A previous post analyzed the statistical results, by art unit, of filing an appeal brief and showed a relatively large percentage of cases being re-opened. Re-opening prosecution is a particularly troubling action because it illustrates examples where the USPTO admittedly has maintained improper rejections and only relents once the Applicant goes through the expense and delay of appealing.
However, there are still more admittedly improper rejections lurking in the data. Sometimes, when the Examiner files an Answer to the appeal brief, certain rejections are withdrawn. 37 CFR 41.39(a)(1). To see how many additional cases have at least one ground of rejection withdrawn, the data from each art unit was sampled and the Answers tagged for any withdrawn grounds of rejection. While the numbers vary somewhat, the overall average was around 6%. As you may recall, overall approximately 34% of appeals result in re-opening of prosecution, with around 65% of appeals receiving an Answer. However, 6% of those (or 4% of cases overall) have withdrawn rejection. Adding this to the re-opened cases means that almost 40% of the appealed rejections have admittedly improper rejections. Below is the breakdown by art unit where the Answer includes withdrawn grounds of rejection (note a sampling of 30 applications was analyzed in each art unit):