This article looks at appealing an obviousness rejection. It should not be a surprise that there are obstinate patent examiners. For whatever reason, they can be determined to not allow your patent application. Frequently, this situation can be experienced when an examiner rejects your application based on alleged obviousness (a 103 rejection). An assertion of obviousness can be based on subjective factors. See my article Overcoming an Obvious Rejection. You might also want to review my prior articles Section 103 Obviousness Rejections and 103 Obviousness Rejections II.
If you acquire a sense that the examiner has dug in his/her heels and it appears unlikely that you will be able to dissuade the examiner, you should consider filing an appeal to the Patent Trial and Appeals Board (“PTAB”). It will be useful to have conducted an interview with the examiner. The attempt to exchange views with the examiner in a telephone interview can provide real insight whether the examiner is obstinate and will not likely be dissuaded. Also you must make a realistic evaluation of your arguments against obviousness. See my prior article on Appealing the Examiner’s Rejection. Appealing an obviousness rejection is a real option.
A recent and successful appeal to the PTAB illustrates an examiner’s unjustified rejection. Ex Parte Allen
In Ex parte Allen, the invention in question was placing a pliant covering or sleeve to a cable surface wherein the covered cable could more easily be pulled through conduit. The examiner found a reference Conti (US patent 5,027,864) that taught pulling cable through conduit. However the reference lacked the covering with pliant material. However the examiner found a second reference, Holland (published application 2002/0170728), that taught attaching a pliant material to cable using an adhesive. The examiner concluded that it would have been obvious to combine the Conti reference with Holland to achieve a cable covered with pliant material in order to facilitate pulling cable through conduit and thereby overcoming friction. On its face, this looks like a text book case of obviousness.
Examination of the Conti reference, however, reveals that Conti provided for a lubricant to be continuously applied to the cable surface while pulling the cable through conduit. Thus the Conti invention solved the friction problem. A person skilled in the art, reading Conti, would not be prompted to use a covering of pliant material to overcome friction. Conti does not suggest that there would be a friction problem, therefore the reader (person skilled in the art) would not be motivated by Conti to search for a solution for friction. Appealing an obviousness rejection was the right move.
Further, the PTAB decision suggests the examiner is merely speculating that a problem of friction would exist under the lubricated Conti disclosure. The Board found no “rationale underpinning” for the examiner’s assertion. The Board notes that the examiner had the burden to justify obviousness of the combined Conti and Holland references. The examiner failed to meet this burden and the rejection was overturned (thus clearing the way for the allowance of the claim).
The text of the disputed claim is set forth below:
5. A method of introducing a cable into a longitudinally
extending conduit comprising the steps of attaching a pliant
material to the cable by using an adhesive, and thereafter
introducing the cable with the pliant material having less friction
than the cable attached thereto into the conduit.
This PTAB appeal shows the advantage of using the appeal process to overcome the examiner’s rejection (made without rationale underpinning) of the Applicant’s claim and patent application. Recall that appealing an obviousness rejection can be a valuable and cost effective tool.
Although initiating an appeal of your patent application can sound like elevating the cost and effort of pursuing a patent application, the USPTO fee structure makes filing an appeal less expensive that continued pursuit through a recalcitrant examiner. Although there are added formalities for filing a proper appeal, an experienced patent attorney should be able to cost effectively prepare the necessary documents. The duration of the appeal process should not be greater than the time expended in multiple “back & forth” exchanges with the examiner
© David McEwing 2020