What are appeals

What are appeals?

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One option at the final office action stage (or once an application has been twice rejected) is to proceed forward with appealing the matter.  In order to appeal, the M.P.E.P. indicates:

(a) PATENT APPLICANT.— An applicant for a patent, any of whose claims has been twice rejected, may appeal from the decision of the primary examiner to the Board of Patent Appeals and Interferences, having once paid the fee for such appeal.^[1]M.P.E.P. § 1204, citing 37 C.F.R. § 134.

When a final office action issues, if the finality is proper, the claims at that stage have been twice rejected, once in the non-final, and second in the final.  As such, the claims may be ripe to be appealed.  Keep in mind that a final office action is not necessarily required in order for the claims to be ready to be appealed.  All that is required is that a claim has been twice rejected.

When you decide to appeal, you first file a notice of appeal.  One of the reasons for this is that it stops the abandonment clock from ticking since you last received the final office action response.^[2]See, e.g. 37 C.F.R. § 1.134 (“An Office action will notify the applicant of any non-statutory or shortened statutory time period set for reply to an Office action. Unless the applicant is notified … Continue reading   The final office action requires a response by the applicant by a certain time period (for a final office action, it is usually a shortened statutory time period of three months).  A notice of appeal can be filed which halts the time so that the application does not go abandoned within the window described below.  

Within two months from filing a notice of appeal, either an appeal brief or a withdrawal from appeal and RCE needs to be filed with the USPTO to avoid abandonment.^[3]See, e.g., 37 C.F.R. § 41.37.   However, this time period can be extended for up to an additional five months.^[4]See, e.g., 37 C.F.R. § 1.136.  

As far as what needs to go into the appeal brief, the rules are quite clear, as shown below.  Many times, however, a notice of non-compliance will be issued because one or more rules were not followed.  So make sure that you follow each and every rule.

(i) Real party in interest. A statement identifying by name the real party in interest at the time the appeal brief is filed, except that such statement is not required if the named inventor or inventors are themselves the real party in interest. If an appeal brief does not contain a statement of the real party in interest, the Office may assume that the named inventor or inventors are the real party in interest.

(ii) Related appeals and interferences. A statement identifying by application, patent, appeal or interference number all other prior and pending appeals, interferences or judicial proceedings (collectively, “related cases”) which satisfy all of the following conditions: Involve an application or patent owned by the appellant or assignee, are known to appellant, the appellant’s legal representative, or assignee, and may be related to, directly affect or be directly affected by or have a bearing on the Board’s decision in the pending appeal, except that such statement is not required if there are no such related cases. If an appeal brief does not contain a statement of related cases, the Office may assume that there are no such related cases.

(iii) Summary of claimed subject matter. A concise explanation of the subject matter defined in each of the rejected independent claims, which shall refer to the specification in the Record by page and line number or by paragraph number, and to the drawing, if any, by reference characters. For each rejected independent claim, and for each dependent claim argued separately under the provisions of paragraph (c)(1)(iv) of this section, if the claim contains a means plus function or step plus function recitation as permitted by 35 U.S.C. 112, sixth paragraph, then the concise explanation must identify the structure, material, or acts described in the specification in the Record as corresponding to each claimed function with reference to the specification in the Record by page and line number or by paragraph number, and to the drawing, if any, by reference characters. Reference to the patent application publication does not satisfy the requirements of this paragraph.

(iv) Argument. The arguments of appellant with respect to each ground of rejection, and the basis therefor, with citations of the statutes, regulations, authorities, and parts of the Record relied on. The arguments shall explain why the examiner erred as to each ground of rejection contested by appellant. Except as provided for in §§ 41.41, 41.47 and 41.52, any arguments or authorities not included in the appeal brief will be refused consideration by the Board for purposes of the present appeal. Each ground of rejection contested by appellant must be argued under a separate heading, and each heading shall reasonably identify the ground of rejection being contested ( e.g., by claim number, statutory basis, and applied reference, if any). For each ground of rejection applying to two or more claims, the claims may be argued separately (claims are considered by appellant as separately patentable), as a group (all claims subject to the ground of rejection stand or fall together), or as a subgroup (a subset of the claims subject to the ground of rejection stand or fall together). When multiple claims subject to the same ground of rejection are argued as a group or subgroup by appellant, the Board may select a single claim from the group or subgroup and may decide the appeal as to the ground of rejection with respect to the group or subgroup on the basis of the selected claim alone. Notwithstanding any other provision of this paragraph, the failure of appellant to separately argue claims which appellant has grouped together shall constitute a waiver of any argument that the Board must consider the patentability of any grouped claim separately. Under each heading identifying the ground of rejection being contested, any claim(s) argued separately or as a subgroup shall be argued under a separate subheading that identifies the claim(s) by number. A statement which merely points out what a claim recites will not be considered an argument for separate patentability of the claim.

(v) Claims appendix. An appendix containing a copy of the claims involved in the appeal.

Typically, an appeal brief will include the foregoing items and be organized as such, each section being on a separate page:

I               REAL PARTY IN INTEREST

II             RELATED APPEALS AND INTERFERENCES

III            SUMMARY OF CLAIMED SUBJECT MATTER

IV            ARGUMENT

V             CLAIMS APPENDIX

It is important to note that any substantive issue to be considered on appeal must be raised in the Appeal Brief. There is no “hiding the ball” for your reply, as the Patent Trials and Appeals Board (also known as the “PTAB” or “Board”) will simply ignore those portions of the Reply Brief. As such, be diligent, thorough, and concise in your Appeal Brief. You will have an opportunity to elaborate and respond in your Reply.

One of the big issues that comes up while writing an appeal brief is how to group the claims together.  As indicated in the foregoing rules, the Board may choose one representative claim from the grouping to evaluate.  As such, if you have claims that have separate issues, it is wise to separate the grouping so that each issue is independently evaluated. This consideration must be balanced against brief length, which if excessive, will cause the Board to glaze over or ignore some or all of your best arguments. Indicate, where it is possible, the patentable differences in each claim group.  This would help to avoid the Board treating the claims as “standing and falling” together.  The MPEP gives some helpful examples:

For example, if Claims 1 to 5 stand rejected under 35 U.S.C. 102(b) as being anticipated by U.S. Patent No. Y and appellant is only going to argue the limitations of independent claim 1, and thereby group dependent claims 2 to 5 to stand or fall with independent claim 1, then one possible heading as required by this subsection could be “Rejection under 35 U.S.C. 102(b) over U.S. Patent No. Y” and the optional subheading would be “Claims 1 to 5.” Another example is where claims 1 to 3 stand rejected under 35 U.S.C. 102(b) as being anticipated by U.S. Patent No. Z and appellant wishes to argue separately the patentability of each claim, a possible heading as required by this subsection could be “Rejection under 35 U.S.C. 102 (b) over U.S. Patent No. Z,” and the optional subheadings would be “Claim 1,” “Claim 2” and “Claim 3.” Under each subheading the appellant would present the argument for patentability of that claim. The best practice is to use a subheading for each claim for which separate consideration by the Board is desired.^[5]M.P.E.P. § 1205.02.

After you submit your appeal brief, the Examiner has one chance to respond which is known as the Examiner’s answer.

(a)

(1) The primary examiner may, within such time as may be directed by the Director, furnish a written answer to the appeal brief including such explanation of the invention claimed and of the references relied upon and grounds of rejection as may be necessary, supplying a copy to appellant. If the primary examiner determines that the appeal does not comply with the provisions of §§ 41.31 and 41.37 or does not relate to an appealable action, the primary examiner shall make such determination of record.

(2) An examiner’s answer may include a new ground of rejection.

(b) If an examiner’s answer contains a rejection designated as a new ground of rejection, appellant must within two months from the date of the examiner’s answer exercise one of the following two options to avoid sua sponte dismissal of the appeal as to the claims subject to the new ground of rejection:

(1) Reopen prosecution. Request that prosecution be reopened before the primary examiner by filing a reply under § 1.111 of this title with or without amendment or submission of affidavits (§§ 1.130, 1.131 or 1.132 of this title) or other evidence. Any amendment or submission of affidavits or other evidence must be relevant to the new ground of rejection. A request that complies with this paragraph will be entered and the application or the patent under ex parte reexamination will be reconsidered by the examiner under the provisions of § 1.112 of this title. Any request that prosecution be reopened under this paragraph will be treated as a request to withdraw the appeal.

(2) Maintain appeal. Request that the appeal be maintained by filing a reply brief as set forth in § 41.41. Such a reply brief must address each new ground of rejection as set forth in § 41.37(c)(1)(vii) and should follow the other requirements of a brief as set forth in § 41.37(c). A reply brief may not be accompanied by any amendment, affidavit (§§ 1.130, 1.131 or 1.132 of this title) or other evidence. If a reply brief filed pursuant to this section is accompanied by any amendment, affidavit or other evidence, it shall be treated as a request that prosecution be reopened before the primary examiner under paragraph (b)(1) of this section.^[6]37 C.F.R. § 41.39.

If the applicant desires to maintain the appeal, then a reply brief may be filed in response to the Examiner’s Answer. It is strongly advised that you file a Reply Brief, even if the Examiner’s Answer is truly inadequate.  The timing here is important to remember, as action must be taken within two months (of the Examiner’s answer) or the appeal is dismissed.  The reply brief is essentially the last word of the argument before it is seen by the appeal board.  So the arguments should be very refined, to the point, and focused.  As far as what should be included in the reply brief, consider the following:

(1) A reply brief shall not include any new or non-admitted amendment, or any new or non-admitted affidavit or other Evidence. See § 1.116 of this title for amendments, affidavits or other evidence filed after final action but before or on the same date of filing an appeal and § 41.33 for amendments, affidavits or other Evidence filed after the date of filing the appeal. 

(2) Any argument raised in the reply brief which was not raised in the appeal brief, or is not responsive to an argument raised in the examiner’s answer, including any designated new ground of rejection, will not be considered by the Board for purposes of the present appeal, unless good cause is shown.^[7]37 C.F.R. § 41.41.

After the reply brief is submitted, a supplemental reply may be issued by the Examiner.  Usually, however, that does not occur unless the reply brief raises a new issue or the Examiner is directed (e.g. by the Board) to reply to the reply brief.  In most cases, after the reply brief has been filed, it is then reviewed by the appeal board.  Additionally, new appeal rules went into effect on 01/23/12 which abolished the supplemental reply.

Recognize there is a bit of a backlog with the appeals process.  So even if you file your appeal today, it may be a year or two down the line before you hear back on a final decision.^[8]See, e.g., “Ex Parte Patent Appeal Results,” Patently-O Blog (Sept. 19, 2012), last accessed 05/01/2013, available at … Continue reading   When your case does come up to be reviewed, consider also having an oral hearing.^[9]See, e.g., William F. Smith, “An Overview of Petitions, Appeals and Interferences in the USPTO,” AIPLA Patent Boot Camp 2008, last accessed 05/01/2013, available … Continue reading

A final decision may be in a variety of flavors:

(1) The Board, in its decision, may affirm or reverse the decision of the examiner in whole or in part on the grounds and on the claims specified by the examiner. The affirmance of the rejection of a claim on any of the grounds specified constitutes a general affirmance of the decision of the examiner on that claim, except as to any ground specifically reversed. The Board may also remand an application to the examiner.^[10]37 C.F.R. § 41.50; see also M.P.E.P. § 1213.

Usually, once the decision issues, the applicant then reopens prosecution and continues the process, based on the input given by the Appeals Board.