Chapter §11.09 Appeals to the USPTO Patent Trial and Appeal Board
| Jurisdiction | United States |
§11.09 Appeals to the USPTO Patent Trial and Appeal Board
[A] Generally
A patent applicant whose application claims have been twice rejected by the examiner may appeal to the USPTO's internal appellate body for patent matters. Such appeals are authorized by §134 of the Patent Act, retitled by the AIA as "Appeal to the Patent Trial and Appeal Board," which provides in pertinent part:
(a) Patent applicant.—An applicant for a patent, any of whose claims has been twice rejected, may appeal from the decision of the primary examiner to the Patent Trial and Appeal Board, having once paid the fee for such appeal. 296
The AIA renamed the Board the "Patent Trial and Appeal Board" (PTAB); before the AIA, the Board was known as the Board of Patent Appeals and Interferences.297 The Board is made up of Administrative Patent Judges (APJs), appointed by the Secretary of Commerce, as well as the Director of the USPTO and its Commissioners for Patents.298 Most APJs are experienced patent examiners with law degrees. The Patent Act requires that the APJs "shall be persons of competent legal knowledge and scientific ability. . . ."299 The Board has a significant case load; as of March 2020, it faced a backlog of over 8,000 docketed appeals from ex parte examinations.300
A patent applicant/appellant begins the process of appealing to the PTAB by filing a timely Notice of Appeal.301 USPTO "Rule 37" specifies the items that must be included in the Appeal Brief.302 The PTAB's website provides a checklist to ensure that appeal briefs comply with Board rules.303 When appropriate, appellants should present separate arguments concerning the patentability of individual claims. If the appellant makes blanket arguments in his brief with respect to groups of claims, the Board can select any claim of the group as the representative claim.304
In response to the Appeal Brief, the examiner may file a brief denominated the Examiner's Answer.305 If the Appellant chooses thereafter to file a Reply Brief, it must respond only to issues raised in the Examiner's Answer and cannot raise new issues for the first time.306
Appeals to the PTAB are generally decided by a panel of three APJs; in rare instances the Board sits in panels of more than three.307 Appellants have the option of presenting an oral argument before the Board panel at the USPTO; the primary examiner may also appear and argue against the appellant.308 In deciding the appeal, the Board reviews the record below for error on the part of the examiner, but the Board may also enter a new ground of rejection.309
[B] Challenging the Board's Decision
If the PTAB's decision affirms the examiner's rejection, the appellant has two options to challenge it. Most appellants who want to proceed beyond the Board file a "direct appeal" to the U.S. Court of Appeals for the Federal Circuit.310 Direct appeals are decided "on the record" developed at the USPTO; no new evidence can be introduced.311 In fiscal year 2019, the Federal Circuit received almost 660 appeals originating from the USPTO.312 The number of appeals from the USPTO to the Circuit has increased dramatically with the advent of AIA-implemented inter partes review in late 2012.
As an alternative to filing a direct appeal with the Federal Circuit, the appellant may file a civil action against the Director of the USPTO in federal district court, as described in the next section.313 Such actions involve litigation against the USPTO; hence they are potentially expensive and time consuming. The primary advantage of filing a civil action, however, is that it permits discovery and the introduction of new evidence that was not part of the record at the USPTO.
[C] New Ground of Rejection by Board
Agency action by the USPTO is subject to the Administrative Procedure Act,314 which means that the agency must "provide prior notice to the applicant of all 'matters of fact and law asserted' prior to an appeal hearing before the Board."315 An applicant is entitled to notice of the factual and legal bases on which a USPTO rejection was based. Accordingly, subsection (b) of 37 C.F.R. §41.50 ("Decisions and other actions by the Board") provides that when the Board enters a new ground of rejection not previously entered by the examiner, the applicant has the option to reopen prosecution or request a rehearing.316 If the Board determines that it has not entered a new ground of rejection but the Federal Circuit concludes otherwise, the appellate court will vacate the Board's decision.
The Federal Circuit's 2013 decision, In re Biedermann,317 is illustrative. The central issue in Biedermann was "whether the Board and the examiner properly relied on the same articulated reasoning and factual underpinnings in rejecting Biedermann's claims or whether the Board made new findings and adopted different reasons to support a new ground of rejection, thus depriving Biedermann of both notice and an opportunity to respond."318 The Federal Circuit agreed with patent applicant Biedermann that the Board had entered a new ground of rejection, and accordingly vacated and remanded the Board's decision for further proceedings.
Biedermann's U.S. Patent Application No. 10/306,057 ('057 application), which claimed a priority date of November 27, 2001, was directed to a bone screw (depicted in Figure 11-2) having a shank (1) and a holding portion with a U-shaped cross section (2) for a rod (100) that connected to other bone screws. A key feature of the claimed invention was that inner thread (7) and outer thread (8) had substantially rectangular cross-sections. These "square" threads (or "90 degree-oriented flat" threads) advantageously obviated the generation of outward radial forces, which in turn avoided splaying of the legs (4 and 5) of the holding portion.319 U.S. Patent No. 5,005,565 ("Cotrel"), the primary reference cited by the Examiner in rejecting Biedermann's claims for obviousness, disclosed a bone screw having all elements of Biedermann's claimed invention except for the square thread configuration. Figure 11-2 depicts Biedermann's bone screw and the Cotrel prior art bone screw.
To supply the square screw shape that was missing in Cotrel, the USPTO examiner cited a U.S. patent to Steinbock, which disclosed different types of threads in the context of machining arrangements for moving heavy loads. Steinbock stated that square threads were the most efficient type for load transfer.320 Accordingly, the examiner took the position that "it would have been obvious to one of ordinary skill in the art at the time the [Biedermann] invention was made to have provided threads with a square profile on the Cotrel legs, as taught by Steinbock, for efficient load transfer."321
Biedermann appealed the...
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