The examiner must explain why evidence submitted in rebuttal to a prima facie case is not commensurate-in-scope with the claimed invention *

USA - July 12 2012
In Ex parte Treacy et al. (Appeal 2011-008520; Application serial no. 11/931,434), the Board reversed an obviousness rejection not because the Examiner did not make out a good prima facie case but because unexpected results were presented during prosecution and the Examiner had failed to properly consider those results.

Co-authors: Yuki Onoe.

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Motivation to modify is a cornerstone of obviousness and absent that the board reverses obviousness rejection *

USA - April 13 2012
Ex parte Jones et al (Appeal 2010-011287, Serial no. 11/082,103) turned on obviousness of a claim directed to a method of creating a specialized alloy.

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Board reverses examiner who failed to provide evidence to support the obviousness rejection *

USA - March 23 2012
In Ex parte HENRY et al (Appeal 2011-006558; Application 10/558,753) the Board was presented the question of whether the Examiner adequately supported the rejection based on evidence. 

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Board affirms obviousness of overlapping ranges *

USA - March 2 2012
In Ex parte Bouzekri (Appeal 2010-005203), the BPAI affirmed the examiner’s finding of obviousness and reiterated some important points which often arise in patenting.

Co-authors: Derek A. Lightner, Ph.D..

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Board reverses examiner rejections because “substantially” is descriptive of a known and common technique in the art and the examiner failed to establish a factual basis in rendering an obviousness rejection *

USA - February 24 2012
In Ex parte Evans et al. (Appeal 2011-004119; Application serial no. 11/823,993), the Board reversed the Examiner’s rejection under 35 USC §112, second paragraph, and the 35 USC §103 rejection over the prior art.

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