Winning a case before the USPTO's Patent Trial and Appeal Board (PTAB) can be a long and arduous journey. It may have required multiple sets of arguments to the Examiner explaining why the rejections were unreasonable, interviews with the Examiner and Supervisor, discussions with the client regarding numerous strategy decisions, a long wait, oral arguments before the Board, and more. When you finally receive the Board's written decision accepting your arguments and reversing the Examiner, it is a great feeling. Unfortunately, the case is then returned to the Examiner, who may still be inclined to try and deny the application by re-opening prosecution with new rejections.

While such actions can be exceptionally frustrating, and whether or not they are reasonable, sometimes there are ways for the Applicant to quickly overcome them. A little known requirement placed on Examiners by the MPEP is that after reversal, they must obtain specific approval (beyond their normal approval channels) to re-open prosecution. My experience is that such a procedure is not always followed. Specifically, MPEP § 1214 sets forth the following procedure.

If the examiner has specific knowledge of the existence of a particular reference or references which indicate nonpatentability of any of the appealed claims as to which the examiner was reversed, he or she should submit the matter to the Technology Center (TC) Director for authorization to reopen prosecution under 37 CFR 1.198 for the purpose of entering the new rejection. See MPEP § 1002.02(c) and MPEP § 1214.07. The TC Director’s approval is placed on the action reopening prosecution.

Therefore, if you receive a new rejection re-opening prosecution after reversal by the Board and there is no approval by the TC Director, you have a strong procedural challenge to the rejection that may help move the case more quickly to allowance.