April 20, 2017

On April 14, 2017, the Patent Trial and Appeal Board of the United States Patent and Trademark Office ("PTAB") issued a decision confirming the non-obviousness of claims rejected by a Patent Examiner at the United States Patent and Trademark Office ("USPTO"). During years of prosecution, the Examiner maintained that the pending application's claims were obvious.  On appeal, Bob successfully argued that the Examiner's obviousness rejection relied on improper hindsight.


The PTAB was persuaded by Bob's focus on the Examiner's lack of a reason to combine the claimed elements, as well as his reliance on the inventor's declaration buttressing non-obviousness arguments. The PTAB ruled that "[t]he Examiner has not adequately explained why the skilled artisan's knowledge or inferences and creativity would have supported the obviousness determination based on the teachings of the applied references without an improper hindsight reconstruction." According to the USPTO's most recent statistics, less than 30% of appeals result in reversal. The PTAB's decision can be accessed here.


Bob is a founding partner of Vitale, Vickrey, Niro & Gasey LLP. He has over 31 years of experience in, among other things, prosecuting patents and in other proceedings before the USPTO and counseling clients on a variety of intellectual property matters.

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