On June 10, 2008, the U.S. Patent and Trademark Office (USPTO) issued a final rule for conducting ex parte appeals before the Board of Patent Appeals and Interferences.
The final rule applies to patent appeals in which the appeal brief is filed on or after December 10, 2008. Although briefing will be simpler in some respects, the final rule includes new procedural and substantive requirements that are likely to increase the complexity of drafting appeal and reply briefs. Under the final rule, appeal briefs are limited to 30 pages, and reply briefs to 20 pages, not including the appendix and certain mandatory sections. Formerly, no such page limits existed.
The final rule also eliminates the “summary of the invention” section. The USPTO had formerly required a separate explanation of each independent claim in the “summary of the invention” section, but had not always applied that requirement consistently. In place of the “summary of the invention” section, the new rule requires an appendix that includes: (i) a claims and drawing analysis; and (ii) a means- or step-plus-function analysis. The claims and drawing analysis must list each limitation of each independent claim, as well as each separately-argued dependent claim, and identify support in the specification for each limitation.
The final rule also mandates a statement of facts and an argument section. In the “statement of facts,” material facts relevant to the rejections on appeal must be “set out in an objective and nonargumentative manner.” The “argument” section should explain, for each ground of the examiner’s rejection, how the examiner erred. This section must identify every point of disagreement with the examiner; points not so identified are considered waived. The appellant must also identify when each argument was initially made during prosecution, and disclose each new argument that is being made.
Under the final rule, the examiner’s answer cannot include a new ground of rejection. According to the USPTO, whether a particular rejection constitutes a “new ground of rejection” will be evaluated on a case-by-case basis. Essentially the examiner is not permitted to make any rejection having a “basic thrust” different than that of a previous rejection.
The appellant may submit a single reply brief in response to the examiner’s answer, which must contain appropriate headings and sections similar to those required in the appeal brief; under current practice, no such structure is required. According to the USPTO, the purpose of the final rule is to speed up the ex parte appeals process, and “avoid unnecessary returns to examiners.” While the final rule may accomplish the goal of advancing the appeals process, it will likely increase the time and effort required by appellants to prepare appeal and reply briefs.