Over the past couple of years I have really taken an interest in patent analytics, mainly using PatentAdvisor from LexisNexis.
I figured out that if you search by different codes using the file wrapper search that you get guidance about how effective arguments are on Ex Parte Appeal within the USPTO at the PTAB.
I used File Wrapper Search to word search PTAB decisions using the different possible outcome codes – Examiner Reversed (APDR), Examiner Affirmed (APDA), Examiner Affirmed in Part (APDP).
For my first search, I searched to see how the non-analogous art argument was treated by the PTAB. Arguing that a reference is non-analogous art and not available for use in an obviousness rejection is difficult argument to make. You have to show that (1) the prior art is not in the field of endeavor of the application and (2) the prior art is not reasonably pertinent to the problem faced by the inventor. However, both of these issues are often interpreted pretty broadly. So what does the data say?
As shown below, the data says the non-analogous art argument is one that you only want to use selectively.
In 15 plus years of data from PatentAdvisor, ex parte appeal Board decisions that mentioned this argument results in wins (Allowance, OA or FOA) 1,342 times, and losses (RCE or Abandonment) 3,815 times. That amounts to a win only 26% of the time. The allowance rate for these cases is a very low 35.8%.
Based on the data, you generally want to deemphasize this argument if you are using in an Appeal Brief.
A lesser used argument is that “[t]he mere fact that the prior art could be so modified would not have made the modification obvious unless the prior art suggested the desirability of the modification.” In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984). While this an older case that is pre-KSR, it is often cited by the PTAB in Board Decisions.
It is my experience if you are making the non-analogous art argument, it is because you or your client do not believe that one of skill in the art at the effective filing date would have combined the references because they are so different. So, why not reframe it in a way that puts the burden on the Examiner to provide a further explanation that is more likely to be successful on appeal?
It is not very difficult for the examiner to set forth a showing that prior art is reasonably pertinent to the problem faced by the inventor, usually by framing the problem very broadly. It is more difficult for the examiner to establish that the prior art suggested the desirability of the modification.
Usually when you are arguing about non-analogous prior art, it is because the examiner is combining a reference in the field of the invention with a reference in a different field. If prior art is arguably non-analogous as not being in the field of endeavor, it is extremely likely that it does not suggest the desirability of modifying art in another field (i.e., the field of the invention at issue).
Patent analytics related to the use of this argument illustrate that it has a much better track record of success with the PTAB.
In 15 plus years of data from PatentAdvisor, ex parte appeal Board decisions that mentioned this arguments results in wins (Allowance, OA or FOA) 182 times, and losses (RCE or Abandonment) only 21 times. That amounts to a win a whopping 89.7% of the time. The allowance rate for these cases is a very high 87.6%.
In summary, if you have had limited success with an argument on appeal in the past, try to consider alternative arguments that might be more successful. If you are not sure which one is more likely to be successful, take a look at what the analytics say.
And make sure to strongly emphasize analytically friendly arguments in a way that the PTAB has to address them. On ex parte appeal, the PTAB does not address every argument, so if an argument is supplemental, it may get ignored and not discussed in a decision. Avoid this by making the argument central to your appeal.
Additional notes – as noted above, non-analogous art arguments usually involve at least two references – one or more references that are in the field of endeavor, and a reference that is outside of the field of endeavor. Make sure if you are arguing that a reference is non-analogous prior art, you are addressing the problem solved by the invention, and not the problem solved by the prior art reference that is in the field of endeavor. PTAB judges have said this is a common mistake made in arguing a prior art reference is non-analogous.
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