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
- 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.
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© 2008, Michael E. Kondoudis
The Law Office of Michael E. Kondoudis
DC Patent Attorney
www.mekiplaw.com
But . . .
You discuss appealing the one claim in the, say, CIP that was rejected in the parent. What about the other 10 claims in the CIP — the claims to the new matter? They have only been rejected once. Can you appeal the first rejections of those claims?
The statute and rule are clear as donkey dung.
35 USC 134(a)
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.
37 CFR 41.31
Who may appeal and how to file an appeal. (1) Every applicant, any of whose claims has been twice rejected, may appeal from the decision of the examiner to the Board by filing a notice of appeal accompanied by the fee set forth in § 41.20(b)(1) within the time period provided under § 1.134 of this title for reply.
Does “may appeal” refer just to the claims twice rejected, or does it refer to the whole continuation application?
I believe the application must be appealed as a whole and you designate the claims at issue in the brief. Having filed the notice without identifying the claims under appeal, in the brief can I also designate the claims that have been rejected once. Or . . . can I cancel the claim twice rejected [for another continuation] and appeal only the claims that have been first rejected? I am still one whose claim has been twice rejected. Nothing says that’s the claim I have to appeal.
In any case, if the first OA in the CIP allows some claims, you are in the same predicament as you were in originally. Appeal the lot, or split and later appeal the rejects in a continuation?
Finally, according to the statute, you can only appeal some “decision” [presumably the rejection] by a primary examiner. (The rule, however, just refers to “examiner.”) What if one of the two rejections is by a newbie examiner or by an SPE? Then the claim has not been twice rejected by a primary examiner.
Actually, . . . donkey dung is a lot clearer.