When an applicant appeals an examiner’s rejection to the PTAB, the applicant is in control of the issues reviewed. The applicant has no page limits, and so can challenge as many rejections as desired.

Sometimes judges give the advice to pick your best argument rather than dilute your brief with multiple issues. While this is sound advice in many contexts, administrative appeals have some specific aspects that affect the decision of how to structure the briefs. For example, any issue not raised in the appeal brief is deemed waived at the PTAB. Further, due to dependent claims, there are typically multiple inventions being pursued at any given time. And, when claims are argued together, the PTAB gets to select the representative claim for their analysis.

A recent PTAB decision on an eBay application illustrates some of these issues (SN 13/706,071). The invention relates to generating a search results page that allows a user to access a data item stored in an external system without navigating away from the search results page. A key limitation at issue was related to identifying an action that a portion users typically performed with respect to the plurality of listings at the web site after navigating away from the search results pages to the web site. The Examiner relied on obviousness of this limitation, essentially combining two references and then further modifying them to reach the missing element. eBay argued that it was wrong to combine the references to reach the claimed element since the secondary reference navigates between content sources, in contrast to the claim where "the action can be done without navigating away from the search results page." (emphasis added). Of course, as can be seen above, the actual limitation does not state “without navigating away” but rather “after navigating away.” As such, this argument was not commensurate in scope with the claimed elements.

eBay actually had another independent claim with the negative limitation but eBay did not argue that claim separately on appeal (and so the argument was waived and the PTAB was able so select claim 1 as representative). The PTAB even noted this deffciency:

However, the disputed claim language does not require "without navigating away"; rather, this phrase is found in a different claim limitation that has not been challenged on appeal.

The MPEP and CFR place no limits on the number of claims argued on appeal to the PTAB, and there are no page limits. Thus, it is wise to consider the arguments presented and look for other independent claims and/or dependent claims that are more targeted to those arguments and argue those claims separately to the PTAB. At least the PTAB would have to confront the issue rather than being able to take the easy way out.