Dec 072012

Issuing a rejection that does not give an appellant a fair opportunity to react to the rejection deprives the appellant of the administrative due process rights.  In re Kronig, 539 F.2d 1300, 1302–1303 (CCPA 1976).  A provision that has recently been updated to accommodate for tolling the time to file a reply brief allows for filing a Petition to designate the new ground of rejection as such.  If granted, the Petition allows for prosecution to be reopened.

In general, an Examiner is not permitted to introduce a new ground of rejection in an Examiner’s Answer unless the Examiner designates the new rejection as such in the Examiner’s Answer.  37 C.F.R. §41.40 permits an appellant to seek review of an Examiner’s failure to designate a rejection as a new ground of rejection in an Examiner’s Answer by way of a Petition under 37 C.F.R. §1.181.  The test for what constitutes a new ground of rejection is whether a position or rationale changes the ‘basic thrust of the rejection’ in an Examiner’s Answer.  In re Kronig, 539 F.2d 1300, 1302–1303 (CCPA 1976).   A Petition under 37 C.F.R. §1.181 is timely if filed within two months from the entry of the Examiner’s Answer.  See 37 C.F.R. §41.40(a).

A Petition that is granted allows an appellant to reopen prosecution.  See 37 C.F.R. §41.40(b).  In a Notice of Appeal filed on or after January 23, 2012, a Petition that is not granted must be provided a two-month time period in which an appellant may file a reply brief under 37 C.F.R. §1.181.  See 37 C.F.R. §41.40(c), as amended by 76 Fed. Reg. 72298 on Nov. 22, 2011, and effective beginning January 23, 2012.  This is consistent with the amendments to 37 C.F.R. §41.41(a), which also became effective on January 23, 2012, indicating an appellant may file only a single reply brief to an Examiner’s Answer within the later of two months from the date of either the Examiner’s Answer, or a decision refusing to grant a petition under §1.181.

The Eighth Edition of the MPEP, which incorporates revision No. 9, provides seemingly contradictory information.  Specifically, MPEP §2107.03(IV) states that the filing of a petition under 37 C.F.R. §1.181 does not toll the time period for filing a reply brief.  However, this MPEP section refers to the previous version of 37 C.F.R. §41.40, which did not allow for tolling of the time to file a reply brief after a Petition was denied.


 Posted by at 4:27 pm
Apr 012011

Today I had a phone call with Bank of America about a fee they assessed me. Despite a great case, the person I was speaking with would not budge in my favor. I even spoke with the representative’s supervisor with the same result. While talking, I made my way to the nearest BOA branch location. After my unsuccessful efforts on the phone, I talked with the a customer service representative at the branch. This guy understood my arguments and agreed with me! We came to a prompt resolution with me grinning ear to ear. I immediately thought to how this experience related to the PTO and their pre-appeal brief conference program.

How many times have you had a great case before the PTO only to be frustrated by an unsympathetic examiner. You try and file Office actions only to get nowhere. You wish you could get inside the brain of this examiner, but often times conclude that maybe you’ll never know why the examiner just isn’t “getting it.” Much like the representative I spoke with, you conclude that maybe there is some influence from above that you can’t change. Rather than thinking about the time and money that you have already invested with the current examiner, you want to move on so that your case can be properly decided.

The program

As noted in the MPEP, normally, every applicant has the option of appealing any claims that have been twice rejected to the BPAI. You file a notice of appeal and then within a couple months file the appeal brief. But compiling a brief takes a lot of time and resources. Plus the decision often takes years, with the current backlog. As noted in the Official Notice, in 2005, the PTO issued forth a pilot program called Pre-Appeal Brief Conference available to anyone who has filed a notice of appeal. Through it, the applicant can request a review of identified matters on appeal employing an appeal conference currently employed in the Office, but prior to the filing of an appeal brief. The goals of the program are (1) to identify the presence or absence of clearly improper rejections based upon error(s) in facts, or (2) to identify the omission or presence of essential elements required to establish a prima facie rejection. After 6 months of “pilot” status, the PTO has continued it indefinitely.

This program allows you to get your argument heard by people other than your examiner (although in this program, your examiner is included on the panel so it isn’t as removed as a straight-up appeal to the BPAI). The plus of this program is that you don’t have to file a brief. Instead of a brief, you must submit in 5 pages or less a succinct, concise and focused set of arguments for which the review is being requested. The request should specify-

  • clear errors in the examiner’s rejections; or
  • the examiner’s omissions of one or more essential elements needed for a prima facie rejection.

In other words, your reason for going through a pre-appeal brief conference should be based upon a clear legal or factual deficiency in the rejections rather than an interpretation of the claims or prior art teachings.

The panel
A Technology Center Art Unit supervisor will designate a panel of examiners experienced in the field of technology to review the applicant’s remarks and the examiner’s rejections. This panel includes at least the examiner of record and his supervisor. The panel will then decide if an issue for appeal is, in fact, present in the record. The Office should mail a decision within 45 days of receipt of a properly filed request. There are four possibilities:

  • Finding 1: The application remains under appeal because there is at least one actual issue for appeal.
  • Finding 2: Prosecution on the merits is reopened and an appropriate Office communication will follow in due course. In appropriate circumstances, a proposed amendment may accompany the panel’s decision proposing changes that, if accepted, may result in an indication of allowability for the contested claim(s).
  • Finding 3: The application is allowed on the existing claims and prosecution remains closed.
  • Finding 4: The request fails to comply with the submission requirements and is dismissed.

One interesting note is that a decision by this panel to withdraw any rejections is not a decision by the board and hence does not qualify for patent term adjustment.

Appeal Brief

What if all of your efforts to participate in this sleek sounding program fail? According to the notice, the appeal brief can then be filed, but the time frame must be within either the two-month period set in CFR 41.37(a) or one month from the mail date of the decision on the request.

 Posted by at 1:19 pm