Pushing Back against Obviousness Rejections Unsupported by Evidence and Lacking Reasoned Explanations: A discussion of In re Google LLC.

February 22, 2023
Presented By
  • Jason W. Rhodes

In the recent precedential decision In re Google LLC, the Federal Circuit vacated a decision by the Patent Trial and Appeal Board, affirming an examiner’s final rejection of Google’s patent claims. The court found that various assertions relied on by the Examiner, and adopted by the Board, were not “supported by evidence and a reasoned explanation.” The PTO argued the Board’s decision should be affirmed because the differences between the claims and prior art as “obvious to try” modifications. Declining to address the merits of the PTO’s arguments, the court said they went beyond the record in this case, including the Board’s specific findings. This case may provide insight for responding to obviousness rejections where the examiner fails to explain how the references are to be modified/combined or makes assertions of “well known” features without evidentiary support. 

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