Introduction
When the U.S. Patent and Trademark Office (USPTO) issues a patent application rejection that the applicant believes is incorrect, the applicant may have the right to appeal the examiner’s decision to the Patent Trial and Appeal Board (PTAB).
An appeal is an important part of the U.S. patent prosecution process. It provides an applicant with an opportunity to challenge an examiner’s rejection and have the disputed issues reviewed by an administrative tribunal within the USPTO.
This article explains the basic appeal process in straightforward terms for readers who are new to patent prosecution.
What Is a Patent Appeal?
A patent appeal is a procedure in which an applicant asks the Patent Trial and Appeal Board (PTAB) to review a patent examiner’s rejection of one or more claims.
An appeal generally concerns a claim that has been rejected by the examiner. The applicant argues that the examiner’s rejection should not be maintained based on the applicable patent law and the evidence in the record.
An appeal is different from simply filing another amendment or argument with the examiner. Once an appeal is properly pursued, the case can move from examination before the examiner to review by the PTAB.
Question: What is challenged in appeal in a patent prosecution?
Answer: Examiner’s rejection of claims.
When Can an Applicant Appeal?
An applicant generally may appeal an examiner’s rejection after receiving a rejection that is appealable under the patent rules.
For example, suppose an examiner rejects Claim 1 under 35 U.S.C. § 103 because the examiner believes that the claimed invention would have been obvious over two prior-art references.
The applicant may disagree and argue that:
- The references do not disclose all of the claimed limitations;
- There is no adequate reason to combine the references;
- The proposed combination would change the principle of operation of the prior-art device;
- The proposed modification would render the prior-art device unsuitable for its intended purpose; or
- The examiner’s interpretation of the claim is incorrect.
Depending on the circumstances, the applicant may pursue an appeal to the PTAB.
Question: When is appeal challenged in a patent prosecution?
Answer: Usually during pending patent application prosecution.
Notice of Appeal
One of the important steps in the appeal process is filing a Notice of Appeal.
The Notice of Appeal informs the USPTO that the applicant intends to appeal the examiner’s decision to the PTAB.
The applicant should carefully observe the applicable time period for filing the Notice of Appeal and any required fee.
Failure to take the required action within the applicable period can result in abandonment of the application.
Because patent prosecution deadlines can be critical, applicants and practitioners should consult the current USPTO rules and applicable deadlines for the particular application.
Question: What is a critical time period relating to a notice of appeal?
Answer: An applicant has 2 months from the date of the notice of appeal for the appellant to file an appeal brief, which may be extended up to 5 additional months with the payment of the necessary fee.
Appeal Brief
After filing the Notice of Appeal, the applicant generally must file an Appeal Brief within the applicable time period.
The Appeal Brief explains why the examiner’s rejection should not be maintained.
A typical Appeal Brief identifies:
- The claims on appeal;
- The status of the claims;
- The grounds of rejection being appealed;
- The relevant claim limitations;
- The examiner’s position;
- The applicant’s arguments;
- The evidence supporting the applicant’s position; and
- Any other information required by the USPTO rules.
The arguments should address the actual grounds of rejection rather than simply repeating statements previously made during prosecution.
Question: What happens to an application if an applicant’s failure to file an appeal brief within 7 months of filing a notice of appeal and the application includes allowed claims?
Answer: The failure results in dismissal of the appeal, but the application does not become abandoned and is returned to the examiner for action on the allowed claims.
Appealing a §102 Rejection
A rejection under 35 U.S.C. § 102 generally alleges that a single prior-art reference anticipates the claim.
For example, suppose Claim 1 requires:
A device comprising A, B, and C.
The examiner relies on Reference X and concludes that Reference X discloses A, B, and C.
The applicant may argue on appeal that Reference X does not actually disclose element C.
The applicant’s argument should identify the specific claim limitation and explain why the cited portions of the reference do not disclose that limitation, either expressly or inherently.
An important principle is that an anticipation rejection generally cannot be established by improperly combining separate references. A single reference must disclose the required claim limitations.
Appealing a §103 Rejection
A 35 U.S.C. § 103 rejection is based on obviousness.
For example:
- Reference X discloses A and B.
- Reference Y discloses C.
- The examiner concludes that a person of ordinary skill would have combined A and B with C.
The applicant may argue that the examiner has not established an adequate reason to make the proposed combination.
The applicant may also challenge the examiner’s interpretation of the references or explain why the proposed combination would not have produced the claimed invention.
A successful appeal argument should focus on the specific reasoning supporting the rejection.
Claim Interpretation Is Often Important
Claim interpretation can play a significant role in an appeal.
Suppose a claim requires:
“a sensor positioned within the housing.”
The examiner interprets the claim as covering a sensor mounted outside the housing but adjacent to it.
The applicant may argue that the ordinary meaning of “within” requires the sensor to be located inside the housing.
The applicant should support the proposed interpretation using the claim language, specification, drawings, and other appropriate evidence in the record.
What Happens After the Appeal Brief?
After the Appeal Brief is filed, the examiner may issue an Examiner’s Answer.
The Examiner’s Answer responds to the applicant’s arguments and maintains, withdraws, or otherwise addresses the appealed rejections.
The applicant may then have an opportunity to file a Reply Brief addressing matters raised in the Examiner’s Answer, subject to the applicable rules.
The appeal may ultimately be decided by the PTAB.
Question: How does an appellant who desires an oral hearing request it?
Answer: The appellant must request the hearing by filing, in a separate paper, a written request with the appropriate fee withing 2 months after the date of the examiner’s answer.
What Does the PTAB Do?
The Patent Trial and Appeal Board (PTAB) reviews appealed patent examination decisions.
The Board considers the record and the arguments presented in the appeal.
The Board may:
- Reverse a rejection;
- Affirm a rejection;
- Affirm a rejection in part; or
- Take other action permitted under the applicable rules.
If the Board reverses a rejection, the application may proceed toward further examination or allowance, depending on the circumstances.
If the Board affirms a rejection, the applicant may have additional options, which can include further prosecution or seeking judicial review, depending on the circumstances.
Question: What does the PTAB do?
Answer: The PTAB reviews the appealed examination decision, which may reverse, affirm, or affirm in part, a rejection, or take other action, based on the applicable record and arguments.
Appeal vs. RCE
An applicant should understand the difference between an appeal and a Request for Continued Examination (RCE).
An RCE returns the application to continued examination before the examiner.
An appeal asks the PTAB to review the examiner’s rejection.
For example:
RCE:
“Please continue examining my application.”
Appeal:
“Please have the PTAB review the examiner’s rejection.”
The appropriate strategy depends on the circumstances of the particular application.
Question: What is a difference between an RCE and an appeal?
Answer: An RCE returns the application to continued examination before the examiner while an appeal asks the PTAB to review the examiner’s rejection.
Can an Applicant Amend Claims During an Appeal?
Claim amendments during an appeal are subject to specific USPTO rules and procedures.
An applicant should not assume that an appeal automatically permits unrestricted amendment of the claims.
If an amendment is desired, the applicant should determine whether the amendment is procedurally permitted and whether it will affect the pending appeal.
In some circumstances, prosecution may need to be reopened instead of proceeding directly to a Board decision.
Question: (True or False) An applicant should assume that an appeal automatically permits unrestricted amendment of the claims.
Answer: False.
Practical Example
Assume an applicant has the following claim:
Claim 1: A device comprising a processor, a temperature sensor, and a cooling system, wherein the processor automatically activates the cooling system when the temperature sensor detects a temperature above a predetermined threshold.
The examiner rejects Claim 1 under §103 based on References A and B.
Reference A teaches:
- a processor;
- a temperature sensor; and
- a cooling system.
Reference B teaches:
- automatic activation of a cooling system based on temperature.
The applicant believes that the examiner has not established that the specific claimed relationship between the sensor, processor, threshold, and cooling system would have been obvious.
In an appeal, the applicant could focus on the precise differences between the claim and the cited references and explain why the examiner’s reasoning does not establish obviousness.
The applicant should identify the relevant evidence in the record and explain why the rejection should be reversed.
Appeal Is Not Simply a Second Office Action Response
One common misunderstanding is that an appeal is simply another opportunity to repeat the same arguments submitted to the examiner.
An effective appeal should identify the specific error in the rejection and explain why the examiner’s reasoning is incorrect under the applicable law.
For example, instead of merely stating:
“Reference A does not teach the claimed invention.”
The applicant should identify the particular limitation that is missing and explain why the cited disclosure does not satisfy that limitation.
Likewise, for a §103 rejection, the applicant should address the specific reasoning used to combine the references.
Key Takeaways
A patent appeal is an important mechanism for challenging an examiner’s rejection.
The basic concepts to remember are:
- A patent applicant may appeal certain examiner rejections to the PTAB.
- A Notice of Appeal is an important procedural step.
- The applicant generally must file an Appeal Brief within the applicable time period.
- The applicant should address the specific grounds of rejection.
- A §102 appeal often focuses on whether a single reference discloses every required claim limitation.
- A §103 appeal may focus on the teachings of the references and the reasoning for combining them.
- Claim interpretation can be critical to the outcome.
- An appeal is different from an RCE.
- The PTAB reviews the appealed examination decision based on the applicable record and arguments.
- Patent prosecution deadlines are important, and applicants should consult the current USPTO rules for the particular application.
Conclusion
The patent appeal process gives applicants a mechanism for obtaining review of certain examiner rejections by the Patent Trial and Appeal Board. Understanding the difference between continuing examination and appealing a rejection can help applicants better understand the overall patent prosecution process.
Because patent prosecution involves detailed procedural requirements and strict deadlines, applicants should consult the current USPTO rules and, when appropriate, a registered patent practitioner for advice concerning a particular application.
References
- 35 U.S.C. § 134 — Appeal to the Patent Trial and Appeal Board
- 37 C.F.R. § 41.31 — Appeal to the Board
- 37 C.F.R. § 41.37 — Appeal Brief
- USPTO MPEP Chapter 1200 — Appeal
- MPEP § 1204 — Notice of Appeal
- MPEP § 1205 — Appeal Brief
- MPEP § 1207 — Examiner’s Answer
- MPEP § 1208 — Reply Briefs and Fee for Forwarding Appeal
Educational disclaimer: This article provides general educational information about U.S. patent prosecution. It is not legal advice and does not create an attorney-client relationship.