When one appeals an Examiner's rejection, the Applicant is not able to introduce any new evidence and must submit all arguments, else suffer waiver. Specifically, any argument that could have been raised in the brief is waived if not presented. Hyatt v. Dudas, 551 F.3d 1307, 1313-14 (Fed. Cir. 2008). This waiver has real teeth and means that taking an appeal requires clear strategy and a good understanding of the issues relevant to the case.
In some cases, however, the final rejection is unclear and the Applicant is not really sure what forms the basis of the rejection. The Applicant must be ever more diligent to avoid waiver and utilize either a petition against a new ground or the reply brief to make clear that any additional arguments are responsive to new points raised by the Examiner in the Examiner's Answer.
In a recent appeal decision, 3M was subject to the issue of waiver (US S/N 14/363,123 ). In that case claim 1 set forth a thermoformable monolithic multilayer article comprising: a thermoformable cellular polyester core layer with a thickness of at least 10 mm; a first polyester skin layer that comprises a dense, uniaxially-oriented or biaxially-oriented polyester film with a thickness of at least 200 microns and that is on a first major side of the polyester core layer; and, a second polyester skin layer that comprises a dense, uniaxially-oriented or biaxially-oriented polyester film with a thickness of at least 200 microns and that is on a second major side of the polyester core, wherein the core layer and the first skin layer are self-bonded to each other and wherein the core layer and the second skin layer are self-bonded to each other.
3M argued in the reply brief that the cited reference was limited to a single intended use, and thus it would not be obvious to make the proposed combination. The PTAB disagreed and further made clear that "on this record, we determine there is no good cause for why [these arguments] could not have been raised in the Appeal Brief, as they address positions taken by the Examiner not only in the Answer, but also in the Final Office Action."
As such, it is imperative to make sure that the appeal brief makes every argument that might be relied-upon during the appeal. Further, if there is a question as to the Examiner's reasoning, calling that ambiguity out up front would give a good basis for why new arguments might be needed in the Reply Brief. In any event, explaining why new arguments are presented in a Reply Brief for the first time should be explicit, and one should not rely on the Board to discover why new arguments are presented.