Merely adopting the position of one of the parties to an appeal or review is generally insufficient to support a finding of obviousness by the PTAB. Here, for example, the PTAB’s reliance on only a conclusory statement by an expert that the modification of the prior art references would provide “additional information” was found to be insufficient because it failed to explain why the additional information would provide a benefit, the type of information that would be obtained, or how the information would be used. “[I]t is not adequate to summarize and reject arguments without explaining why the PTAB accepts the prevailing argument.” This would be a good case to consult and cite in a request for rehearing in response to a PTAB decision based on conclusory statements.
Background / Facts: The patent on appeal here from inter partes review proceedings at the PTO is directed to a spinal fusion implant of non-bone construction releasably coupled to an insertion instrument. In its decision finding the claims under review obvious, the PTAB effectively relied on only one conclusory statement by the petitioner’s expert that the modification of the prior art references would provide “additional information.”
Issue(s): Whether the PTAB’s decision adequately explained its findings as to why a PHOSITA would have been motivated to combine the prior art references.
Holding(s): No. “In its summary of [the third party petitioner’s] arguments, the PTAB never articulated why the additional information would benefit a PHOSITA when implanting a posterior lumbar interbody fusion implant, such as the implants disclosed by the [prior art] references. It also failed to explain the type of additional information a PHOSITA would obtain or how the PHOSITA would use that information.”