If an applicant chooses to file an appeal, the appeal brief should clearly address the appellant’s issues with the examiner’s rejection. The reply brief should focus on the examiner’s positions in the answer, in order to define the dispositive issues that the Board of Patent Appeals and Interferences (BPAI), soon to be known as the Patent Trials and Appeals Board, needs to resolve.
New BPAI rules
If a notice of appeal is filed after Jan. 23, then the new rules apply. The rules have eliminated five requirements from an appeal brief:
- Statement of status of claims
- Statement of status of amendments
- Statement of grounds of rejection to be reviewed on appeal
- Evidence appendix
- Related proceedings appendix
Additionally, when an appeal is filed, the presumption is that the appeal is based on all rejected claims unless the claim has subsequently been canceled and the amendment entered.
The new rules also contain other requirements that should be closely reviewed. While it is important to follow the layout, it is even more important to present persuasive arguments concerning the examiner’s rejection.
To present a persuasive argument during appeal, it is important to effectively implement claim grouping. Under the new rules, the appellant must use separate subheadings to identify claims that the appellant wishes the BPAI to treat separately. Without a subheading, the board will treat it as a single argument concerning the patentability of the claims. Thus, it is crucial to use separate subheadings if presenting distinct arguments concerning the patentability of the claims. For example, if the patentability of a dependent claim is to be argued separately, it is important to have a separate subheading.
When an examiner has taken what the appellant considers to be an overly broad claim interpretation, it is important to specifically explain how the examiner has taken a claim interpretation beyond the correct standard. Merely arguing that the applied reference(s) do not teach or disclose a feature is not as effective as particularly discussing why the examiner’s interpretation is wrong.
Rebutting an obviousness rejection
When rebutting an examiner’s rejection, it is important to recite and apply appropriate case law. Merely reciting phrases such as “teaching away” or “analogous art” is not persuasive to most judges unless you cite and apply appropriate case law. It is particularly important to be careful in regards to “no motivation to combine” arguments. You should also recite and apply current case law when arguing about the combination of references. While the Supreme Court’s decision in KSR v. Teleflex may have broadened what references can be combined, it does not mean that all references can be combined.
When the appellant files a reply brief, it is important to focus on arguments in the examiner’s answer, specifically the portion that is responsive to the appellant’s brief. The reply brief should be a response to specific findings, arguments or positions the examiner took in the answer. Another use of the reply brief is to address intervening legal authority relevant to appealed issues. However, it is important not to raise a new argument that is not in response to the examiner’s answer or to separately argue claims for the first time.
When preparing an appeal brief or a reply brief, it is important to focus the BPAI on specific points of error in the examiner’s rejection and support the argument with relevant case law that is correctly applied.