Ric Flair, the greatest professional wrestler of all time, said “If you want to be the best, you have to beat the best.” Without knowing it, Ric Flair expressed exactly what it takes to win at the Patent Trial and Appeal Board (PTAB).
As a boy, I remember watching Ric Flair froth at the mouth, running around like a mad man and beating his opponents. It was a stunning display of energy, machismo and mayhem, all rolled into one. At some point, he would settle in front of a camera and going on long, screaming diatribes about who was the best, what he was going to do to his opponents and who he was going to demolish next week. It was wildly entertaining, especially for a skinny young lad growing up in Florida in the 80s.
Ric Flair’s quote about the importance of beating the best applies directly to appealing Examiner decisions to the PTAB. Statistically, a Patent Examiner’s best argument is a 35 U.S.C 103 obviousness argument. By that, I mean it is the argument that is least likely to be reversed by the PTAB. This is best illustrated by the Ex parte Chandrachood (Appeal No. 2012-007987), which was handed down today.
The Ex parte Chandrachood decision involved an appeal of a 35 U.S.C 103 obviousness rejection of a method claim involving a photolithography process. At issue was whether it was obvious that two particular gases were combined – an oxygen containing gas and CHF3. The Examiner claimed it was obvious because he found references disclosing the use of an oxygen containing gas and CHF3 to perform the process of the claimed invention. The Applicant argued that it was not obvious because one of the references disclosed that the use of CHF3 would result a poor quality result.
Ultimately, the PTAB decided that “It is well settled that it is a matter of obviousness for one of ordinary skill in the art to combine two or more materials when each is taught by the prior art to be useful for the same purpose. In re Kerkhoven, 626 F.2d 846, 850 (CCPA 1980).” No surprise there. But the most telling part of the decision was when the PTAB stated: “Appellants base no argument upon objective evidence of nonobviousness, such as unexpected results.” This is exactly why the appeal was lost, and where Ric Flair comes in.
Key to responding to a 35