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Does Your Appeal Have Appeal? A Guide To Arguing Before The Board Of Patent Appeals And Interferences

Posted on Jan 8, 2008 in Articles

1. The Mechanics Of The Appeal Process

In order to proceed to appeal, it is necessary that there have been either a final rejection or a second non-final rejection in the application.  Thus, within three months of the mailing date of the rejection, a Notice of Appeal is filed with the requisite fee.  Upon payment of appropriate extension fees, the filing of the Notice of Appeal may be delayed for up to an additional three months.  Within two months from the date the USPTO receives the Notice of Appeal (as indicated by the PTO date stamp on the return postcard), the applicant may then file the Appeal Brief.  The filing of the Appeal Brief may also be delayed by the filing of extension fees.

Once the Appeal Brief has been filed, it is then reviewed in an Appeal Conference.  The Appeal Conference includes the participation of the initial Examiner who rejected the claims and two other Examiners.  After reading the Appeal Brief, the three Examiners in the Appeal Conference must come to a conclusion regarding the merits of the Appeal Brief.  Based on the results of the Appeal Conference, the initial Examiner will do one of the following:

(A)  The Examiner may issue an Examiner’s Answer.  In the Examiner’s Answer, the Examiner will rebut the allegations made by the applicant in the Appeal Brief.  Often Examiners use the Examiner’s Answer as an opportunity to clarify their rejections.

(B) The Examiner may withdraw the present rejection of record.  This will occur if, during the Appeal Conference, it is determined that the arguments set forth in the applicant’s Brief have merit.  A supplemental search of applicant’s claims will then be made.  One of several outcomes is then possible:

1) Prosecution may be reopened.  An art rejection will then be made.  The art rejection will be non-final unless it was necessitated by an amendment or an IDS filed without a Rule 97(e) Statement.

2) The application may be allowed.

If the Examiner issues an Answer (option (A) above), then the applicant is given two months (extendable upon payment of extension fees) to do the following:

(A) The applicant may file an RCE or a continuation application.  This option is available to the applicant at any stage during the appeals process.  Thus, once the Examiner’s Answer is read by the applicant, the applicant may deem that the Examiner’s argument has merit.  In such a situation, it may be appropriate to file an RCE (or a continuation application) with amended (or new) claims.

(B) The applicant may request oral hearing.  By exercising this option, the applicant is given the ability to participate in an oral argument before the Board of Appeals.

(C) The applicant can file a Reply.  Thus, the applicant can respond to specific arguments made by the Examiner in the Examiner’s Answer.

(D) If the Answer includes a new ground of rejection, then the applicant may request that prosecution be reopened.

If option (A) or (D) above is exercised, of course, the case is returned to the Examiner and prosecution continues at the Examiner level.

If option (C) above is exercised, the Examiner may file a Response.  The applicant may then file a Supplemental Reply.  Unless an RCE has been filed or prosecution has been reopened, the case then proceeds to the Board of Appeals for adjudication.

At the Board of Appeals, the application is reviewed by three Administrative Patent Judges (APJ).  Each APJ is a former Examiner with general knowledge of the subject matter to which the Appeal Brief is directed.  The APJ’s will review the record.

2. Oral Hearing

It is during the time period that the Board of Appeals has jurisdiction over the application that the oral hearing, if so requested, may occur.  It should be emphasized, however, that the applicant should never automatically request an oral hearing.  In fact, the majority of appeals are filed and adjudicated without an oral hearing.  This is because the Board of Appeals makes their decision based on the written record.  The purpose of the oral hearing should be only to explain or clarify subject matter which is difficult to understand from the written record alone.  If applicant’s argument is completely clear from the written record, then an oral hearing should not be requested.  Conversely, if some aspect of applicant’s argument is potentially difficult to understand, or, if the record is confusing for some reason, an oral hearing can have immense value.  Should an oral hearing be appropriate, the following suggestions may prove to be useful:

a. Practice

Virtually all patent practitioners have very little experience attending oral hearing. Practice is key.  Prior to oral hearing, the practitioner should conduct a mock hearing before several of his colleagues.  Desirably, the mock hearing should be videotaped and the videotape should be reviewed to provide the practitioner with additional feedback.  Also, oral hearings are limited to 20 minutes (unless a request for additional time which has been filed in advance has been granted).  It is important to practice to ensure that the practitioner can effectively make his argument within the 20-minute time frame.

b. Be Prepared

APJ’s may interrupt a practitioner during oral hearing at any time.  The APJ’s may question the practitioner about any aspect of the record, including the contents of any reference that has been made of record.  The practitioner should enter the oral hearing with an indexed notebook in which all the references of record have been organized.  This way, when an APJ begins talking about a specific reference, the practitioner can quickly turn to the reference so that the reference is before him as the practitioner is making his response.  Furthermore, it is important for the practitioner to realize that an interruption on the part of an APJ is an opportunity, and not a hindrance, to the practitioner’s case.  If the APJ is asking a question, then the APJ is verbalizing his concern about a particular issue.  By verbalizing his concern, the practitioner has an opportunity to respond.

c. The APJ’s Are Non-Jurors

Dramatics are inappropriate during an oral hearing.  The practitioner should speak clearly and should present in a calm manner.

d. Use Visual Aids

As it is said, “a picture is worth a thousand words.”  A large exhibit or an overhead projection can significantly facilitate the APJ’s understanding of the issues present.

e. Be on Time

When it is your time to speak, the door of the chamber where the APJs sit is opened, your case is announced, and you are required to enter.  The APJs will be waiting for you.  Don’t be late.

3. Procedure After Review By The Board

After the Board of Appeals has reviewed the written record, the Board of Appeals will then either (a) remand the application back to the Examiner to correct a procedural irregularity, or (b) issue a decision.  Irregularities associated with a remand can range from the mundane (a missing piece of paper in the file) to the more serious (a poor explanation on the part of the Examiner as to why a rejection is being made).  A decision issued by the Board will be to: affirm the rejections, affirm the rejections in part, (i.e. agree with at least one rejection and disagree with at least one rejection) or reverse the rejections.  The Board can also make a new rejection, and, in response, applicant can either request to reopen prosecution or request a rehearing.  If the rejections are reversed, then the application is returned to the Examiner who will either allow the application or make a new rejection.  Note that new rejections at this stage are extremely rare, but they can occur.  If the Board affirms or affirms in part, then the applicant can (a) appeal to the Federal Circuit; (b) request a rehearing; or (c) file an RCE with an amendment.  If an RCE and an amendment are filed, then the application is returned to the Examiner to either allow the application or to issue a new rejection.  At this stage, however, the Examiner is completely bound by any interpretations of the claims and/or the references set forth by the Board in their decision.

4. The Appeal Brief

a. Contents

Having discussed the procedural aspects of the appeals process, the details of the Appeal Brief will now be described in greater depth.

37 C.F.R. §1.191 requires that each and every Appeal Brief include the following sections:

(1) Real Party In Interest

(2) Related Appeals And Interferences

(3) Status of Claims

(4) Status of Amendments

(5) Summary of Claimed Subject Matter

(6) Grounds of rejection to be reviewed on appeal

(7) Argument

(8) Claims Appendix

(9) Evidence Appendix

(10) Related Proceedings Appendix

Items (1)-(4) and (8)-(10) above are self-explanatory.

In the Summary of Claimed Subject Matter section, the rules require a concise explanation of the subject matter defined in each of the independent claims involved in the appeal.  The explanation must be with reference to the claimed subject matter, specification and the drawings.  Thus, the Summary provides the applicant with an opportunity to explain to the Board the basic concepts of the invention.

Each APJ is responsible for making decisions in many diverse technical fields.  Thus, for every appeal, the APJ must become a student and learn about the applicant’s invention and the prior art of record.  The APJ’s have a very busy case docket and thus are trying to understand the applicant’s invention as quickly as possible.  Thus, it is important for the Summary of the Invention part of the Appeal Brief to describe the claimed invention in as simple terms as possible.  If the APJ must struggle to understand the concepts of the invention, the likelihood of success at the appeal stage will become severely diminished.  Conversely, if the APJ is able to read the Summary and quickly have an understanding of the invention, this will significantly improve the applicant’s chances of obtaining a good result.  While the Summary should refer to page and line numbers of the specification in explaining the invention, it may be worthwhile to include an exhibit attachment to the Appeal Brief in which basic concepts of the invention are illustrated in as simple a manner as possible.

In the Grounds of Rejection section, the applicant should provide a concise statement of each ground of rejection being presented for review.  This part of the Appeal Brief will indicate the statutory basis of rejections, the claims being rejected, and the references being applied for each claim rejection.

The Argument section, of course, is the “meat” of the Appeal Brief.  Like the Summary, simplicity is key.  The APJ wants to understand the Argument as easily as possible.  If the APJ must struggle to understand the applicant’s arguments, the likelihood of success in the appeal will be severely dimished.  Conversely, if it is easy for the APJ to understand the argument, the likelihood of success will significantly improve.

b. Types of Appeal Briefs

This author classifies the Appeal Briefs he writes into two different categories, namely, a long form and a short form.

This author’s long form Appeal Brief will include a step by step interpretation of the claims and references.  Such a Brief also typically includes the citation and quotation of case law to support the applicant’s allegations.  This long form is particularly appropriate when the rejections are long and the issues are complex.  Exemplary issues of high complexity include legal disagreement and the rebutting allegations of obviousness with secondary considerations.  Such Appeal Briefs can go on for many pages.

This author’s short form Appeal Brief is just that, short.  Such Appeal Briefs can be prepared within five or six pages.  In such Appeal Briefs, the applicant identifies the claimed point of novelty and explains why the claimed point of novelty is lacking from the cited references.  This type of Appeal Brief may be appropriate in many (if not most) of all appeals filed and have resulted in a high degree of success.

By choosing between these two types of Appeal Briefs, several issues are addressed.  First, it should be easy to understand the difference between the claimed invention and the cited references, then there is no need to “gum up” the record with unnecessary case law citation.  The Board wants applicants to get to the point.  The easier it is for the Board to understand the difference between the claimed invention and the cited references, the higher the probability that the Board will render a proper decision.  Second, the two forms of Appeal Brief address the issue of cost.  If an Appeal Brief is being filed, the applicant has already (typically) gone through two Office Actions and two responses (at least) and may have expended over $5,000 in prosecution costs.  Put another way, cost is a greater issue then it was one or two Office Actions ago.  A short form Appeal Brief can be prepared for the cost of responding to an Office Action, or even less.  While the inclusion of case law may impress a client, the invoice associated with the finding and inclusion of that case law will not.  These issues always need to be kept in consideration.

5. Goals and Problems

Often, the applicant’s objective in filing an Appeal Brief is not to seek review of the record by the Board of Appeals but, rather, to force the Examiner to have an Appeal Conference with two of his peers.  Many, many impasses with Examiners can be resolved in this manner.  Particularly if the rejection is very bad, it can be very helpful to force the Examiner to confer with his peers to be convinced that his rejection is without merit.  Even if the result of the Appeal Conference is to sustain the rejection, the explanation of the rejection set forth in the Examiner’s Answer may be more comprehensive than it was in the Office Actions.  Put another way, in the Examiner’s Answer, the Examiner may do a better job of explaining the reasons for the rejection.  Now, with a clearer record, the applicant is in a better position to determine the strategy that is appropriate in furthering prosecution of the application.

The appeals process is an important tool for the practitioner to use in obtaining allowance of applications.  If possible, however, it is always better to work out problems at the Examiner level.  While there are numerous advantages in filing an appeal, there may be disadvantages as well, including:

(A) a loss of an ability to amend the application while the application is at the appeal stage;

(B) a loss of the ability to have a two-way conversation with the decision maker;

(C)  a loss of control during the entire process.

 Thus, appeals should be used only as a last resort.

6. Changes

On August 12, 2004, The Federal Register was published with many changes to the Appeals process.  Some of the more significant changes are:

(A) One copy of the Brief is required rather than three copies.

(B) “Summary of Claimed Subject Matter” replaces “Summary of the Invention.”

(C) The Examiner’s answer may include a new ground of rejection.  Appellant may then either:

1) Request a reopening of prosecution, or

2) Maintain the appeal and file a Reply Brief

(D) The Reply Brief should include:

1) Identification page

2) Status of Claims page

3) Grounds of Rejection To Be Reviewed On Appeal page

4) Argument

(E) Examiners are now explicitly given 15 minutes for oral argument.

Appellant will argue first at oral hearing and may save time for rebuttal.

(F)  Examiners are explicitly permitted to furnish a Supplemental Examiner’s Answer.  The appellant must either:

1) Request to Reopen Prosecution, or

 2) Maintain the Appeal.

(G) The Board can make a new rejection.  The appellant musteither:

1) Request rehearing, or

2) Request to reopen prosecution.

(H) Appellant has the right to amend in conformity with a suggestion made by the Board to overcome a rejection.

(I) The Board may order appellant to additionally brief any matter.

7. Conclusion

The Appeals Process can be an efficient and effective way to gain allowance of an application.  While the traditional reason for filing an Appeal has been to obtain Board of Appeal review, Appeal Briefs are now often filed to obtain the benefits of an Appeal Conference.  Many applications are allowed, without ever reaching the Board of Appeals, simply by filing an Appeal  Brief.  Thus, if applicant and Examiner are at an impasse, and if the record is complete, then the applicant should not hesitate to enter the Appeals process in order to obtain allowance.

– by Lawrence Ashery


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