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Michael R. Fleming – Chief Administrative Patent Judge Board of Patent Appeals and Interferences

-State of the Board- -Appeal Tips- -Best Practices-. Michael R. Fleming – Chief Administrative Patent Judge Board of Patent Appeals and Interferences 571-272-9797. Major FY 07 Accomplishments. Interferences Terminated 95 interferences

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Michael R. Fleming – Chief Administrative Patent Judge Board of Patent Appeals and Interferences

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  1. -State of the Board- -Appeal Tips- -Best Practices- Michael R. Fleming – Chief Administrative Patent Judge Board of Patent Appeals and Interferences 571-272-9797

  2. Major FY 07 Accomplishments • Interferences • Terminated 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%

  3. Major FY 07 Accomplishments • Ex Parte Appeals • Disposed of 3485 appeals • Up from 2874 appeals in FY06 • New appeal inventory of 2511 appeals • Up 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 appeals • Up from 3349 appeals in FY06

  4. Ex Parte Results by TC for FY 07

  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.

  6. Record Years for BPAI Receipts and Returns

  7. FY1994-FY2007 BPAI Pendency

  8. Ex Parte Workload Increases Projected Effect of Examining Corps Initiatives on Ex Parte Appeals Workload

  9. Appeal Tips – Proposed Ex Parte Appeal Rules • Reduce administrative returns of appeal briefs • Improve appeal process • Improve briefing

  10. Appeal Tips – Proposed Ex Parte Appeal Rules • 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 element • If element is not present, presumption that it does not exist, i.e., related appeals • Improve public awareness of requirements – uniformity of decisions on petitions, decided by Chief Administrative Patent Judge, and publication of decisions

  11. Appeal Tips – Proposed Ex Parte Appeal Rules • Improve Process • Focus on dispute • Appellant is to establish that examiner erred • Appellant is to identify new arguments in the appeal brief • Appellant and examiner both use the same documents – those contained in appendix to appeal brief • Aid and improve Patent Corps’ Appeal Conference Program

  12. Appeal Tips – Proposed Ex Parte Appeal Rules • Improve Briefing – Appeal Brief • Statement of facts • Argument section – focus on dispute • Page limitation – minimal impact from present practice • Appendix • Pending claims and status • Claim support - map claims argued separately to specification • Evidence section - except U.S. patents and published applications

  13. Appeal Tips – Proposed Ex Parte Appeal Rules • Improve Briefing – Suggested from Public Comment • Mini-Appeal Brief • Single issue • All claims stand or fall with broadest claim • No evidence presented by appellant except that relied upon by examiner • No Evidence Section of the Appendix • No Table of Contents or Table of Authorities • Statement of Facts and Argument not to exceed a given number of pages

  14. Appeal Tips – In General • Improve Briefing - Best Practices: • Determination of claim scope • Findings of fact • Argument (statement of reasoning for your position(s))

  15. Appeal Tips – In General • Claim scope • Determine 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

  16. Appeal Tips – In General • 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

  17. Appeal Tips – In General • 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

  18. Appeal Tips – In General • Findings of Fact – Best Practice • A “Statement of Facts” setting out the material facts relevant to the rejections on appeal • Each fact supported by a specific citation to a reference • Proposed Rules emphasize this Best Practice

  19. Appeal Tips – In General • Argument – Best Practice • Appellant 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

  20. Appeal Tips – In General • Argument – Best Practice • Appellant 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

  21. Establishing Best Practices • Publication of Board Decisions • Precedential • Informative • Routine • All Published on Board Website

  22. Establishing Best Practices • Precedential Decisions • Binding on Board • Procedure for becoming precedential set forth in SOP 2

  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).

  24. Establishing Best Practices • Informative Decisions • Not Binding on Board or Examiners • Illustrative of Board Norms – Addressing: • Best Practices • Reoccurring Problems • Developing Areas of Law • Citable by commercial reporting service or URL from BPAI website

  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).”

  26. Non-Statutory Subject Matter • Ex parteBilski, 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 exclusion • Useful, concrete and tangible result

  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.”

  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 and • On 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.

  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).

  30. Recently Posted Informative Decisions • 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).

  31. Recently Posted Informative Decisions • 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”).

  32. Recently Posted Informative Decisions • 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).

  33. Recently Posted Informative Decisions • 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)).

  34. Recently Posted Informative Decisions • 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)).

  35. Recently Posted Informative Decisions • 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).

  36. Establishing Best Practices • Routine Decisions • All Other Board Decisions (Great Majority) • Citable for Whatever Persuasive Value They May Have • Should be Cited Sparingly

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