If you are reading this blog post you already know how complex patent prosecution strategy can be. There is immense pressure to move an application through to issuance with the minimum number of office actions (and RCEs), but with the broadest scope and without making any admissions. At the same time, you have to distinguish the state of the art and protect product sales in the marketplace by dissuading competitors from challenging the patent or designing around. And you have to do all of this with ever increasing downward pressure on costs because patent prosecution is often seen as a commodity.

Data is a large part of the strategy equation - helping to guide interviews, RCE decisions, and maybe even language to avoid certain art units and examiners. However virtually every decision still requires judgment based on the particular facts of a given case. And sometimes, the decision on how to proceed is all about living to fight another day and using the bureaucratic system to your advantage.

Today we review a case that illustrates a classic choice between RCE and appeal. Many other commentators have espoused the benefits of an appeal. This case also illustrates how an appeal can be effective and perhaps even dispositive whereas continued arguments and prosecution might actually lead the examiner to a better rejection.

The case is Appeal 2022-002287, Application 16/896,892 to ADP. The invention is clear from claim 1 on appeal and relates to a user interface for automatic file deletion.

1. A computer-implemented method for deleting a file from a storage medium, comprising:
identifying, by a computer system, the file that is marked for automatic deletion;
identifying, by the computer system, a deletion time at which the file is to be automatically deleted from the storage medium; and
displaying, by the computer system, a visual indicator associated with the file, wherein the visual indicator becomes more transparent over time as the deletion time gets closer, wherein the visual indicator has a transparency of 20% three days before the deletion time, a transparency of 40% two days before the deletion time, and a transparency of 60% one day before the deletion time.

The examiner relied on a combination of references, where the reference with the claimed visual indicator used a scheme that was opposite to the claim. Namely, the examiner had to rely on reversing the prior art’s method to instead increase transparency while moving toward the spatial or temporal reference point.

The PTAB reversed with little effort, even finding that the rejection suffered from hindsight bias (internal citations omitted):

[The prior art’s] transparency percentages increase as the elapsed time increases, whereas the exact opposite is recited in Appellant’s claim 1, i.e., the transparency percentages decrease as the elapsed time increases.
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Without an explanation as to how or why the references would be combined to arrive at the claimed invention, we are left with only hindsight bias that KSR warns against. And while we understand that “[t]he obviousness analysis cannot be confined by a formalistic conception of the words teaching, suggestion, and motivation,” we also recognize that we cannot allow hindsight bias to be the thread that stitches together prior art patches into something that is the claimed invention.
In the case before us, we find the Examiner's reverse logic to be conclusory and unsupported by the evidence of record. … In this light, we are persuaded by Appellant's arguments that the Examiner employed impermissible hindsight and used knowledge gleaned only from the present application that was not within the level of ordinary skill at the time the claimed invention was made. In view of the foregoing, we find the Examiner's broadly-stated conclusion suffers from hindsight bias.

The PTAB’s decision likely concludes this case without providing the examiner much opportunity (or incentive) to supplement the reasoning. However, had the applicant continued prosecution before the examiner, the examiner may have spent an extra five minutes and supplemented the rejection with additional reasoning. For example, the examiner could have explained that there are only two directions for the transparency to change with time - increase and decrease. And from these limited (only two) choices, it would be obvious to select either one depending on the desired effect, citing to KSR itself and the discussion of selecting from a limited number of options.

At that point an appeal may have been a tougher path as there would at least have been some reasoning for the rejection rather than the completely lacking record that was actually before the board.

So, sometimes one of the strategy factors to considers (beyond e.g., examiner statistics and reversal rates) is considering the benefits of an early appeal before the examiner has had a chance to “better” the rejection.