December 7, 2020by Jacob Doughty

Ex parte Jud, is a 2007 decision of the Board of Patent Appeals and Interferences (BPAI) that is listed among the Patent Trial and Appeal Board’s (PTAB) informative decisions. Ex parte Jud, is indicated by the PTAB to be informative as to “Obviousness – 35 U.S.C. § 103… Person of ordinary skill in the art…evidence considered.”

According to the PTAB’s Standard Operating Procedure, “[i]nformative decisions set forth Board norms that should be followed in most cases, absent justification, although an informative decision is not binding authority on the Board.”

In Ex parte Jud, the BPAI considered a request for rehearing based on applicant’s assertion that the BPAI, in its original decision, did not properly consider the requirement that a determination of the level of ordinary skill in the art must be made to sustain an obviousness rejection.

The BPAI first noted that both 35 USC 103 and the Supreme Court’s decision in Graham v. John Deere Co., 383 U.S. 1 (1966), require a skill-level determination to ensure objectivity in the analysis of obviousness. However, neither the statute nor Graham requires any particular format for the determination. The BPAI posited that this flexibility is intentional.

The BPAI stated that evidence of the level of ordinary skill can be found in applicant’s disclosure, prior art references, and additional testimony, if necessary. The BPAI noted that evidence of the level of ordinary skill in applicant’s own disclosure tends to be indirect and must not be confused with applicant’s own contribution over the prior art. According to the BPAI, prior art references should be given great weight – although prior art references also generally give indirect evidence of the level of ordinary skill, such references are reliable because generally they are prepared without regard for their use in the skill-level determination (in contrast with direct testimony on the level of ordinary skill).

The BPAI noted that direct testimony about the level of ordinary skill could be probative if well-grounded in facts. However, the BPAI cautioned that, during examination, an examiner has little chance to challenge testimony. Further, the BPAI noted that statements of the education/experience level of a skilled artisan and statements that the level ordinary skill is high or low are typically of little probative value.

In making her obviousness rejection in this case, the examiner stated what she believed a skilled artisan would understand based on the references forming the basis of the rejection, without explicitly stating what she believed to be the level of ordinary skill. The BPAI stated that this was sufficient to put applicant on notice of what the examiner thought one of skill in the art would have known and why. The BPAI stated that, procedurally, the examiner’s skill-level findings can be faulted – at most – for failing to be explicitly labeled as such.

The BPAI noted particularly that applicant did not propose alternative findings on the level of ordinary skill and did not explain why the examiner’s determination (even if indirect) resulted in an incorrect obviousness determination. The BPAI concluded that it would not undo the original panel decision in the absence of some indication that reconsideration of the determination of the level of ordinary skill would make a difference in the ultimate outcome.

Ex parte Jud was decided by an expanded seven-judge panel. According to the PTAB’s Standard Operating Procedure, “[a]n expanded panel is not favored and ordinarily will not be used… [a]n expanded panel may be used, where appropriate, to secure and maintain uniformity of the Board’s decisions….”

Takeaway: Determining the level of ordinary skill is a critical part of obviousness analysis, as is clear from the language of 35 USC 103 and the Supreme Court’s articulation of the Graham factors. However, a purely procedural attack on an examiner’s failure to explicitly state the level of ordinary skill is not likely to be fruitful. The Jud decision leaves a path for challenging obviousness rejections based on the level of ordinary skill: (i) applicant should use facts from her own disclosure and the prior art (and possibly expert testimony based on such facts) to correctly define the level of ordinary skill, and (ii) applicant should provide an explanation of why, if viewed properly, the prior art would not have rendered her invention obvious. If an examiner has truly failed to view prior art in the manner that a skilled artisan would, a challenge based on the level of ordinary skill could be productive.

Judges: Fleming, Torczon, Kratz, Timm, Smith, Moore, Linck

Jacob Doughty

by Jacob Doughty

Jacob A. Doughty is a patent attorney and founding partner of Element IP. Jacob’s practice includes all areas of US patent law with an emphasis on patent prosecution and management, client counseling, opinion work, and due diligence in the chemical, pharmaceutical, and biotechnology sectors.