The appeal process before the Patent Trial and Appeal Board (PTAB) is often the last bastion of hope for applicants facing rejection and an examiner convinced of their position. Given the stakes, crafting a strong appeal brief can make all the difference. However, some practitioners fall into a trap: submitting an appeal brief that is brief and pointed, thinking that short and to the point is always the most effective approach. While succinct and clear arguments are often lauded as a virtue in legal writing, in the realm of PTAB appeals, it may not always be just the length of your brief that matters—but sometimes the depth of detail and the precision of your arguments can matter more.
When an examiner issues a rejection, particularly one that is meticulously detailed with many citations to references, some PTAB judges may effectively see the burden as shifted to the applicant to dismantle that rejection. This means that if the examiner's rejection is comprehensive, citing references and providing extensive explanations, your appeal brief might need to be equally robust. A scant, underdeveloped argument may be unlikely to sway the PTAB, and worse yet, may give the board an easy way to affirm the rejection.
The PTAB is known for its scrupulous attention to detail and its preference for thoroughly reasoned arguments, and might be referred to as too technocratic by some. Nevertheless, a brief that merely scratches the surface of the examiner's rejection can sometimes fail to provide the PTAB with a compelling reason to overturn the rejection.
A recent decision illustrates the issue. Appeal 2024-001275, Application 17/088,853. The examiner spent about 10 pages layout out the rejection of claim 1, explaining claim interpretation, citing to various paragraphs, figures, etc. The Applicant’s entire argument was two paragraphs and less than a page. While there may be instances where such a short argument is appropriate, this case was not one of them. From the PTAB’s decision:
Before addressing Appellant’s specific statements in its Appeal Brief, we note a general problem with Appellant’s approach in this case. The Examiner made specific and extensive factual findings regarding all the claims and limitations. See generally Final Act. The Appeal Brief does not address the specific findings and instead makes generalized challenges to the relevance of the cited prior art. See Appeal Br. 3–4. The Examiner’s Answer justifies its prior findings, and Appellant does not file a Reply Brief. Cf. Condermarin-Caceres v. Holder, 422 F. App’x 744, 746 n.2 (10th Cir. 2011) (by choosing “not to file a reply brief, [Petitioner] has left the [appellee’s] discussion of [a] critical point effectively unopposed”). As such, we are left with essentially no persuasive explanation of where the Examiner errs.
While official USPTO communications (even from the PTAB) may promote compact briefs focused on the “best” arguments, sometimes the grinding nature of bureaucratic review and unpredictability from the panel means that technocratic arguments with pedantic reasoning and citations should be considered. As explained in a previous post (here), it can be hard to predict the PTABs response to your brief.
Thus, one may consider a detailed and methodical approach that includes analyzing the examiner's rejection in depth, including breaking the rejection into its component parts, including the references cited and the specific allegations. The brief can then address each point raised by the examiner that is in contention, including providing a detailed explanation of why the examiner's reasoning is flawed or why the references do not support the examiner’s assertions. Simply asserting that the examiner is wrong can be insufficient without providing a detailed rebuttal that methodically addresses the issues point by point. Further, where possible, the arguments and reasoning can be supported by evidence and citations, even if one things that they are clear without citation. Finally, given the PTAB’s well known tendency for a technocratic approach, a rigorous, step-by-step analysis of the alleged errors in the rejection can be helpful. In this way, the brief can address each and every alleged error in the rejection with precision, avoiding vague or generalized arguments.
Thus, while it is true that appeal briefs should be clear and focused, this does not mean they should be overly terse. An alternative approach strikes a balance: be succinct in your presentation but comprehensive in your analysis, avoiding the temptation to submit a brief that is merely a summary of your position. Remember, in patent prosecution, attention to detail can be the difference between victory and defeat.