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More useful tidbits from the BPAI March 23, 2011

Posted by Brian Schar in General.

The fact that most BPAI final decisions are nonprecedential doesn’t mean that you can’t glean useful practice pointers from them.

Recently, the Examiner was reversed in Ex parte Hunt.    In a case involving stents, the Examiner had proposed to modify the Lentz stent (U.S. Pat. No. 5843166) with the struts of Jacobs (6387123)  in order to enable the stent of Lentz to expand radially. I can’t summarize the reasoning of the Board any better than the Board set forth itself, so here is the good part:

“The Examiner’s proposed modification (adding struts 14) does not match the reason provided for the proposed modification (enabling radial expansion) because the stent of Lentz already is capable of radial expansion. In other words, the reason is not supported by rational underpinning. Without a reason based on rational underpinning, the Examiner’s proposal to add the struts 14 of Jacobs to the stents of Lentz appears to be solely motivated by the desire to address the claim limitation requiring struts to define radial openings in a unitary stent structure. For example, the Examiner has not identified whether strut 14 of Jacobs would provide some additional radial expansion capabilities or benefits to the stent in Lentz. Thus, we agree with Appellant that the Examiner’s proposed modification appears to be solely based on impermissible hindsight.”

The take-away for patent prosecutors is that there is no basis in technical reasoning for the combination of two references when the Examiner’s proposed modification does not match the reason provided for the proposed modification.  The BPAI has handed patent practitioners a powerful new argument to combat poorly-thought-out 103 rejections.


1. Karen G. Hazzah - March 25, 2011

Brian, nice post. I’m always on the lookout for ways to fight obviousness rejections.

The Board seems to have found two flaws in the prima facie case. I’d characterize the first one as “no reason to add feature because primary reference already has benefit provided by feature.” But the second-to-last sentence seems to suggest another flaw: “feature added doesn’t actually produce benefit used as reason to combine.”

Would you agree? I haven’t read the case, so I’m just going by the Board’s synopsis that you quoted.

2. Brian Schar - March 28, 2011

Karen, that’s a possibility that I hadn’t considered. I had focused on the mismatch between the proposed modification and the reason for the proposed modification. However, I like your two-prong characterization of the holding. Both arguments would be excellent in combating a bad 103 rejection, in the right circumstances.

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