PTAB Finds Reasoning for 103 Rejection Insufficient in Ex Parte Appeal

Citing KSR Inti Co. v. Teleflex Inc, the PTAB in Ex Parte Mattisson (Appeal No. 2016-004484, April 14, 2017) agreed with the ex parte Appellants and reversed the Examiner’s rejection based on insufficient rationale to support an obviousness rejection. Specifically, the PTAB held that the Examiner’s reasoning that “a person of ordinary skill would not be discouraged from the combination was insufficient.

The patent application is related to the field of radio communications, and specifically, was drawn toward a passive mixer for minimizing signal distortion. The independent claim was rejected as being obvious over the combination of two references. The Examiner argued that the primary reference teaches several elements of the independent claim, but admitted that the primary reference fails to teach a “cancellation component” and a “cancellation signal.” The Examiner relies on the teaching of a secondary reference for such a teaching.

The Appellant argued that the primary reference teaches unbiased terminals, but that the secondary reference teaches a method that requires biasing. Based on this distinction, the Appellant argued that the primary reference teaches away from such a modification.

In the Final Office Action, the Examiner concluded,

[H]aving the disclosure of [the secondary reference], a person of ordinary skill would not be discouraged from utilizing this specific feature of application of a portion of the input RF signal to the gates of the FETs, which is independent from biasing, to cancel the contribution of the RF input signal’s to the gate source voltage resulting in the largest distortion term, and thus would be well motivated to try applying this feature to the unbiased mixer of [the primary reference] to further improve its linearity comparing to unmodified mixer.

In reversing the rejection, the PTAB stated,

As Appellants argue, however, “not be[ing] discouraged,” id., is insufficient rationale for a person of ordinary skill to combine references. See KSR Inti Co. v. Teleflex Inc., 550 U.S. 398, 418-419 (2007). Although we may take account of the “inferences and creative steps a person of ordinary skill in the art would employ,” there must be “some articulated reasoning with some rational underpinning” to support the Examiner’s findings and conclusion of obviousness. Id. at 401, 418.

Notably, although the PTAB states that the “inferences and creative steps a person of ordinary skill in the art would employ” should be considered, this case is an example of the PTAB deciding that such “inferences and creative steps” were insufficient to fill the gap between the prior art references.

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