A common prosecution strategy when an Office action indicates allowed claims or allowable subject matter is to cancel the rejected subject matter and continue prosecuting that canceled subject matter in a continuing application. This strategy, of course, results in the relatively rapid issuance of a patent.
An interesting aspect of this strategy is that some non-final rejections in these continuing applications are appealable. Thus, an Applicant sometimes has the option to pursue an appeal of a non-final claim rejection rather than to make further attempts to traverse it. The remainder of this post discusses when non-final claim rejections are appealable.
The Rule – Twice Rejected Claims are Appealable
Pursuant to Statute and Rule, an Applicant may appeal the rejection of any claim that has been twice rejected, regardless of whether the claim has been finally rejected. In particular, 35 U.S.C. 134(a) provides that:
- 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.
Also, 37 CFR 41.31(a)(1) provides that:
- An applicant for a patent dissatisfied with a primary examiner’s decision in the second rejection of his or her claims may appeal to the Board for review of the examiner’s rejection by filing a notice of appeal and the required fee.
The Twice Rejected Requirement Is Not Limited To A Single Application
Noticeably absent from the Statute and Rule is a requirement that a claim must be “twice rejected” in a particular application. Consequently, an Applicant need not always wait until a claim is twice rejected in a single application to pursue an appeal. Consider the following example.
- Claims 1-3 are allowed in a parent application. Claim 4 is rejected.
- Applicant cancels claim 4 so that the parent, with claims 1-3, may proceed to issue.
- Applicant also files a continuing application to prosecute claim 4 and other claims. Thereafter, the previous rejection of claim 4 is repeated in a first, non-final Office action in the continuing application.
In this scenario, claim 4 has been twice rejected. Thus, the rejection of claim 4 is appealable, despite being non-final.
Four Additional Points About Appeals
- An Appealed Claim Must Be Under Rejection. An Applicant cannot file an appeal in a continuing application until a claim is rejected, regardless of the number of times that claim may have been rejected in the parent application.
- There Is No Requirement To Identify In The Notice Of Appeal The Claims To Be Appealed. The rules do not require an Applicant to identify the claims that will be appealed.
- The USPTO Has A Form Notice Of Appeal Form for EFS-WEB. The USPTO recommends filing a Notice of Appeal as a separate paper and provides form PTO/SB/31 for this purpose. This form can be found at here.
© 2008, Michael E. Kondoudis
The Law Office of Michael E. Kondoudis
DC Patent Attorney