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[khazzah]

However, I see a pattern in settled cases.  And that pattern is preponderance of the evidence.  The board likes to see a well reasoned argument, based on facts.  They don't like weak argument, be it from the examiners or the applicants lawyers. 

In a legal context, PPoE means something different than "well reasoned argument". But I agree with your main point: that the BPAI speaks approvingly of well reasoned arguments and isn't convinced by conclusory arguments.

It appears to me, though, that the Board is perfectly willing to substitute their own well-reasoned arguments for the Examiner's conclusory arguments, when the references support this. Don't see the Board doing this as much on behalf of Applicants, though I do see it occasionally.

The BPAI is kinda strange in that it's not merely a review body of only what's on the record. Unlike the Fed. Cir., the BPAI does make its own findings of fact.

Rarely do I see official notice or the like fly without "explicit teachings" or "rational underpinnings".

There's a huge difference between "explicit teachings" and "rational underpinnings".  Namely, KSR holds that an explicit teaching is not required and that a rational underpinning is required.

As for the Board talking a lot about TSM, my off-the-cuff response to this (haven't read those BPAI opinions yet) is that the Examiners still use TSM more than they use other rationales. So if the Examiners still use TSM, then the Board is going to discuss TSM.

[Isaac]

The last case I cite specifically talks about KSR, and reverses, I believe, based on hindsight and also talks "preponderance of evidence".

I took a look at Ex parte Robert J. Mileti.

My reading of the case is that the examiner indicated that he was using the predictable arts rationale, but that the examiner did not make the required findings of fact.  The BPAI's criticisms were that 1) the results identified by the examiner were not predictable, with the examiner's 'prediction' likely involving hindsight, and 2) the invention did not consist of merely a combination of old features, because it was necessary to modify the features disclosed in the references.

In a case where the Board reverses a non TSM obviousness rejection, the Board is probably obligated to do at least a little TSM analysis at least to see if they can provide their own reason to reject over the references of record, particularly if the applicant attacks the motivation to modify the references.  I don't see any more than that in the opinion.

Your note about the preponderance of evidence standard is interesting.  Up until recently, the BPAI used a different standard of review, something closer to substantial evidence supporting the examiner. 

[khazzah]

[Invent Or's] note about the preponderance of evidence standard is interesting.  Up until recently, the BPAI used a different standard of review, something closer to substantial evidence supporting the examiner. 

None of the cases cited by Invent Or use the phrase "preponderance of the evidence". But Invent Or may have stumbled upon something nonetheless, because for those Board opinions that include a Findings of Fact section, the Board typically starts with this sentence:

We find that the following enumerated findings are supported by at least a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for
proceedings before the Office).

I haven't read Ethicon, Inc. v. Quigg myself.

[OMG IP]

While skimming through recent Fed Cir decisions that review BPAI decisions, I ran across something that fits right in to our recent discussion on Predictable Results rationale (that discussion starts here http://www.intelproplaw.com/ip_forum/index.php/topic,14971.msg77799.html#msg77799)

In re Schwemberger (http://www.cafc.uscourts.gov/images/stories/opinions-orders/10-1127.pdf) affirmed a BPAI decision, which in turn affirmed a 103 rejection. I didn't spend too long on the Fed Cir opinion. The more interesting part, to me, was the BPAI's Decision on Rehearing (http://des.uspto.gov/Foia/ReterivePdf?system=BPAI&flNm=fd2009001229-09-18-2009-2).

Interesting because it provides an in depth analysis of the Predictable Results rationale that we just discussed. Specifically, it explains how each element of the Predictable Results rationale (ie, "known technique", "ready for improvement", "predictable results") is applied to the facts of the case.

The one thing I haven't figured out yet is whether or not the rationale requires a POSITA to recognize a benefit of the predictable results. There is talk of a benefit, but that's described as an "additional apparent reason to combine".

Excellent - thank you for the thread.  I am not a big fan of the "it would be obvious to combine because of predictable results" company line [paraphrasing].  I imagine the cost of 'KSR' in legal fees to clients is.... well, I can't even guess.  I have noticed, or at least perceived, in the last 6-12 mos, be it PTO guidelinds or CAFC decisions, the pendulum start to come back.  I digress...