As discussed in previous posts, when an applicant believes that there are errors made by an examiner, different approaches are taken to obtain review depending on the issue. Some issues are appealable, and some are petionable. Generally, these two avenues are mutually exclusive.
There are some common examples where applicants take the wrong avenue for a particular argument. At the Board, applicants often fall into the trap of arguing issues that can only be petitioned, such as an improper new ground of rejection in the Answer, or that a drawing objection is incorrect. Likewise, applicants often try petitions regarding issues that are only appealable, such as that an examiner doesn’t understand the technology and has made bad rejections.
A common reason for the USPTO to deny a petition regarding allegations of examiner bias or inability to understand technology is that the Director cannot usurp the power of the PTAB. See some other examples here and here. Specifically, if the applicant is making arguments that somehow go the substance of rejections, or at least can be characterized as such, a petition will be ineffective. This is because the issues of whether the rejections set forth in an Office action are proper relate to the merits of those rejections and, as such, can only be considered on appeal. It is well settled that the Director will not usurp the functions or impinge upon the jurisdiction of the Board. See In re Dickinson and Zenitz, 299 F.2d 954, 958; 133 USPQ 39, 43 (CCPA1962); and Bayley’s Restaurant v. Bailey’s of Boston, Inc., 170 USPQ 43, 44. (Comm’r Pat. 1971).
However, one the flip side, if the applicant can argue that the examiner or supervisory examiner is usurping the power of the PTAB, then that is something that can be petitioned. A potentially significant example of this is where the examiner and/or supervisor improper re-open prosecution responsive to an appeal brief.
Consider the situation where a particular examiner and/or supervisor has (have) a habit of maintaining improper rejections and only reconsidering arguments upon appeal, resulting in an abuse of the power to re-open prosecution. As discussed previously, re-opening should not occur as it wastes both applicant’s and the USPTO’s resources. Unlimited “do-overs” are the antithesis of an efficient and fair legal system. The quest to make the “right” determination should never trump all else in a fair justice system. Thus, when there is a difference of opinion as to the substance of the case, that difference is to be determined by the PTAB (by statute and regulation - 35 U.S.C. § 134 and 37 CFR 1.41). As noted above, the issues of whether the rejections set forth in an Office action are proper relate to the merits of those rejections and, as such, can only be considered on appeal. And because it is well settled that the Director will not usurp the functions or impinge upon the jurisdiction of the Board, by permitting improper re-opening responsive to an appeal in which examiners maintain improper rejections that are only reconsidered on appeal, the Director is, by default, usurping the Board’s authority to decide appealable issues by preventing those appealable issues from adjudication by the Board.
So, know the difference between what you can appeal and petition, and hold the USPTO to the requirements that the difference parts of the Office do not over-reach and usurp power they are not entitled to.