Thursday, May 13, 2010

Debunking two common misperceptions about appeals

Takeaway: You can appeal to the BPAI on a non-final Office Action. You are allowed to present completely new arguments in an Appeal Brief.

Details: Two common misconceptions about the appeal process are related to when you can appeal, and what arguments you can make.

37 C.F.R. 134(a) states the condition for an appeal: "Every applicant, any of whose claims has been twice rejected, can appeal ..." Notice this says nothing about "final" rejection.

One reading of "twice rejected" might be that a particular claim must be twice rejected. Such a reading would prohibit immediate appeal of a rejection of a claim added in the last response.

However, the BPAI has interpreted the rule more liberally, to permit an appeal as soon as the application is twice rejected. The controlling case is Ex parte Lemoine, and the holding of Lemoine is "so long as the applicant has twice been denied a patent, an appeal may be filed." So the commonly held view that you can only appeal on a final rejection is incorrect.

Some practitioners assume that an appeal must be limited to arguments already on the record. While this may be true about appeals in general, it's not true about appeals to the BPAI. That is, there is absolutely no prohibition against arguments that are presented for the first time in an appeal brief.

When I first heard the urban legend "no new arguments in an appeal brief," I spent a lot of time looking in the C.F.R. and the MPEP for a statement to this effect. I never found one. Nor did I find a statement explicitly permitting new arguments. Since then, I've conferred with other experienced appeal practitioners, who assured me that new arguments are in fact permissible.

The best hard evidence I can point to is found in the record of the rule making process for the current rules (here). During this process, the PTO provides answers to comments submitted by the public. Some of these answers refer specifically to new arguments in appeal briefs.
  • Many appellants are making new arguments for the first time in their appeal brief apparently stimulated by a former change to the appeal process that inserted the prohibition on new grounds of rejection in the examiner’s answer).
  • One comment suggests that the new arguments are necessary in the appeal brief because the conferees and supervisors are more experienced than the examiner and if the case proceeds to the Board, the audience is an APJ, who has quite different qualifications than either the conferee or the supervisor. Moreover, the comment suggests that the rule is unnecessary because nothing in the rule prevents the examiner from responding to new arguments raised in the appeal brief.
Since these answers are provided by the PTO, I view this as implicit acknowledgment that the practice is permissible.


  1. I still don't understand what the line is between "allowed to appeal" and "not allowed to appeal." Consider:

    1. You write that "twice rejected" refers to applications. But Lemoine referred to a continuation application, which is (at least technically) a different application.

    2. The MPEP refers to claims-at-the-end-of-specification, instead "claims for a patent": "A notice of appeal may be filed after any of the claims has been twice rejected, regardless of whether the claim(s) has/have been finally rejected."

    3. Lemoine pretty clearly said that "twice rejected" refers to "claims for a patent" and not claims-at-the-end-of-specification.

    4. On the MPEP interpretation, what constitutes a claim? Does the numbering control? Consider these hypos:

    A. If I entirely strike out the text of claim 1 and rewrite something different, and the claim is then rejected again, is that a claim twice rejected?

    B. If, first, claim 1 is rejected, and then I add claim 2, and then claim 1 is allowed and claim 2 is rejected - has any claim been twice rejected? On the Lemoine rule, I think the claim-for-a-patent has been twice rejected, and appeal is proper. But no claim-as-end-of-specification has been twice rejected, which is what the MPEP seems to indicate.

    So I am confused.

    1. Your statement No. 3 is correct; forget claims-at-the-end-of-the-specification for the purpose of determining when to appeal (37 CFR § 41.31); it's claim-for-a-patent, per Lemoine. Therefore, the facts in your two hypos (4A and 4B) are irrelevant.

      In MPEP § 1204 II, the USPTO confusingly uses the term "claim" in both its meanings to confuse the matter, yet it correctly quotes the Lemoine standard for a timely appeal, namely, "so long as the applicant has twice been denied a patent, an appeal may be filed."

    2. Hey, thanks for contributing! I try to respond to comments, especially those with questions. But this one (with the questions) was so long ago, I don't even remember whether I saw the comment or not.