Board of Patent Appeals Reverses Rejection of Key Verizon Invention

MARK TERRY, ESQ.

The Board of Patent Appeals and Interferences reversed a Patent Examiner’s obviousness rejection involving a Verizon patent application. The decision provides another example of the evidentiary and analytical burden an examiner must satisfy before combining prior-art references under 35 U.S.C. §103.

An obviousness rejection cannot rest only on the fact that separate pieces of a claimed invention can be found somewhere in the prior art. The rejection must identify the relevant claim limitations, show where those limitations appear, and explain why a person of ordinary skill would have made the proposed combination.

The Board found the examiner’s analysis insufficient as applied to the Verizon claims and reversed the rejection. For applicants, the decision underscores the value of challenging unsupported factual findings, missing limitations, and conclusory reasons for combining references.

When reviewing an obviousness rejection, practitioners should compare every claim limitation against the cited art and scrutinize whether the examiner’s stated rationale is supported by evidence rather than hindsight.