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The house loses all pushes October 24, 2014

Posted by Brian Schar in General, Patent prosecution, USPTO.

Ex parte Lucas is an interesting example of a situation that you don’t see that often – although it’s probably a situation that should arise a lot more often than it does.

Lucas claimed a “double throat pulsation dampener for a compressor.”  The PTAB opinion is short and does not go into detail about what, exactly, that is.  I used Google to find a web page from Flowguard USA that describes such a thing, in case you, the reader, are interested.  (I have no commercial or other relationship with Flowguard USA and did not even know they existed until I searched “pulsation dampeners.”)  Lucas claimed a dampener that, among other things, had airflow reversed compared to the prior art.

The Examiner rejected the claims under 102 and 103 on particularly flimsy grounds, and cited art; the PTAB found that the Examiner provided no evidence or technical reasoning for either rejection.

However, the PTAB also found that the Applicant provided no evidence or technical reasoning to demonstrate why the cited device may or may not work with the air flow reversed.

As a result, the PTAB held that “at most, the issue is in equipoise. As the Examiner bears the burden of establishing patentability, the Examiner’s rejection cannot be sustained on the record before us. See In re Warner, 379 F.2d 1011, 1016 (CCPA 1967)”

This PTAB decision is nonprecedential.  However, I think it would behoove appellants to essentially cut and paste the holding of Ex parte Lucas into their reply briefs, as a reminder in case of a push, the house loses.


1. John Darling - October 29, 2014


I read this decision when it came out on Jim Long’s site and found it quite interesting. (Jim quoted from the decision pretty much the same as you did.) Of course the PTAB gets is slightly wrong as applicants are not required to provide any evidence of a lack of reasonable expectation of success. Arguments that there is a lack of a reasonable expectation of success alone may suffice, and if they are more persuasive than the evidence and arguments presented by the examiner, the rejection must be reversed. The examiner maintains the burden to establish a reasonable expectation of success by a preponderance throughout the entire prosecution. In this case, the application should have (and maybe did) simply argue, “The examiner proposes that it would have been obvious to modify the primary reference to operate in a manner directly contrary or opposite to the manner it is disclosed to operate but presents no evidence that such a modification would have been reasonably successful.”


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