Wednesday, December 1, 2010
Responding to new case law after an appeal brief is filed
Takeaway: If you have a case on appeal to the BPAI and new case law comes out that affects arguments made in your Appeal Brief, you can file an updated brief to address the new case law. For example, the Applicant in Ex parte Ahluwalia filed a "Letter Brief" to discuss In re Vaidyanathan, and the BPAI did consider the new arguments.
The Applicant in Ex parte Candy tried a different tack and didn't fare so well. After the BPAI affirmed the Examiner's rejections, the Applicant used a Request for Rehearing to ask for permission to file a new Appeal Brief, to present "new arguments responding to the extensive changes in patent law and in the rules and procedures of the BPAI." The Board denied the request because the Applicant didn't point out any specific changes in the law that would "render the Board's decision in error."
The Letter Brief in Ex parte Ahluwalia referenced In re Vaidyanathan, a decision in which the Federal Circuit reversed an obviousness rejection that had been affirmed by the BPAI. In doing so, the Federal Circuit stated that while the Examiner may rely on common sense as providing a reason to modify, "the examiner should at least explain the logic or common sense that leads the examiner to believe the claim would have been obvious." The Letter Brief argued that the rejection was deficient under In re Vaidyanathan because the Examiner didn't explain but merely made conclusory statements. The BPAI disagreed, and explained why the Examiner had provided articulated reasoning with some rational underpinning.
The Applicant in Ex parte Candy referred vaguely to "extensive changes" in the law and BPAI rules. I'm not sure what he had in mind. KSR had been out for about a year when the Applicant filed the Appeal Brief. Bilski v. Kappos was just out, but was irrelevant because no § 101 rejections were present. And the BPAI rules had not changed – the extensive BPAI rules package from December 2008 was never put into effect.
My two cents: MPEP 1205.02 makes reference to filing a "supplemental paper", but no details. So it's useful to have Ahluwalia an example application to look at. The Letter Brief is available in Public PAIR.
This supplemental filing might be useful in some cases. For example, there are tons of applications pending before the BPAI that are affected by Bilski v. Kappos. You can do nothing and take your chances with machine or transformation test arguments in an already filed Appeal Brief. But the BPAI might decide that your claim involving a machine is still abstract. A Letter Brief would give you the opportunity what this isn't so – perhaps using some of the factors from the PTO's Bilski guidelines. Something to consider.