Ex parte Appeal win/loss rates at the USPTO have been relatively static over the years, with about a third of cases affirmed, a third reversed, and a third somewhere in the middle (affirmed-in-part). While the total number of backlogged appeals has fallen recently, the numbers are still much higher than 10 years ago and cannot be fully reconciled by the growth in the total number of applications filed. For example, there were only a few thousand appeals backlogged in 2005, whereas now the numbers are nearly an order of magnitude higher. While the size of the PTAB has exploded in order to keep pace, much of the increased capacity has been devoted to post-grant proceedings - another source of greatly increased workload for the board. All of this means that the PTAB is looking to decide cases with as little judicial resources as possible.
One way for the PTAB to quickly and efficiently (at least from the perspective of PTAB resources) decide cases is to focus on Section 112 indefinite issues. For example, when Section 112 indefinite rejections are present, if the PTAB can confirm that there is a clarity problem, then it follows that the prior art issues cannot be properly evaluated (since the scope of the claims is unclear), resulting in an affirmance of the 112 rejections and a remand to the Examiner.
Often appellants focus all of their energy on the prior art rejections, feeling that the 112 issues are inconsequential. However, this cannot be further from the truth in the present day squeeze on resources and in light of the new focus on clarity by the USPTO (see the Director's blog). Therefore, it may be prudent to address any 112 issues up-front in the brief and present detailed arguments as to why the scope of the claims would be clear to a person of ordinary skill in the art.
In this regard, several approaches are applicable. For, example, If the Office has essentially relied on the broad scope of the claim to support indefiniteness, the brief can focus on the clarity of the scope noting that clarity of scope should not be confused with breadth. See In re Miller, 441 F.2d 690 (CCPA 1971), MPEP 2173.04.
Great care should be taken by the appellant to ensure consistency in the arguments for clarity. The PTAB will go hunting through the claims, specification, prosecution history, cited references, and dictionaries looking for an inconsistency that can be used as the basis to support indefiniteness. See In re Borkowski et al. (CCPA 1970) 422 F2.d 904. The PTAB can be rather creative in identifying potential inconsistencies and if not addressed fully in the briefs, use unexplained inconsistencies to affirm a 112 rejection, particularly by invoking the Broadest Reasonable Interpretation in tandem with said consistencies. Instead, the appeal brief should proactively point out how the allegedly unclear terms(s) is(are) consistently used in the claims, specification, prosecution history, dictionaries, and art of record.