1. THE INTELLECTUAL PROPERTY MINUTE
NOVEMBER 2011: NEW RULES FOR APPEALS TO THE BOARD
The PTO issued final rules for ex parte appeals to the Board of Appeals on November 28th. See 76 Fed. Reg. 72270.
These new rules are effective on January 23, 2012. The PTO withdrew the previously published 2008 rules, which
actually never went into effect. Despite the summary below, I would advise studying the final rules before pursuing an
appeal since they are quite lengthy and quite detailed.
Simpler Procedure. One goal of these rules is to lessen the procedural burden on Appellants and Examiners by:
Eliminating statements about the status of claims, the status of amendments, and the grounds of rejection on
appeal from the Appeal Brief;
Eliminating the evidence appendix and related proceedings appendix from the Appeal Brief;
Applying default assumptions if the Appeal Brief omits a statement of the real party-in-interest or a statement of
related cases;
Presuming that the appeal is taken from the rejection of all pending claims;
Eliminating an Examiner’s response to a Reply Brief; and
Holding consideration of an IDS or Petition until after the appeal concludes.
Much of this information is already available in the Image File Wrapper on PAIR, anyway, or is not relevant to the issues
raised in the appeal. The PTO hopes these changes will reduce the number of non-compliant Appeal Briefs and
Examiner’s Answers, shortening the much-too-long appeal process.
Earlier Jurisdiction. The Board will assume jurisdiction on the earlier of (a) the filing of a Reply Brief or (b) the expiration
of time in which to file such a Reply Brief. Examiners are not required to acknowledge receipt of the Reply Brief.
Increased Clarity. The PTO will soon amend the MPEP to provide guidance as to what constitutes a “new ground of
rejection” during the appeal and the procedures for petitioning the PTO’s failure to designate a new ground of rejection.
Examples of actions that will constitute a new ground of rejection:
Changing the rejection basis of the rejection from § 102 to § 103 (or vice versa) using a different teaching;
New calculations in support of overlapping ranges;
Citing new structure in support of structural obviousness; and
Pointing to a different part of the claim in a ‘‘new matter’’ rejection.
Examples of actions that do NOT constitute a new ground of rejection:
Relying on a different portion of a reference to elaborate on a teaching;
Changing the basis of rejection from § 103 to § 102, but relying on the same teaching;
Relying on fewer references in support of a § 103 rejection while relying on the same teachings;
Changing the order of references while relying on the same teachings; and
Citing to other parts of a reference when responding to Appellant’s arguments.