Losing a Section 101 appeal at the PTAB can sting. In many cases, continued examination is off the table as further amendments may not help the cause. And appealing up to the courts involves spending a lot of time and money. But there is another option: filing a request for rehearing. A recent decision shows that this procedure is not fruitless for Section 101 rejections, even if it may seem like it is.
Recently decided Ex parte MacKay, Appeal No. 2015-008232 (September 20, 2017) reversed a Section 101 rejection that it had previously affirmed in its initial decision. In the rehearing decision, the panel was less than wordy when it acknowledged that it realized that the relied-upon identification of an abstract idea (i.e., “rules for playing a game”) may not be affiliated with the limitations recited in the claims on appeal. Instead, the claim recites the creation of a game board surface image. The panel concluded that the record failed to adequately establish that the claims at issue are directed to an abstract idea, and the rejection under 35 U.S.C. § 101 was not sustained.
On the face, intuition might suggest that requests for rehearing are a futile endeavor. And perhaps the numbers reflect this futility. The percentage of applications that get appealed to the PTAB is quite low, 1-2%. But the percentage of appeals where the applicant files a request for rehearing is that much lower, about 1-2% of the appealed decisions. On the surface it makes sense why this procedure is rarely used. But it should not be taken out of consideration for the following two reasons.
First, appellants may present a new argument based on a recent relevant decision of either the Board or the Federal Circuit. But unless a case comes out that supports the appellant’s position and is directly on point, the rehearing panel can easily distinguish. Plus, with such a short window between the appeal decision and the rehearing decision, unless the Board failed to consider a key case in its original decision, it would seem less likely that an appellant’s new argument saves the day.
The second reason an appellant should consider rehearing is to show that the Board misapprehended or overlooked points. See 37 C.F.R. § 41.52(a)(1). Because the same panel of judges that rendered the initial decision rules in the request for rehearing, it might seem less likely that the panel admits that it misapprehended points in their earlier decision. But it turns out that it does work, as shown in the above case.
In conclusion, if you’re feeling out of options after an unsuccessful appeal to the PTAB, consider filing a request for rehearing. It’s fast (only a few extra months of wait time for a decision) and as shown above, there’s a chance that it helps reverse the rejection. Plus the cost is miniscule compared to appealing to the Federal Circuit or Eastern District of Virginia (the other options for seeking redress of the unfavorable PTAB decision).