Patentably Defined

© 2009, Michael E. Kondoudis

As several patent blogs have recently discussed, the backlog at the Board of Patent Appeals and Interferences (BPAI) has topped 20 months and shows few signs of decreasing any time soon.  New appeals are being filed at a rate of about 2.5 times the disposal rate.  Also, new rules limiting continuing practice may still be put into effect, which would certainly increase the rate of future appeals.

One way to avoid further extending the time to have an appeal heard is to avoid having to submit an amended appeal brief because the original was deemed non-compliant.  Knowing the requirements set forth in the Rules and the MPEP may not be enough, however.  This is because an appeal brief may fully satisfy each and every requirement set forth in the Rules and the MPEP and still be returned as non-complaint.

Sections 1205 - 1205.03 of the MPEP address appeal briefs.  In those sections, one will find:

    1205 - the Rule governing appeal briefs, 37 CFR 41.37;

    1205.01 - the timing for filing the appeal brief;

    1205.02 - the required content for an appeal brief; and

    1205.03 -  how the Office deals with non-compliant appeal briefs.

Obviously, MPEP § 1205.02 is a good place to start when preparing an appeal brief.   Relying solely on the MPEP and Rule 37 CFR 41.37 may not be advisable, however.

Not widely known is that the USPTO Appeal Center uses an internal checklist to judge whether an appeal brief is compliant (and accepted) or is non-compliant (and returned to the appellant for resubmission).  Following this link to download the Checklist.

A review of the Checklist is illuminating.  For example, it instructs Appeal Center reviewers that an appeal brief should not be held non-complaint merely because:

     1.  the required sections are “not in the order indicated”;

     2.  there is no statement of the real party in interest (because the Office will assume the named inventors are the real part in interest;

     3.  there is no statement of related cases (because the Office will assume that there are no related cases; and

     4.  there is no evidence section (because the Office will assume that that there is no evidence.

The Checklist, however, does much more than just identify various minor deficiencies that do not alone rise to non-compliance.  In fact, a review of the checklist reveals possible additional requirements that are not found in 37 CFR 41.37 or in the MPEP.  The following are a few examples.

Status Identifiers in the Claim Appendix
Item 9 of the Checklist inquires about whether the claims listed in the Claims Appendix are accompanied by status identifiers. MPEP § 1205 and 37 CFR 41.37 only require a claim appendix that includes a clean, accurate version of all pending claims in numerical order, however.   Specifically, 37 CFR 41.37, subsection (c)(1)(iii)(“Status of claims”) only requires:

A statement of the status of all the claims in the proceeding (e.g., rejected, allowed or confirmed, withdrawn, objected to, canceled) and an identification of those claims that are being appealed.

Nonetheless, the Checklist instructs a reviewer to return to the appellant as non-compliant any appeal brief that lacks status identifiers in the Claims Appendix.

Table of Contents
Item 3 of the Checklist inquires about the presence of a table of contents and instructs the Appeal Center reviewer to hold an appeal brief non-compliant if a table or its heading is omitted.  But, neither Rule 41.37 nor the MPEP requires a table.  In fact, MPEP § 1205.02 actually characterizes tables of contents or authority as merely desirable and instructs that an appeal brief may comply with 37 CFR 41.37 even when those tables are absent.

Page Numbering
Item 13 of the Checklist inquires about the page numbering, which is a requirement not found in either the MPEP or Rule 41.37.  Nonetheless, according to the Checklist:

The pages of the appeal brief, including all sections of the appendix, shall be numbered consecutively … beginning  with the first page of the appeal brief, which shall be numbered page 1.

While admittedly imprudent to submit an Appeal Brief without consecutive page numbers, this is not the only formatting requirement that is found in the Checklist but not in the MPEP.

Conclusion
The bottom line, whether supported or unsupported, every appellant needs to be aware of the Checklist and the additional requirements that it appears to impose on appeal briefs.  Ignoring these additional requirements increases the chances that an appeal brief will be returned as non-compliant, which would extend the already lengthy wait for a BPAI decision.

The Law Office of Michael E. Kondoudis
DC Patent Attorney
www.mekiplaw.com

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© 2008, Michael E. Kondoudis

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.

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

1. 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.
2. 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.
3. 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.

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