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.