The document discusses strategies for appealing examiners' rejections to the Patent Trial and Appeal Board. It notes that the average time for a decision after filing a notice of appeal is 30 months. The best appeals are ones that do not need to be taken by convincing the examiner during an interview. If an appeal is necessary, it recommends appealing rejections that clearly cannot be supported by the cited art and facts, as these have an 80-90% success rate. As a last resort, one can appeal when positions are far apart and broadening claims is not an option, arguing the examiner is incorrect. It also discusses potential outcomes and strategies for pre-appeal requests and oral arguments.

1. THE INTELLECTUAL PROPERTY MINUTE
NOVEMBER 2010: APPEALS TO THE BOARD
During prosecution, we all will eventually have to face the decision of whether to appeal the Examiner to the Board of
Appeals. Here are some of my strategies about appeals.
1. The best appeal is one that you don’t take. It takes too long to be an effective tool in most instances since the number
of Ex Parte appeals assigned to the Board, but not decided, has increased to near 20,000. What’s more, the average time
from the filing of the Notice of Appeal to the Board’s decision is almost 30 months. If possible, it is far easier and
quicker to hold an Examiner Interview.
2. The next best appeal is one that you win at the very start. For those rejections that are clearly not supported by the
facts, I will consider an appeal. These do not include rejections based on the law or on facts which are ambiguous, but are
based on facts which in no way support the rejection. In other words, the rejection does not—and can’t be modified to—
pass the proverbial laugh test. An example is where the Examiner has repeatedly missed showing that a claim element (or
elements) is taught/suggested by the cited art and it is not really taught/suggested by the cited art. In these instances, I
will consider an appeal since I expect to win when the Examiner is forced to write an Examiner’s Answer and comes face
to face with the clearly inadequate rejection which cannot be supported even if re-written. Rather than dig in her heels,
which looks bad to the SPE and to quality review, the Examiner has no option but to withdraw the rejection. And in some
instances, the Examiner is so chagrined that to “save face,” she allows the application outright. My success rate using this
strategy is about 80-90% for immediate withdrawal of the rejection and allowance of the application, with the other 10-
20% proceeding through the entire appeal process.
3. Of course, the rest of the appeals are those where you have no other option. These are instances where prosecution has
proceeded to the point where you understand the Examiner’s position and the Examiner understands your position. But
the two positions are miles apart and you can’t—or are unwilling—to limit scope of the claims. The strategy for this type
of appeal is simply based on the fact that you can convince the Board that your are correct and the Examiner is not.
4. If you appeal, the pre-appeal process may not be worth your time. Statistically, only 2-5% of Requests for Pre-Appeal
Brief Review have the desired outcome of withdrawing the rejection. However, since 40% of such requests result in
prosecution being reopened, it might be worth considering if your goal is just removal of the rejection. If your goal is
allowance, I would argue that the strategy outlined in paragraph 2 might be the better option, if supported by the facts.
5. If you must appeal, follow both the spirit and the letter of the MPEP. The requirements for the Appeal Brief are
numerous and very detailed. Failure to follow these requirements to the letter will wind up with your Appeal Brief being
rejected. You will then have to submit a corrected Appeal Brief, making a long process even longer. And beware, on
November 15th the PTO proposed more changes to the appeal process.
6. If you appeal, take the opportunity to present oral arguments to the Board if the circumstances allow. You could write
hundreds of pages of arguments in an Appeal Brief, yet not be sure that the Board will focus on your desired facts and
arguments. But during oral arguments, you have an opportunity to engage the judge and direct his attention to them.