In most cases, the distinction between appealable vs. petitionable issues at the USPTO is quite clear. For example, if you believe that a patent examiner has prematurely entered a final rejection, the appropriate avenue for relief is by way of petition. Indeed, the MPEP states such explicitly. MPEP 706.07(c). Yet, not all examination/reexamination disputes are so clear cut. (See earlier discussion on ex parte SNQ review process here)
The distinction between appealable vs. petitionable disputes is especially critical in post grant proceedings such as patent reexamination. This is because failure to appreciate the distinction between the two could potentially forfeit substantive patent rights.
Petitionable issues cannot be appealed to the Board of Patent Appeals and Interferences (BPAI). In other words, a failure to recognize petitionable issues, as they occur, can result in an inability to address them before the Office.
In deciding whether an issue is petitionable vs. appealable, the predecessor court of the CAFC explained, [t]here are a host of various kinds of decisions an examiner makes in the examination proceeding – mostly matters of a discretionary, procedural or non-substantive nature – which have not been and are not now appealable to the board or to this court when they are not directly connected with the merits of issues involving rejections of claims, but traditionally have been settled by petition to the Commissioner. In re Hengehold,440 F.2d 1395, 1403 (CCPA 1971).
Disputes that are “directly connected with the merits of the issues involving rejections of the claims” often times relate to matters of claim language and claim interpretation. Disputes over such matters are common in both application prosecution and patent reexamination. Whether or not these issues are appealable vs. petitionable can be especially confusing.
For example, this week in Ex Parte Taymac Corp. (2011-010682) the Board considered a question relating to a 112 rejection of new claims presented during patent reexamination. During a patent reexamination of U.S. Patent 5,763,831, the examiner rejected the new claims 44-47 as lacking written description support. The Patentee countered that the claim language rejected by the examiner was also found in the original claims, and that MPEP 2258 forbids such a rejection in patent reexamination.
In relevant part, MPEP 2258 provides:
Where new claims are presented or where any part of the disclosure is amended, the claims of the reexamination proceeding, are to be examined for compliance with 35 U.S.C. 112. Consideration of 35 U.S.C. 112 issues should, however, be limited to the amendatory (e.g., new language) matter. For example, a claim which is amended or a new claim which is presented containing a limitation not found in the original patent claim should be considered for compliance under 35 U.S.C. 112 only with respect to that limitation. To go further would be inconsistent with the statute to the extent that 35 U.S.C. 112 issues would be raised as to matter in the original patent claim. . . If a limitation that appears in an existing patent claim also appears in a claim newly presented in a reexamination proceeding, that limitation cannot be examined as to 35 U.S.C. 112.
In addressing the Patentee’s argument, the Board explained that it need not consider the issue since it was a petitionable matter, citing 37 C.F.R. § 41.31(c). Nevertheless, the Board reversed the examiner rejection finding that support did in fact exist.
While ultimately the Board reversed the rejection, a 112 rejection that runs afoul of 35 U.S.C. § 301 seems to be more of a substantive rather than procedural issue. The fact that the MPEP describes a procedure/policy for handling such § 112 rejections, for consistency with the patent reexamination statute (35 U.S.C. § 301), would not seem to render the ultimate issue a procedural/petitionable matter.
Had the Board not found support for the claims on appeal, the Patentee would have been well past the time to petition the examiner’s decision under 37 C.F.R. § 1.181 (outside the two month window). While a later petition under 37 C.F.R. § 1.183 is possible, such relief requires extraordinary circumstances.
Clearly, Patentees and participating Third Party Requesters (IPX) need to closely consider such issues to avoid losing the opportunity for USPTO review.