Author:
Derek Lightner, Ph.D.
April 27, 2026
In the recent appeal of U.S. Appl. No. 18/018,555 (Appeal 2026-000028), an examiner’s obviousness position was reversed by the Patent Trial and Appeal Board (PTAB) based on the examiner’s failure to set forth a factual basis for a modification of a primary reference to reflect a claim feature directed to dimensional characteristics of a claimed article.<... Read more
Author:
Derek Lightner, Ph.D.
December 19, 2025
An obviousness rejection was recently reversed by the Patent Trial and Appeal Board (PTAB) by the panel of Administrative Patent Judges (APJs) authored by Debra L. Dennett, and further including Jeffrey W. Abraham and Avelyn M. Ross in U.S. Appl. No. 17/395,422 (the 422 Application). The PTAB reversed the obviousness finding of examiner Justin Fischer, supported by Supervisory Patent Examiner (SPE) Katelyn W. Smith, and Quality Assurance Specialist (TQAS) Colleen P. Dunn, on the alleged obviousness of the claims over a combination of three to five references, three of which were the applicant-appellant’s own prior art. The main claim on appeal recited<... Read more
Author:
Derek Lightner, Ph.D.
September 23, 2025
The Patent Trial and Appeal Board recently reversed an obviousness finding of (at least initially non-signatory) Examiner Audrey Buttice, supported by Supervisory Patent Examienr (SPE) Joanne Hama and Office of Patent Quality Assurance (OPQA) official, Jeffrey Siew, for a method of treating a drug-resistant cancer type with an antibody-drug conjugate (ADC) in Ex part Yonesaka, et al., Appl. No. 16/485,777 (Appeal 2024-003040; Technology Center 1600).<... Read more
Author:
Derek Lightner, Ph.D.
April 24, 2025
In the appeal of USSN 17/963,407 (Appeal 2025-001881) to the Patent Trial and Appeal Board (PTAB), a finding of obviousness by Primary Examiner Drew Becker, supported by Supervisory Patent Examiner (SPE) Erik Kashnikow and Review Quality Assurance Specialist (RQAS) Jennifer McNeil from the Office of Patent Quality Assurance (OPQA), was reversed by the PTAB for the improper reliance on hindsight. The decision can be found at https://patentcenter.uspto.gov/applications/17963407/ifw/docs?application=.<... Read more
Author:
Derek Lightner, Ph.D.
December 30, 2024
In the matter Ex parte MICHAEL J. WEST, in Technology Center 1700 (USSN 16/078,845; Appeal 2023-003903) rejections for an alleged lack of patentable subject matter, a lack of enablement, indefiniteness, and obviousness by a primary examiner, Lore Jarrett, were reversed by a panel of the Patent Trial and Appeal Board (PTAB) made up of Jeffrey R. Snay, Whitney Wilson, and Jane E. Inglese. The first appealed claim recited (with the underlined portions added after the first rejection): <... Read more
Author:
Derek Lightner, Ph.D.
October 7, 2024
On September 25, 2024, in Ex parte Sim, the Patent Trial and Appeal Board (PTAB) overturned the obviousness position of primary examiner, John Chu, supported by Supervisory Patent Examiners Mark Huff and Christine Tierney, in US Appl. No. 16/176,245 (Appeal 2023-003254, Technology Center 1700). Ex parte Sim involved a disagreement on the meaning of recitation regarding a copolymer structure.<... Read more
Author:
Derek Lightner, Ph.D.
June 11, 2024
In Ex parte Freeman (USSN 16/270,259; TC 1600; Appeal 2023-000512, the underlying application being referred to herein as the “Freeman application”), a finding of obviousness and obviousness-type double patenting (ODP) was reversed on May 24, 2024. Freeman’s application was examined by Devang Thakor initially, but the case was taken over by another primary examiner, Nicole Babson, whose position was supported by Supervisor Patent Examiners, David Blanchard and Bethany Barham.<... Read more
Author:
Derek Lightner, Ph.D.
February 15, 2024
The Patent Trial and Appeal Board (PTAB) recently reversed the novelty, obviousness, and obviousness-type double patenting (ODP) rejections of the examining corps in a Track One case (USSN 17/342,945; Appeal 2023-004168; TC 1600). Led by Administrative Patent Judge (APJ) Richard Lebovitz, the PTAB panel further including APJs John E. Scheider and Eric B. Grimes reversed the rejections of Examiner Jake M. Vu, whose position was supported by Supervisory Patent Examiner (SPE) Michael G. Hartley, quality control SPE Scarlett Goon, and SPE Frederick F. Krass.<... Read more
Author:
Derek Lightner, Ph.D.
October 10, 2023
On October 3, 2023, the Patent Trial and Appeal Board (PTAB) reversed an examiner’s finding of obviousness based (i) on mischaracterizing a claim feature as an intended use, the feature instead being considered by the PTAB as a characteristic of the composition of the claimed article, and (ii) extrapolating a trend in the cited art without explicit support for the extrapolation. The appeal (No. 2022-003575, USSN 13/375,167, Technology Center 1700) of Ex parte YOSHIMITSU ODA and MASAAKI ISHIO was centered on an independent claim, reciting:<... Read more
Author:
Derek Lightner, Ph.D.
August 28, 2023
In the matter of Ex parte HAN LIU, et al., the Patent Trial and Appeal Board (PTAB) determined on August 17, 2023, that an examiner (Sarah al-Awadi, supported by Supervisory Patent Examiners, David J. Blanchard and Sue X. Liu) failed to establish the prima facie obviousness of claims by failing to establish a clear motivation and a reasonable expectation of success in maintaining the function of a copolymer-Ag system, inter alia, in modifying a particular monomer content to overlap with the claims against the disclosure of the primary references. The independent claims in question recited (emphasis added):<... Read more