1. Ex-Parte’s are Most Appealing!
Getting allowances faster through ex-parte appeals at the PTAB
Jerry Suva
Shareholder, Slayden Grubert Beard PLLC

2. Ask the PTAB to intervene Expensive 3 Judges >> 1 Examiner
Conventional Wisdom of Ex Parte Appeal vs. Request for Continued Examination
APPEAL
RCE
Examiner is wrong
Ask the PTAB to intervene
Expensive
3 Judges >> 1 Examiner
Preserve the scope of claims
Less than “50-50” odds
SLOW
Examiner is right (ish)
Keep fighting
Less expensive
Narrower claims
Will eventually find claims acceptable to Examiner
Faster

3. Ask the PTAB to intervene Expensive 3 Judges >> 1 Examiner
Conventional Wisdom of Ex Parte Appeal vs. Request for Continued Examination
APPEAL
RCE
Examiner is wrong
Ask the PTAB to intervene
Expensive
3 Judges >> 1 Examiner
Preserve the scope of claims
Less than “50-50” odds
SLOW
Examiner is right (ish)
Keep fighting
Less expensive
Narrower claims
Will eventually find claims acceptable to Examiner
Faster

4. Pendency of Appeals (months)
The most substantial change in ex parte appeals derives not from any Federal Circuit decision, change in procedure, or statute. The PTO aggressively hired more PTAB judges since the advent of the AIA. As a result, the pendency time of an appeal has plummeted. Depending upon the art unit, appeals often take just over a year.
PTAB Chief Judge Ruschke presented similar statistics at the January Austin IPLA meeting. These statistics are historically low and fundamentally change the way I think about appeals as a tactic.
Pendency is calculated as the number of average months from when the Board officially receives the appeal --- after Notice of Appeal, after Appeal Brief, after Examiner’s Answer (if any), and after Reply Brief (if any) --- to final decision.
CRU is the Central Reexamination Unit, including ex parte reexams, inter partes reexams, supplemental examination review, and reissues.
The BPAI in 2009 had 83 judges.
file:///C:/Users/jsuva/Documents/AIPLA/Ex%20Parte%20Presentation/appeal_and_interference_statistics_july_2018.pdf

5. Ex-Parte Appeal Backlog Plummets
The backlog was even worse pre Typically 25-27k.

6. Nonfinal Office Action Final Office Action Nonfinal Office Action
Action after Appeal
RCE
Second, Nonfinal Office Action

7. Appeal available after any two rejections, whether final or nonfinal
Nonfinal Office Action
Final Office Action
Nonfinal Office Action
Action after Appeal
RCE
Second, Nonfinal Office Action
Twice-rejected Application
Appeal available after any two rejections, whether final or nonfinal

8. Twice-Rejected Application

9. Twice-rejected Application
RCE
Notice of Appeal
Twice-rejected Application
Response
Advisory Action
Abandon

10. Twice-rejected Application
Abandonment
Success rate: perfect
Examiner count: 0.5 counts
Cost: $0
Twice-rejected Application
Abandon

11. Response to Final Office Action
Examiner count: 0
PTO Fees: $0
Use the After Final Consideration Pilot Program 2.0 to make amendments and trigger an examiner conference
Twice-rejected Application
Response
Advisory Action

12. Twice-rejected Application
RCE
RCE
Success rate: Widely variable by Examiner, art unit
25%-33% (immediate allowance)
Examiner count:
0.5
Plus counts after RCE
Disposal, 0.5
OA,
PTO fees:
$1300 (1st)
$1900 (2nd+)
Twice-rejected Application
Source: PatentAdvisor (Lexis)

13. Twice-rejected Application
Notice of Appeal
Notice of Appeal
Success rate: ?
Examiner count: 0.5 upon Examiner’s Answer
PTO Fees:
$800 Notice of Appeal
$2,240 Forwarding Fee (if necessary)
$1,300 Oral Hearing (if desired)
Twice-rejected Application

14. Pre-Appeal Brief / Conf.
Appeal Options
Pre-Appeal Brief / Conf.
Notice of Appeal
Appeal Brief

15. Pre-Appeal Brief / Conf.
PABC
Allowance
Pre-Appeal Brief / Conf.
Reopen prosecution
Notice of Appeal
On to PTAB Appeal
Appeal Brief

16. PABC 5% 35% 60% Allowance Nonfinal Office Action
Pre-Appeal Brief / Conf.
Reopen prosecution
Nonfinal Office Action
35%
Notice of Appeal
On to PTAB Appeal
60%
Appeal Brief
Source: patentlyo.com

17. PABC Allowance Nonfinal Office Action Pre-Appeal Brief / Conf.
Reopen prosecution
Nonfinal Office Action
Notice of Appeal
On to PTAB Appeal
Appeal Brief
Abandon
RCE

18. Appeal Notice of Appeal Reply Brief PTAB Decision Appeal Brief
~14.9 months
2 months
2 months
Appeal Brief
Examiner’s Answer
2 months

19. Examiner’s Answer Wait Times
Notice of Appeal
Reply Brief
PTAB Decision
~14.9 months
2 months
2 months
Appeal Brief
Examiner’s Answer
2 months
M.P.E.P : “examiner should [but not ‘must’] furnish...within 2 months”
No statistics available about actual time used by Examiners; anecdotally, as long as 6 months
Consider calling the Examiner’s SPE after 2 months, then filing a petition to the Director

20. PTAB Reversal Rate
60-40 in favor
of Examiner
Source: USPTO

21. Appeal Odds Are Better Than 60-40 Reversal
Austin IPLA members and companies:
Outstanding lawyerly skill
Significantly novel inventions
Least abstract ideas in the country
At least 50-50

22. Appeal Odds Are Better 40% Success
Notice of Appeal
Reply Brief
PTAB Decision
~14.9 months
2 months
2 months
Appeal Brief
Examiner’s Answer
2 months

23. Appeal Odds Are Better 40% Success
Notice of Appeal
Reply Brief
PTAB Decision
~14.9 months
2 months
2 months
Appeal Brief
Examiner’s Answer
2 months
40% Success

24. Appeal Odds Are Better 40% Success
Notice of Appeal
Reply Brief
PTAB Decision
~14.9 months
2 months
2 months
2 months
Appeal Brief
Appeal Conference
Examiner’s Answer
40% Success

25. Appeal Odds Are Better 40% Success
Notice of Appeal
Reply Brief
PTAB Decision
~14.9 months
2 months
2 months
2 months
Appeal Brief
Appeal Conference
Examiner’s Answer
40% Success
Reopen prosecution
Allowance

26. Appeal Odds: Estimated 60-65% Success
Notice of Appeal
PABC
Reply Brief
PTAB Decision
~14.9 months
2 months
2 months
2 months
40% Success
Appeal Brief
Appeal Conference
Examiner’s Answer
5% Success
Yielding an overall 55%-60%
These guys say it’s 75% in total, but with older data
SGB data says about 40%.
Other commentators, 33%.
Reopen prosecution
Allowance
? 25%-33% Success (est.)

27. Ex-Parte vs. RCE By The Numbers
PTO Fees
$800; $3040 if Examiner answers
$1300/$1900
Examiner Counts
0.5
Success Rate
60-65%
25%-33%
Time
14.9 months + up to 6 months to send to PTAB
6.8 months

28. Ex-Parte vs. RCE By The Numbers
PTO Fees
$800; $3040 if Examiner answers
$1300/$1900
Examiner Counts
0.5
Success Rate
60-65%
25%-33%
Time
14.9 months + up to 6 months to send to PTAB
6.8 months
Choose Ex-Parte Appeal when the Examiner is clearly incorrect

29. After the PTAB Decision
Affirmed
Optional: Request for Rehearing (within 1 month)
Optional: Appeal to the Federal Circuit (within 2 months)
Examiner will issue Action Following Decision
File an RCE or abandon
Affirmed-in-Part
Applicant may have to cancel some rejected claims
File continuation application for canceled claims
Otherwise, allowance
Reversed
Allowance

30. Request for Rehearing Required for Federal Circuit Appeal
“State with particularity the points…misapprehended or overlooked by the Board”
M.P.E.P. § , 37 C.F.R
No new arguments or evidence allowed
Except: new Fed. Cir. or PTAB decisions
Can request to make precedential

31. Request for Rehearing – continued
Underutilized
Applicants rarely win, but the requests themselves are never denied
The rehearing always occurs
Rehearings yield guidance for an otherwise sparse Decision on Appeal
Specific claim construction
Factual findings regarding prior art teachings of claimed elements
A free extension of time, if desired

32. Using Analytics Anticipat, Juristat, PatentAdvisor (Lexis), etc.
Per-examiner, art unit, tech center
Effect of RCEs, success on appeal, allowance rates
Ex: Juristat dashboard 
Ex: Anticipat, next slide

35. Ex-Parte Appeal Standard of Review And Scope
“[T]he Board reviews the particular finding(s) contested by an appellant anew in light of all the evidence and argument on that issue.”
Ex Parte Frye , BPAI Appeal (February 26, 2010)
Burden is on the Examiner
Practically, burden is on attorney to identify where the Examiner failed
PTAB can only reverse the grounds that are raised
Sua sponte rejections

36. Writing the Appeal Brief
“Know your audience”
Examiner vs. PTAB Panel of experience patent attorneys
Explain the context and significance of claim terms at issue
Have evidence (introduced earlier)
Federal Circuit and precedential PTAB decisions
Copy reasoning from district court, non-precedential PTAB decisions

37. Writing the Appeal Brief – (cont.)
Address the art and the Final Office Action arguments
Avoid recitation of back-and-forth history
Turn over rocks – be thorough, not exhaustive
Previous amendments made in lieu of arguments
Claim interpretation exercise – chart the construction applied by Examiner
Motivation to combine
Overlooked dependent claims

38. Writing the Appeal Brief – (cont.)
Claim scope: Phillips says “broadest reasonable interpretation consistent with the specification.”
Look for Examiner citations to dictionaries
Chart, even if internally, the competing claim constructions
Beware of “It is improper to import claim limitations from the specification” M.P.E.P
Motivation to combine
Does the motivation make sense?
Does the combination actually achieve the alleged benefit?
Did the Examiner quote pending application for the motivation?
How do the references work together in the proposed combination?
Change “teaching away” arguments into

39. Examiner’s Answer / Writing the Reply Brief
Reply Brief only addresses issues newly raised in EA
If Examiner copies and pastes the Final Office Action  no reply brief!
New rejection grounds vs. new arguments made in rejection in EA
New grounds/art: file petition under 37 C.F.R. §1.181 to reopen prosecution, or file RCE
New arguments: address in the Reply Brief

40. Oral Hearings Requested in 0.63% of cases
“In-person” – judges, practitioners can videoconference; or, travel to centers in Alexandria, Dallas, San Jose, Denver, Detroit
PTAB judges are very prepared
Most useful with excellent demonstratives, complex technology
cf. a Markman hearing, technical tutorial

41. Appeals of Patentable Subject Matter Rejections
Appellant success rate: ~15%
Consider working with the Examiner until better Federal Circuit decisions or USPTO Guidance issue, particularly on Alice/abstract idea rejections
“Iancu Wants To Clear Up Patent Eligibility Of Abstract Ideas - U.S. Patent and Trademark Office Director Andrei Iancu said Monday that the office is developing guidance for examiners aimed at providing ‘significantly more clarity’ on when inventions are eligible for patenting, in part by specifically identifying patent-ineligible ‘abstract ideas.’”
Source: Anticipat

42. SLAYDEN GRUBERT BEARD PLLC
Austin Munich sgbfirm.com