If you’re going to appeal your application to the Board twice, res judicata should make you think twice

Sometimes it makes sense to appeal an application more than one time. Perhaps the Examiner isn’t complying with the direction from the first Board decision. Maybe an invention is so valuable that you’d rather avoid overlimiting the claims with lots of prosecution history estoppel and claim amendments and instead try getting broader claim scope through the appeal process the second time. Or maybe the application is in such a desperate state that another appeal is the only good option left. Regardless of the motivation for appealing twice, a good practice tip shown in a recent ex parte decision shows the importance of making sure that the claims are different enough from a previously unfavorable outcome.

In Ex Parte Tsypkaykin (PTAB Jun 20, 2019), on appeal was an obviousness rejection. The PTAB had previously decided a substantially similar obviousness rejection a few years previous in Ex Parte Tsypkaykin (PTAB Sept. 22, 2016). Buchanan Ingersoll went up against Examiner Jay Hann the first time and lost, but in the second attempt had made claim amendments. It was Round II of Buchanan Ingersoll vs Examiner Hann.

In the recent decision, the Board first adopted the Examiner’s findings regarding the obviousness rejection, affirming the rejection. The panel then agreed with the Examiner that the claim amendments are synonymous or “not patentably distinct” from the previous claim, which rejection was affirmed previously. See MPEP 706.03(w), 706.07(h)(XI)(A). Here are the amendments to the representative

Thus, the rejection was also affirmed based on res judicata.

A good law student should be able to tell you about the doctrine of res judicata. This is a doctrine of judicial efficiency and fairness, which is that an issue that has been decided once need not be decided again. What that good law student may not know is how res judicata applies to administrative bodies, such as the USPTO. At least from the patent prosecution perspective, the PTAB seems open to using this doctrine if the claims are not patentably distinct from claims that were previously affirmed as rejected.

How often does res judicata get applied by the board? In short, extremely rarely. For one, it is rare that an application gets appealed twice. It’s even more rare for res judicata. Of over 100,000 decisions, the Anticipat database showed 45 such decisions with the key word match.

Interestingly, both decisions were penned by Gregg I. Anderson. Given the small cohort of PTAB judges for tech centers, having the same PTAB judge write the opinion for two decisions is not out of the ordinary. Here, Judge Anderson may have recognized familiar argumentation and was not convinced the second time. As a former litigator, he was also familiar with res judicata. The two panels had two overlapping judges: the second panel consisted of administrative patent judges Carolyn D. Thomas, Jeremy J. Curcuri, and Gregg I. Anderson while the first panel included Jeremy J. Curcuri, Gregg I. Anderson and Eric B. Chen.

Keep in mind res judicata when pursuing a second appeal. It might save you a lot of effort and time.

April shows fewer (but still high) abstract idea (Alice-based) reversals

April showed a continued high number (204) of abstract idea decisions decided at the Board. Of the 204 total decisions deciding abstract idea rejections for this month, the Board completely reversed the rejection 54 times. This shows a reversal rate of 26.5%, which is lower than the last several months, but higher than many previous months.


In addition to the reversal rate, the volume of this type of rejection being decided continues to be high—higher than last year, with the number of reversals significantly higher.


In a prior blog post, we correctly predicted that the reversal rates for these rejections would come down from record-breaking. We’ll emphasize here factors that are leading to this.

First, Federal Circuit case law has likely contributed to a cautious approach by the PTAB. As we mentioned, Director Iancu can only push patent-eligibility so far before it is inconsistent with case law. And this came to a head most recently with the Athena v. Mayo case, in which the Federal Circuit affirmed an invalidiy judgment on a claim as directed to a judicial exception (law of nature). This, despite the fact that the Examiner had found that it was analogous to a 2016 example claim that was patent-eligible. The Federal Circuit panel gave its respect to the USPTO, but said it was not bound by its guidance.

Likewise, the Board likely appreciates that even though it is bound by the 2019 Subject Matter Guidance, it also shares the USPTO’s interest in making sure that patents don’t get issued that will later be found patent-ineliigible. Thus, adherence to guidance won’t guarantee a patent eligible claim set, so panels are likely taking a careful consideration of the case law as well.

Second, an uptick in the number of remands (PAIR event code = “APAR”) have been observed. These remands are instructions from the Technology Center Director that sua sponte orders the proceeding to be remanded to the Examiner “for further consideration.”


For patent-eligibility rejections, these remands (especially in light of recent subject matter guidance) serve as a sort of proxy for reversals. These remands, are normally very rare. Between 2008 – 2017, there were 2084 remands out of a total of roughly 78,000 final decisions. A quick review of recent remands showed that immediately after a remand, a Notice of Allowance was the next event. See 10/629,597. This seems to indicate that the application likely would have been allowed or had the proceeding continued at the Board Examiner to reopen prosecution, the Board could have reversed the ground.

Third, many of the upstream events have eliminated the need for a reversal from final appeal decisions. This is linked to the above point about remands. That is, Berkheimer and the subsequent Berkheimer memo were issued in March of 2018, which may have started the thaw in freezes to patent-eligibility for applications in examination. This is represented in applications that were allowed before a notice of appeal was filed, after a pre-appeal brief was filed, and after an appeal brief was filed. Thus, many of the reversals in recent months may represent easier cases than those now being decided that have survived such pre-filtering.

Despite chatter on Capital Hill about amending Section 101 for greater predictability, many believe that passage of such a bill will be difficult in this year with competing priorities. And even with such amendments, it appears unlikely that the problem of patent-eligibility will go away—it will simply change. Thus, abstract idea rejections do not appear to be going away any time soon. Expect the reversal rate to continue to be higher than historical reversal rates, but not necessarily record-breaking unless new more favorable case law is made.





Get fresh ex parte PTAB decisions delivered to your inbox

For those who like to stay current on the latest appeals decided by the PTAB, we have good news. Anticipat Email Recap just rolled out a major new feature. Now, rather than waiting for a particular decision date to be populated, you can get all the organized and curated decisions from the previous day delivered right when you start off the day.

For some time, the USPTO published their appeals decisions in a somewhat reliable and timely manner. We could delivery recaps based on decision date, with some sort of a lag. But as the lag time grew larger and larger, much of the value of having these emails diminished. Now, you can see every decision that was published on efoia webpage–a less than 24 hour turnaround time.

For those interested in recap covering longer spans of time, we have built in that functionality preference.

You can also apply a filter for only decisions that meet a certain criteria, e.g., from a particular art unit, examiner, issue type, outcome. This can minimize emails that aren’t relevant to you or your practice.

As many are aware, our world has too much information. We’d like to help you get the most value out of PTAB appeal decisions. Give the new fresh recap a try here: https://anticipat.com/accounts/signup/research/