Effective Pre-Appeal Use

The Pre-Appeal Brief Request for Review program is about to celebrate its sweet sixteenth birthday.  This celebration should suggest Applicants already know how to use the program effectively.  However, it seems many Applicants have forgotten.

As a reminder, “The goals of the program are (1) to identify . . . clearly improper rejections based upon error(s) in facts, or (2) to identify the omission . . . of essential elements required to establish a prima facie rejection.”  OG Notice (July 12, 2005).  The USPTO distinguishes these particular rejections from “issues lacking factual basis, including interpretations of the prior art teachings or claim scope . . . .”  Id.

Which rejections are suitable for the Pre-Appeal Brief program?  A clearly improper rejection might be based on an applied patent publication not effectively filed before the effective filing date of Applicant’s application.  So, that publication might be ineligible for use against Applicant’s claims (e.g., might not be prior art).

The Official Gazette specifically mentions a situation appropriate for the program in which “the examiner failed to show proper motivation for making a modification in an obviousness rejection.”  Id.  The emphasis here appears to be on the omission (i.e., “failed to show”), rather than the persuasiveness of the Examiner’s proposed motivation.

The OG Notice suggests another situation appropriate for the program in which “a limitation is not met by a reference.”  Because the Pre-Appeal Brief program is not intended to address “interpretations of the prior art teachings or claim scope,” this suggestion appears directed to an Examiner’s failure to consider a limitation.  Another possibility might concern the limitation not being inherent to the prior art under MPEP 2112. 

Turning to the USPTO’s Decision on the Request, the Decision is limited to a checkbox detailing one of four findings.  One of the findings is a failure to comply with submission requirements.  These submission requirements are procedural and relate, for example, to the number of pages in the Remarks.  The submission requirements do not relate to whether the Brief addressed an appropriate substantive issue.

Therefore, if an Applicant files a Brief directed to “issues lacking factual basis,” the Applicant will simply receive a finding that “there is at least one actual issue for appeal.”  Although the USPTO seemed to consider the merits of such Briefs more frequently in the past, the USPTO lately seems to be enforcing the goals of this program more strictly (and particularly since the After-Final Consideration Pilot 2.0 Program was developed).

This ineffective use of the Pre-Appeal Brief program results in Applicant’s unnecessary expenditure of service fees, as well as in a reduced period for filing an Appeal Brief.

If Modal PLLC can help determine whether an Applicant should respond to an Office Action via the Pre-Appeal Brief program, please contact us.

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