Mcle Self-study Article

• Publication year: 2019
• Author: Peter A. Hecker

MCLE Self-Study Article

Peter A. Hecker

Knobbe Martens

Nathanael R. Luman

Knobbe Martens

UNTANGLING THE BURDEN OF PERSUASION IN OBVIOUSNESS REJECTIONS DURING PATENT EXAMINATION AT THE USPTO

(See end of this article for information on receiving 1.0 hour MCLE self-study credit.)

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Patent prosecution is often a negotiation between the patent examiner and the applicant.¹ The negotiation process is governed by procedures set up by the Patent Office and courts. For example, Section 2142 of the Manual of Patent Examining Procedure (M.P.E.P.) describes the process by which an obviousness rejection is negotiated. This section states, "[t]he examiner bears the initial burden of factually supporting any prima facie conclusion of obviousness."² However, if "the examiner does produce a prima facie case, the burden of coming forward with evidence or arguments shifts to the applicant who may submit additional evidence of nonobviousness."³ This paper explores the history and development of this burden-shifting framework, and seeks to clarify the requirements placed on examiners in making the prima facie obviousness rejections, and how applicant can move past the initial prima facie case.

EARLY DEVELOPMENTS IN OBVIOUSNESS REJECTION AND BURDEN SHIFTING

In re Henze⁴ represents a good starting point for discussing the development of burden shifting during examination at the USPTO. This case was decided in 1950, when patents were required to be inventive, and before the Patent Act of 1952 codified the nonobviousness condition for patentability in 35 U.S.C. § 103.⁵ The inventiveness framework from Henze is similar to what is used today, but has some differences that will be discussed.

Henze involved a chemical case where the chemical structure in a patent application was similar to a prior art molecule.⁶ In this context, the examiner required the applicant to prove that the molecule in the application had "unobvious or unexpected beneficial properties not actually possessed by the prior art [molecule]."⁷ The Board of Patent Appeals and the Court of Customs and Patent Appeals both affirmed.⁸ Thus, after the examiner identified prior art disclosing a similar prior art molecule, the burden shifted to the applicant to prove unobvious or unexpected properties.⁹

In 1960, In re Mills limited the Henze decision by stating that it was only applicable to cases analyzing obviousness of very similar molecules.¹⁰ In 1971, the Henze decision was limited further by In re Stemniski, to only apply to chemical cases where "the prior art does not disclose or suggest any usefulness for the compounds it describes and the applicant does describe a usefulness.. .for the closely related but novel compounds he discloses."¹¹ Thus, the early Henze practice of placing the burden on applicants to show that their molecule had unobvious or unexpected properties, appeared to have eroded away.

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PRESENT FRAMEWORK FOR BURDEN-SHIFTING AND OBVIOUSNESS REJECTIONS

The current prima facie framework is described in, for example, the 1984 In re Piasecki decision, where the Federal Circuit explained that the Patent Office is required to "produce the factual basis for its rejection," and "[a]fter a prima facie case of obviousness has been established, the burden of going forward [with a rebuttal] shifts to the applicant."¹² Piasecki goes on, "[i]f rebuttal evidence of adequate weight is produced, the holding of prima facie obviousness, being but a legal inference from previously uncontradicted evidence, is dissipated. Regardless of whether the prima facie case could have been characterized as strong or weak, the examiner must consider all of the evidence anew"¹³ Thus, after an applicant satisfies his or her burden of producing adequate rebuttal evidence, "the decision-maker must start over"¹⁴ and consider all the evidence anew.

The circumstances in Piaseki are an example of improper burden shifting: the court found that the Board of Patent Appeals and Interferences failed to start over and consider all evidence as a whole, and instead had "viewed each piece of rebuttal evidence solely 'on its knockdown ability'" compared to the prima facie case.¹⁵ The court explained that "[u]nder the Board's approach the prima facie case [incorrectly] took on a life of its own, such that each fact presented in rebuttal ...was evaluated against the conclusion itself rather than against the facts on which the conclusion was based."¹⁶

On the other hand, the burden shifting in the 1992 case, In re Oetiker, was deemed proper by the court where an examiner had issued a final rejection stating why he had not been persuaded by an applicant's argument.¹⁷ On appeal, the Board found no irregularity in the examiner's rejections because the examiner made an initial prima facie case, and the final rejection was not improper because the ultimate determination of patentability was made on the entire record.¹⁸

ADEQUATE REBUTTAL EVIDENCE

Once an examiner has made an initial prima facie case, what amount of...