Application can be appealed 1) for appealable issues and 2) when twice rejected

This is the first of a series of posts that goes over the ex parte appeal process in patent prosecution. At https://anticipat.com, we are finding tremendous value from analyzing appeals decisions at the PTAB. Here, we go over the standing requirements for when an application is eligible to be appealed. In short, there must be an appealable issue (instead of petitionable) and the application must be twice rejected.

The first distinction that must be made is issues of appeal versus issues of petition. In general, an objection is petitionable whereas a rejection is appealable. However, when the objection is “determinative of the rejection,” the matter may be addressed by the Patent Trial and Appeal Board (PTAB). An example of this a new matter objection for the specification with a Section 112 rejection for the claims. Both can be decided by the Board if the new matter objection is determinative of the Section 112 rejection.

Some matters that are petitionable and not appealable include the following:

  • A requirement for restriction or election of species
  • Finality of the office action
  • Non-entry of amendments
  • Holdings of abandonment
  • Designation of Examiner’s answer as new ground

If the issue is indeed an appealable issue, the next question is whether that rejection has been applied twice.

timeline

Timeline image attributed to Fitch, Even, Tabin & Flannery LLP

In general, once an application is twice rejected, it is eligible to be appealed. This standard comes from a codified rule: “Every applicant, any of whose claims has been twice rejected, may appeal from the decision of the examiner to the [Patent Trial and Appeal] Board (PTAB) by filing a notice of appeal . . . ” 37 CFR 41.31. 

Based on the wording of the rule, one might see some ambiguity as to whether the exact claims must be rejected twice to be eligible for appeal. But there is no such exactness requirement, as established in a precedential Board decision Ex Parte Lemoine, 46 USPQ2d 1420 (Bd. Pat. App. & Inter. 1994). So as long as an application has been rejected twice, it is eligible to be appealed. See MPEP §1204.

And the rejection is not limited to only be for the exact same application. If any claim was rejected in a parent application, and the claim is again rejected in a continuing application, that continuing application is eligible for an appeal. See MPEP 1204(II). This is supported by the same Lemoine decision.

Stay tuned for updates for other interesting information on the timeline of the appeal process.

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