There are many instances where a patent practitioner should be thinking about their appeal strategy on the first action (or even while drafting!) - and even if that first action is a restriction requirement. Sometimes preparing for an appeal is enough to avoid one if an examiner realizes where the case is headed (and they care about being reversed, which is not a given by any means). Other times, based on examiner statistics and the rejections set forth, the practitioner has no choice but to appeal if there is ever hope of an allowance.
That said, even when you get to the point of filing the notice of appeal, just because an aggressive appeal strategy makes sense does not mean that you do not have to fully evaluate your case before taking that last step. Sometimes an examiner may make modifications in the Final rejection so as to fix the most obvious errors. Sometimes the issue is closer than a practitioner first thought due to interpretation or other factors. Whatever it may be, before filing a notice of appeal (or appeal brief), practitioners are well served by taking a fresh look at the issues and potential weaknesses in their case. Just because an examiner has an unreasonable low allowance rate does not mean that every rejection is unfounded (or least not so unfounded as to be subject to reversal by the PTAB). And whether the examiner has a high or low rate of reversals or re-opening on appeal, each case comes down to the facts of that case.
A recent PTAB decision illustrates the situation (15/665,518). The application relates to a shoulder compression harness worn over the shoulders to urge the shoulders back, and to provide proper posture to the wearer, either during exercise sessions, or during normal daily activities. FIG. 3 from the application is below:
Claim 1 on appeal:
A shoulder compression harness comprising:
a single loop of elastic mate rial, wherein said elastic material is formed into a figure 8 configuration so that a pair of equal sized shoulder loops is provided, and said elastic material crosses over itself in a central portion thereof, forming a hub, said shoulder loops having an inner surface that faces toward a user's body when in use, and an outer surface facing away from a user's body when in use;
wherein said elastic material is affixed to itself at said hub;
wherein each shoulder loop of the pair of equal sized shoulder loops includes a front handle strap having a first end and a second end, wherein both ends of said front handle strap are attached to and protrude outwardly away from its respective shoulder loop in a free-standing manner so that, each said front handle strap extends outwardly away from its respective shoulder loop and defines a space therebetween, so that a user may position a hand between each said front handle strap and said outer surface of its respective shoulder loop to adjust a position of said respective shoulder loop, and wherein said hub includes a rear handle strap having a first end and a second end, wherein both ends of said rear handle strap are attached thereto;
whereby said shoulder compression harness may be worn by a user so that said pair of equal sized shoulder loops fit over said shoulders, and said hub may be positioned at a central portion of said user's back between said user's shoulder blades.
The rejection of claim 1 on appeal was based on a combination of two references (Kirk and Lifshitz). The examiner on the case has quite a low allowance rate compared to the art unit (which itself is below the Technology Center, which is in turn below the USPTO overall). Thus, the applicant likely knew early on an appeal would be needed, but nevertheless tried interviews and an RCE. The examiner repeatedly changed the secondary reference, which may have contributed to the need for the RCE. In the end, however, the applicant appealed.
The applicant provided four main arguments in the brief:
Kirk lacks a rear handle strap (see 18 in the figure above) having a first end and a second end, wherein both ends of said handle strap are attached thereto
The rejection lacks a sufficient reason for the modification
Lifshitz teaches away from the claimed invention
Lifshitz is not analogous art.
If you follow PTAB cases, you will immediately see that arguments 2-4 most likely are going to an uphill battle unless some very particular facts are present. However, first an understanding of Kirk is provided via its figures below.
Starting with the primary argument, the examiner was essentially relying on a broad interpretation of handle strap as anything capable of being grasped manually by a user. In this way, the examiner relied on the two corners of the band 11. The applicant argued this was ludicrous, but did not thoroughly explain why, nor did the applicant distinguish structurally what was missing in the cited reference. Because there was some basis to the rejection (using a broad interpretation that was not rebutted by the applicant), the PTAB dismissed the applicant’s argument.
Next, as to the motivation to combine (where the examiner utilized the Lipshitz for the front straps (see the figure from Lifshitz below)), the applicant tried to argue a different purpose for the claimed straps as opposed to those in the Lifshitz. However, the PTAB found that the examiner’s differing reason to combine (based on the common understanding that handles provide uses other than those set forth by Lifshitz) was applicable here as it was commonly understood in the field.
And so on with regard to the last two arguments. In the end, the PTAB was able to find a way to dismiss all of the applicant’s arguments.
So, even though many factors may be pointing toward an appeal as the best strategy, the obvious still applies - the practitioner must step back and take an outsider’s view of the true strengths and weaknesses of the case to ensure strong arguments are available that can hold up to PTAB scrutiny.