Attorney:
Derek Lightner, Ph.D.
February 15, 2024
The Patent Trial and Appeal Board (PTAB) recently reversed the novelty, obviousness, and obviousness-type double patenting (ODP) rejections of the examining corps in a Track One case (USSN 17/342,945; Appeal 2023-004168; TC 1600). Led by Administrative Patent Judge (APJ) Richard Lebovitz, the PTAB panel further including APJs John E. Scheider and Eric B. Grimes reversed the rejections of Examiner Jake M. Vu, whose position was supported by Supervisory Patent Examiner (SPE) Michael G. Hartley, quality control SPE Scarlett Goon, and SPE Frederick F. Krass.<... Read more
Attorney:
Derek Lightner, Ph.D.
October 10, 2023
On October 3, 2023, the Patent Trial and Appeal Board (PTAB) reversed an examiner’s finding of obviousness based (i) on mischaracterizing a claim feature as an intended use, the feature instead being considered by the PTAB as a characteristic of the composition of the claimed article, and (ii) extrapolating a trend in the cited art without explicit support for the extrapolation. The appeal (No. 2022-003575, USSN 13/375,167, Technology Center 1700) of Ex parte YOSHIMITSU ODA and MASAAKI ISHIO was centered on an independent claim, reciting:<... Read more
Attorney:
Derek Lightner, Ph.D.
August 28, 2023
In the matter of Ex parte HAN LIU, et al., the Patent Trial and Appeal Board (PTAB) determined on August 17, 2023, that an examiner (Sarah al-Awadi, supported by Supervisory Patent Examiners, David J. Blanchard and Sue X. Liu) failed to establish the prima facie obviousness of claims by failing to establish a clear motivation and a reasonable expectation of success in maintaining the function of a copolymer-Ag system, inter alia, in modifying a particular monomer content to overlap with the claims against the disclosure of the primary references. The independent claims in question recited (emphasis added):<... Read more
Attorney:
Derek Lightner, Ph.D.
July 14, 2023
On July 10, 2023, the Patent Trial and Appeal Board (PTAB) reversed an examiner’s finding of obvious on the basis of a failure to show a motivation to modify the prior art and a lack of a reasonable expectation of success. The appeal (No. 2023-002080, USSN 15/558,153, Technology Center 1700) of Ex parte MARK HETHERINGTON began with the filing of a Notice of Appeal on May 13, 2022, after filing the national stage application on September 13, 2017. The main appealed claim recited:<... Read more
Attorney:
Derek Lightner, Ph.D.
April 10, 2023
On March 15, 2023, the Patent Trial and Appeal Board (PTAB) of the United States Patent and Trademark Office (USPTO) issued an opinion in the appeal of US Appl. Ser. No. 15/395,642, Ex parte Chris Fish (Appeal 2022-001172, Technology Center 1700, Appellate Patent Judges Adrienne Lepiane HANLON, Catherine Q. TIMM, and Jeffrey B. ROBERTSON) reversing Examiner Nathan H. EMPIE’s finding of obviousness based on an alleged motivation to modify beyond the range taught by the prior art.<... Read more
Attorney:
Derek Lightner, Ph.D.
February 7, 2023
In the matter of Ex parte Taleb, et al., the Patent Trial and Appeal Board (PTAB) determined on January 31, 2023, that an examiner (James Anderson, supported by Supervisory Patent Examiners, Jeffrey Lundgren and Kortney Klinkel) failed to establish the obviousness of claims by failing to establish a reasonable expectation of success in achieving a claimed result of a method claim. The claim in question recited<... Read more
Attorney:
Derek Lightner, Ph.D.
November 11, 2022
On October 19, 2022, the Patent Trial and Appeal Board (PTAB) overturned the obviousness rejection of a claim to an aqueous dispersion. Claim 1 of the application in question, USSN 16/083,182 (the 182 Application), recited<... Read more
Attorney:
Derek Lightner, Ph.D.
August 2, 2022
On July 22, 2022, the Patent Trial and Appeal Board (PTAB) reversed an examiner’s assertion of obviousness in the case of Ex parte Jaeger (Appeal 2021-002641, USSN 15/559,117). The issue in Jaeger was whether the addition of known element to a prior art device was obvious where the combination was not consistent the purpose / operation of the prior art device.<... Read more
Attorney:
Derek Lightner, Ph.D.
May 18, 2022
The Patent Trial and Appeals Board (PTAB) recently overruled an examiner’s finding of obviousness of claims premised on a “missing” moisture permeability feature in a composition designed for moisture absorption.<... Read more
Attorney:
Derek Lightner, Ph.D.
March 8, 2022
The PTAB in Ex parte Sturgis (Appeal 2021-002857; USSN 15/696,282) reversed an examiner’s obviousness rejection of claims for failing to sufficiently establish obviousness via routine optimization The reversal was mainly based upon plural selections being claimed without any particular directions on choosing in the prior art and an unpredicted effect based on the cited art.<... Read more