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A Timely Reminder – The Importance of Winning at the Board

By Charles Gorenstein

Recently the United States Court of Appeals for the Federal Circuit issued its decision In re Pepperball Technologies, Inc., (Appeal No. 2011-1137, March 7, 2012). Except, perhaps, for the Appellant in this Ex Parte matter, the decision would not appear to be momentous in any sense.  Indeed, the CAFC identified the decision as nonprecedential.  Nevertheless, the matter addressed in this decision, and the observations of the court, serve as a timely reminder that, in the coming era when post-grant review of U.S. patents can be expected to take on increasing importance, one must not overlook or underestimate the importance of prevailing with regard to many issues in the USPTO before the Patent Trial and Appeal Board.

The issues on appeal in Pepperball Technologies related to the obviousness of a claimed invention.  The CAFC decision reveals that the USPTO examiner and the Board had applied certain prior art, evaluated certain evidence of obviousness and of non-obviousness, and maintained rejections under 35 U.S.C. §103.  The rejections of the claims were affirmed, and the applicant appealed.

In its decision, the court addressed the evidence applied by the Board in rejecting the claims, commenting upon the applicable standard of review.  In what amounts, perhaps, to a rote statement of the law, the court said:

“Whether an invention would have been obvious is a legal question.  What a reference teaches and whether a person with ordinary skill in the art would have been motivated to combine the teachings of separate references are questions of fact.  This court upholds the Board’s fact findings supported by substantial evidence, 5 U.S.C. §706, and reviews legal conclusions without deference.” Slip Opinion at 5-6, citations omitted

In upholding the rejection of the claims, the court observed, “First, there is substantial evidence to support the Board’s fact findings on the teachings of the prior art.” Slip Opinion at 6.  “Next, there is substantial evidence supporting the Board’s finding that a person of ordinary skill in the art would have been motivated” to make the modifications necessary to arrive at the claimed invention.  Slip Opinion at 7.

Noting that “this court in the first instance might not have reached the same conclusion as the Board on the” factual questions underlying the determination of obviousness, the CAFC nevertheless upheld the rejection of the claims on the basis that “this court does find substantial evidence to support the Board’s finding of obviousness.”  Slip Opinion at 9.

The Pepperball Technologies decision is a reminder worth noting.  So many matters presented for decision to the Patent Trial and Appeal Board, in post grant proceedings and otherwise, turn on the facts presented and the decision-maker’s evaluation of those facts.  Most often, if not always, the facts admit of multiple and varying interpretations, leading to differing conclusions.  Unless a factual determination at the Board is somewhat “off the wall” and not reasonably supported by the evidence of record, mere disagreement with the outcome will not likely lead to a successful reversal on appeal.

Every matter presented to the Board at the U.S Patent and Trademark Office, thus, should be presented with a view that it is the last opportunity to obtain a desired result.  Absent legal error by the Board, and assuming that there is reasonable, substantial factual support for whatever analysis is presented by the Board, one should not harbor an expectation that the Court of Appeals will impose an alternate conclusion in the matter and/or reverse the decision.