Posts Tagged: "103 rejections"

On January 3, 2017 the Court of Appeals for the Federal Circuit (the court) handed down two decisions relating to obviousness under § 103 – In re: Marcel Van Os, Freddy Allen Anzures, Scott Forstall, Greg Christie, Imran Chaudhri, No. 2015-1975 (Fed. Cir. 2017) (Van Os) and In re: Ethicon, Inc., No. 2015-1696 (Fed. Cir. 2017) (Ethicon). In Van Os, the Appellants appealed a decision from the Patent Trial and Appeal Board (PTAB) affirming the Examiner’s rejection of the claims of U.S. Patent Application No. 12/364,470 under § 103. The court addressed the question of whether the PTAB properly held that the claims were obvious in light of prior art. The court vacated and remanded. In Ethicon, the Appellant appealed a decision from the PTAB affirming, in a merged inter partes reexamination, the Examiner’s rejection of the claims of U.S. patent 7,591,844 (the ’844 patent) under § 103. The court addressed the question of whether the PTAB properly affirmed the rejection of the claims of the ’844 patent under § 103. The court affirmed. These two cases raise several interesting questions, especially given that they were decided on the same day.

Section 102 rejections are very common at the USPTO and you are likely to get one no matter what kind of technologies you work with. Fortunately, they are not terribly difficult to overcome, as even the least successful method of responding to them is still successful over half of the time. If you get a § 102 rejection, then an interview or an interview paired with an RCE is the best way to respond. Generally speaking, an appeal is arguably the worst way to respond, even though their success rate is not the lowest. This is because appeals have a success rate that is only 1.2 percentage points higher than RCEs. Thus, in most cases there is little reason why any applicant should appeal a § 102 rejection rather than choosing an RCE, since doing so will cost significantly more than and take longer to resolve for almost no additional benefit. Thus, in the ordinary case an appeal wouldn’t generally be the most reasonable first choice to pursue. Filing an appeal instead of an RCE should, therefore, require some kind of special factor that would lead the applicant or attorney to view it as having a strategically superior advantage.