Our last post (here) provided an example where the examiner failed to follow the appeal brief rules. Now the shoe is on the other foot - the applicant is being accused of improper appeal brief format. But whose job is it at the USPTO to ensure compliance with the appeal brief rules? Can the examiner object to the form of the brief?
In Hamilton Sundstrand’s recent appeal (Appeal 2022-002494, Application 15/640,137), they dealt with precisely this issue. After filing an appeal brief that was accepted by the Patent Appeals Center, the examiner (and supervisor and RQAS “appeals specialist” spent a large part of the examiner’s Answer objecting to the Appeal brief form and going so far as to request that the PTAB find against the applicant substantively as to dependent claims (arguing that because the format is not right, the PTAB should dismiss the separate arguments for dependent claims):
As it turns out, the USPTO’s MPEP already explains how enforcement of the appeal brief rules is carried out (MPEP 1205.03):
The Patent Appeals Center has the responsibility for determining whether appeal briefs filed in patent applications comply with 37 CFR 41.37, and will complete the determination before the appeal brief is forwarded to the examiner for consideration. … If the appeal brief is determined to be compliant with the rules or it contains only minor informalities that do not affect the Office’s ability to render a decision, the Patent Appeals Center will accept the appeal brief and forward it to the examiner for consideration. If the Patent Appeals Center determines that the appeal brief is non-compliant with 37 CFR 41.37 and sends appellant a notice of non-compliant brief requiring a corrected brief, appellant will be required to file a corrected brief within the time period set forth in the notice to avoid the dismissal of the appeal. The Patent Appeals Center will also have the responsibility for determining whether corrected briefs comply with 37 CFR 41.37.
Thus, Hamilton correctly explained in their Answer that once an appeal brief is accepted by the Board, the appeal brief cannot later be held defective by the examiner.
The PTAB never reached this issue since they reversed the examiner on the main arguments in claim 1. And taking a quick look at that issue, it seems that this entire appeal should have been avoided. Claim 1 is reproduced below with the limitation in dispute underlined (a direct connection of the source lead to the PWB):
1. A transistor module assembly, comprising:
a printed wiring board (PWB);
a longitudinally extending load bus bar;
a longitudinally extending feed bus bar parallel to the load bus bar; and
multiple transistor packages operatively connected to the load and feed bus bars, wherein each transistor package includes a drain surface operatively connected to the feed bus bar for receiving current therefrom, and a source lead operatively connected to the load bus bar for dissipating current from the transistor package to the load bus bar, wherein the load bus bar and the feed bus bar are opposite from one another across an entirety of a respective one of the multiple transistor packages in a direction perpendicular to the drain surface of the respective one of the multiple transistor packages, wherein the source lead directly connects to the PWB.
The examiner used BRI to allege that prior art without a direct connection was nevertheless applicable because the BRI included “direct electrical connection albeit through intervening elements.” The examiner also argued that the applicant’s specification did not disclose anything more specific than the cited art (which was incorrect - the applicant’s figure clearly showed a direct connection different than the prior art’s use of intervening elements). To be sure this was an easy decision for the PTAB. However, it should have been resolved when the applicant filed a pre-appeal brief request. As is often the case, even inclusion of the USPTO’s appeal expert as part of the panel (RQAS) didn’t avoid the need for a full appeal, with a reply to the answer.
It is also especially disappointing to see that not only did the RQAS fail to correct a clearly improper rejection, but they signed on to the nonsensical arguments that the PTAB should decide against the applicant for improper brief format even though the MPEP makes clear that examiners have no authority to enforce such provisions.
In any event, an applicant must always be careful to follow the appeal brief formatting rules. But once the brief is accepted, do not let an examiner, or their supervisor, or even a so-called USPTO appeals quality specialist, try to use alleged errors in the appeal brief format as a reason for the PTAB to affirm a rejection.