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Appeal Practice

As illustrated in the chart above, the ZPS Group has been very successful in utilizing the USPTO appeal process during the examination of a patent application. The USPTO appeal process may be initiated to cause a review of the application before a panel of administrative patent justices if an examiner persists in the rejection of any of the claims in an application. The process may be used to overturn incorrect or unreasonable assertions set forth by examiners.

A few examples of successful appeal decisions are summarized below:

  • USP 7,421,650: In this case, the Examiner rejected claims as being obvious over a combination of prior art references under 35 USC 103(a). The Examiner was reversed because the Examiner failed to allege that the addition of references to a primary reference cured deficiencies of the primary reference. Accordingly, the Examiner had failed to establish a prima facie case of obviousness.
  • USP 7,288,740: The Examiner rejected all claims as being obvious over a combination of prior art references under 35 USC 103(a). The rejections were reversed because it was demonstrated that the Examiner had relied upon impermissible hindsight in piecing together the prior art to arrive at Applicant’s invention.
  • USP 7,581,885: BPAI reversed the Examiner’s 35 USC 102 rejection based on our argument that the Examiner was using a term definition that was not consistent with that defined in the Specification. The Examiner’s rejections under 35 USC 103(a) were also reversed based on our argument that the Examiner used had impermissible hindsight and mere conclusory statements to support the obviousness rejection.
  • US 2006/0151446: In this case, the Examiner rejected all the Applicant’s claims as being anticipated by the prior art under 35 USC 102(b). The rejections were reversed because it was demonstrated that the function claimed was not an inherent characteristic of the prior art.

* The Appeal Success Rate represents the percentage of prior cases in which, after initiating the USPTO appeal process, prosecution was reopened, the case was allowed, or the BPAI reversed the Examiner’s rejection in whole or in part. The prior results referred to in this website do not guarantee or suggest a similar outcome in any future case.

** Results current as of January 2012 and include 135 cases.