Recent ex parte appeal PTAB decision cuts a corner to avoid deciding an appealed rejection

Patent Office employees are creatures of incentives. It is well-known that patent examiners earn various counts for use in the USPTO’s internal quota system. PTAB judges are also measured by a count-based system, which is based on the number of decisions they author. It is no secret that Examiners and PTAB judges at times get creative with policies and practices to most easily meet their quotas. Here, we look at a recent decision that shows a practice of PTAB judges deciding only one ground of rejection without looking to the remaining pending ground on appeal.

In deciding grounds of rejection on appeal, the three judge panel almost always decides all the contested pending rejections. Of course, if an appellant chooses not to argue against a ground of rejection in the appeal brief, the Board will summarily affirm the rejection. Very rarely, the Board decides only one ground of rejection on appeal and lets that carry the day, without deciding other pending grounds of rejection. This rarity is found in recently decided Ex Parte MacArthur et al (PTAB Jan. 2, 2018).

In Ex parte MacArthur, the appellant had challenged both a Section 101 abstract idea rejection and a Section 112 indefiniteness rejection. But the panel never even reached the second ground of rejection. After affirming the abstract idea rejection, the panel “exercised [their] discretion” and “declined to reach the merits of the Examiner’s remaining rejection.” This, after the appellant had devoted nine pages of argumentation on the Section 112 rejection in the appeal brief and the reply brief.

To support its discretion not to reach the remaining issue on appeal, the Board cited to two Federal Circuit cases. In re Basell Poliolefine, 547 F.3d 1371, 1379 (Fed. Cir. 2008) (“Having concluded that the Board properly affirmed the rejection of claims 1-52 of the ‘687 patent based on obviousness-type double patenting in view of the ‘987 patent, we need not address the remaining issues raised by Basell regarding the §§ 102(b) and 103(a) rejections, as well as the additional double patenting rejections.”); Beloit Corp. v. Valmet Oy, 742 F.2d 1421 (Fed. Cir. 1984) (ITC having decided a dispositive issue, there was no need for the Commission to decide other issues decided by the presiding officer). Another interpretation is that the panel found a way to achieve the same credit for deciding this appeal without the work of deciding the second issue.

Ex parte MacArthur is certainly not the first to use this kind of discretion to decline the call to decide remaining issues on appeal. Another relatively recent case, Ex parte Palmer (PTAB Mar. 10 2016), summarily affirmed a 112 rejection and proceeded not to reach several 103(a) rejections. In this analysis, the Board justified not reaching the 103(a) rejections by expressing concern for managing the Board’s docket. It also cited to the same ITC case above.

To the defense of PTAB judges, often there are many fact-specific grounds of rejection to be decided on appeal, which require time to analyze and write up. Especially in Ex parte Palmer, it would have taken a lot of time for the panel to pore over multiple references in deciding several obviousness rejections. But even though this requires a lot of time, it’s what PTAB judges do. That is, these decisions that do not decide all contested issues are extremely rare compared with the overwhelming majority of decisions that decide every issue that is argued. Interestingly, both of the above-discussed decisions come from the same tech center of 1700.

True, the appeal backlog has historically forced the PTO to get creative and balance resources at the BPAI/PTAB. But this decision not deciding an issue on appeal comes amid plunging backlogs for ex parte appeals. For example, as we recently reported, in the past year the backlog for tech center 1700 has dropped from 22.8 months to 16.9. Thus, the concern for creatively using judge resources is less compelling.

Plus, a half-baked effort at the PTAB may do little to speed up efficiency at the USPTO anyway. After a rejection is affirmed at the Board, the applicant can still prevail on this issue after reopening prosecution, either through additional argumentation or amendments. And back in the Examiner’s docket, if the Examiner still digs into his/her position on the other issue that was never decided by the board, then it would require another appeal to resolve. Better to do the job right the first time, even if it is tempting to take the shortcut in the decision.

 

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