Quick Post: Board Reverses Examiner’s Rejection in Two Sentences

MARK TERRY, ESQ.

The Board of Patent Appeals and Interferences reversed an examiner’s 35 U.S.C. §103 rejection in an unusually short analysis. The application concerned a method for producing fatty-acid ester derivatives, including both a hydroxyl ester product and a ketal product.

The examiner identified prior-art teachings relating to the hydroxyl ester product but did not identify prior art addressing production of the ketal product in combination with it. The rejection also failed to explain how that gap between the cited methods and the claimed process was resolved.

The Board concluded that the evidence and reasoning were insufficient to establish a prima facie case of obviousness. Even a combination rejection must compare the prior art against all limitations of the claim and explain where each limitation is found or why the difference would have been obvious.

The takeaway for applicants is to examine every rejection element by element. When an examiner overlooks or gives only cursory treatment to a limitation, that deficiency can provide a strong basis for reversal.