Filing an appeal brief with the Patent Trial and Appeal Board (PTAB) can be an effective way to advance prosecution and secure allowable claims. Last November, we summarized Tips for Writing Effective PTAB Briefs to help propel applicants to PTAB victory. The U.S. Patent and Trademark Office (USPTO) published guidance on March 11, 2015 about claim grouping in appeal briefs, “Effective Use of Claim Grouping in Appeals to the Patent Trial and Appeal Board.” We now summarize the guidance and provide further tips in view of it to help make the organization of your brief effective. Perhaps the most important tip of all is to remember that, as emphasized in the PTAB guidance’s concluding paragraph, every situation is different. Carefully considering the issues in your particular case will help ensure that your appeal brief is organized as effectively as possible.
- Strategically identify the issues for review: This relates to our previous “present strong arguments” tip. Typically, one or two issues can be dispositive. A good rule of thumb for identifying them, according to the PTAB guidance, is to assess whether, if that issue were the only issue decided in your favor, you would cancel any remaining unfavorably decided claims to proceed toward issuance. While you must be careful not to needlessly limit the issues presented for appeal since you cannot raise new issues before the Board after the appeal brief is filed and since you want to maximize your chances for a favorable decision, the PTAB guidance cautions that including tangential issues often detrimentally dilutes the impact of the brief.
- Group claims by issues in common: After you have identified the issues to present for review, consider grouping rejections and associated claims that turn on each issue into subsets of claims so that the disposition of each subset depends on the same set of issues. The PTAB guidance unsurprisingly suggests grouping claims to consolidate issues (and to give the PTAB fewer claims/issues to consider and decide). As discussed in our previous tip to “argue claims separately,” you should be cautious with consolidation. Keep in mind that, while each claim is considered a separate invention, the failure to argue separately claims subject to the same ground of rejection waives any argument that the claims are entitled to separate consideration. Generally, it makes the most sense to group claims by common limitations and basis of rejection. For those issues that do not necessarily turn on recited claim limitations, such as issues of law – arguments of non-analogous art, lack of motivation to combine, etc. – these claims often naturally fall into a group helpful for the PTAB’s consideration based on the recited limitation because the group will share the same art and basis of rejection.
- Consider whether claims within each group present additional, separate issues: After you have identified subsets of claims by common issues, it can be helpful to consider whether there are claims within the subsets that involve different issues that could be separately argued. The PTAB guidance indicates that if more than a single representative claim is required, sub-groups should be presented under sub-headings in the appeal brief. A word of caution: it is important to remember that (1) claims presented under a single heading may be decided as a group by the Board, regardless of whether you discuss claims separately within that group, and (2) every claim that turns on the issues in a group should be included in a group to ensure that no relevant claim is excluded from a favorable decision.
- Exercise caution when grouping claims with different scope: As mentioned above, and as emphasized in the PTAB guidance, it can be best to argue claims separately that have grammatical or term differences that differentiate claim scope. It is important to discuss the implications of the differing claim phrases. Also, when an argument is directed to only a narrow claim within a group, you should avoid saying that the claims of the group stand or fall together since the Board will then likely affirm the rejection of other, broader claims in the group.
- Separately argue claims with means-plus-function limitations: Consistent with 35 U.S.C. § 112(f), means-plus-function claims are properly construed to cover “the corresponding structure, material, or acts described in the specification and equivalents thereof.” You should be careful not to group means-plus-functions claims with claims that don’t include such limitations because doing so can, as the PTAB guidance cautions, be viewed as conceding that properly construed means-plus-function claims are not patentable over the prior art.
- Avoid unnecessary repetition when presenting separate arguments: Another aspect of appeal brief organization relating to claim grouping is that each ground of rejection of a claim must be argued or else the rejection is summarily affirmed. That being said, it is often the case that you will have common ground across different grounds of rejection that, while not necessitating claim grouping, can involve simply referencing those arguments and, accordingly, save the Board’s time as well as your own.