has even gotten to the stage where a couple of Request for Continuing Examinations (RCEs) have already been filed. It is especially important at this point in considering an appeal, or a narrowing amendment to determine whether the rejection is truly reasonable. One way to accomplish this is to look at the Examiner’s previously appealed decisions. If the Examiner’s appealed decisions have been reversed 100% of the time this gives an indication that perhaps the Examiner is more likely to issue unreasonable rejections. Thus, looking at the dispositions, and pulling up specific individual decisions citing a Board decision directly involving that Examiner can provide predictive power.

A real example illustrates the utility of this approach. Examiner Stephen J. Ralis has 13 appealed decisions, at the PTAB within the last 18 months. Of those, Section 103(a) has been at issue 100% of the time.

Breakdown of Reviewed Cases Involving Examiner Ralis - Click to Enlarge

Breakdown of Reviewed Cases Involving Examiner Ralis – Click to Enlarge

Identifying this observation is vital, but more importantly than just displaying the numbers, Patent Board Ferret provides recaps that give you the context for each decision. As can be seen in this example, Examiner Ralis has been reversed 10 of 13 times. The decisions data is displayed in a table and the user can click on a decision of interest to read the Board’s reasoning. For example, as can be seen from the Ex Parte Taylor et al decision, if the applicant recites in the claim “and combinations thereof” and receives a 112(b) rejection from Examiner Ralis, there’s a chance that this rejection is strong, at least at the Board.  Thus, by looking for similarities between decisions that are similar to the applicant’s, the applicant can actually use the knowledge for predictive purposes.

Decisions from Examiner Ralis, including summaries - Click to Enlarge

Decisions from Examiner Ralis, including summaries – Click to Enlarge

When the stakes are high, having additional information about the Examiner’s hand can be very powerful.  Sometimes the Examiner has a pretty strong rejection based on the statute, the Rules, and the accompanying case law.  However, this may be difficult to know unless familiar with the Code, the Rules, and all the case law.  Analyzing Board decisions through PatentBoardFerret.com can provide enhanced knowledge of the strength of the rejection. In addition, PatentBoardFerret.com organizes all decisions by authority (i.e., precedential, informative and final), by the decision’s particular type (e.g., regular appeal, reexamination, rehearing, reissue, remand, inter partes review, etc) and maps each rejection to each particular disposition. The Ferret avoids wading through the PTO’s isolated and distinct webpages of PDF lists, and lets you easily find decisions from different authorities, and different decision types in a centralized repository. The Ferret also allows you to search for precise data that you are interested in by providing a user-intuitive way of accessing each decision, and each type of data in which the user may be interested.

Comments 1

  1. The following was posted, regarding this post on the Intellectual Property Professionals Group on LinkedIn by Gary Baker:

    This is great, Tony.

    I have appealed more cases in the last 2 years than the prior 10. When I know I am right, the claims do not need amendment, and the final Office Action is just reiterating the first without addressing my points (and the Examiner is uncooperative on the phone), I often skip a final Response (saving the client money) and go straight to a Request for PreAppeal Review or file an Appeal Brief.

    Patent Board Ferret is a great tool and I am going to use it right away. I was surprised at the variety of search parameters, and it is free.

    Thanks,
    Gary – BioPatent

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