1. Board of Patents and Interference Reviews “Obviousness” Issues
March 16, 2012
Intellectual Property Client Alert
On March 7, 2012, in the matter of In re PepperBall Technologies, Inc. (Fed. Cir. 2012)
(per curiam), the Court of Appeals for the Federal Circuit, in a non-precedential opinion,
This Alert provides only general affirmed an obviousness rejection in a reexamination by the Board of Patents and
information and should not be Interference (BPAI, or “Board”). The case provides a glimpse as to how this court may
handle future Inter Partes Review proceedings under the America Invents Act’s
relied upon as legal advice. It
“substantial evidence” standard of review, which became effective September 16, 2011,
may be considered attorney and appears to apply to administrative patent revocation trials.
advertising under court and
bar rules in certain jurisdictions. PepperBall Technologies, Inc. appealed a decision from the Board affirming a United
States Patent and Trademark Office (USPTO) Examiner’s rejection of U.S. Patent Nos.
6,393,992 (filed April 9, 1999) and 7,149,960 (filed June 10, 2004) over the prior art. In
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reaching its decision, BPAI held that the prior art’s weight agent “was similar to
your Patton Boggs LLP PepperBall’s modifying the fill percentage [and] that it would have been obvious to
attorney or the authors listed modify the fill levels in a projectile within the recited range…”
below.
“Whether an invention would have been obvious is a legal question. In re Gartside, 203
F.3d 1305, 1316 (Fed. Cir. 2000). What a reference teaches and whether a person with
ordinary skill in the art would have been motivated to combine the teachings of separate
Scott A. Chambers, Ph.D. references are questions of fact. Id.; Para-Ordnance Mfg. v. SGS Imps. Int'l, 73 F.3d
schambers@pattonboggs.com
1085, 1088 (Fed. Cir. 1995).” This Court upheld the Board’s fact findings supported by
Christopher Adams substantial evidence, 5 U.S.C. § 706, and reviewed its legal conclusions without
cadams@pattonboggs.com deference, Gartside, 203 F.3d at 1315-16.
Dell Chism The Court noted that it might have reached a different conclusion from BPAI on the
dchism@pattonboggs.com
similarity of PepperBall’s different fill levels and Kotsiopoulous weighting agent, but that
it nevertheless “[did] find substantial evidence to support the Board’s finding of
obviousness” because “the claimed range of 60% to 95% is so broad in this context that
a person of ordinary skill in the art likely would have tried fill levels within this range
during routine experimentation.
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A conclusion of obviousness (or non-obviousness) is a question of law that is reviewed
de novo on appeal. Substantial deference is given, however, to the underlying factual
determinations made by BPAI. Those factual determinations will be upheld on appeal as
long as they are supported by "substantial evidence." Consequently, even if the Federal
Circuit might have concluded differently if reviewing the issue de novo, it is bound by the
deferential level of review for the factual questions that are decided by the Board.
Therefore, it is imperative to win on fact-based obviousness issues at trials before the
Board.
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