Patent practitioners are often reminded—sometimes gently, sometimes painfully—that the United States Patent and Trademark Office is not an Article III court. It is an administrative agency, governed as much by internal procedure, burden allocation, and standardized modes of analysis as by substantive patent law.

That distinction matters, particularly on appeal before the Patent Trial and Appeal Board (PTAB). Arguments that are logical, grounded in precedent, and even facially persuasive can still fail if they do not conform to expected doctrinal structure. The Board has been known to prioritize whether an appellant has followed the correct analytical path over whether the appellant’s reasoning makes intuitive sense.

The recent PTAB decision in Ex parte Schneider, Appeal No. 2025-002361, illustrates this dynamic with unusual clarity, and for an invention everyone who grew up in the 80s could not wait to get – Marty McFly’s self-lacing shoes.

The application in Schneider concerned an article of footwear with a motorized lacing system. The Examiner rejected claims 1–3 as anticipated under 35 U.S.C. § 102 by Beers (US 2016/0143396). On appeal, the applicant did not primarily contest the Examiner’s element-by-element anticipation mapping.  Instead, the applicant advanced a threshold argument aimed at disqualifying the reference itself.

Specifically, the applicant argued that Beers ’396 could not constitute an enabling anticipatory reference because another Examiner, in a related Beers continuation application, had rejected identical claims for failure to satisfy the written description requirement of 35 U.S.C. § 112(a). If the disclosure was insufficient to demonstrate possession of the claimed invention, the applicant reasoned, it necessarily failed to show all claimed elements in a way that would enable a person of ordinary skill in the art to practice the invention.

From a practitioner’s perspective, the argument has intuitive appeal. Anticipation unquestionably requires written description and an enabling disclosure, the two being closely related doctrines housed in the same statutory provision.  However, failing to deal with the specifics of each, and the particular prongs of each legal issue, was problematic for the applicant. 

Written Description and Enablement, while related, are distinct and the PTAB rigidly enforce their separation.  As the PTAB emphasized in its decision, written description and enablement are “separate and distinct” requirements under § 112(a). The MPEP makes this explicit. See MPEP §§ 2163 (written description) and 2164 (enablement).

The Board reiterated several black-letter principles in pointing out this issue.  The PTAB explained that prior art disclosures are presumed enabling, and for anticipation, a reference “need not enable the [challenged] claim in its entirety, but instead need only enable a single embodiment of the claim.”  To overcome anticipation, an appellant must show either that the reference fails to disclose every claim element or that it fails to enable the claimed invention without undue experimentation.  From the decision:

Although Beers ’499 and Beers ’396 recite identical claims 1–3, a demonstration those claims fail to comply with the written description requirement is not sufficient to show lack of enablement and to overcome the anticipation rejection. … Appellant does not address the merits of the Examiner’s anticipation rejection. Instead, Appellant seeks to disqualify Beers ’396 as prior art…

This framing reveals the Board’s core concern: the appellant did not carry the burden in the manner the Board requires.

However, a close reading of the Appeal Brief and Reply Brief shows that the applicant did not ignore enablement doctrine. The briefs cited Federal Circuit precedent recognizing that anticipation requires an enabling disclosure and attempted to treat the written-description rejection in the related Beers application as evidence of non-enablement.  In other words, the applicant did not argue that written description and enablement are legally identical. Rather, the applicant attempted to short-circuit the enablement analysis by relying on a written-description failure as dispositive proof.

From an administrative-law perspective, however, that move was fatal.  The PTAB was unwilling to infer non-enablement from a written-description rejection issued in a different prosecution, by a different Examiner, on a different record—particularly where the appellant did not independently analyze undue experimentation, the Wands factors, or the specific teachings of Beers ’396.

What this case illustrates is not necessarily hostility to creative advocacy, but the PTAB’s rigid enforcement of procedural expectations.  Further, the case illustrates how presumptions and burden allocation plays out at the USPTO.  Enablement is presumed for patent-based prior art. The Board will not normally disturb that presumption without a direct, reference-specific showing.  Further, the Board will not normally infer missing elements of an argument—even when the inference seems reasonable. The appellant must affirmatively rebut the presumption (here enablement) using the Board’s preferred and expected analytical tools.  As to the evidentiary value of facts from another application, it does not migrate automatically. It is unlikely that the Board will import evidence (such as a rejection) from another case as a substitute for evidence in the appealed record.

In short, the applicant’s argument may have been substantively thoughtful, but it did not follow the procedural script the PTAB expects. The lesson of Ex parte Schneider is not that novel arguments are disfavored. It is that administrative tribunals reward orthodoxy.

Before the PTAB, an argument must do more than make sense—it must follow the form of the argument the Board is accustomed to evaluating. Deviations from that structure, even when grounded in logic and precedent, are often treated as failures of proof rather than alternative theories.

For practitioners briefing appeals before the PTAB, do not leave out an attack of the rejection on its own terms (at least in the alternative). Even if advancing a threshold argument, address the Examiner’s allegations (in this case anticipation mapping) directly with reasoned arguments and citation to evidence in the record of the present application.  And remember that the PTAB is an administrative agency – procedural compliance, burden allocation, and doctrinal form often matter as much as substantive insight.