Patent Appeals: BPAI Decisions INTELLECTUAL PROPERTY

The Board of Patent Appeals and Interferences (BPAI) is an administrative law body of the United States Patent and Trademark Office (USPTO). The BPAI’s two main responsibilities are to review:

  1. Appeals from adverse decisions of patent examiners; and
  2. Patent interferences, to determine who is the first inventor when two applicants attempt to claim the same patentable invention.

Below are summaries of and links to recent BPAI precedential and informative opinions, as well as the USPTO’s websites posting BPAI decisions.

Ex parte Moncla

In a three-page precedential opinion issued on June 22, 2010, an expanded panel of the BPAI addressed this appeal on remand from the Federal Circuit. The original BPAI panel had reversed the examiner’s rejections under §§ 102 and 103, but affirmed a provisional obviousness-type double-patenting rejection of all claims. (Slip op., p. 2). On remand, the expanded panel concluded that "it was premature for the original Board panel to address the Examiner’s provisional rejection....” (Slip op., p. 3). Thus, the Board vacated the original panel’s affirmance of the rejection of all claims. (Slip op., p. 3).

Ex parte Quist

In a precedential, per curiam opinion issued on June 2, 2010, the BPAI reiterated the proper standard and procedure for reviewing obviousness rejections, which was clarified in Ex parte Frye (BPAI 2010). The Board stated:

On Board review, if the appellant raises the issue as to whether the examiner’s conclusion of obviousness was in error, based in part on the proffered evidence of secondary considerations, the panel must consider if the examiner erred in determining patentability, based upon the totality of the record. In such instances, the Board panel must consider anew all the relevant evidence of obviousness, both for and against, in view of the argument on the issue. (Slip Op., p. 11, emphases added).

The Board held that the previous panel applied the appropriate standard and procedure in determining that the claimed process was obvious. (Slip Op., p. 13).

Ex parte Frye

In a precedential, per curiam opinion issued on February 26, 2010, the BPAI clarified its standard of review of examiner findings. The Board stated that it "reviews the particular finding(s) contested by an appellant anew in light of all the evidence and argument on that issue.” (Slip Op., p. 10). However, the Board noted:

If an appellant fails to present arguments on a particular issueor, more broadly, on a particular rejectionthe Board will not, as a general matter, unilaterally review those uncontested aspects of the rejection…. Thus, the Board will generally not reach the merits of any issues not contested by an appellant. (Slip Op., p. 10, emphasis added).

The Board reversed the examiner’s anticipation and obviousness rejections of the claimed product, finding that the examiner adopted "an unreasonably broad interpretation” of the prior art. (Slip Op., p. 14). The Board also explained that it did not have jurisdiction to address issues that were reviewable by petition, and should have been dealt with accordingly prior to appeal. (Slip Op., pp. 15-18).

Notably, signatories of the opinion included USPTO Deputy Director Sharon R. Barner and USPTO Director David J. Kappos.

Ex parte Givens

In a four-page informative opinion issued on August 6, 2009 but published in August 2010, the BPAI held that the Examiner erred in rejecting claims under § 102(e) by incorrectly applying the "broadest reasonable interpretation” standard. The Examiner rejected claims to a method and apparatus for reducing noise under § 102(e) over a prior art reference. The appellant argued that the reference did not disclose a "sub-band spectral subtractive routine," but the Examiner argued that the broadest reasonable interpretation of the claim term included any adaptive filter. The Board disagreed with the Examiner:

Although Appellant’s Specification does not specifically define the term "sub-band spectral subtractive routine,” this is a specific claim term for a specific type of filtering (Spec. ¶[0032]). Any interpretation that fails to give weight to "sub-band,” "spectral,” "subtractive,” and "routine” deprives the words in this claim term of their normal meaning. (Slip Op., p. 3, emphasis added).

The Board held that the reference did not teach a "sub-band spectral subtractive routine” and thus did not anticipate the claims at issue. (Slip Op., p. 3).

BPAI Precedential Opinions

USPTO Website for Board of Patent Appeals and Interferences

The Board of Patent Appeals and Interferences (BPAI) is an administrative law body of the United States Patent and Trademark Office (USPTO). The BPAI’s two main responsibilities are to review:

  1. Appeals from adverse decisions of patent examiners; and
  2. Patent interferences, to determine who is the first inventor when two applicants attempt to claim the same patentable invention.

Below are summaries of and links to recent BPAI precedential and informative opinions, as well as the USPTO’s websites posting BPAI decisions.

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