{"id":391,"date":"2016-01-22T13:01:40","date_gmt":"2016-01-22T18:01:40","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=391"},"modified":"2016-01-23T13:23:33","modified_gmt":"2016-01-23T18:23:33","slug":"but-why","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=391","title":{"rendered":"But, Why?"},"content":{"rendered":"

In Cutsforth, Inc. v. Motive Power, Inc.<\/em>, [2015-1316] the Federal Circuit vacated a PTAB decision that\u00a0claims 1\u201324 of U.S. Patent No. 7,990,018 were invalid for obviousness because the Board did not adequately describe its reasoning for finding the claims obvious.<\/p>\n

The Board’s final written decision\u00a0included petitioner’s obviousness arguments, the Board stated no independent reasons for why the claims were\u00a0obvious nor did it formally adopt petitioner’s\u00a0arguments as its own reasoning.\u00a0 The Federal Circuit said:<\/p>\n

\n

As we held in In re Sang-Su Lee, 277 F.3d 1338 (Fed. Cir. 2002), the Board must articulate its reasoning for making its decision. The Board must develop and explain the basis for its findings. This enables the reviewing court to conduct meaningful review of the proceedings. Broad, conclusory statements are not enough to satisfy the Board\u2019s obligation to provide reasoned explanation for its decision. In re Sang-Su Lee, 277 F.3d at 1343\u201345. In a case of obviousness, the Board must explain why a person of ordinary skill in the art would modify the prior art references to create the claimed invention. See In re Kotzab, 217 F.3d at 1371; In re Rouffet, 149 F.3d 1350, 1359 (Fed. Cir. 1998).<\/p>\n<\/blockquote>\n

 <\/p>\n

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The Federal Circuit found that the\u00a0Board made broad, conclusory statements in its analysis to determine that the claims of the \u2019018 patent are obvious. It said that the\u00a0majority of the Board\u2019s Final Written Decision was\u00a0spent summarizing the parties\u2019 arguments and offered only conclusory analysis of its own.\u00a0 This “leaves little explanation for why the Board found the claimed invention obvious.”<\/p>\n

Merely reciting petitioner\u2019s argument does not satisfy the Board\u2019s responsibility to explain its own reasoning. The decision must explain why a person of ordinary skill in the art would find it obvious. The Board gives no such explanation.\u00a0 The Federal Circuit concluded:<\/p>\n

When the Board determines that modifications and combinations of the prior art render a claimed invention obvious, the Board must fully explain why a person of ordinary skill in the art would find such changes obvious.<\/p><\/blockquote>\n

Although the decision is non-prudential, the Board will likely provide a better explanation for the reasons for its obviousness determinations — if only by explicitly adopting petitioner’s arguments.<\/p>\n","protected":false},"excerpt":{"rendered":"

In Cutsforth, Inc. v. Motive Power, Inc., [2015-1316] the Federal Circuit vacated a PTAB decision that\u00a0claims 1\u201324 of U.S. Patent No. 7,990,018 were invalid for obviousness because the Board did not adequately describe its reasoning for finding the claims obvious. … Continue reading →<\/span><\/a><\/p>\n","protected":false},"author":2,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[12,1],"tags":[],"class_list":["post-391","post","type-post","status-publish","format-standard","hentry","category-obviousness","category-uncategorized"],"post_mailing_queue_ids":[],"_links":{"self":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/391","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/users\/2"}],"replies":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=391"}],"version-history":[{"count":2,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/391\/revisions"}],"predecessor-version":[{"id":393,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/391\/revisions\/393"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=391"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=391"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=391"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}