Getting Your House In Order Before Appeal

We have discussed many issues related to the situation where an examiner re-opens prosecution responsive to a convincing appeal brief, without proceeding to the Board. Continuing with the theme of re-opening prosecution, there are also numerous issues related to the situation where prosecution is re-opened after a successful appeal from the Board. See here and here, for example.

This brings up the question of whether there are any proactive steps an applicant can take to prevent (or reduce the likelihood of) re-opening after a successful (or at least partially successful) PTAB decision. It turns out that there are things the applicant can do.

This post discusses the particular issue of how the applicant can raise the procedural burden for the examiner after an at least partially successful PTAB decision. Specifically, as discussed in a previous post, if an Examiner wants to re-open prosecution after a PTAB decision, the Examiner must obtain approval from the Group Director. While surely they often do obtain such approval, it nevertheless takes the power out of the examiner’s (and their supervisor’s) direct control (which is of course a benefit to the applicant). However, if there is another procedural reason that requires prosecution to be re-opened, then the examiner (and supervisor) can side-step this procedural requirement, thus making it easier to simply enter new grounds of rejection.

Consider the situation that I have seen often where the applicant takes up an appeal knowing that there are some minor issues remaining that cannot be won on appeal. For example, a simple antecedent basis issue may be present. In such cases, the applicant does not appeal that rejection, which results in a summary affirmance by the PTAB. So, while this may not matter in the end, if the applicant is successful with overcoming the prior art rejections, for example, the PTAB’s decision still results in an affirmance of at least one ground of rejection. If the applicant then wants to correct the issue after the appeal, this creates an opportunity for the examiner to re-open prosecution without approval from the Group Director.

In other words, while the applicant is able to easily remedy the remaining outstanding issues after the appeal, this does not mean the case will simply proceed to allowance if the examiner and/or supervisor are intent on rejecting the application. Rather, this small remaining issue creates an ability for the examiner to enter new grounds of rejection on their own (e.g., because the applicant is forced to file an RCE to have the amendments entered, essentially re-opening prosecution for the examiner.)

So, it may be preferable to clean up the case before you successfully convince the PTAB of the problems with the primary rejection. Or, if your have some claims still rejected after a PTAB decision (but others with all rejections reversed), you may decide to simply cancel the rejected claims (even if you can easily fix the issue) to reduce the chance that prosecution will be re-opened with new rejections.