A rejection for obviousness must include “some articulated reasoning with some rational underpinning to support the legal conclusion.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d 977,988 (Fed. Cir. 2006)). In Ex parte Awan, by reversing the Examiner’s obviousness rejection, the Patent Trial and Appeal Board (“Board”) reconfirmed the necessity of articulated reasoning with rational underpinning in an obviousness rejection.
On July 10, 2020, the Patent Trial and Appeal Board (“Board”) reversed the Examiner’s anticipation and obviousness rejections in Ex parte Loveless. The rejections were based on the Examiner’s construction of certain claim limitations as relating to an intended use, rather than being structural or functional limitations.
On May 13, 2020, the Patent Trial and Appeal Board (“Board”) issued a decision in Ex parte Ismagilov reversing an Examiner’s rejection of original claims for failing to comply with the written description requirement.
Section 2144.04(IV)(C) of the Manual of Patent Examining Procedure describes legal precedents relating to “Changes in [the] Sequence of Adding Ingredients” and cites to In re Burhans for the proposition that “the selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results.” In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946).
However, the Patent Trial and Appeal Board (“Board”) recently clarified that the Burhans rule only applies when evidence exists that the process steps in question are already known and used in the cited prior art.
