Boards of Appeal

If the patent appHcation is allowed based on an appHcant s response to the second office action, examination is ended. However, if the patent examiner advises the patent appHcant that the rejections will be maintained and the appHcant views these rejections as insurmountable, the patent appHcant may choose to abandon the patent appHcation. If the patent examiner maintains the earHer posed rejections, and the patent appHcant disagrees with the examiner, the patent appHcant may appeal the examiner s decision to the Board of Patent Appeals and Interferences, which is comprised of adininistrative judges. The appeal process involves the noticing and briefing of the appeal, and oral argument before and a subsequent decision from the Board of Appeals and Interferences (step 10). Usually the oral argument is presented to, and subsequent decision is received from, a panel of three administrative judges selected from the full complement of the Board. If the Board panel decides in the appHcant s favor (step 11), the patent appHcation will be passed to issuance (step 12). If the Board decides in the examiner s favor, the patent appHcant will have to consider whether to refile the appHcation and request another round of examination or seek court review. 

The mailing of a Notice of Allowance, whether resulting from the decision of the examiner or from a decision by the Board of Appeals, effectively ends the examination of the appHcation. In this instance, the appHcant then is required to pay an issue fee. Once the issue fee has been paid, the patent will issue within months. 

The initial decision—often called the VICOM decision after the applicant for the patent—was followed by further decisions of the Boards of Appeal that opened the way for the patenting of inventions implemented by means of computers. The reasoning behind these decisions has often been adopted by courts in other countries (not only in Europe, but elsewhere). The German Supreme Court, for example, has explicitly stated that the application of computers in chemistry or biology is acceptable patentable subject matter [14]. 

In a further case relating to the structure of data stored on or in a record carrier used in a picture retrieval system, the European Patent Office s Boards of Appeal have considered the issue of patentability of a data structure [22]. Initially the patent application had been rejected on the grounds that the presentation of data was excluded from patentability (see above). However, in accepting an appeal filed by the patent applicant, the Board pointed out that there was a difference between the functional data, which controlled the technical working of the system, and the cognitive information, which represented the picture that could be retrieved and displayed. The Board stated that functional data relates to data that control the technical operation of the system. These data do not relate to the presentation of information, and thus data structures containing this information should be patentable. On the other hand, the cognitive information relates to the picture that could be retrieved and displayed. 

MPEP 2111.03, citing Ex Parte Davis, 80 USPQ 448, 450 (Board of Appeals, 1948). 

The applicant appealed the rejected claims to the USPTO Board of Appeals, which affirmed the examiner s rejections ... 

What if the prior art would motivate one of ordinary skill in the art to make the applicant s claimed invention but for a different reason than that relied on by the applicant Should it matter The following example, taken from a CAFC opinion decided this exact question.31 The named petitioner, Dillon, was an assignor of the invention to Union Oil Company, whose application for patent was rejected in the USPTO. After unsuccessfully appealing to the USPTO Board of Appeals, the petitioner appealed to the CAFC and the rejection of the patentability of the claims was affirmed. The subject matter of the relevant claims was directed to compositions containing /c/ra-orthoesters in hydrocarbon fuels and methods of reducing particulate emissions using those fefra-orthoesters in hydrocarbon fuel. To clarify the subject... 

To see how the specific unpredictability of the art can argue in favor of nonobviousness, consider a case heard before the USPTO Board of Appeals that dealt with this issue. Ex parte Blattner concerns a set of claims that were rejected by an examiner at the USPTO.40 The rejected claims were subsequently appealed to the Board. The claimed subject matter in dispute concerned compound claims and methods directed to a set of azatetracyclic compounds for which the abbreviated claim 17, shown in Figure 8.10, was considered representative. Additional claims were directed to various structural subembodiments and pharmaceutical compositions containing the compounds of the invention as well as particular methods of use of the compounds including the treatment of agitation in a mammal. 

Let s quickly juxtapose this result with an enantiomer case having a different outcome. In re Adamson resulted from an appeal to the CCPA of denial of patentability by the USPTO Board of Appeals, which rejected claims 1-11 of the applicant s application directed to compounds having spasmolytic activity and processes for making same.75 The stated reason for the rejection is that the compounds were obvious in view of the prior art disclosure of the racemic mixture. Claim 1, which was deemed by the court to be a typical claim of the invention, is reproduced in Figure 8.19 together with the structures of the claimed compounds. 

The Enlarged Board of Appeal of the European Patent Office made the following comments when questioned about a recent case involving transgenic plants (Novartis G 0001/98), in relation to Article 53(a) of the European Patent Convention (EPC), which establishes that inventions that are contrary to public morality and customs are not patentable ... 

Flowever, the opinion of the Technical Board of Appeal was that the prior art cited by the opponents did not compromise the invention s novelty, observing that ... 

Flence, according to the Technical Board of Appeal, DNA or genome libraries of an organism do not anticipate the novelty of the DNA sequences contained in and isolated there from. 

Thus, in the year 1950, an inventor named Tolkmith (IS) presented a patent application claiming a certain methane phosphonic chloride. The only utility stated for the compound was that it was of value as an intermediate for the preparation of more complex phosphorus derivatives and as a constituent of a parasiticide. The Patent Office Board of Appeals in its decision, held that the applicant s showing of utility did not comply with Section 112 of the patent statutes requiring that the manner and process of making and using the invention be described in such exact terms as to enable one skilled in the art to make and use the same. The board went on to say ... 

The novelty of a new method can be either in the material being acted on or in the action taken. As expressed by the Board of Appeals (7) ... 

A next step is that of the Board of Appeals in Ex parte Zbornik and Peterson (61), in which Claim 25 under consideration reads ... 

Sometimes, an obvious method can be patented because the resulting product has a new use. In Sweden, a patent on DDT was first refused because the applicant claimed a method of producing certain novel esters of 2,4-dichlorophenoxyacetic acids. The Board of Appeals of the... 

On 27 May 1997, the Boards of Appeal of the European Patent office set aside the 1992 opposition to the Ajinomoto patent (European Patent Office 1997), and a New European Patent Specification was issued (Ajinomoto 1998). 

Concerning enantiomers, the EPO s Technical Board of Appeal confirmed that the disclosure of a racemate did not destroy the novelty of the enantiomers, even though they would be understood as being present in the racemate (unseparated form). According the EPO s decision, the enantiomers had not been individualised in the prior... 

Since the criterion for an inventive step is expressed in a negative manner, no positive virtues are required in order to satisfy Article 56. In other words, there is no requirement for a technical advance. However a technical advance may be useful in arguing for the existence of an inventive step. As noted by Dr. R. Singer (Chairman of the Legal Board of Appeal of the European Patent Office) ... 

The EPO s Technical Board of Appeal has held that if the prior art very strongly and clearly directs the skilled person in a particular direction, there is no inventive step involved in following that direction, irrespective of the results. This is known as the one-way street situation and has led to considerable discussion amongst commentators. Obvious to try is not a standard for denying the existence of an inventive step. In accordance with recent practice in national Courts in Europe and in the United States, the EPO is reluctant to maintain an obvious to try objection in the face of unexpected results. 

With regard to the second therapeutic use, as noted above, the EPO s Enlarged Board of Appeal approved a wording such as The use of a substance X for the mann-facture of a medicine for therapeutic application. ... 

Decision of the Xechnical Board of Appeal 3.3.1. X381/87. Official Journal of the European Patent Office. 10 November 1988, 5(90), 213-223. 

---