Everyone (reading this blog) likely has ideas about fundamental fairness in legal proceedings. Each side should follow the same rules, each side should have an opportunity to be heard, etc. These are not controversial. In administrative proceedings, there are additional requirements because one party (the government) has essentially unlimited resources and extreme power. Even considering a mega corporation, there is no party that can compare to the government. Additional requirements for the government in administrative proceedings at the USPTO are set out by the Administrative Procedure Act (APA). The APA provides various safeguards, one of which is that the government must follow its own rules (even though the agency made the rules itself).

The USPTO can be very exacting in requiring an applicant to follow the various rules governing practice before the agency, including interpretations of rules that are arguably far from what was intended (under Chevron). If the applicant fails to follow such rules or correct deficiencies noted by the Office in the specified time, the application can become abandoned. As just one example, if the applicant on appeal does not expressly list out support for the independent claims in the summary of the appeal brief, the brief can be rejected. See 37 CFR 41.37. Why such exacting rules? Likely it saves PTAB judges substantial time in reviewing the case. And if the Applicant does not comply (or correct the error in the time specified), the USPTO has determined it is reasonable for the applicant to lose all of its rights.

Contrast this with an examiner not following the MPEP’s rules on the format of an Examiner’s Answer, as illustrated below.

As an initial matter, we first review the rules from MPEP § 1207.02(A)(2) (emphasis added):

(2) Response to Argument. A statement of whether the examiner disagrees with each of the arguments of appellant in the brief with respect to the issues presented and an explanation of the reasons for disagreement with any such argument. The examiner must use headings and subheadings paralleling the headings and subheadings utilized in the appellant’s brief.

So what, you might ask, is the consequence of an examiner failing to follow this rule? Nothing. A recent PTAB decision (Appeal 2022-002393, Application 16/256,690) is informative. From the decision:

In reply, Appellant criticizes the Examiner for not providing headings and subheadings in the Answer that parallel the headings and subheadings used by Appellant in the Appeal Brief. We have reviewed the section of the Manual of Patent Examining Procedure quoted by Appellant and agree that the quote provided in the Reply Brief is accurate. We have also reviewed Appellant’s Appeal Brief and see that Appellant has provided [headings and subheadings]. We have also reviewed the Examiner’s Answer and note that Appellant’s observation regarding the lack of parallel subheadings is accurate.

But then the PTAB faults the appellant in order to do nothing:

Apart from just complaining about a technical procedural irregularity, Appellant’s Reply Brief does not advise us as to what legal remedy it believes it is entitled to on account of such lack of parallel subheadings. Appellant does not bring any binding statutory or case law precedent to our attention that the quoted section of the MPEP carries the force of law and that violation of such section entitles Appellant to any particular form of relief. Under our rules, the content of the Examiner’s Answer is governed by 37 C.F.R. § 41.39, and it does not appear to us that the Examiner’s Answer contravenes such rule. It would, of course, make our job a little easier if the Examiner would provide parallel subheadings, and we do not wish to say anything in this Decision that would discourage examiners from complying with MPEP § 1207.02(A)(2). Notwithstanding the foregoing, however, Appellant does not bring anything to our attention by which we can conclude that Appellant has somehow been prejudiced by the organization and structure of the Examiner’s Answer. The Response to
Argument section is barely two pages long. Ans. 26–28. We fail to see how Appellant would have been better able to understand the Examiner’s position if those two pages had been organized under subheadings. It appears to us that Appellant has adequately grasped the thrust of the Examiner’s Final Action and Answer, notwithstanding any guidance that might have been provided by having subheadings in the Answer, and we believe the Examiner has provided us with sufficient findings and conclusions to decide the case on its merits. We will, therefore, proceed to the merits.

While the appellant did not cite to the APA, the fact that the examiner’s actions are so easily excused raises concerns. First, the appellant did request reversal due to the inadequate Examiner’s Answer. Second, for the same reasons that the PTAB requires the applicant to follow a prescribed format for the appeal brief, the board should also require the examiner to follow the MPEP (or at least give the applicant an option to waive the objection in light of returning the case to the examiner for preparation of a proper Answer). Just as the board’s time and efficiency are affected by having a properly structured Answer, so too are the time and efficiency of applicant’s representative affected. Since the applicant is paying for their representative’s time, this inconvience has a real financial consequence. And just as the applicant is required to follow proper formating (or else have their case dismissed), so too should examiner’s be required to follow the agency’s internal rules in compliance with the APA. Again, the mere fact that the Board (an arm of the government no less) believes they are able to piece together the rejection and infers that the applicant was able to understand the rejection raises substantial administrative procedure concerns. There are surely cases where the applicant might be unable to fully appreciate a rejection, or might have to infer which part of an examiner’s reasoning applies to which claim or which issue.

So, be on the lookout for examiners skirting the rules and even if you point it out, it seems you will have to do everything possible to address the reasoning as best as understandable as the Board shows no willingness to enforce the strictures of the APA in an Examiner’s Answer.