Ex Parte Quist:  Evidence and Legal Conclusions of Obviousness Must Be Reviewed Anew by the Board

Author: Michelle Pacholec Ph.D.
Editor:  Adriana L. Burgy

PTAB Decision: Ex parte Quist, Appeal No. 2008-001183 (June 2, 2010)

BackgroundFollowing a Board decision affirming an Examiner’s 35 U.S.C. § 103 rejection, a Request for Rehearing was granted before an expanded panel. The technology at issue involved a process for manufacturing decorative boards. Appellants proffered numerous new arguments in support of patentability which the panel dismissed as untimely. In considering the appellants declaration that no current manufacturer employs a process which forms the joints of the boards before the coatings are applied and that the claimed process is thus unconventional, the panel concluded that this evidence of secondary considerations lacked sufficient nexus and thus was not entitled to substantial weight in the issue of non-obviousness.

Appellants also argued that that Board did not properly evaluate the evidence supporting the prima facie case with any rebuttal argument and/or evidence in reaching its decision to affirm the obviousness rejection. The expanded panel began its analysis of this issue by relying on the precedent of its decision in Frye which stated that the Board must review the issues on appeal based upon the totality of the record. Ex Parte Frye, Appeal 2009-006013 (BPAI Feb. 26, 2010) (Precedential). In addition to reviewing all the relevant evidence for and against obviousness, the Board must review the conclusion of obviousness anew to determine if the preponderance of the evidence supports that conclusion.

Issue: Did the Board apply the proper legal standard in its review of the obviousness rejection?

Outcome: In reviewing a Board decision on a Request for Rehearing, an expanded panel determined that the Board did not err in either its legal conclusion of obviousness or the standard of review it employed to reach that conclusion. Specifically, the panel determined that the Board employed the correct standard of review by considering the totality of the record and reviewing the legal conclusions of obviousness anew in order to reweigh whether the preponderance of the evidence supported the Examiner’s conclusion.

Prosecution Takeaway: The Board further clarified its standard of review of obviousness rejections, namely that the contested findings must be reviewed de novo in light of all the evidence and legal conclusions on that issue.


DISCLAIMER: Although we wish to hear from you, information exchanged in this blog cannot and does not create an attorney-client relationship. Please do not post any information that you consider to be personal or confidential. If you wish for Finnegan, Henderson, Farabow, Garrett & Dunner, LLP to consider representing you, in order to establish an attorney-client relationship you must first enter a written representation agreement with Finnegan. Contact us for additional information. One of our lawyers will be happy to discuss the possibility of representation with you. Additional disclaimer information.

Tagged , , , , , ,

Leave a Reply

Fill in your details below or click an icon to log in:

WordPress.com Logo

You are commenting using your WordPress.com account. Log Out / Change )

Twitter picture

You are commenting using your Twitter account. Log Out / Change )

Facebook photo

You are commenting using your Facebook account. Log Out / Change )

Google+ photo

You are commenting using your Google+ account. Log Out / Change )

Connecting to %s

%d bloggers like this: